Project Description

EXPERT ESSAY:

Lessons learned as a neophyte
expert witness

Essay by Sheldon H. Jacobson, Ph.D.
Academia has been my professional home for over 30 years.  Research funding, scholarly publications, advising graduate students, professional service, and teaching have the mainstay of my career.
Back in 2015, a law firm called in need of an expert witness on a case involving a health care simulator patent.  Given that computer simulation and data analytics are areas of expertise, and I have worked on using such tools in health care, I was happy to provide my services.  The case lasted for around one year, with it settled rather abruptly just before my deposition was to be held.
Fast forward to Fall 2017, when an expert witness search firm, Rubin Anders, reached out concerning a patent infringement case involving the Transportation Security Administration (TSA).  The owner of the patent was a small company attempting to stop a Federal agency from using their patent without compensation.  The law firm, Sheppard, Mullin, Richter and Hampton, represented the plaintiff, while the Department of Justice represented the TSA.
The case (SecurityPoint Holding v The United States, 28 U.S.C. § 1498(a)) was ruled upon in October 2021 in favor of the plaintiff, resulting in a verdict of over $100 million, one of the largest damage awards ever made against the US government.
During this case, I was involved in preparing an expert report, a rebuttal expert report, giving a deposition, and then providing my testimony during the trial.
As a somewhat neophyte, there are numerous lessons learned that made the experience worthwhile, and ultimately successful.

Believe in the case. I could not represent a position that I did not believe in.  As such, it was easy to be passionate about my arguments based on my expertise.  If this had not been so, I would have not joined the case as an expert. I also got to know who I was representing, building bridges that facilitated communication and a more efficient uptake on the salient issues of the case.

Let the lawyers be lawyers. I could read legal documents, but I was not a lawyer.  As such, when everyone “stayed in their lane,” the efforts were more effective and productive.

Let the experts be experts. I was engaged as an expert based on my domain knowledge and technical expertise.  The legal team let me do my job without micromanaging me, resulting in positive synergy and fruitful exchanges that benefited everyone.

Details matter. Having a legal team that is knowledgeable and works with you is critical. Countless minutia fell below my radar that the legal team picked up on.  After some time, I became better able to catch such subtleties, creating better synergy in our communications and the efforts.

Trust the process. The legal team understood how the case would proceed.  Trusting them to see how your expertise fit into the case was critical.  They also directed my attention to the Judge who presided over the case and ultimately issued the final verdict.  Building rapport with the Judge during my questioning at the trial and explaining my views in a language that he could appreciate was critical.

Expect the unexpected. No matter how well prepared I was, there were always some unexpected points and questions that arose.  I learned to keep the focus on the facts, where it belonged, not where the opposing lawyers wanted it to go.

This case was an invaluable experience, demonstrating that both substance and style are critical in making the most effective arguments.  However, substance is not negotiable, since without it, the case could not have been executed successfully.
Although the time effort expended in serving as an expert was substantial, it was gratifying to provide expert knowledge that helped the plaintiff gain a favorable verdict.  I believe that the final damages awarded was justified.
Learning about patent law, what patent infringement means, understanding the court claim construction, and the doctrine of equivalents, all provided a new appreciation for our legal system.  It is critical to have a legal process to evaluate patents that protect the interests of inventors, but also provide mechanisms for those who wish to benefit from novel inventions.  Having served in this case is certain to make me an even more effective expert in the future.
About The Author
Sheldon H. Jacobson, Ph.D., is a professor of computer science at the University of Illinois at Urbana-Champaign. His research focuses on data analytics and data-driven decision-making under uncertainty, with applications in airport security, political redistricting, and public health / healthcare.  More details are available on his web site, http://shj.cs.illinois.edu.
About Rubin Anders
For over 20 years, Rubin Anders has delivered scientific experts to support high-stakes litigation. Our research team is comprised of scientists and attorneys uniquely positioned to understand our clients’ needs, and we leverage our global network of scientists to reach the expert best positioned to support each client’s success. A significant portion of our business is helping clients identify expert witnesses for a wide range of inter partes review (IPR), patent litigation, Hatch-Waxman, ITC and other intellectual property matters.To learn more or to initiate a search for an expert witness, contact us today.