In this fourth installment in the Calm Before the Storm series, we address the importance of selecting and retaining an expert in the first 30 days after the filing of a complaint. In doing so, respondents will be better positioned upon the Commission’s decision to start a Section 337 investigation.
Companies involved in litigation often wish to delay retaining an expert in the hope that fees for expert work can be minimized. In many district court proceedings, for example, the expert can be selected months or even years after the case begins. In contrast, selecting an expert during the month-long period after the ITC complaint is filed has the strong potential to affect the outcome of a Section 337 investigation. Of course, the well-prepared complainant in an ITC proceeding has likely already retained what it views as the best experts. Thus, the field may be narrowed somewhat when a named respondent begins an expert search. Unlike in district court proceedings, the ITC judge will set a procedural schedule soon after the Commission starts the investigation. Many ITC schedules require the disclosure of expert witnesses as early as two months after the investigation begins. Also, the ITC schedule will require the disclosure of prior art references relatively early in the investigation. Experts can often assist in directing searches for prior art references before the deadline by which prior art must be identified in the investigation, which is typically much shorter than that for district court proceedings. An expert can also be quite helpful in reviewing the references before they are disclosed. For these reasons alone, the expert should be retained as soon as possible after the ITC complaint is filed.
Another reason why the expert should be retained sooner rather than later in an ITC investigation: ITC judges have publicly stated that testimony from the experts is frequently more important than from any other witness. In ITC proceedings, a party presents most, if not all, of its evidence regarding validity, infringement, and the domestic industry requirement through expert testimony. Accordingly, an expert’s credibility and effectiveness can greatly influence the overall outcome of the dispute. Just as the Commission is required to resolve investigations “at the earliest practicable time,” a respondent should move promptly to identify, interview, and select the expert or experts it will use in the investigation. Having an expert who has spent sufficient time understanding the technical aspects of the dispute and who prepares his or her report (working with counsel) can determine whether a respondent wins the ITC case (or saves on shipping costs when its products are banned from the US market).
In addition to paying close attention to the expert candidate’s technical credentials and litigation experience, one should thoroughly consider the importance of the expert’s demeanor and presentation abilities. Evaluate how the candidate writes and speaks – is she or he able to articulate complex technical ideas and distill them down into digestible and coherent explanations that can be easily grasped by the decision makers at the ITC, namely the judge and Commissioners? At every stage of the selection process ask yourself, is this person an independent thinker who will prepare his or her own reports versus merely editing and signing documents prepared by counsel? Can she respond to tough questions under pressure and defend her position without appearing too rigid or inflexible? Credibility is critical; as noted, ITC judges are experienced in weighing competing experts and rely heavily on the experts’ testimony in deciding key issues.
Beginning work with an expert early in an ITC investigation will maximize a party’s chances of building a solid evidentiary record and presenting its best, most accurate points to the ITC judge deciding the issues in the investigation.