“Power nailer design” might not seem to be a sexy area of intellectual property litigation and expert testimony, but the Federal Circuit in Kyocera Senco Industrial Tools, Inc. v. ITC, has reinforced the shop-worn adage that experts cannot win a case, only lose a case.
In this case, the expert was deemed not to have “ordinary skill in the art” based on the distinction between the “design and manufacture of fastener driving tools” and the “design of power nailers.” To those uninitiated in power tool design, this may seem like a trivial distinction, but it was a distinction that cost Kyocera its appeal.
But with all due respect for age-old legal wisdom, the misconception that experts can “only lose a case” is borne out from a lack of forward-thinking. Too often, the subtleties of technical expertise combined with the last-minute approach to finding experts create avoidable problems. The solution lies in changing traditional thinking on how best to think strategically about experts.
The law firm’s conventional process of hiring experts is often frantic and time-consuming. The focus on rate rather than cost, the complexity of managing multiple experts, and the often narrow, technical aspect of the claims are challenges to the harried associate handed the task. The default approach is to find the least expensive, Veg-a-Matic (“it slices, dices, and makes julienne fries”) expert and move on to other challenges. But then we get the Kyocera result as an example of why this approach is risky.
A best practice to hiring experts requires a new mindset and the strategic use of experts to test the strengths and weaknesses of the legal approach and look for both opportunities and threats presented by opposing expert testimony.
The most effective strategy would be to hire the right expert at a point early enough to aid the legal team in winning the case. This means:
- Working with non-discoverable experts as early as possible to discuss the technical issues presented to integrate the legal and technical arguments in the case fully.
- Wargaming approaches to identify opportunities and threats against proposed legal and technical approaches as well as the possible technical approaches of the opposing party.
- Securing specific technical expertise among your experts and then managing reports and testimony to “speak in one voice.”
Experts are partners in service of your client, not simply hired guns. We see this especially in cases that cross technical areas. For example, automotive is no longer simply about exhaust systems and engines but encompasses wireless communications, cutting-edge software, rechargeable batteries, lidar, and much more. Wireless technologies factor into just about any new product or platform. Suitably addressing the breadth of technical issues often requires understanding the equivalent of “power nailers” rather than “fastener driving tools” in multiple disciplines.
Of course, given the stakes, it also makes sense to engage a partner whose business it is to think strategically and ensure that your experts help you win. It’s best to work with a partner who not only understands the difference between “power nailers” and “fastener driving tools” but has deep experience in both and an understanding of similar nuances within other disciplines. With the right expert service, attorneys can focus on the legal strategy comfortably in the knowledge that their experts are there to help them win.
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