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Articles Table of Contents
A version of this article first appeared in Intellectual Property Today.
Comprehensive Witness Preparation:
Crucial for IP Cases
by Amy Singer, Ph.D.
Editor's Note: There are numerous IP attorneys who have carved out sterling reputations for themselves as wily trial strategists, spell-binding courtroom orators, cross-examination bulldogs, and astute selectors (or more precisely de-selectors) of jurors. But how many litigators have became professionally renowned due to their witness preparation skills? It is difficult if not impossible to think of experts in this unheralded area of trial planning and preparation. Yet few pre-trial activities are as vital to courtroom success as that of witness preparation. This is particularly true in the IP area where judges and/or juries expect the expert witness to fully and adequately explain the often highly technical case to them. Failure on the part of the expert witness to do so in a compelling and convincing manner can blow the IP practitioner's case out of the water and sink it like a stone.
It is crucial therefore that the attorney devote sufficient time to help the witness: 1) adequately prepare for his or her testimony during direct examination; 2) plan the best way to handle all exhibits and other demonstrative evidence; and 3) explore the best way to deal with problems that may arise during cross-examination. In the first article of this two-part series, Dr. Amy Singer, trial consultant and witness preparation expert, discusses why comprehensive witness preparation is critical to achieve a successful verdict in an IP jury trial; along with reasons this key area of trial planning seldom gets the attention it deserves.
Mark Twain once said a country without a patent office is like a crab that can only travel sideways and backways. Of course Twain, America's most beloved humorist, was employing his own trademark sarcasm to be funny. The official registry of patents, trademarks and other intellectual property with the PTO is vital to the economic well-being of the nation - true in Twain's buggy-whip times; infinitely more so in our own sparkling and shiny new high-tech era.
Along this line there are now over 22,000 attorneys and agents with licenses to practice before the PTO. One would think this formidable army of IP practitioners - all locked and loaded and ready for bear - would act as a strong deterrent regarding patent, trademark, and other IP infringements. Nevertheless, the theft of IP rights in the US cost hundreds of billions of dollars annually. Restitution often can be achieved only in court. And in the courtroom the witness is king - as evidence, a large majority of IP cases ultimately are decided on the basis of expert witness testimony. Indeed, the typical IP trial is often described as a battle of expert witnesses.
Commercial cases can be exceedingly convoluted, confusing, and technical. This is particularly true in IP litigation where nearly every minute aspect of the case often requires technical experts to provide careful translation and explanation. Expert witnesses in complex patent cases sometimes are even required to assist judges in determining the applicable law; an unthinkable occurrence on the part of witnesses in other areas of litigation. The fact is the testimony of expert witnesses in IP trials normally carries more weight than does the testimony of such witnesses in nearly any other type of courtroom dispute. IP practitioners are singularly dependent upon expert witness testimony to achieve a favorable verdict.
In this regard a simple rule often applies to many IP cases: you win when your expert is deemed more credible than the other side's; you lose when he or she isn't. It is peculiar, therefore, that witness preparation often gets short shrift from some IP practitioners, as it does with numerous litigators in other practice areas.
Importance of witness testimony (and witness preparation)
When tightly contested commercial cases don't settle and instead go to jury trial, witness testimony and demeanor - from which witness credibility derives - often prove to be key deciding factors regarding who wins and who loses. The lawyer may conduct the case brilliantly for days, weeks, even months. Then, without warning, one bad witness can make the otherwise exemplary case explode like a rotten egg! It could be the witness's confusing, contradictory, or pedantic testimony, his or her clear (thus questionable) nervousness, a damaging but unnecessary admission, inflexible rigidity or an argumentative manner during cross-examination, even the witness's own disagreeable personality. Whatever it is, this one false note often ends up to be the primary negative factor upon which the jurors decide the case - the key trial element they all remember.
One colleague, Arnold B. Silverman, chairperson of the IP group at Eckert Seamans Cherin & Mellott in Pittsburgh, relates how an expert technical witness for the opposition damaged his own side's case. "The witness was the technical expert representing the defendant in a mechanical engineering device infringement case we were handling," Mr. Silverman relates. "We got the expert to admit during cross that he had favorably altered the mechanical device, which was being used by him in court as a physical exhibit. We showed him photographs of the object prior to alteration and forced him to acknowledge that a key element had been removed from the device. After that he lost all credibility with the jury. They simply didn't believe anything he said from that point on. This proved to be a major reason why the other side eventually lost the case.
"This was a clear situation where the witness was obviously not properly prepared by opposing counsel," Mr. Silverman explains. "If he were, the expert never would have altered the mechanical device to be used as primary evidence during trial; nor would he have focused his testimony on the altered exhibit. An essential rule when testifying in court is to provide truthful testimony. But this is one rule the witness apparently never was taught."
Today, more than ever, effective witness preparation is critical to a successful trial conclusion. This is due in no small measure to the bias that now exists in our society concerning lawyers. Attorneys are widely regarded as hired mouthpieces who will do or say anything to help their clients win in court. These strong anti-lawyer feelings carry directly over to the courtroom where jurors have a tendency to subconsciously tune out lawyer oratory. Automatically distrustful and wary of lawyers, jurors often ignore them but listen carefully to what the witnesses have to say.
Witness preparation often gets short-changed
Despite its importance witness preparation seldom gets the attention it deserves. There are various reasons why this is so. Let's take a look at some of the most common.
Control - The key psychological imperative for most lawyers is their overriding need to be in complete and total control of every minute aspect of their cases. But witnesses, like all human beings, are not always subject to control and direction. This is true not only for lay witnesses but also for company technical employees who testify in court as expert witnesses during IP cases. Attorneys know from bitter experience that witnesses, both lay and expert, may end up saying almost anything during deposition and/or trial. For the lawyer, the typical witness can often seem like a dangerous grenade with the pin pulled out, ready to explode. Is it any wonder that many attorneys therefore unconsciously attempt to avoid witness preparation until the last minute, despite the potential dangerous consequences of such evasion?
Grand design - It is the IP attorney who plans, builds, and presents the case, a complex, difficult, and laborious construction. Often, he or she subconsciously doesn't want the pesky client/witness interfering with the grand design. As a result it is easy for the attorney to keep putting witness preparation off to the last minute.
Difficult pinning down experts - IP attorneys often experience the same amount of stress scheduling meetings with, and itineraries for, their expert witnesses as they do conducting the actual trial. Expert witnesses almost always are exceptionally busy professionals booked tightly for months to come. And even though the expert witness is compensated to plan and coordinate his or her testimony with the attorney for deposition and trial, the witness's emotional commitment to the litigation dispute seldom matches that of the lawyer. As a result some expert witnesses will try to downplay the need for comprehensive preparation sessions.
This may create problems because an adequate witness preparation program can represent a substantial amount of time for the participants. A useful rule of thumb regarding witness preparation: three hours of preparation time are required for every hour of deposition or testimony. But too many experts will attempt to convince the attorney that this type of testimony rehearsal is overkill. "Don't worry," the expert will say, "I've handled this type of testimony many times before. It'll be a walk in the park." IP attorneys who give in to this type of coercive reasoning often learn to deeply regret doing so at trial time.
CEOs and other corporate powerhouses can be troublesome to work with - In addition to expert witnesses, CEOs and other senior executives often must provide testimony as witnesses in commercial trials, including IP disputes. As absolute rulers of their own corporate kingdoms and fiefdoms, CEOs and other senior executives are accustomed to setting their own agendas and priorities. As a result attorneys often are unable to convince these busy executives to commit the time necessary to properly prepare for their testimony in court. "I'll be fine," the busy executive will bark at the attorney while running out the door to the next meeting. Maybe he or she will; maybe not. But the outcome of high-stake IP litigation disputes should not come down to this type of roll-the-dice, hit-or-miss scenario.
Another problem: corporate powerhouses seldom permit themselves to be second-guessed, particularly regarding how they communicate with others. Such constructive advice is however an essential component of the witness preparation process. Because of this negative dynamic, some CEOs and other senior executives often exhibit a tendency to "shut down" psychologically during witness preparation, unconsciously filtering out or ignoring useful advice. For these and similar reasons preparing CEOs and top corporate executives for courtroom testimony can be a wrenching experience for attorneys, and something easily put off until later.
Witness preparation often relegated to junior associates - By their actions, many attorneys seem to regard witness preparation as almost a relatively minor sideline to the main trial planning and preparation effort. In many cases, for example, junior associates, even paralegals, are assigned primary responsibility for witness fact-gathering; and sometimes even regarding witness preparation for deposition and/or courtroom testimony. Why is it a surprise that the delegation of these key tasks to assistants often leads to trouble at trial time?
The problem with down-playing witness preparation
When it comes to witness preparation, failure by the lawyer to step up to the plate and take a full swing at the ball can have disastrous consequences later. If witness preparation is not handled adroitly, numerous problems can develop during deposition or trial - "skeletons in the closet" that no one learns about during witness preparation, but surface like stink bombs later;  overt nervousness on the part of a witness during testimony, thus tending to damage his or her credibility; the propensity of a witness to reveal too much during cross-examination, or to get tripped up during cross and offer contradictory testimony; and many others.
Failing to devote the proper attention to witness preparation is like snoozing on top of a volcano. IP attorneys may assume (translation: hope) that their lay and expert witnesses - for the most part competent managers and technical professionals - will do OK in court. But the only way to completely ensure this is through a satisfactory program of witness preparation. Otherwise something entirely unexpected may occur to upset the witness's testimony during deposition and/or trial - and whammo! - the case is suddenly up for grabs.
Witnesses - the great untapped resource
No one knows the widget featured in a patent case better than its sometimes crusty inventor. Doesn't it make sense therefore to spend the maximum time available with the client/witness to learn as much useful information for the trial as possible? Attorneys should remember that a lawsuit is often the biggest and most important event in their clients' lives. This is just as true for a patent or copyright holder in an infringement case as it is for a plaintiff in a products liability or medical malpractice action. Due to his or her exceptional focus regarding the litigation issue(s) in dispute, it is not uncommon for the client to intuitively understand the strategic problems of the case, along with their solutions. And although the client wants (indeed, needs) to reveal this highly personalized knowledge, the attorney is many times too busy to probe in a perceptive and resourceful manner in order to pick up this valuable information.
Along this line witness preparation sessions can provide the ideal format for the client to open up and share his or her special insights, technical and otherwise, regarding the case with the attorney.
Psychologically forewarned is forearmed
The trial attorney cannot magically change national (or juror) attitudes regarding hostility towards lawyers. Nor can the lawyer alter the psychology of senior corporate executives to make them more agreeable concerning witness preparations. But with a little introspection the lawyer can deal with his or her own possible psychological avoidance to adequately address the issue of witness preparations in a comprehensive and timely fashion. Remember: enthusiasm is contagious. The attorney who exhibits a spirited attitude toward this key trial preparation phase is more likely to engage (and excite) the witness; and thus secure the witness's cooperation to devote the time necessary to adequately prepare for his or her testimony during deposition and/or trial.
In the second article of this two-part series, to be published in the _____________ edition of Intellectual Property Today, Dr. Singer will discuss numerous worthwhile, but sometimes overlooked, activities that can help the witness most effectively prepare for deposition and/or trial. These include jury simulations and jury focus groups - what Dr. Singer terms the most reliable evaluators of witness performance.
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Amy Singer, Ph.D., trial consultant, is a nationally recognized authority in the field of litigation psychology, and an expert regarding the psychology of jurors and juries and the dynamics of a jury's deliberations and decision-making processes. Dr. Singer is the founder and president of Trial Consultants Inc. (jury research and trial preparation), Litigation Consultants Inc. (a litigation think tank) and the Institute for Settlement Sciences Inc. (settlement intelligence services), all headquartered in Fort Lauderdale, Florida. Telephone: (954) 370-1973. E-Mail: JuryDoctor@aol.com.
 Paraphrased. Despite this, Twain (real name: Samuel Langhorne Clemens) was the proud holder of two patents with the PTO: a self-pasting scrapbook and a suspenders improvement. A recent Dilbert cartoon exemplifies the often incredibly complex (and confusing) testimony provided by expert witnesses in commercial cases. Pointy-haired boss: "Dilbert, I'd like you to testify in the lawsuit against our company. Tell the truth but do it in your usual engineering way so that no one understands you." Dilbert: "Actually, I've decided to be a whistle-blower." Boss: "Whatever. It'll all sound the same." One colleague, Jo-Ellan Dimitrius of Los Angeles, recently reported on new litigation research findings which indicate that jurors are more willing to consider a witness credible if he or she speaks in a vigorous and energetic manner while providing testimony during court. This problem is sometimes typified in IP cases by the expert witness who comes across as a haughty and egotistical know-it-all. Jurors love to put this type of witness in his or her place with a negative verdict. Thousands of anti-lawyer jokes provide ample proof regarding the antipathy many Americans feel towards attorneys. This phenomenon takes place across the board in the legal world. The number one complaint registered by legal clients with the Florida Bar: "My lawyer never has enough time to see me." Just like trial attorneys! What accounts for this mindset on the part of senior executives? Many mistakenly assume they will be shown the same deference in court that they are paid within their own offices. They are often quickly disabused of this notion during cross-examination by aggressive attorneys who go after them like wild dogs after red meat. Without knowing it, some corporate executives can often seem arrogant on the witness stand. If this problem exists, it is vital that it be discovered and eliminated during witness preparation sessions. Jurors will often try during deliberations to cut off at the knees any witnesses they deem excessively overbearing and arrogant. A good example: previous opinions rendered by the expert (or articles written) that run directly counter to his or her opinion regarding the current IP case. Be advised however that the seeming perfect witness is often the one who inexplicably folds like a cheap accordion when taking the stand. Or in our modern-day argot: "geeky." Of course, with the advent of all the new Internet and other high-tech millionaires, being called "geeky" is now considered almost a compliment. Along this line a billboard for Mind Spring Internet Services uses the advertising slogan, "Geeks in Shining Armor." Ample witness fact-gathering is crucial to effective witness preparations. It is impossible to have the latter without the former. Research indicates that many clients dream about their cases!