Insights
Publications

Employee and Inventor Witnesses in Patent Trials: The Blurry Line Between Expert and Lay Testimony

4/24/2013 Articles

Published in the Stanford Technology Law Review
Volume 16, Number 2 Winter 2013

Parties in patent infringement lawsuits frequently must choose a witness to explain complex or scientific technology behind an invention or an accused product that sits at the heart of a claim or a defense. Often, the parties select an employee witness such as an engineer, scientist, or a named inventor of the patent-in-suit who can testify based on first-hand experience with the technology in question rather than a hired expert, who must prepare an expert report and who may not share the same incentives and goals as the litigant. Because these employee witnesses testify regarding technical or scientific issues, but they do so from first-hand knowledge, courts have struggled over whether such witnesses must be designated as experts under the Federal Rules of Evidence. This has created a growing conflict among courts over how far a lay witness may go in testifying about technical and scientific matters before crossing the boundary into expert testimony. This Article addresses these conflicting cases and proposes an approach that courts can use to determine which topics in patent cases are appropriate matters only for expert witnesses and which topics may be addressed by highly skilled and knowledgeable lay witnesses.

Resources

Firm Highlights

Publication

How Antitrust and Unfair Competition Laws Affect Platform Providers’ Relationships With ISVs, API Developers, and Scrapers

A wide variety of business and consumer platforms host mutually beneficial ecosystems. But these ecosystems are also fraught with antitrust risk that arises when platforms try to terminate or modify the terms of third-party...

Read More
News

Benchmark Litigation 2021 Ranks Farella Among Top Litigation Firms in California

SAN FRANCISCO, October 12, 2020: Farella Braun + Martel continues to be ranked among the top litigation firms in California in the  Benchmark Litigation  2021 guide. Farella was ranked “Highly Recommended” for Dispute Resolution...

Read More
Publication

Artificial Intelligence Can’t Patent Inventions: So What?

The USPTO’s  recent landmark decision  ( 16/524,350 ) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an...

Read More
News

3 Things To Know After Busy WDTX Patent Judge's 1st Trial

Eugene Mar spoke to Law360 about the  MV3 Partners LLC v. Roku Inc.  case in the article, " 3 Things To Know After Busy WDTX Patent Judge's 1st Trial." In the article, Eugene said he's...

Read More
News

Farella Braun + Martel Elevates Five to Partner

Read More
News

Farella Braun Files Amicus Brief in Support of Humanitarian Organizations in Ninth Circuit Appeal of WhatsApp v. NSO

SAN FRANCISCO, December 23, 2020: Northern California legal powerhouse Farella Braun + Martel today submitted an amicus brief in support of civil society organizations in the NSO Group v. WhatsApp appeal pending before the...

Read More
News

Farella Braun + Martel Ranked Among “Best Law Firms” by U.S. News & World Report and Best Lawyers

SAN FRANCISCO, November 5, 2020: Farella Braun + Martel earned national and regional rankings across a number of practice areas in the U.S. News & World Report and Best Lawyers® release of the “Best...

Read More
Publication

Insights Into the First Patent Trial in Waco, Texas - MV3 Partners v. Roku

A 7-person jury in Waco, Texas, recently returned its verdict in the first patent trial held before Judge Albright: defense verdict, no finding of infringement. In the MV3 Partners v. Roku dispute, MV3 Partners...

Read More
Publication

Breaking up the Patent Monopoly for the Benefit of Batteries

The patent monopoly is at odds with the global need for battery storage technology. As the world mobilizes towards climate change solutions, companies with battery patents will face increasing pressure to share this critical...

Read More
Publication

Three Steps Licensees Can Take to Protect Their IP Rights in Bankruptcy

During periods of widespread economic disruption such as the present, operating businesses must be able to identify and respond to threats to the financial health of their contracting counterparts in order to protect key...

Read More