By George Edwards
The importance of software patents has increased dramatically in recent years. The high profile patent disputes between Apple, Google, and other smartphone companies have attracted the most attention in the press, but patent battles are being waged all across the software industry. As a computer scientist who has been retained as an expert in software patent disputes, I have seen firsthand how attorneys go about selecting experts to provide technical consulting and testimony in these cases. And unfortunately, most of them are going about it the wrong way. In this article, I explain why, and what the right way to select software experts is.
Two Distinct Expert Tasks
Successfully arguing that an accused software product does (or does not) infringe a particular patent requires two distinct tasks to be performed by experts: code analysis and expert testimony. First, the accused products, which are computer programs, must be analyzed to determine exactly which portions of the computer code implement the patented invention. Second, a persuasive argument, based on the evidence produced by the analysis, that the patent is (or is not) being infringed must be made in expert reports, depositions, and trial testimony.
The two tasks mentioned above seem so intrinsically linked that the obvious decision is to hire a single expert to perform both tasks. Attorneys reason that an expert should be someone who will impress a jury and intimidate the opposition, such as a senior technology professional with an established reputation in the field or a university professor with an extensive publication record in the relevant technology. Attorneys then assume that whoever is selected to prepare the expert report and testify must also personally perform the code analysis.
However, a stronger case can be built – and money saved – by […]