Validity Expert Deposition Outline
(by Counsel for Accused Infringer)

Summary

This template is a validity expert outline for a deposition of a validity expert by counsel for an accused infringer in a patent infringement lawsuit. It contains practical guidance and drafting notes. Due to the technical nature of patent cases, technical experts are almost always retained by both sides to opine on infringement and validity. Depending on the size of the case, technologies involved, and cost considerations, parties can retain a single expert to opine on infringement and validity or separate experts to opine on each issue. If a single expert is used, the expert's deposition may address both their infringement and validity positions. This outline addresses only the validity opinion of the expert. There are several different goals when deposing a validity expert. You will want to examine the basis for the expert's opinions in detail including any underlying data and techniques used. This can provide opportunities to discredit the opinion and also provide grounds to file a Daubert motion. See Daubert Motion: Making the Motion Checklist (Federal). Patent trials often become a battle of dueling experts as each side produces an expert supporting their theory of the case. Accordingly, you will want to probe the depth and relevance of the expert's background and experience. These can be significant factors in determining which expert the jury and the judge find more credible. Finally, information gained at the deposition will provide the basis for your cross-examination of the expert at trial. You will need to not only tailor this outline to the specific circumstances of your deposition, but adjust your line of questioning during the deposition based on the expert witness's answers. To that end, in this outline, lines of questioning contained in sub-levels of a bulleted list should only be pursued if the response to the parent question renders them relevant or appropriate. Additionally, due to the dynamic nature of depositions, you will not be able to draft every question in advance. For topics which you cannot do so, it is often helpful to include a brief description of information you would like to elicit from the witness. You can then ask questions directed to that information during the deposition. Those descriptions appear in italics in this outline. For general information regarding depositions, see Deposition Resource Kit (Federal) and Depositions: Preparing for and Taking a Deposition (Federal). For general information regarding Experts, see Experts in Patent Litigation: Use of Experts During Litigation and Expert Discovery.