Many top trial lawyers believe that patent lawsuits are won or lost in depositions, many of them given by engineers. But in my experience witnesses are understandably nervous because the process is unfamiliar and unnatural.
Witnesses often fear that they will be tricked or slip up and say something that results in their company losing a lot of money or even being enjoined from selling the very product they spent so much time developing. It’s true that testifying is hard work, but it also can be interesting and successful if you spend some time demystifying the experience.
If you are chosen as a witness, you probably will be asked to search for relevant documents and your business emails will be searched. Months may go by before a meeting with your company’s lawyers to prepare for the deposition.
In most patent cases, the patentee wants an inventor to be the witness who tells the jury about the problem solved by the invention, the creative thinking and hard work that went into the invention–and perhaps even how the company learned of the defendant’s accused products or processes. The company accused of infringement, likewise, needs a likeable, articulate technical witness to testify about the independent work that went into the development of its own product.
Your deposition testimony should not be inconsistent with what you will say on the witness stand at the trial. If you worked on a project a long time ago, however, and you don’t remember a lot, it is better to admit that you do not remember something than to guess about it or try to reconstruct your previous knowledge from your old emails and notebooks.
It’s human nature to try to answer a question even if you don’t really know the answer. Practice to avoid that tendency.–Elizabeth Rader is a Silicon Valley based attorney in the intellectual property litigation group of Alston & Bird LLP.
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