USA Law and Practice Contributed by: Jim Hurst, Jeanna Wacker, Sam Kwon and Ashley Ross, Kirkland & Ellis
function claims (Elcommerce.com, Inc v SAP AG, 745 F.3d 490, 506 (Fed Cir 2014)). In the US, parties retain their own experts. Courts do not typically appoint experts. It is typical for each party to retain multiple experts across sev - eral disciplines in life sciences cases to address infringement and validity issues. FRCP 26(a)(2) governs the disclosure require - ments for expert testimony in advance of trial, including requirements for written reports. Opposing counsel may take an expert’s deposi - tion and conduct oral cross-examination at trial. Expert testimony can be significant in decision- making, especially in Hatch-Waxman cases where a judge – rather than a jury – decides the case. As such, experts are expected to be impartial and may be disqualified for having con - flicts of interest. 1.13 Use of Experiments In the US, experimental results from testing conducted by experts may be used to assess infringement and validity issues. Experts can conduct experiments to test whether the accused products embody the patented compo - sitions or whether design-arounds are possible to avoid infringement. It is also fairly common for experts from each side to engage in a battle of experimental protocols. Experts who conduct such experiments and wish to present the results as evidence must provide a written report that contains: • a complete statement of all opinions the wit - ness will express and the basis and reasons for the opinions; • the facts or data considered by the witness in forming these opinions; • any exhibits that will be used;
• the witness’ qualifications; • a list of all other cases in which the witness testified as an expert in the previous four years; and • a statement of the compensation to be paid for the study and testimony (FRCP 26(a)(2) (B)). 1.14 Discovery/Disclosure In the US, the scope of discovery is generally wide. Parties may obtain discovery for any non- privileged matter that is relevant to any party’s claim or defence and is proportional to the needs of the case, taking into consideration: • the importance of the issues at stake; • the amount in controversy; • the parties’ access to relevant information; • the parties’ resources; • the importance of the discovery in resolving the issues; and • whether the burden or expense of the pro - posed discovery outweighs its likely benefits (FRCP 26(b)(1)). There are several discovery tools that may be used – for example, requests for production of documents under FRCP 34 can be used to obtain documents or electronically stored infor - mation such as lab notebooks, emails, or data compilations. Document discovery is not lim - ited by the type of document, but by the level of responsiveness to the discovery demand as supported by FRCP 26. Parties may rely on interrogatories (FRCP 33) and requests for admission (FRCP 36), as well as individual and corporate fact witness depo - sitions, in order to obtain discovery. Opposing parties may also take a testifying expert’s depo - sition pursuant to FRCP 26(b)(4)(A).
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