By Sherry Karabin
Say the words "expert witness" and many people envision a medical examiner or psychiatrist testifying in court, but in reality experts get used to explain all kinds of topics and not just by giving medical testimony.
In the case of the legal arena, lawyers and law professors serve as consultants to strengthen cases before trial and as experts to do reports, give depositions and provide testimony if a case goes to trial.
What happens when lawyers take on these roles?
It turns out many enjoy it, so much so that they devote a portion of their practice to being experts — while others choose to do so only occasionally.
Chicago Lawyerspoke to lawyers, professors and judges to see how these practices developed and what it takes to become a credible expert.
Expert witness practices
George Gerstman, a partner at Seyfarth Shaw, has served as an expert witness for many years by weighing in on patent cases.
"I'm often called in because I'm a former United States patent examiner," Gerstman said. "Some of the cases have involved billion-dollar lawsuits and big name clients."
Although the amount of time he devotes to this work fluctuated over the years, he now devotes about 70 percent of his practice to acting as an expert witness.
"The first thing I always do is make sure that the case will not cause a conflict of interest in the firm," Gerstman said. "I'm typically retained by the lawyers handling the case or an attorney at the company involved in the suit."
He said he would not take on a case he does not believe in and the cases often require learning a lot of technical material.
Gerstman begins by preparing an expert report. Once he completes it, he usually gets deposed. And, if the case does not settle, he testifies.
"I think litigators make the best expert witnesses because they are used to asking questions and they know how to avoid being tricked by the other side," Gerstman said.
David A. Bronner, a corporate law partner at Ungaretti & Harris, began developing an expert witness practice about four years.
David A. Bronner, a corporate law partner at Ungaretti & Harris, began developing an expert witness practice about four years ago.
Photos by Ben Speckmann.
"I was a co-editor of the American Bar Association's 'Model Stock Purchase Agreement with Commentary,' which has become a primary source for mergers and acquisition attorneys," Bronner said. "As a result, I began speaking at various ABA events and I was approached by a partner at a major New York City law firm to be an expert witness in the Genesco v. Finish Line case. After that, other opportunities started coming my way."
Bronner said he usually gets called in to help with corporate contractual term interpretations and legal malpractice cases.
"I have been involved in some very high-profile cases and I really love it," he said.
"In my regular corporate practice, I am a 'deal' lawyer and represent buyers and sellers, so I'm always in the middle of a deal. But, being an expert witness after the fact, I get to look back at a set of facts and determine what was done right and wrong and what something means in light of actions already taken.
"It's also litigation which makes it interesting because I am not involved in litigation regularly in my corporate practice."
The job of the expert witness can be challenging since the person must remain independent while focusing on influencing the strategic approach to a case, Bronner said.
"I think a good expert must have a thorough understanding of the law and customary practices," he said. "The expert must also be able to withstand cross-examination and must have a demeanor that is found affable by the judge, arbitrator or jury and yet authoritative and direct in approach.
"The content must be communicated in a succinct manner and the expert cannot be perceived as a biased advocate for the party that hires him or her. You must be able to acknowledge points adverse to the party that engaged you, but still be supportive of the positions that you are making."
He devotes 30 percent of his practice to the assignments.
"I don't think there are that many lawyers who do this regularly because there are barriers to entry," he said. "To be an expert, you need some credentials that distinguish you from other attorneys. I think what litigators like about me is that I am still in the trenches daily."
Nixon Peabody intellectual property litigator Mark Halligan said he first began taking on cases as an expert on trade secrets in the mid-1990s.
"Most of my work has involved counseling attorneys handling cases on trade secret law," Halligan said. "I have given depositions in cases, executed declarations and testified as an expert in a bench trial regarding the activities of an employee preparing to compete against a former employer while still employed by the company.
"The main difference between being a retained expert as opposed to being the attorney in a case is that attorney-client privilege does not apply, so anything I learn as an expert is not privileged information."
While Halligan said he remained quite busy in the late 1990s and into the early part of the 21st century, he no longer receives as many requests.
"This is due to a number of factors, including the fact that the Internet was not a readily available resource on trade secrets law. Now, it is possible for an attorney to educate himself via the Internet and the urgency of retaining an 'expert' in trade secrets law has dissipated," Halligan said.
"The other reason is that many judges do not allow testimony on the existence or misappropriation of trade secrets because such testimony will invade the province of the jury.
"The 1993 U.S. Supreme Court decision in Daubert imposed a new standard for determining whether expert testimony can be heard in federal cases, making judges the gatekeepers over this decision and further reducing the testimony of experts in many types of cases.
"As a result, my role as a 'consulting' expert has increased, but requests to be a 'testifying' expert are very rare. This is not the case, however, in patent and legal malpractice cases."
Patent litigator Roy Hofer of Brinks Hofer Gilson & Lione said he received plenty of cases to choose from when he decided to become an expert witness.
"I started taking on cases about 19 years ago," Hofer said. "Before that I was practicing full time and I would not take on assignments because I considered myself a trial lawyer and I did not want to get a reputation for being an expert witness.
"As I started to wind down my trial practice, I did start accepting experting assignments, but I was very selective. I would not take on the mundane or usual patent infringement cases."
He focused on malpractice cases, where the intellectual property attorney was accused of mishandling the litigation.
"As a result, my opportunities were limited and my experting only accounted for 10 to 15 percent of my practice," Hofer said.
"The assignments were challenging and it was like being back in law school."
He testified at a number of depositions, as well as in one case that went to trial, where he spent three to four days on the witness stand.
"I would say that it is easier to be the one asking the questions than the one answering them," he said.
Hofer stopped taking on expert witness assignments in which he would need to testify about three years ago,but he said those who do should make sure they believe in the case and work hard.
"You have to know what you are talking about and have your wits about you," he said. "Otherwise the other side will rip you to shreds."
Dabbling in the area
Husch Blackwell partner A. Sidney Katz, who serves as managing partner of the firm's Chicago office and chairman of its national intellectual property group, said he has served as an expert in patent infringement cases about a dozen times.
"I don't think I've ever solicited the jobs, but I have had trial attorneys ask me if I would be an expert for them," Katz said.
"Sometimes the cases have lasted a long time, and I've been called on to give depositions and testify on various aspects of patent procedures since I am a former examiner in the U.S. Patent Office."
While he enjoys it, Katz also sees disadvantages.
"From the financial standpoint of the firm, the work is impossible to leverage since I am usually the only attorney involved that can bill," he said.
"There is also the risk that the position you take as an expert might make it difficult to represent a client in the future if it is contrary to that client's interest."
Neal Block, international taxation senior counsel at Baker & McKenzie, got his first call to testify at an arbitration proceeding involving a domestic international sales corporation about 10 years ago.
"The question was whether British Postal Notes could be owned by a DISC Corporation as an asset without disqualifying the DISC," Block said.
"I would say it was successful and I did enjoy doing it."
He also gets brought in by partners at his firm to serve as an expert on export incentives in the Internal Revenue Code.
"Using our specialists as experts in a proceeding is not unusual as we are an international firm. When we have a case involving a foreign country's laws, we may bring in one of our foreign-trained attorneys to explain points of foreign law," Block said.
Robert A. Clifford of Clifford Law Offices said he uses expert witnesses every day to prove cases, but only occasionally takes on the role himself.
"I have served as an expert in cases where personal-injury attorneys are charged with malpractice or as an expert for insurance companies suing over some aspect of a personal-injury case," Clifford said.
He said it helps him to crystallize what he needs from an expert.
"The best expert witnesses are always fully prepared and know the factual file in intimate detail," Clifford said. "An expert can be the world's best in their substantive technical area, but if he or she does not know the file, then they'll fail as witnesses and lose the case for the client and lawyer."
Professors as experts
IIT Chicago-Kent College of Law commercial and bankruptcy law professor Steven Harris said he served as an expert witness about a dozen times, including one in which he testified before a jury.
"Testifying is an interesting mix," Harris said. "On the one hand, you have to be careful and accurate and on the other you have to communicate in language that is not too technical so the jury can understand you."
The bulk of his engagements came from lawyer referrals, former students or because of something he published.
"Most often they are consultations giving advice on strategies and legal arguments for litigation along with requests for assistance on how to properly structure a transaction," Harris said.
Mark D. Rosen, a constitutional law professor at IIT Chicago-Kent, said he wrote numerous expert affidavits on issues ranging from who can run in a local election to whether the state can impose obligations on a telecommunications company.
"My affidavits make me deposable, but I have never been deposed or asked to testify," Rosen said. "I have testified as an expert before Congress to opine as to whether a bill was constitutional. It is not unusual for me to be retained to provide under-the-radar advice or to help a lawyer draft and determine what the strongest arguments may be in a case.
"I find the work to be very interesting because I get to practically apply ideas that I teach theoretically."
Although law schools don't teach lawyers to become expert witnesses, some offer courses designed fully or in part to prepare them to use experts in their cases.
At The John Marshall Law School, retired judge and adjunct professor Gil Grossi teaches an expert witness course this summer.
"The course covers a broad spectrum of issues, including deciding when to bring in an expert, the discovery rules that apply, expert depositions, along with preparing witnesses to testify," Grossi said.
He said students who choose to become expert witnesses later on could apply what he teaches in the class.
"Experts must be totally familiar with the applicable legal standard or theory involved in the case and must practice being deposed and testifying before they get to the courtroom," Grossi said.
Chief U.S. District Judge James F. Holderman also teaches at several law schools, including The John Marshall Law School and the University of Illinois College of Law. He said his intellectual property trial advocacy course can, in part, prepare students and young lawyers to present expert witnesses in court proceedings.
Over the years, he said he saw a number of attorney expert witnesses testify in his court, mainly in connection with legal malpractice cases.
"What I look at is whether the expert has accurately evaluated the facts in the case, whether the opinion given is sufficiently based on the evaluation of those facts and whether the expert is applying the principles in the specific area of law reliably in the particular case," Holderman said.