The Role of The Expert Witness: A Panel Discussion
Thomas Chan, Rosemary Coates, Michael N. Gershowitz,
Lawrence W. Nagel, Kim Parnell, Joel Williams
Legal disputes include two kinds of witnesses. Fact witnesses provide testimony about that facts related to a case. An expert witness provides opinions based on their professional background and experiences. Many high tech IP disputes play out in the courtroom, and an expert witness with critical technical experience and deep insight can play a pivotal role in these disputes where millions of dollars are at stake. Composure under pressure and indisputable technical prowess are the orders of the day. A single misstep can be disastrous to an expert’s credibility, and the ability to continue being an expert witness.
A significant number of IEEE-CNSV members have extensive expert witness experience. This panel discussion will include seven CNSV members: six experienced experts and an IP attorney. They will discuss intermediate and advanced topics related to the role of the expert witness. This event will shed light on the depth of expert experience within CNSV, and will provide our membership and guests with a perspective about the role and duties of an expert. The evening may also include some horror stories about deposition and courtroom experiences. This event will also spearhead the rebirth of the IP Special Interest Group (IP SIG) within CNSV.
About the speaker, Jonathan Wells (moderator) of AJIS Consulting
Dr. Jonathan Wells is President of AJIS Consulting where he provides wireless technology consulting with a specialization in cellular technologies and standards. Jonathan also provides litigation support and expert witness services in these areas. He has over 30 years of experience in telecommunications networks and designing infrastructure equipment, holds PhD and MBA degrees, and is lead inventor on multiple patents. Jonathan has over 40 publications and conference presentations, is an IEEE Senior Member, has been a CNSV member since 2008, and was on the CNSV Board from 2013 to 2018.
Thomas Chan is a partner at Silicon Valley Patent Group. His practice includes prosecuting US and international patent applications, counseling technology licensing and transactions, drafting non-infringement and invalidity opinions, and supporting patent litigation. Prior to Silicon Valley Patent Group, Tom was a founding partner of a patent boutique, an Of Counsel with Morrison & Foerster LLP, and an associate with Pennie Edmonds LLP. Before entering the legal profession, Tom worked as an engineer and manager for 12 years at Apple and Microsoft.
Rosemary Coates is the President of Blue Silk Consulting, a global supply chain consultancy. She is also Executive Director of the Reshoring Institute, a 501(c)(3) Non-Profit. She is an Amazon.com Best Selling author with five books including 42 Rules for Sourcing and Manufacturing in China and Legal Blacksmith – How to Avoid and Defend Supply Chain Disputes. She has been a management consultant for 25 years and is an Expert Witness for cases involving global manufacturing. Ms. Coates earned an MBA from the Univ. of San Diego and a BS in Business from Arizona State Univ. She teaches Global Supply Chain Strategy at UC Berkeley.
Michael N. Gershowitz is a licensed Professional Engineer with over 35 years of design experience in the electronic industry. His expertise is in solid state lighting (LED technology), lighting controls, and smart building networks (IoT). Leveraging on his real-world experience and the knowledge gained from his twelve US patents, his consulting practice now nearly exclusively involves Expert Witness activities. Mr. Gershowitz has testified before the ITC, and has worked on cases before the High Court of Justice in the UK and in multiple US District Courts.
Laurence W. Nagel is an independent consultant with nearly 50 years of industry experience, and is an IEEE Fellow. Dr. Nagel earned his BS, MS, and PhD degrees at the Univ. of California, where he developed the SPICE circuit simulation program. SPICE went on to revolutionize electronic circuit design analysis, and is used throughout the industry to this day. Dr. Nagel has served as an expert witness in 23 patent litigation cases in US District Courts, 3 cases at the International Trade Commission, 6 trade secret misappropriation cases in Santa Clara County Superior Court, 1 criminal case in the US District Court of Northern California, and one class action lawsuit.
Dr. Parnell is an experienced expert, and has testified at both trial and deposition in patent, product liability, and consumer product disputes. Kim Parnell is very familiar with the unique issues associated with medical device patents and other IP applications. He has evaluated prior art, and has developed infringement, non-infringement, and invalidity contentions as well as rebuttal positions. He has authored numerous expert reports and IPR Declarations.
Joel Williams worked on his first expert witness case 25 years ago. He has experience in most aspects of the expert witness business. With only an Bachelors degree for a pedigree to impress jurors, he was able to parlay his industry experience and understanding of patents into a successful practice.
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