From IT expert to case winner

Instructing an expert to help in litigation is the easy part. Turning them into a case winner is an altogether more complicated affair.

In intellectual property litigation, the role of the expert in computer disputes is critical to the outcome.

The scenario is familiar. An employee leaves a company to set up alone or join a rival. Within a short period the new company is marketing software similar to that which the employee helped to design for his previous employer, which sues for copyright infringement.

It is not the similar functions of the new system which will be the issue. The case will usually turn on whether there is any similarity in the source code of the two systems, which will often require a painstaking comparison, and whether any similarities have been copied or could be the result of independent design. Enter the expert.

For the instructing solicitor there are a number of factors to bear in mind when instructing a computer expert in cases of copyright infringement.

First there is a need to identify the right expert. This may be the most important decision taken in the case, perhaps even more important than the choice of counsel. It is not simply a question of examining the expert's CV – their case history needs careful scrutiny.

The solicitor should ascertain whether the expert has had experience of giving evidence and has been cross-examined and, if so, how he or she performed. Transcripts of previous cases are usually available.

The judge will usually comment on the quality of expert evidence and in some instances (most notably in IBCOS Computers v Barclays Mercantile Highland & ors (1994)) the expert may be on the receiving end of severe criticism.

It is no good having an expert who writes a plausible report supporting the client's case, but who then falls apart under cross-examination. An incompetent or untruthful expert will lose a case as easily as a good barrister can win it.

Conversely, any expert who has proved able to stand up to cross-examination and whose performance had an impact on the court should be included on the shortlist.

Solicitors should examine the relevance of the expert's experience.

Have they been involved in similar cases before? If they are experienced in operational disputes (such as system crashes or response time problems) or computer security, computer fraud and the protection of data, they may not be the right person to prove copyright disputes, regardless of their performance under cross-examination.

Having identified the appropriate expert, the next step is to prepare adequate instructions. This should not be limited to just sending the expert a bundle of pleadings and a large amount of technical documents produced on discovery.

The expert should liaise closely with the client's technical expert, ideally the program designer, to understand the relevant factual issues.

The expert should also be involved in developing the strategy to win the case and if necessary should attend conferences with counsel.

The next stage is critical. The solicitor must carefully administer the materials sent to each party's expert. The expert may be instructed at an early stage, prior to any order for exchange of expert reports or at the stage of exchange.

The solicitor must prepare a list of all materials given to the expert which must be kept in a safe place when work has been completed.

It is essential that the other side's expert is sent the same version of the program and source code and the same technical documents.

The receipt of materials by each expert should preferably be independently verified to prevent any dispute which could lead to solicitors being cross-examined about the materials distributed to experts, the number of copies retained and so on.

The same points also apply to inspection of the other side's materials. Draft reports should be considered by solicitors, counsel and the client before being finalised and served.

After the reports have been prepared and exchanged, the experts will need to prepare supplementary reports on other expert's findings, and will invariably meet to see if there are any factual issues which can be agreed to narrow down the technical issues in dispute.

Finally, the expert should be made aware of all relevant issues and brought up-to-date with any last minute discovery. Hopefully, they will then be ready to win the case for you and simultaneously frustrate the counsel of the other party.