A seasoned litigator in patent disputes shares advice for engineers about how to testify-and how not to testify--in a deposition.
It’s harder to prepare if you are the designated witness for a topic. This kind of witness cannot say “I don’t know” or “I don’t remember” too many times, even if that is the truth, because the other party will complain that the company’s witness was unprepared and may ask the Court for a new designated witness.
So if you are chosen as the person most knowledgeable, you have to become knowledgeable. This may take days of reviewing documents and then more days with your company’s lawyers practicing answering questions. The preparation is not to memorize lines but to get in the habit of listening carefully to the question and then thinking about your answer before you start speaking.
It is not cheating or coaching to prepare, so do not feel like this is anything to hide. You can and should answer how much time you spent, whom you met with, where was the meeting and how many times did you meet. Take credit for your hard work!
Generally, questions from the opposing lawyers are designed to bring out what you would say on the witness stand. Other questions are to “lock in” your testimony so you cannot say something different at the trial. Some questions are seeking testimony to persuade the court to order additional discovery or to decide aspects of a case before trial. Some questions are just to try to identify possible other sources of information to explore.
Often, a lawyer will use terms from a patent claim in questions, hoping to get a nice clear statement that your accused product meets the claim’s requirements, or that an earlier patent discloses exactly what your patent claims as a new invention. These questions will sound like straightforward fact questions that you can answer with a yes or no, but the meaning of the words in the question may be hotly disputed between the parties and decide the outcome of the case.
You should be prepped so you know what claim terms are disputed. It is often a good idea to answer a question in your own words, even if you think the answer is yes.