What happens if a business develops and commercialises a software system that functions the same as yours, and imitates the copyrighted disclosures of your patented software? How can you prove that their software doesn’t simply use the same systems other similar software uses?
Brooks Hilliard CMC® CCP, President of Business Automation Associates, Inc., a computer system specialist firm, has the answers. Here Brooks talks to Lawyer Monthly about his expert witness role in this field, the challenges faced by Courts, the various types of cases he in instructed on, and gives insight into the changes that have shaped this expert witness role through the years.
In cases pertaining troubled software implementations, what is commonly involved in your role and how lengthy and complex can the investigation process become?
My cases are approximately evenly split between those where I am engaged by counsel for the provider of the software or services, and those where I am engaged by counsel for the customer. Sometimes I get engaged early in the process by counsel for the prospective plaintiff (which could be either the customer or the provider) and am asked to investigate the merits of the potential claim, but the engagement more often begins after the suit has been filed.
Most of these projects include discussions with the litigant’s key personnel and the review of thousands of documents, including contracts, pre- and post-contract representations by both parties, e-mails, specifications and deposition transcripts.
The complexity depends on the length of the implementation process, the number and type of discrete software modules involved, the amount of customization required and/or committed to and whether fraud is alleged, among other factors. Cases of this type settle more often than they go to court, but the settlement often does not occur until after expert reports are submitted and the experts on both sides are deposed.
My efforts would typically last from several months to a year, but some cases take several years before they settle or go to trial. However, the effort is uneven, with peaks at the beginning when I am gathering data and during the time when I’m preparing my expert report.
What kind of cases do you get involved in?
The most common are Intellectual Property cases. I’ve been involved in several copyright cases where alongside the issues I often deal with, I needed to determine whether the defendant’s actions involved commonly known practices that were consistent with normal industry customs, or whether it would not be possible to do what it did without using the disclosures in the copyrighted materials. The trade secret matters are often similar except for the lack of a copyright.
My patent engagements have typically involved software or hardware functionality for business applications such as order processing, manufacturing control, scheduling and the like. Of course, several recent US Supreme Court decisions have been changing the ground rules for software-related cases.
What other types of cases do you get involved in?
One other major area for me is software licensing and systems contracting. I’ve done more than 200 consulting projects over the past 30 years that involved the acquisition of business software and systems, most of which included working with my clients’ attorneys to assist in negotiating the contracts; so I know what these contracts customarily cover.
In addition to the defined terms that usually appear in these contracts, most of the ones that go to litigation also have critical computer industry terms of art that are undefined and would not have an obvious meaning to the finder of fact. My role in these cases is not to interpret the contract, but rather to explain the meaning of these terms of art, and how this meaning relates to the dispute, so that the Court or the jury can interpret the contract and reach a decision.
I also do some electronic discovery engagements, the most interesting of which are the ones where one party alleges that the other one has tampered with the electronic documents.
In the 30+ years you have been practising, what would you say have been the milestones of change within this expert witness role?
The biggest change has been the advent and evolution of the Daubert process, which has had the positive effect of making sure that experts are qualified to reach opinions in the areas they are testifying about.
In the US the role of the expert is still almost exclusively one with duelling experts, each one engaged by the attorneys for the opposing parties. But I have also worked in disputes where I was engaged by both opposing parties jointly, and others where the opposing parties’ experts worked together to provide a joint report, with an attempt to agree on as much as possible with dissents summarizing areas of difference. I look forward to having more engagements like this in the future.
