In this episode…

As both an expert witness, and an attorney who uses them, Professor Mark McKenna has a unique perspective into both. He recommends staying vigilant as an expert, to avoid crossing over from expert opinions to legal opinions. If you have suggestions that may aid in trial strategy, work with your attorney outside of court to incorporate them where appropriate.

Check out the full episode for our discussion on changing technology, international arbitration, and travel expenses.

Episode Transcript:

Note:   Transcript has been lightly edited for clarity

Host:   Noah Bolmer, Round Table Group

Guest: Mark McKenna, Professor at UCLA / Partner at Lex Lumina, LLP

Noah Bolmer: Welcome to Engaging Experts. I’m your host, Noah Bolmer, and I’m excited to welcome Professor Mark McKenna to the show. Professor McKenna is a professor of law at UCLA and a partner at Lex Lumens LLP, a full-service law firm. He’s a sought-after IP expert with numerous publications and holds a J.D. from the University of Virginia. Professor McKenna, thank you for joining me here today on Engaging Experts.

Mark McKenna: Thanks for having me.

Noah Bolmer: You’ve been an attorney for about twenty-five years and a professor for as long. How did you first get involved in expert witnessing?

Mark McKenna: Thank you. It’s my twenty-fifth reunion this year so the number catches me by surprise. I was a full-time practicing IP attorney in Chicago for three years when I got out of law school. I was lucky to have worked at a firm with some great, smart people who gave me a running start in terms of thinking about real expertise in a subject area. Then, I started teaching, and the answer is I got into expert witnessing because, at some point, people started calling me. I assume that’s true for many people. In my case, I have a particular subject area focus that I had always written in, and that was the origin of original expert witnessing. As I’ve gotten further into my career, done more practice of my own, and met more people, it has become a little more word of mouth.

Noah Bolmer: So, it’s not something that you were not actively seeking out.

Mark McKenna: No, the first time I got called, it was a former student of mine who was working at a firm, and they had a case that was an area that I was in, and it went from there. I never actively sought it out. I do like doing it when it’s a good fit and the right subject area for me. It’s a good sort of muscle to flex your brain a bit.

Noah Bolmer: In your practice as an attorney, have you utilized expert witnesses?

Mark McKenna: Yes, a number of times. In trademark cases, we work with survey experts a lot. We’ve worked with experts who have more marketing expertise. Experts in the trade channels where goods are sold. Sometimes, there are some good damage experts out there. I’ve used all of those and then obviously in other kinds of IP cases you have different experts. I was involved in a big design patent case where one of the questions was about the validity of the claim design patent. We worked with a person who used to be an automobile designer for a long time on how automobile designers go about designing new fenders.

Noah Bolmer: What’s it like being on the other end of that phone call?

Mark McKenna: Because I practice as a lawyer, I have the perspective of knowing what it’s like to be deposed. What it’s like to be in the witness chair, and what lawyers are looking for when they’re using experts. I find that helpful because I’m less surprised by lines of questions, and I have a better sense when I work with experts as a lawyer. What the concerns and considerations are that experts are bringing and how to ask them questions in ways that let them show their expertise and get you the answers you’re looking for.

Noah Bolmer: How do you cordon off the lawyer half of your brain when you’re acting as an expert witness? Obviously, you have your own ideas about trial strategy, trial teams, and everything else, but we’re all working for the neutral truth. As an expert, how do you interact with an attorney without crossing any of those boundaries?

Mark McKenna: It’s a question of the role. You must be conscious of the role and of staying in your lane. For me, a big part of that, to be honest, is having been a lawyer and using many experts. I never want to be in the position of an expert and being called out for having left my lane. I try to be conscious of the things  I feel capable of talking about that are within my area of expertise and are appropriate for the case. When I don’t feel I can do that, [I try] to be candid with the lawyers that these are the things I feel I could say in good faith, and these are the ones that I can’t. Then, if this trial strategy is helpful, then that’s a different kind of expert role. I’ve sometimes played consulting expert rather than testifying expert. I like that role, too. It’s a different one, and you must be clear about which one you’re in.

Noah Bolmer: Are there unique considerations vis-à-vis Daubert challenges or impeaching your expertise in general that come along with being a lawyer and an expert witness at the same time?

Mark McKenna: For me, I try to be conscious of making sure that when I’m acting as an expert, I’m not crossing the line and making a legal argument. That’s not the role of an expert, and because I do that the rest of my life, I think it’s the thing I that try to be conscious about and be sure I’m giving expert testimony on something other than what the legal argument is. There are some unique circumstances. I’ve been an expert in international arbitrations where actually the thing I’m hired to do is opine on the legal questions because that’s relevant, but when you’re doing it in federal court, then it’s a different role. For me, having both of those paths is the thing I try to be the most aware of.

Noah Bolmer: Arbitration and alternative dispute resolution are interesting topics. What are the differences between being an expert witness in a typical court matter versus arbitration?

Mark McKenna: That is the biggest one, which is that sometimes in arbitrations, you get hired to be an expert on the law, especially when it’s an international dispute. That’s different because my full-time job as a law professor in the international arbitration context is like treatise writing. You’re trying to do the best job you can to explain the legal principles in the case but not make the legal argument more being just like, best understanding of what the legal rules are and how they would apply in this circumstance. Usually in an ordinary litigation in federal court, that’s not the role of an expert. It’s what you do in legal briefs. What the expert is bringing is expertise that might be on questions. I’ve been an expert in a case where the question I was involved with was about fraud in the trademark office. I was asked to explain how file histories work at the trademark office and how the trademark office deals with those. You need somebody who has lots of experience with the legal system. I wasn’t making the argument about fraud but trying to explain the context in which some of these things were being presented. That’s the biggest difference. When I’ve done an arbitration writing or a declaration, there is no live testimony. There are no depositions. There are differences obviously in what’s entailed in doing it, and that was the big difference in state and federal court too.

Noah Bolmer: It’s a more streamlined process, for sure. Have you done a lot of international work or work in venues outside of your hometown?

Mark McKenna: I haven’t done a lot of them. I’ve been an expert in two or three international arbitrations, but I was an expert in a case that was filed in the United Kingdom. There was a trademark slash, what we would call the United States a “right of publicity”. It was a trademark case over there between someone who had created a fashion line and used her own name as the trademark and then sold that company, including its trademarks, to somebody else. Then the fashion designer, being a designer, wanted to continue being able to make other clothes and use her name. This conflict arose between the party that had acquired the company with her name and her acting as a designer. I’ve done that a bit where I can do that, I find it interesting to do international work because sometimes it gives you a nice exposure to the way things are or are not the same in different places. People who do a lot of international arbitration will often find themselves in that lane.

Noah Bolmer: Is the international arbitration situation similar to the U.K. legal system, as they tend to have court-appointed experts rather than party-appointed experts?

Mark McKenna: In the U.K. case, I was by party, but I do think you’re right that the U.K. system in general is a bit more skeptical of privately hired experts. It is more likely to do what you’re describing. In fact, in the trademark context in the U.K., they will be like, “There won’t be surveys on this case. There won’t be survey experts.” Some of that could be a cost question, but some of it is also questions about what party-driven expert witnessing means in a case.

Noah Bolmer: I recently wrote an article about Rule 706 style court-appointed experts. It’s not something that comes up often, but it’s something that can happen. It did remind me of the U.K. legal system in the way they do that.

Mark McKenna: Having done this for a long time, I now know a number of people who are federal judges, including friends and classmates of mine, and I think a lot could be gained in a lot the American context- at least the ones I know best, by having the court hire the expert and going that route. We might get less strategic expert witnessing that way, and I think we might get better information. The parties could both participate in interrogating that. I would love to see more of that, and you’re right that federal courts have the power to do it.

Noah Bolmer: Absolutely fascinating. Let’s talk a bit about preparation. When you are getting ready as an expert witness for cross-examination, what are the things you like to see an attorney do and ask an attorney? What do you like to do to prepare experts for a difficult cross-examination, depositions, or any tense situations in court?

Mark McKenna: To return to a question you asked a minute ago, for me, being a practicing lawyer is helpful in that respect because sometimes the tension that comes from that experience is unfamiliarity with what the litigation process is and where questions might be coming from. Because I’ve been the lawyer on that side, I get less surprised by that depending on what you’re after. It takes the temperature down for me. When I’m an expert, the thing I want from the lawyers who hire me is to make sure that I don’t get surprised by something. I want to be well prepared in terms of- seeing all the relevant documents. I don’t want you to characterize them to me. I want to read them and have a sense of where I’m saying something or making an inference versus like something else. That’s the biggest thing I want. I [don’t] want to be surprised in cross. Those are the times that are the hardest and most frustrating. If you know what’s coming and know these are the things that I think are the right answers, and also, I think these are the ones where I acknowledge that there’s the most uncertainty. If you’re prepared to do that much of what happens on cross-examination is theatre.

Noah Bolmer: As an expert witness, do you find it best for them to simply answer the questions? If there’s a problem or if they feel there’s any conflict in their head, let the attorney clean it up on cross, or should the experts be trying to inject a bit of this and that if they can kind of see where it’s going.

Mark McKenna: I think that’s a hard question to answer in the abstract because I’m going to say something lawyer-like, which is, that it depends.

Noah Bolmer: Sure.

Mark McKenna: As an expert, you should never be cornered into answering a question with yes or no when it’s not a yes or no question. Something that the lawyers often do is to try to twist what experts are doing by asking questions in a way that flattens out ambiguities or complexity. I know why they do that as a lawyer. Experts should not give in to treating questions as “yes” or “no” questions when they’re not “yes” or “no” questions. On the other hand, I think it’s usually a mistake for an expert to try too hard to advocate on behalf and to be seen like they’re fighting. It’s much more effective to try to be professorial about it and to say, “These are the things that are important to my opinion and that I believe.” And, “These are areas where it’s more complicated.” In those cases, sometimes fighting the “yes” or “no” can come across as being more argumentative than helpful.

Noah Bolmer: Let’s talk logistics for a moment. When you bring on an expert witness or when you are an expert witness, how do you manage your time? How do you make sure that when you give an estimate of what you expect in terms of time commitment, that is going to be accurate?

Mark McKenna: Part of the answer to this is experience. Fifteen years ago, I had a case where I was an expert, and the case went to trial unexpectedly. I had expected it would settle, and I remember I got a call from the lawyers two weeks before, and they said, “You need to come to New York for these two weeks.” I said, “Life doesn’t work like that. I’m in the middle of a semester teaching.” One thing that comes from my experience, especially since my regular job has an academic calendar, is trying to get a clear sense of what the trial schedule is. When does discovery happen, and does that match my life? I would say that when you do things as an expert that are fairly consistent, you get hired as an expert to do a certain kind of report over and over, then it’s much easier for me to anticipate how much time it’s going to take me to do that. Earlier in my career, I always underestimated. And the reports always took me longer to write than I thought they were going to take. You don’t want to give an estimate where it’s some gigantic number of hours, but on the other hand, you don’t want to do a sloppy job on something, and it always took me longer.

I have a much better handle on that and knowing how. There are certain other important things that are not in your control. I don’t know how many documents I’m going to have to read until I get a better sense of what the case is or what I’m being asked to do. Now, with electronic discovery, it’s much easier to get so many documents. Sometimes, there are cases where the fact that you can get them, I mean, there are a lot of them, right? It depends on what you’re being asked to do, but that part of it is always more of a guess because you just don’t know. Then, of course, the things you don’t know about are how long the other side think they’re going to depose you and on what topics. You get better at budgeting time. I’ve gotten a lot better at understanding how it fits into the rest of my life. You have to know that, like every litigator, there are things that happen in litigation that are not easy to predict.

Noah Bolmer:  You mentioned electronic discovery. In what ways has technology changed? You’ve been doing this for a hot minute. Now, a quarter of a century- makes it sound long. There are differences. We have telepresence, AI, and electronic discovery. What are some of the main differences between when you started and now? Are they for the better?

Mark McKenna: The most obvious thing to say about what’s different is that when I started as a young associate, the way you did discovery was I literally sat in a room with boxes of documents, read them, and hoped it was looking for. That’s not how it works now. The first cut at all this stuff is done electronically, and people are still reviewing and looking at it, but it’s all document management system, and that’s all- The volume of documents has gone up a lot, but the tools for trying to search continues to get better, and the lawyers doing it know what they’re doing. We should ask if it’s good or bad. The answer to that is a little bit of both. It’s like an explosion in the volume of documents. It probably makes cases more expensive and longer than they need to be, but the tools keep getting better at figuring out what you’re looking for. The old system, where an associate sits with a box of documents and hopes they don’t turn over privileged documents, depends on you having some confidence that you know who all the people are and where all the names you supposed to be looking for are. Now, you don’t need to do that because you can search the names and find them easily. The huge differences in the way that cases get presented in terms of courtroom technology and that kind of [thing]. That is also a mixed bag. It’s easier to use digital technology in the courtroom. It’s easier to turn information into the court, but as anybody who practices knows, the court systems are not great. Courtroom technologies vary enormously. Sometimes, it might be better to use a piece of paper. I could say the same thing about the classroom, but they have more technology. We’re living in a different world that way.

Noah Bolmer: That’s an interesting parallel between academia and obviously working in court. What are some of the things that you do as a professor that aid your performance in court, both as an attorney and as an expert witness?

Mark McKenna: Being a teacher helps me because I’m used to talking about complex topics with people who don’t know a lot about them yet. My students are smart kids. Most of them are not kids- but they’re smart, and they’re not starting at ground zero. I teach a first-year torts class. which is closer to ground zero. Everybody I have in any of my IP courses – trademarks, design law, copyright, or any of those, are students who have some amount of legal knowledge, but they don’t know the area. Being able to talk about legal concepts to people who aren’t experts is a skill of good advocacy. It’s often what you’re asked to do as an expert is to take the expertise that you have and translate it to a lay audience. At least, to a thoughtful judge who probably doesn’t get a million trademark cases, design patent cases, or copyright infringement cases. Teaching is what I do every day, so that’s a helpful exercise for me in thinking about it.

Noah Bolmer: Do you find demonstrative graphs, slide shows, videos models, etcetera to be useful?

Mark McKenna: Visuals are super helpful. Increasingly, as a teacher, I try to avoid using text in the classroom as much, but pictures are helpful to be able to put things next to each other and then to put things in timelines. Visuals are extremely helpful. Demonstratives can be useful and make what otherwise sounds abstract more concrete.

Noah Bolmer: Speaking of technology, let’s talk a little about court demeanor using telepresence. If you’re on a Zoom deposition, is it different, or is it difficult to present yourself the same way? Is it easier because you’re in your home base at your home with your kitty cat next to you as opposed to being in court? What do you think about Zoom, telepresence, and trying to perform as an expert witness on camera?

Mark McKenna: Again, a mixed bag. Obviously, efficient not having to travel and not having to spend the time and the money doing that. I never do that at home because I feel like I don’t want the distraction. I always do them from my office, where I feel it’s a more professional environment, but part of any communication in a courtroom is the connection with the people you’re talking to. It’s eye contact. Teaching helps a lot with this. In the era of COVID when we were teaching on Zoom, one of the things I found most difficult as a teacher was I had a harder time reading from the students whether what I was saying was landing for them. [Many] of them had their cameras off, and even if they didn’t, they would mute themselves, and it was like speaking into silence. It’s hard to know whether you’re getting the right level of abstraction or you’re saying things in ways when you don’t get that kind of cues that you normally get. On the other hand, when you’re being deposed or you’re testifying by Zoom, nothing else is going on. You’re answering questions and are focused. For some people, that can make it less anxiety producing.

Noah Bolmer: Let’s talk about billing and engagement letters. As both an attorney and an expert witness, what’s the push-pull between the two jobs in terms of getting a retainer, a project rate, or an hourly rate? Do you like to bill? As an attorney, do you typically prefer to have your own billing rubric that experts use, or are you okay with them using their own contracts?

Mark McKenna: Experts are widely varied in terms of that. It depends on what the experts are doing. I have found in general that survey experts usually have an hourly rate, but if they’re doing a survey that they’ve done before, they have a clear sense of what the survey will cost. They might give you a flat rate for doing the survey. Then, an hourly rate for deposition, trial work, and that kind of stuff. The first thing I’ll say is [when] I started doing the expert witness thing, one of my colleagues said to me, “A hundred percent of the time, get a retainer.” That is great advice because law firms generally don’t want to pay experts directly. They want the clients to do it, and so there’s a pass-through that happens, and that means sometimes your bill is not at the top of their list of things to get paid. As an expert, but even as a lawyer, the least pleasant aspect of it is having to chase payments.

Noah Bolmer: Right.

Mark McKenna: You never want to do that. I always get a retainer. What I like to do is apply the retainer to the final invoice, whatever that is. That makes sense. I’ve done it both hourly and project-based. I would never do a deposition or trial work project-based because I don’t have control over how long it takes.

Noah Bolmer: Sure.

Mark McKenna:  I’ve done reports on flat fee, where it’s a kind of report that I feel confident that I know how long it’ll take me to do it. It depends on the terms of your retainer letter. Are you being retained by the firm or by the client directly? What’s the payment structure going to be like? Most lawyers and I definitely as experts- Nobody wants to spend their time billing and collecting. It’s not why you do any of this.

Noah Bolmer: It’s the least fun part of the job. How do you handle travel expenses? Is that something that you get a reimbursement for, or is that something that you prefer to get prepaid for? Are you able to travel in business class? Tell me about your travel expenses.

Mark McKenna:  For the most part, I’d probably do it by reimbursement. If I’m going to be in a place for a while, I usually ask the firm or the company to pay directly for the hotel room or the flight. Most of the time, you’re flying for a few days, and I don’t mind doing that by reimbursement, but it matters how long they expect you to be there. People have different approaches. I wouldn’t bill a client for business class. I fly enough that I usually wind up getting upgraded, but I don’t think that’s an expense I would charge to a client. I’m sure there are people who are in high demand and are flying a lot. Anyone who flies a lot knows that the difference between being in row thirty-two and being in row eight can be a lot when you’re landing at midnight.

Noah Bolmer: Absolutely. Let’s talk about a couple of general topics. What makes for a positive expert attorney relationship? What are the key defining features that experts and attorneys should be looking for in a productive engagement?

Mark McKenna: The most basic but important things are clarity and communication. Having a clear sense of what the scope of the work is, what you feel confident and comfortable saying, and what you won’t. Then, lots of open communication about what’s happening in the case and thoughts about it. As a lawyer, the experts I like working with the best are the ones who are thoughtful about what they’re doing. There are experts in the world who are cookie-cutter, who will do a report for anyone who’ll pay them. These are the best experts, and they’re the ones that have the most credibility on the stand. They’re the ones that do the best job. I want an expert who wants to dig into what the questions you are asking [them] to opine on and can do that. What are the right answers on the stand? I want an expert who feels unambiguously like they’re giving an opinion they believe in on the stand, and who will say, as I’ve had experts do, “These are the two things I think are most important. I do think this other thing, but I agree that there’s more ambiguity about that.” I think those are the most effective experts, and they’re the most enjoyable to work with. I’ve had a lot of those experiences with some great experts. I always find them enjoyable, and usually, you learn something along the way, too. I am trying to be that expert when I’m an expert also. I try to be clear about where my expertise lies and where it doesn’t. What my role is in the case and what other information I need from the lawyers. That’s the most important thing, and I would also say that there’s a big range in terms of people’s clarity of communication on the stand and people who are effective are able to, in a calm way, walk through aspects of their opinion, hold in one direction by hostile lawyers, are able to maintain that and be clear, and know when it’s time to stop talking.

Noah Bolmer: On the flip side of that, have you had any negative experiences either with expert witnesses as an attorney or as an expert witness with bad attorneys?

Mark McKenna: I haven’t ever had an experience where I’ve had a negative experience with the lawyers who’ve hired me. I’ve certainly had bad experiences with opposing counsel for sure. I’ve had experiences with opposing counsel who think that the right way to deal with an expert is to be badgering and abusive, so those aren’t fun experiences. But I’ve had other experiences where I’ve been deposed by lawyers who I thought were smart, thoughtful, and asked good questions. They were doing a professional job for their client, and they were not misbehaving. I would say that as a lawyer, I have never worked with an expert whom I thought poorly of. In part, because I try hard to do my homework about the experts before we hire them. I have enough people in the world to know who to ask, “What do you know about this person?” People whom I trust. As a lawyer, I’ve seen experts engaged in a case who I think are doing expert witness mill work. They are not being thoughtful, and I find that disappointing. I feel like there are some great experts out there who are doing great work, but there are people who are maybe not as thorough as I wish they would be.

Noah Bolmer: One of my favorite questions to ask people is, do you have any pre-trial or pre-deposition routines or rituals? I’ve talked to a lot of people, and some of them like to drink a lot of coffee but have no breakfast. Some people like to meditate. [Others] like to listen to loud heavy metal music before deposition. Is there anything that gets you centered and ready to go for a potentially difficult deposition or cross-examination?

Mark McKenna: This is a life thing for me, it’s true for teaching, but I have to start the day in the gym. I need to do something physical because otherwise, I feel like I get up in the morning and spin things in my head. I need to get out and do something like go to the gym, go for a run, or something like that. I find that true all the time whenever I have a lot of stuff coming up. I worked with an expert who does a whole yoga routine before [going] in the courtroom as a way of centering. I’ve worked with others who, like you said, listen to kind of like hyped music. You have to do what works for you.

Noah Bolmer: Before we wrap up, do you have any last advice for expert witnesses or attorneys that are working with expert witnesses out there?

Mark McKenna: Not advice, but I would say that my most positive experiences as an expert or working with experts, and maybe this is because my full-time job as an academic is that I like experts who understand truth, for lack of a better way to say it. They’re trying to understand where their expertise can help the court make a decision that is the right one rather than approaching the whole thing as adversarial warfare. I’m trying to beat the other side. That disposition is one that I hope experts will bring because it’s the reason why expert evidence is supposed to be in trials at all. If it’s weaponized, then it’s laundering credentials to give what are essentially lawyer arguments. I hope that we can all do better on that.

Noah Bolmer: That’s crucial insight, Professor McKenna. Thank you for joining me.

Mark McKenna: Thanks for having me.

Noah Bolmer: And thank you to our listeners for joining us for another episode of Engaging Experts. Cheers.

Mark McKenna, Vice Dean of Faculty & Intellectual Life, UCLA and Partner at Lex Lumina, LLP

Our guest, Mark McKenna, is the Vice Dean of Faculty & Intellectual Life and at UCLA and a partner at Lex Lumina, LLP, a full-service law firm. He’s a sought-after IP expert with numerous publications and holds a JD from the University of Virginia.