Some litigation matters hinge on highly specialized expertise, particularly when the core issue involves the inner workings of intellectual property licensing. In this case, a client firm sought IMS Legal Strategies’ support in identifying an expert who could clearly explain how IP licensing systems operate in real-world corporate environments.
The Case Challenge
To build their case, counsel needed to clarify industry-standard licensing practices and the expectations placed on companies that manage or acquire IP rights, including what licenses companies typically hold or pursue, what participants in the patent-licensing ecosystem generally understand and expect, and how licensing agreements are negotiated, drafted, valued, and sold.
Our client’s “ideal expert” profile was a legal professional or academic with deep, hands-on experience negotiating and drafting IP licenses. Experience buying and selling patent portfolios and trademarks was also critical, enabling the expert to speak to industry norms and explain how a reasonable company manages its intellectual property assets. This combination of practical, historical, and academic insight was essential to fully contextualize standard practices in IP portfolio management.
The Expert Solution
IMS researchers quickly leveraged our extensive internal database, industry networks, and online resources to locate experts who had served as in-house and external IP counsel, licensing executives, technology transfer officers, and law school faculty specializing in intellectual property. We identified eight qualified experts within 24 hours and sent our client a list of the top seven within 48 hours. Following a round of interviews with three experts, counsel successfully engaged the best candidate for their case.
The selected expert is a registered patent attorney with more than 25 years of experience in intellectual property law, specializing in patent prosecution, licensing, litigation, and appeals. He has prior expert witness and litigation experience involving patents and patent licensing, and he served as the head of the US patent and trademark department for one of the world's largest branded and generic pharmaceutical companies.
This expert was well-positioned to address the case’s central issues, and counsel gained the clarity and authoritative perspective required to navigate IP licensing questions driving the dispute.
The Outcome
This case was later settled.
The IMS Expert Witness Advantage: Targeted Searches, Quick Results
This matter illustrates how IMS's custom expert sourcing model delivers exceptional value in cases where highly technical subject matter demands both practical authority and courtroom credibility. By rapidly identifying and securing a registered patent attorney with decades of hands-on IP licensing experience, our client gained the authoritative perspective needed to contextualize complex industry practices and confidently advance their litigation strategy.
Rely on our team's ability to conduct targeted searches on demand, rigorously vet candidates, and coordinate seamless engagements across every sector and dispute type. This ensures clients receive the right expertise, exactly when it matters most.
