Preparing the economist for deposition in an intellectual property case centers on the inputs the other side will say were chosen to reach a result: the royalty base and its apportionment, the licenses treated as comparable and the ones set aside, the conversion of lump sums into rates, the design-around or substitute the infringer could have adopted, the market and capacity behind a lost profits claim, and the start and end of the damages period. Because courts decide many of these disputes as questions of admissibility, the deposition also builds the record for a reliability challenge, so the economist should be able to tie every input to a document or to another expert's stated opinion.
Checklist
Confirm each royalty input, apportionment step, and sales figure ties to a produced document or an expert's stated opinion
Prepare the reasons each license was treated as comparable or set aside, and how each adjustment was made
Prepare the result under the opposing base, licenses, and alternatives
Review the technical and survey experts' reports the analysis relies on and the limits of each
Assemble the reliance file: licenses, sales and cost data, forecasts, workpapers, and the opposing report
Questions to ask the economist
How do your royalty base and rate together apportion the value to the patented feature, and what does the base still include?
How did you convert each lump-sum license into a rate, and what sales did you assume?
What does the result look like if the opposing expert's design-around is accepted?
Which of your inputs come from another expert, and what happens if that opinion is excluded?
Timeline
One to two preparation sessions in the two weeks before the deposition, after the report, the workpapers, and the opposing report are final.
Required documents
The final report, the workpapers, and the license comparability analysis
The licenses, the sales and cost data, and the forecasts relied on
The technical and survey experts' reports the analysis relies on
The opposing damages report and its workpapers
Common pitfalls
A rate drawn from licenses the economist cannot show are comparable in technology, rights, and circumstances
An apportionment that rests on an assumption rather than on the licenses, the infringer's documents, or survey evidence
Relying on another expert's opinion without knowing its limits, so the damages fall with it
What is the most common line of attack on an intellectual property damages expert?
The royalty base and the licenses. Opposing counsel asks whether the base reaches value the patent did not create, whether each license is comparable in technology, rights, and circumstances, and how a lump sum was turned into a per-unit rate. The expert's answer is a comparability analysis for each license and a sensitivity table that shows the result under the disputed choices.
How does the deposition bear on a later challenge to the testimony?
Courts decide many damages disputes in these cases as questions of whether the opinion rests on sufficient facts or data and on reliable methods reliably applied. Answers that tie each input to the record make that showing, while an answer that the expert assumed a rate or did not read a license can become the basis of a motion to exclude, so preparation goes through each input with the documents behind it.
Should the expert be ready to address the technical and survey experts' opinions?
Yes, at the level the damages depend on them. The economist should know which inputs come from the technical expert, such as whether a design-around was available, and which from the survey expert, such as the value buyers place on a feature, and should be able to show what the result is if either input changes.
References
EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025) (en banc). cafc.uscourts.gov
LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012). static.case.law