Jim’s unusual blend of courtroom experience, scholarship and advisory work on trade secret issues qualifies him to assist courts and juries with expert testimony relating to trade secrets and patents. Most frequently, Jim serves as a testifying expert on whether a company meets the requirement of “reasonable measures” taken to protect its trade secrets. He has also submitted opinions related to international intellectual property treaties and compliance with U.S. law. With his extensive experience as a trial lawyer, Jim is able to digest large amounts of background material efficiently, and his communication skills reflect his background as a professor and diplomat. His independent practice means that conflicts are unlikely and he is able to control his calendar to respond to cases requiring a quick response.

"Reasonable Efforts" in Expert Witness Testimony

In trade secret litigation, it is common for plaintiffs to engage expert witnesses to help prove that “reasonable efforts" were taken to protect trade secrets. A well-qualified expert can help the trier of fact appreciate what is and what is not "reasonable". However, only a few legal opinions report on how the element of "reasonable effort" is established or disproved through experts. To better understand the role of expert witnesses, Jim has published a white paper, "Addressing the "Reasonable Efforts" Requirement Through Expert Testimony", which is available for download below.

In a recent case, a court expressly confirmed Jim's expert witness testimony in determining whether reasonable measures were used to protect the plaintiff’s alleged trade secrets. In 2023, Jim was designated as an expert witness in a case pending in the Northern District of Texas in Dallas. The defendant had requested Jim to analyze the evidence and offer his opinions about whether the plaintiff had done enough, as a matter of business risk management, to protect its own information to satisfy the legal standard for proving a trade secret.

Obviously unhappy with Jim’s opinion, the plaintiff filed a motion to strike his expert report and testimony explaining his findings. In 2024, the judge in the case denied the motion, holding that Jim 1) did not offer legal opinions, but instead business judgments, 2) utilized reliable methods to inform his opinions, which were ( 3) based on sufficient facts and data, and 4) sufficiently disclosed to the court.

In the decision, the judge wrote that "[Jim] Pooley’s expert opinion, based on his experience, training, research, scholarship, and actual practice in the field of trade secret protection, reflects a reliable application of the principles and methods that he explains that he applied to the facts of the case". Memorandum Opinion and Order, BHI Energy I Power Services LLC v. KVP Holdings et al., No. 3:22-cv-1981-L-BN (N.D. Tex. Dallas Div., 2024)