3/25/2004 1

How an Engineer Ends Up in Court: The Role of the Expert

Witness

Laurence W. Nagel

Omega Enterprises

Randolph, NJ

3/25/2004 2

My Background

• Graduated from University of California, Berkeley in 1975 where my research was developing SPICE

• Worked at Bell Laboratories for 20 years in the areas of Analog Integrated Circuit Simulation, Semiconductor Device Modeling, and Analog Integrated Circuit Design

• Worked at Anadigics for 3 years in the area of RF Circuit Simulation and GaAs device modeling

• Started Omega Enterprises in 1998 to provide consulting services in the fields of Analog Integrated Circuit Design, Semiconductor Device Modeling, and Expert Witness support of patent litigation cases

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Intellectual Property: The Grist of the High Technology Mill

• Intellectual Property is a fancy phrase that means knowledge

• In the IC industry, examples are new IC technologies, new devices, new IC designs, new methods of performing IC design, or new methods of manufacturing ICs

• Any high tech company lives and dies by its Intellectual Property

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Protecting Intellectual Property

• Because of its vital importance, companies carefully protect their intellectual property

• Intellectual property can be protected by patents, copyrights and trademarks, or as trade secrets

• When a company suspects that its intellectual property has been violated, its recourse is the judicial system (lawsuit!)

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Patents

• The inventor makes his or her invention publicly available so that everybody has access to the invention

• The inventor, or his or her assignee, is granted exclusive rights to the invention for 20 years after the date of application

• After 20 years, anyone may use the patent; the invention enters the public domain

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Patents

• The patent cannot contain technical errors and must completely explain the invention such that anyone skilled in the art could reproduce the invention

• The invention cannot be obvious to anyone skilled in the art

• Prior art, whether known or not, can invalidate a patent

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More About Patents

• The legally important portion of the patent are the claims at the end of the patent

• Claims may either be means or device– Means claims deal with a method or technique

for performing some new task– Device claims deal with a particular device for

performing some new task

• In general, means claims are more powerful

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Even More About Patents

• The fact that a patent has been been issued by the Patent and Trademark Office (PTO) has nothing to do with whether the patent is valid

• At most, the PTO has checked the prior art that the inventor referenced in the patent

• The validity of the patent is established when the patent is disputed in a court of law

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Examples of Famous Patents

• Reactive Ion Etching (Bell Labs)– Device claims brought a license fee for each

etch machine sold– Means claims brought a license fee for each

wafer etched!

• Karmarkar’s Algorithm (Bell Labs)

• Pop-top soda can lid (a convict in the pen)

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Copyrights

• Used for printed material, songs, and software that is in the public domain

• Everyone has access to the copyrighted material

• The owner of the copyright has control over how the material may be used or licensed

• Eventually, the material is public domain

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Examples of Copyrights

• Almost any book you’ve ever read

• Almost any song you’ve ever listened to

• Almost any Broadway show you’ve ever seen

• Almost any public domain software you’ve ever downloaded (including SPICE)

• The content of most web pages you’ve visited

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Trade Secrets

• Any person or company may elect to hold certain information or knowledge proprietary and declare it a trade secret

• That person or company must make a diligent effort to protect the trade secret

• The claimed trade secret cannot be obvious to a person skilled in the art

• There is no time limit on trade secrets

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Examples of Trade Secrets

• The source code for almost all proprietary software

• Many algorithms that are considered too proprietary to patent (or disclose)

• The recipe for Coca Cola (Classic, of course)

• The Colonel’s recipe for KFC

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Intellectual Property Disputes

• Intellectual property misappropriation cases are settled in the judicial system

• Lawyers for the plaintiff establish the case for the plaintiff

• Lawyers for the defendant prepare the case for the defendant

• The case is heard either by a judge or a jury unless the parties settle out of court

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Perspective on Lawyers

“The first thing we do, let’s kill all the lawyers”

William Shakespeare, “King Henry VI, Part II”

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The Expert Witness Conundrum

• Claims of misappropriation of intellectual property are settled in the judicial system

• High technology intellectual property has reached the level of sophistication that is very difficult for a judge or jury to understand

• The Expert Witness is the mechanism for making high tech understandable

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The Role of the Expert Witness

• The Expert Witness is hired by one party in the dispute

• The Expert Witness cannot begin to work on the case until the other side has had a chance to discredit his or her credentials

• Once approved, the Expert Witness has the same access to materials as the lawyers

• Usually, each side will have several experts

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The Role of the Expert Witness

• The first job is to establish the technical merits of the case and educate the lawyers on the side of the expert

• The second job is to write declaration(s) and give deposition(s) to educate the lawyers on the other side as well as the judge

• The final job is to testify in court to educate the judge or jurors (unless the case settles)

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The Expert Witness in Patent Litigation (Defendant)

• Understand the patents in dispute

• Understand the products that are alleged to infringe

• Search for “prior art”

• Identify portions of the patent that are vague, obvious, or incorrect from a technical view

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The Expert Witness in Patent Litigation (Plaintiff)

• Understand the patents that are being asserted

• Identify the products that are using the patents being asserted

• Be prepared to dispute any claims of prior art that may not be “known to anyone skilled in the art”

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The Expert Witness in Trade Secret Cases (Defendant)

• Understand the trade secrets that are being asserted

• Understand the products that are asserted to utilize the asserted trade secrets

• Search the literature for prior art that invalidates or renders obvious the alleged trade secrets

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The Expert Witness in Trade Secret Cases (Plaintiff)

• Determine which trade secrets will be asserted

• Understand the products that utilize the trade secrets that will be asserted

• Search for prior art that may invalidate or render obvious the trade secrets that will be asserted

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Conclusions

• Don’t shoot the experts --- they perform a valuable job

• Don’t kill the lawyers --- in this age, we cannot live without them