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

How an Engineer Ends Up in
Court: The Role of the Expert
Witness
Laurence W. Nagel
Omega Enterprises
Randolph, NJ
3/25/2004
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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
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