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The Role of an Expert Witness in an Infringement Investigation
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When infringement is suspected, a patent holder typically wants to be reasonably sure that infringement has actually occurred before going to the trouble and expense of filing a lawsuit. This is tricky because the only "evidence" at this point is publicly available marketing literature, press releases, websites, product literature, patents, technical journal articles and perhaps some hardware or software that is available for purchase. After a lawsuit is filed, the parties enter a "discovery" period during which private, internal documents such as product design specifications, schematics and source code can be reviewed.
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So what can an expert witness do to help? First of all, the expert is supposed to know the current state of the art - how things are typically done. The expert reviews the patents that the client believes are being infringed and determines how those patents fit in with the current state of the art. For example, are they fundamental patents or are they relevant only to niche applications. Next, assuming we are not in the discovery period, the expert uses all available public information to determine what the supposed violator is actually doing in their part.
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Technical journal articles and patents written by the suspected violator are good first stops for the investigation. In addition, all marketing literature is reviewed. The goal is to determine if there is a way that the part can do what it does without violating the client's patent. If so, and literature supports that the supposed violator is using the alternative method, you can save your client a lot of time and money by pointing out this fact sooner rather than later.
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Even if the literature from a supposed violator points in one direction, they may actually be using something else in their part. This is where theinvestigation gets more difficult and costs more in time and equipment. For example, suppose that the patent covers an IC chip. Perhaps some of the behaviors that the patent covers can be observed on external pins of the chip. However, if the spec is not available publicly, how do you know which pin to check? This is where engineering intuition and experimentationtake over. The chip is probably only available in a finished product, so the expert must deduce which pins to probe by noting the external connections to the chip. Obviously this takes much trial and error testing, and some chips may be damaged due to unintentional short-circuiting.
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If sufficient confidence is built through the above steps, the lawsuit may be filed. As mentioned above, during discovery the private internal documents, such as specs and schematics, may be requested. This starts a new level of investigation for the expert. Note that discovery typically goes both ways. The accused will request your client's specs and schematics so they can defend themselves by showing what they are doing differently.
As an expert witness, your notes are also typically fair game for discovery. Make sure whatever you write down serves properly to jog your memory about key points. But since your conclusions can change throughout an investigation, as more facts are uncovered, many expert witnesses advise keeping conclusions in your head and communicating them verbally to the client's attorney. The attorney's notes are typically not "discoverable."
Finally, the expert may be called upon to be a witness in a legal proceeding. This may simply be a written or oral deposition. Or it may involve being on the witness stand. Tell the truth. But here is the challenging part: Tell the truth in a way that the hard technical details are understandable. What may be obvious to a seasoned industry professional with a couple of triple integrals or a few sentences filled with buzzwords may go completely over the judge and jury's heads.
When preparing your remarks, challenge yourself to pretend you are giving the presentation to a senior high school class. See how all of your preconceived notions about the audience's background melt away? This can help you focus on clearly communicating the most relevant findings.
This calls to mind a chilling fact. The engineers for the space shuttle Challenger, on the night before the tragic explosion, tried to have the launch stopped because the shuttle would blow up due to O-ring failure. They could not properly communicate their reasoning to the launch committee, and lives were lost. When it comes to data, remember that it is not only you say, but also how you say it. Visit our Recommended Books page for help on this front from the 4 books by Edward Tufte.
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AND REMEMBER: Don't take our word for it! Seek competent professional legal advice.
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