Don Rickert Design

Defending Against Patent Trolls

Relates to a service of the Rickert Expert Group: Patent Litigation Expert Services, a division of Wiederholt & Rickert Partners, LLC.

Patent trolls, a common term for non-practicing entities (NPEs), are shell companies that do not design, manufacture or distribute products. Rather, their sole purpose is to acquire and license patents to businesses. The Patent Troll business may be morally wrong (it is!), but it is legal, and it is a growing industry, with annual growth of nearly 100%. Last year alone, NPEs extorted over $30 billion from technology companies.

NPEs start up by targeting smaller companies with nuisance suits, offering manageable settlements amounting to 10s of thousands of dollars. Startup companies almost always settle. Eventually, the Patent Trolls build up a war chest, allowing them to try their hands with bigger fish, offering sizable settlement terms that are still quite a bit lower than the cost of defense. What happens? More often than not, the big companies settle as well. These settlements are “get lost” money (the polite term).

NPEs tend to like the path of least resistance, so companies that earn a reputation as easy targets will be sued repeatedly. Companies that fight back hard earn a reputation for being dangerous targets. The first time an NPE runs up against a company willing to spend as much as necessary for a strong defense, it is a rude awakening. I have been a Testifying Expert Witness for a Defendant with a “NO SETTLEMENT” policy, and learned quite a lot about patent troll tactics, and, more importantly, about their weaknesses, and there are many!

I will not reveal too much information about how to wage a war (that you win) against a patent troll (NPEs and their ethically-challenged experts might read this), but I will provide a few nuggets:

• Make them spend a lot of money (they REALLY hate that!)
• Exploit the fact that the patent troll is usually not well-versed in his own Patent Prosecution History
• “Take out” the troll’s expert witnesses (Trolls usually hire Expert Witnesses with impressive “win” records, but lack expertise specific to the case)…remember, this is a war!
• Hire a Testifying Expert Witness who can stand up to the inevitable counter-attack in response to  disqualification of one or more of the troll’s Expert Witnesses.

 There is a lot more. If you are up against an NPE, let’s talk.

 

Related articles

Patent Troll Panel at Yale Law School

Is a patent troll watching your business now?

The Patent Troll Tragedy

The Rise of Patent Litigation in America: 1980 - 2012

Infographic: US Patent Trolls

Infringement Analysis: Its Importance in Patent Litigation

Relates to a service of the Rickert Expert Group: Patent Litigation Expert Services, a division of Wiederholt & Rickert Partners, LLC.

Bottom Line Summary: Hire a Non-Testifying Consulting Expert at the very beginning to carry out an Infringement Analysis.

A comprehensive Infringement Analysis is a necessary, but a surprisingly glossed-over activity for BOTH Plaintiffs and Defendants (for different reasons). Plaintiffs, especially Non-Practicing Entities or NPEs (aka "Patent Trolls", shell companies that do not design, manufacture or distribute products. Rather, their  sole purpose is to acquire and license patents or sue companies with "deep pockets" for infringement) often sue before establishing that there really is infringement. Why? Because many companies will settle in order to make them go away!

Plaintiffs

Counsel for the Plaintiff (legitimate or an NPE) is legally obligated to ensure that an accusation of patent infringement is well-founded BEFORE accusing a Defendant of infringement. There can be serious sanctions against both the Plaintiff (monetary) and Plaintiff’s Counsel (professional) if it is later shown that appropriate due diligence was not taken. Dr. Rickert will, and has, worked for legitimate Plaintiffs.

Examples:

• Software

In the case of a software patent, the Plaintiff’s Counsel must establish that some or all software code used by the Defendant in a software product is either functionally or literally identical to software for which the Plaintiff holds a patent. In the best case scenario, analysis of the accused software will have embedded comments with the names of software engineers employed by the plaintiff (note: it is a common quality control best practice for Software Engineers to enter their names and other information as comments in the software source code when he or she makes a revision during software development).

Attorneys do not usually possess the necessary technical skills to perform the type of analysis described above. Counsel for the Plaintiff is best-advised to hire an actual expert in the reverse-engineering of software code.

• Physical Devices

Say, the accusing patent is for an electro-mechanical switching mechanism for use in mobile devices (e.g. smart phones). A suspected infringer makes mobile devices that, from the outside, look just like an embodiment of the accusing patent. You had better check to make sure! Due diligence requires that you have a bona fide expert physically inspect the internal structures of the accused devices before you claim infringement.

Consulting Experts hired to investigate infringement for a potential Plaintiff are, ipso facto, Non-Testifying, as prior to filing a complaint, there is not yet a case!

Defendants

Note: This section refers to Testifying Expert Witness and Non-Testifying Consulting Experts. For a discussion of the legal distinction between these two roles, see The Testifying Expert Witness in Patent Infringement Lawsuits.

Once an entity, usually a corporation, is accused of patent infringement, this entity becomes a Defendant.

One of the biggest mistakes made by a Defendant’s Counsel is to wait too long to commission a proper infringement analysis. In the worst case (the most common) scenario, a Testifying Expert Witness will be in the dangerous situation of having to deal with the matter of infringement; specifically, is there infringement or not?

Every experienced IP Litigator with significant experience working for Defendants knows:

1. It often not in the least bit clear whether there is infringement or not. This is especially true when the Plaintiff is suing based on the Doctrine of Equivalents.
2. A non-infringement defense can be very risky, especially if a defense based on Patent Prosecution History Estoppel is being considered.

Note: There is so much current activity (i.e. chaos) in the highest U.S. Courts with respect to both the Doctrine of Equivalents and Patent Prosecution History Estoppel that appeal to either is a risky business!

No matter what, an experienced bona fide non-testifying consulting expert in the relevant field of art is invaluable in analyzing the accusing claims, the patent specification and the Patent Prosecution History, enabling the expert to give an informed opinion to Counsel with respect to the probability of infringement and whether or not the Plaintiff sufficiently and CLEARLY (e.g. to a Jury) limited the scope of the accusing claims in order to obtain the patent in order for Patent Prosecution History Estopple to make sense.

If a Testifying Expert Witness discovers actual possible infringement, this knowledge is not only discoverable, but the Testifying Expert Witness is legally and ethically-bound to opine on the matter in the Rule 26 Expert Report. It is far better for a Non-Testifying Consulting Expert to discover any actual infringement early on. His or her findings will not be discoverable, at least not initially. Counsel can simply concede infringement and move on. Neither Counsel nor the Testifying Expert Witness will needlessly waste time on a non-infringement defense. Focus can appropriately shift to an Invalidity defense. An accusing patent can be judged invalid either due to "anticipation" (covered by U.S.C. Title 35 § 102) or "obviousness" (covered by  U.S.C. Title 35 § 103). Both anticipation and obviousness have to do with the novelty of an invention. The difference between the two is subtle and beyond the scope of this article. Refer to the U.S. Patent Code (U.S.C. Title 35).

If a Non-Testifying Consulting Expert is fortunate enough to establish a strong argument for non-infringement early on, Counsel may choose to mount a non-infringement defense. Furthermore, Counsel will be in a position to attempt to discover whether the Plaintiff or Plaintiff’s Counsel actually inspected the accused device(s) prior to charging the Defendant with patent infringement. This is fairly easy to accomplish in deposition of the Plaintiff. Motions for punitive actions against the Plaintiff and Counsel could then be lodged.

In cases where a Non-Testifying Consulting Expert discovers no infringement, he or she can be “converted” to a very powerful Testifying Expert Witness. This assumes, of course, that the Consulting Expert possesses the other attributes of a great Testifying Expert, such as:

• Excellent personal and professional reputation
• Unquestionable expertise in the relevant field of art 
• Not averse to having the personal details of his or her life and career openly discussed in a courtroom
• Coolness and grace under pressure
• Highly-skilled at deflecting opposing Counsel’s attempts to raise question about his or credibility
• Powerful and authoritative, but also professional, polite and calm, demeanor
• Highly-developed skill in avoiding undue hesitation, making statements that could be construed as contradictory and so forth
• Highly-developed skill at foiling opposing Counsel’s attempts to extract incomplete answers to “Yes or No” questions

Document and Media Recovery: Sometimes a Case Depends on It

Relates to a service of the Rickert Expert Group: Patent Litigation Expert Services, a division of Wiederholt & Rickert Partners, LLC.

It has been pointed out by technology experts for decades, that one of the problems of the "Information Age" is that continual improvement in data storage makes it very difficult to retrieve information stored on obsolete media. Furthermore, digital media storage technology simply wears out rather quickly. For instance, the magnetic tape on which many videos are stored, looses its magnetism in only a decade or two. Floppy disks, if you can even find a disk drive to read them, often have become currupted due to moisture, dust, etc. There is only a small group of experts who have the necessary equipment and know-how to retrieve "old stuff."

As you are well-aware, many patent infringement cases involve very old patents (in the 12 – 15 year old range). In your initial discovery, you may learn of rumored non-patented, and largely forgotten, prior art that could make a real difference to the case. All you have to do is establish its existence of what could prove to be "the magic bullet" in an invalidity defense, and that it was well-documented in the public media (news clippings, television ads, etc.). This is always easier said than done.

We have an excellent record for tracking, locating and restoring information of potential importance to the case that is stored on obsolete and/or old and degraded media, such as product promotional videos on VHS tapes, documents such as company press releases or scans of magazine articles on old PC floppy discs, and the like.

Because we are part of a product design firm, we have a well-established network of trusted specialists in data retrieval from obsolete or damaged media. It is likely that we saved at least one Defendant’s case by tracking down and restoring videos and marketing materials that proved the existence of a key piece of prior art.

Related articles

Is a patent troll watching your business now?

Nine Extinct or Nearly Obsolete Technologies for Marketers - And What's Replaced Them

The history of computer data storage, in pictures

Recoverying Data after damaging Your drive's

Legacy in the New Normal

Floppy Drives Are Only Good for Playing Daft Punk Music Now

Inadequate Prior Art Search: An Unnecessary and Common Tragedy

Relates to a service of the Rickert Expert Group: Patent Litigation Expert Services, a division of Wiederholt & Rickert Partners, LLC.

Per common practice, virtually all prior art searching as part of patent infringement cases is done in-house by associates and/or interns, with some assistance by senior Counsel. For some reason, it seems to be a common belief that junior lawyers are capable of a doing as good a job on something so critical as the prior art search as a true domain expert with decades of experience in the field of art.

This is problem, which will be elaborated below, because Testifying Expert Witnesses often end up being stuck with inadequate prior art. It takes someone with extremely deep expertise and knowledge of technical literature in the relevant field of art to find powerful prior art that the USPTO did not find when examining the accusing patent application. Yet, it is just such obscure prior art that is needed in preparing either a convincing anticipation (per 35 USC § 102) or obviousness (per 35 USC § 103) defense. 

Consequently, additional prior art search is usually necessary for completing an effective Rule 26 Expert Report. Alas, it is often too late, as the discovery deadline will have passed by the time the Expert Witness retained to write the Rule 26 Report realizes that there is a problem.

Even if you do not hire Dr. Rickert as Testifying Expert Witness, you might consider hiring him as an Expert Consultant early enough in the discovery period to ensure that you have uncovered all of the prior art necessary for crafting the best possible Rule 26 Report, especially if you represent the Defendant, there is probable infringement, and you are relying on an Invalidity (either obviousness or anticipation) defense.  

I have never had a situation where the prior art supplied by my client has been sufficient for completing for my creation of a proper Rule 26 Report. I have always had to do additional prior art research, particularly with respect to providing Counsel a Rule 26 Report that he or she can use in mounting an invalidity defense.

Related articles

Is a patent troll watching your business now?

The Testifying Expert Witness in Patent Infringement Lawsuits

Two General Types of Expert in IP Cases

In patent infringement and other intellectual property cases, there are two general types of expert: “Non-Testifying Expert” and “Testifying Expert Witness”.

Non-Testifying Expert

Non-testifying experts are, in practice, called either "Consulting Experts" or “Expert Consultants”.

FRCP (Federal Rule of Civil Procedure) 26(b)(4)(D) defines a Non-Testifying Expert as:

[an] "Expert Employed Only for Trial Preparation. Ordinarily, a party may not, by interrogatories or deposition, discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or to prepare for trial and who is not expected to be called as a witness at trial."

In other words, a Non-Testifying Consulting Experts’s work on a case is generally protected from discovery (from the opposing legal team), a privilege similar to “attorney-client privilege."

Testifying Expert Witness

Per FRCP 26(a)(2)(B), a Testifying Expert Witness is one retained or specially employed to provide expert testimony, either in deposition and/or trial. Experts negotiating with a law firm re: an Expert Witness engagement should make note of this fact! Vague assurances that one might get to be Testifying Expert Witness are untruthful at best.

Two Types (At Least) of Testifying Expert Witness

In patent infringement and other intellectual property cases, each side (i.e. the Plaintiff--the one who filed the suit, and the Defendant) will have at least two Testifying Expert Witnesses, one of whom is a financial expert, often a Professor of Accountancy or Economics, who concentrates solely on the matter of damages and is, thus, called the “Damages Expert.” The other Testifying Expert Witness or Witneses (in complex cases, there is often more than one) focus on all of the other aspects of the case.

Attributes of a Testifying Expert Witness

It takes a very special kind of person to be an effective Testifying Expert Witness. A Testifying Expert Witness must meet considerably higher standards on a number of dimensions than non-testifying experts (i.e. expert consultants). Unlike a non-testifying expert, his or her identity, personal and professional reputation, and nearly all documents used to prepare his or her testimony are open to discovery and, thus, revealed in trial. Testifying Expert Witnesses, as a matter of personality, are not adverse to having the personal details of his or her life and career openly discussed in a courtroom before a Judge, Jury, spectators, attorneys, other witnesses, etc. This is why many Testifying Expert Witnesses have "public performance" of some type (e.g. teaching, public speaking, musical performance) in their background.

To summarize, the key attributes of a Testifying Expert Witness are...

• Excellent personal and professional reputation
• Unquestionable expertise in the relevant field of art
• Not averse to having the personal details of his or her life and career openly discussed in a courtroom
• Highly-skilled at deflecting opposing Counsel’s attempts to raise question about his or credibility
• Powerful and authoritative, but also professional, polite and calm, demeanor
• Highly-developed skill in avoiding undue hesitation, making statements that could be construed as contradictory and so forth
• Highly-developed skill at foiling opposing Counsel’s attempts to extract incomplete answers to “Yes or No” questions
• Coolness and grace under pressure (This final attribute warrants elaboration...see the following section.)

Coolness and Grace Under Pressure

While formal challenge of a Testifying Expert Witness’s qualifications (called a Daubert Motion) is relatively uncommon (but hardly rare), the Testifying Expert Witness can count on opposing Counsel to use a variety of subtle questioning tactics to raise doubt in the minds of jury members with respect to his or her credibility. As mentioned above, an effective Testifying Expert Witness has developed the skills to avoid undue hesitation, making statements that could be construed as contradictory and so forth. He or she must also be a powerful and authoritative, but also professional, polite and calm, in demeanor. This usually takes a lot a practice. An effective Testifying Expert Witness ALWAYS rehearses for many hours prior to giving testimony. Such rehearsal is possible, as it is pretty easy to ascertain (every litigator has an M.O.) the types of questions opposing Counsel will ask during cross-examination.

An experienced Testifying Expert Witness, in order to avoid the accusation of be coached (he or she must answer honestly when asked by opposing Counsel whether or not he or she was coached), is adept at using at using audio playback devices to simulate the pressure of direct and cross-examination and and video recording equipment. The expert reviews video of repeated rehearsals in order to evaluate his or her testimony performance.

Written Reports by the Testifying Expert Witness

In most cases, a Testifying Expert Witness, prior to Deposition and long before Trial (should case make it to trial before settlement) will write two types of formal document: The “Expert Report” (often called a “Rule 26 Expert Report”) and one or more optional “Rebuttals” to any Rule 26 Expert Reports written by the Testifying Expert Witness or Witnesses for the opposition. These reports are the topic of another post.

Related articles

Defense Expert Witness Receives Judicial Drubbing

Google seeks to preclude expert from testifying that Android infringes Nokia's tethering patent

Don Rickert Has a NEW and Expanded IMS ExpertServices EliteXpert Profile

IMS ExpertServices is a full service expert witness and litigation consultant delivery firm and is leading provider of Expert Witnesses to the top 200 law firms in the U.S., providing expert witness and litigation consultants to half of the Fortune 100 and more than 97 of the AmLaw Top 100 law firms in the U.S.

IMS Expert services has a team of top experts, which they call the EliteXpert group. Dr. Don Rickert is a Designated EliteXpert by IMS ExpertServices.

IMS ExpertServices describes its EliteXperts as follows:

'IMS EliteXperts are select individuals with notable subject matter expert experience, who we feel are true industry and academic leaders, connectors, thinkers and doers.  Not only are they noted professionals in their respective fields but they are “difference makers.” 

Stringent criteria are set for IMS EliteXperts and they must be nominated by senior IMS team leaders.  Nominations are not taken lightly. Not only must those nominated be seasoned and accomplished, but there must also be a compelling reason or personal recommendation to support the nomination.

IMS EliteXperts are profiled on our website and are preferred resources for interviews, article submissions and speaking opportunities...'

Learn more about the Patent Litigation Expert Services provided by Don Rickert Research and Design...

Don Rickert's Current Resume and Supplemental Background Documents (UPDATE)

Professional Resume:

The following is the current "short" Curriculum Vitae (CV) for Donald Rickert, Ph.D., IDSA. "Short" means that it does not contain Don's bibliography and certain other appendices, which are available upon request.

• Download Don_rickert_resume_short_4-22-13 (PDF)
  

• Link to Professional Recommendations (downloadable PDF available)

 

Patent Litigation Expert Witness Experience:

Documents Related to Dr. Don Rickert's Patent Litigation Expert Witness Credentials

Designated EliteXpert by IMS ExpertServices

• Professional Recommendations, including Expert Witness Work (online profile and downloadable PDF)
• Patent Litigation Expert Experience Summary (online summary and downloadable PDF) 
• Product Design & User Interface Design (online profile and downloadable PDF)
• Musical Instrument Design (online profile and downloadable PDF)

 

Additional Resources Related to Don Rickert's Product Design, Design Research and Management Consulting

The following documents relate more to Product Design, Management Consulting and Design Research consulting rather than Patent Litigation Expert Witness Services specifically.

• Download Don Rickert Design Ethnography Examples (PDF)
  
• Download A Model for New Product Development by Don Rickert (PDF)
• Download Examples of specific physical device experience table (PDF)
• Download Examples of specific interactive systems and enterprise software (PDF)

Don Rickert Research and Design (UPDATE 4-21-13)

Wiederholt & Rickert Partners, LLC, is a unique Patent Litigation Expert Services and New Product Design/Design Research firm. Generally doing business either under the names Don Rickert Research & Design™ (DBA), The Rickert Expert Group™ (DBA) and Don Rickert Musical Instruments™ (DBA).

The Rickert Expert Group™: Patent Litigation Expert Services (www.RickertExpertServices.com)

PATENT LITIGATION EXPERT SERVICES:

Provide the full spectrum of Expert Witness and associated  Consulting Services to Legal Counsel involved in Patent infringement cases, including prior art research, writing expert opinion Declarations (e.g. Federal Court “Rule 26 Reports”) and Rebuttals (e.g. to opposition Expert Reports) for U.S. District Court, as well actually testifying as an Expert Witness in cases that go to trial.

Expert Witness Experience and Special Skills (SUMMARY):

• Experience as Testifying (i.e. Lead) Expert Witness on a landmark patent infringement case (U.S. District Court) and multiple ITC 337 Investigations
• Physical Infringement Analysis: Beyond-the-ordinary experience as an expert witness in analyzing internal electro-mechanical structures (e.g. switching mechanisms) and electronic components of accused devices
• Experience in review and analysis of USPTO Patent Prosecution Records
• Experience in preparing Expert reports (Rule 26 Reports, Rebuttals, and Expert Declarations)
• Deposition and trial experience, exhibit preparation

Practice limited to Testifying (i.e. Primary) Expert on major U.S. District Court patent infringement cases. Will consider ITC 337 Investigations in cases involving musical instruments and/or associated accessories.

Managing Partner and Principal Expert Witness, Dr. Don Rickert is certified as a Designated IMS EliteXpert. IMS ExpertServices, a leading full service expert witness and litigation consultant delivery firm in the U.S.

He is also a certified Expert with the Beche Group IP Services, the preeminent Expert Witness agency in the San Fransico Bay Area (i.e Silicon Valley). The Beche Group connects top litigators with the world’s preeminent expert witnesses, hard-to-find experts that are top in their field, for complex patent infringement matters.

Additional Details...

See also:

• Product Design - UI Design Expert Profile for Donald Rickert, Ph.D., IDSA
• Musical Instrument Design Expert Profile for Donald Rickert, Ph.D., IDSA

Don Rickert Research & Design™ (www.DonRickertDesign.com) focuses on:

DESIGN RESEARCH: Qualitative & Quantitative Research (Usability evaluation, Customer and Market Research, Observational Methods - Ethnography, Depth Interviewing, etc.), including statistical analysis of quantitative metrics, such as customer satisfaction, consumer preference and quality assurance data.

Learn More...

MANAGEMENT CONSULTING: Focus on the areas of New Product Design (NPD), User Experience (UX) and Human Factors/Ergonomics

Learn More...

DESIGN AND FABRICATION OF CUSTOM PRODUCTS: Experience and expertise spans a variety of industries, with a good mix of online media and other interactive products, as well as physical goods.

Learn More...

Don Rickert Musical Instruments™ (www.RickertMusicalinstruments.com) focuses on:

• Designing and making high-end custom musical instrument creations for individual customers (usually professional performers)
• Inventing truly ground-breaking musical instruments for international design competitions

Learn More: see The New Don Rickert Musical Instruments™

Where We Are Located

The Don Rickert Research & Design™ AND the Don Rickert Musial Instruments studios (called “Wild Rock”) are near Hiawassee, GA, USA, a small town in the North Georgia Mountains. Wild Rock is on the boundary of the Chattahoochee National Forest Wilderness Area, which continues as the Nantahala National Forest Wilderness at the nearby North Carolina border.

 

Patent Litigation Expert Services: Don Rickert Research and Design (UPDATE)

Don Rickert Research and Design provides Patent Litigation Expert Services, generally for high-profile/high stakes cases that have reached either the U.S. District Court or U.S. International Trade Commission (ITC) Court level. Managing Partner, Dr. Don Rickert is Designated IMS EliteXpert. IMS ExpertServices is the top full service expert witness and litigation consultant delivery firm in the U.S.

Learn more about IMS EliteXpert certification...

Patent Litigation Expert Witness Experience:

Generally Credibility as an Expert Witness (See CV link at top of the page for more details.)

I am an experienced Patent Litigation Expert Witness, Human-Factors-Ergonomics and Human-Computer Interaction Expert, Professional Industrial Designer, Design Researcher, Consumer Researcher Musical Instrument Designer/Maker, Musician and Historian of Invention & Technology. I have over 30 years' experience as thought-leader, researcher, designer/inventor and manager in New Product Development (NPD). I also have especially well-honed skills in the related areas of Statistics and Statistical Analysis (professorial lecturer in statistics at a major university). 

I have served as the Director of Human Factors Engineering & Consumer Behavior and Chair of the User Interface Design Standards & Practices Committee of an enterprise software company geared toward the financial industry. In this role, I was responsible for company-wide human-computer interface standards and user interface design oversight, as well as Product Design Lead on many projects, including designing user interfaces for mobile devices (phones and PDAs). Additionally, I have experience as an adjunct professor of design research, market research and new product development NPD) in the School of Industrial Design at a top research university.

Currently, I am the Managing Partner (Owner) of Wiederholt & Rickert Partners, LLC, a unique Patent Litigation Expert Services and New Product Design/Design Research firm, serving a variety of industries. The firm generally does business under the names Don Rickert Research & Design™, DBA and Don Rickert Musical Instruments™, DBA.

Documents Related to Dr. Don Rickert's Patent Litigation Expert Witness Credentials

Designated EliteXpert by IMS ExpertServices

• Professional Recommendations, including Expert Witness Work (online profile and downloadable PDF)
• Patent Litigation Expert Experience Summary (online summary and downloadable PDF) 
• Product Design & User Interface Design (online profile and downloadable PDF)
• Musical Instrument Design (online profile and downloadable PDF)

See Domain Experise Areas related to Expert Witness Services...

Expert Witness Experience and Special Skills

Experience as testifying expert witness on a landmark patent infringement case (U.S. District Court) and multiple ITC 337 Investigations

• Physical Infringement Analysis: I possess beyond-the-ordinary experience as an expert witness in analyzing internal electro-mechanical structures (e.g. switching mechanisms) and electronic components of accused devices
• I also have rare  experience in review and analysis of USPTO Patent Prosecution Records
  Experience in preparing most of the reports (Rule 26 Reports, multiple Rebuttals, and Expert Declarations) that are possible for an Expert Witness on U.S. District Court patent infringement cases to write.
• Deposition and trial experience, including preparation of 100s of exhibits

Special Expert Witness Skills

• In first professional job as Juvenile Case Worker with the State of Maryland, Dept. of Health & Mental Hygiene, I testified on more than 150 occasions (Civil as well as Criminal trials), in Circuit Court (Judge presiding) as well as Magistrate Courts…I developed my testimony skills, especially “confident grace under pressure”.
• Deep familiarity and experience with Federal Court Patent infringement lawsuit rules of evidence, procedures, Expert Declarations (written reports to the Court), and the overall role of lead Expert Witness, including testimony in deposition as well as trial
• Authoritative and confident demeanor, but likeable (e.g. by Juries) and cool under attack (Described by one client as “a powerful presence, mellowed by a genuine Southern charm.”)
• Well-developed ability to synthesize seemingly unrelated social, legal, political and technological historical time-lines and weave these threads into the real story of how well-known disruptive innovations like “smart phones”, as well as more obscure (to the average person) technologies such as device and data encryption requirements for mobile devices, came about. I can tell the story so that all (e.g. members of a Jury) can understand.

Note: A comprehensive list of my skills and wide breadth of expertise can be found on my LinkedIn profile page (www.linkedin.com/in/donrickert/)

What Some Major Clients Have Said:

Jon Hokanson
Partner at Lewis, Brisbois, Bisgaard & Smith LLP

“Don is very knowledgeable in the field of interface design, particularly as in relates to control devices and systems for televisions. He is personable, a hard worker and very focused. He has actual industry, as well as academic experience, both of which combine to imbue his testimony with a high degree of credibility.”

John Evans, Ph.D.
Attorney at Jones Day

“We hired Don as an expert witness and consultant in the field of graphical user interfaces for on-demand television technology. Working with Don was instrumental in achieving game-changing results for our client. Don was an enthusiastic and thorough partner in uncovering and developing the facts, willing to beat the bushes and draw on all his contacts in the field, even generating a substantial and detailed declaration. In short, Don delivered timely results that made a difference in our case, which is exactly what every attorney seeks from an expert. Don is also a pleasure to work with, very friendly and personable. I look forward to the chance to work with him again in the future.”

VP, Legal Affairs for large U.S. Consumer Electronics Manufacturer
Protective Order from a U.S. District Court still in effect, pending possible appeal

The Consumer Electronics Manufacturer was the Defendant on a patent infringement case on which I served as testifying (lead) Expert Witness. Due to the active Protective Order, a written recommendation from the VP for Legal Affairs was not prudent; however, I have reliable information directly conveyed to me from Counsel at two law firms that he recommended me orally at least Steptoe Johnson, Jones Day and Akin Gump, possibly other firms.

The key points of the recommendations of me as an Expert Witness:

• Integrity
• Thoroughness
• Focused
• A “powerful and authoritative presence” in the courtroom
• He specifically mentioned my gentlemanly “Southern charm” as an important attribute in communicating and connecting with the Jury.