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:
- 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.
- 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
