ChannelScience.com has the expertise to provide world-class expert witness services in the area of PRML read channels. We can also help in related areas of data storage, including insurance investigation. We have provided support to attorneys in patent infringement cases and in the execution of new patents.

The Role of an Expert Witness in an Infringement Investigation

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.

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.

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.

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 the investigation 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 experimentation take 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.

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 what you say, but also how you say it. Visit our Recommended Books page for help on this front from the 3 books by Edward Tufte.

AND REMEMBER: Don't take our word for it! Seek competent professional legal advice.

Patent Review and Stronger Patents

While investigating clients' patents to see if they can be circumvented by the competition, we have learned a few things about writing stronger patents. Here are some general thoughts.

1. Do I really need to use a patent attorney to write my patent?
Yes! This can cost upwards of $5000 to $10,000. But if you want to save some money, it is possible to write the main body of the patent, do a good job on the drawings and take a first draft stab at the claims. Then, have an attorney write the claims. They should also review your writing in the body of the patent and the drawings. You can get some good advice on writing patents and on the drawings requirements in books from Nolo Press (www.nolo.com). These are probably available at your local library.

To write a better patent, you should also have read and understood several patents in the field of your invention. You will need to do this anyway to search for prior art patents. Take note of how they phrase the claims and how the body of the patent relates to the claims. Follow our patent links for the USPTO and Delphion to search for patents on-line.

If you just want the prestige of having a growing patent portfolio, but don't really intend to defend a particular patent, it is possible to do the whole process yourself. Books from Nolo Press above will walk you through the process. When making the decision to prosecute the patent yourself, consider the cost of your time. You will have to do great deal of research to determine how to properly write and file the patent. If you are a consultant charging a similar hourly rate as the patent attorney, your lost revenue from the patent investigation time can greatly offset the attorney's fees. However, if you plan filing additional patents in the future, you should look at this time as an investment.

That said, it is still best to have an attorney review any patent before filing!

2. Patent Claims are Weird and Hard to Understand
Yes they are. The claims are very tricky to write and read. A missing word, or replacing a word with a seemingly similar one, can render a claim useless. Here are some interesting observations about claims that might help make them easier to read and to write.

First of all, there are method patents and apparatus patents. What are you patenting? Perhaps you are patenting both. For example you have a method (e.g. an optimization routine) that will be implemented in hardware (e.g. custom circuitry in an IC chip). For this reason, some claims seem to be repetitive. Take note that one set of claims may be for the method and the other for the apparatus.

Another reason claims may appear repetitive is that some are independent and others dependent. Often you will see a claim that is basic and stands on its own (independent). Then there will be a series of claims that build on this independent claim by saying something like "same as Claim 3with the addition of . . ." These are dependent clauses. Attorneys are great at writing these. Read a few patents and notice how they build the complexities and feature sets slowly, one-at-a-time, to give you the best coverage and defensive position possible.

You will find some strange sounding wording in the claims. This is largely because there is legal precedence for using these words. That is, they have been used in the past and interpreted in known ways. Therefore, the attorneys have confidence in using them again because they have a better chance at predicting how a judge may interpret the claim.

Here are a few interesting word subtleties that may make your claims reading easier: "said" means "the." For example, "sit in said chair" means "sit in the chair." The word "plurality" means "more than one." The phrase "comprised of" means "includes." This is in contrast to "consists of" which means "only." If your claim is that something is comprised of 3 elements, other elements may also be present. If your claim is that something consists of 3 elements, there are only those 3 elements present.

3. If the Claims are so Important, are the Abstract and Body Just Filler?
NO! In the body you must demonstrate the best method for implementing your patent. The patent is supposed to teach the world how to build and use your invention in the best way possible. For example, keeping the best settings for your invention secret might weaken your protection. In exchange for sharing your knowledge, you get the protection of the patent. Further, the abstract and the body text show your intent. Someone may later find an entirely new use for your invention in another field. Unless you note this somewhere, typically in the body text, your patent may be interpreted as limited in scope and so not cover the new application.

4. Does a Patent Give Me the Right to Make My Invention?
NO! It gives you the right to exclude others from making the invention. An illustrative example that we like to use is this. Suppose someone invents and patents a car, comprised of a body, wheels, engine, transmission, brakes, seats, steering wheel, etc. Now, suppose you want to patent a car with windshield wipers. If your patent is granted, you can stop people from making cars with windshield wipers but you can't make a car with windshield wipers because you don't have the car patent. The win-win solution is to license your patent to the holder of the car patent or cross-license the car patent yourself and start making cars with windshield wipers

WE'LL SAY IT AGAIN: Don't take our word for it! Seek competent professional legal advice.

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