3/25/20041 How an Engineer Ends Up in Court: The Role of the Expert Witness Laurence W. Nagel Omega Enterprises Randolph, NJ

3/25/20042 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

3/25/20043 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

3/25/20044 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!)

3/25/20045 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

3/25/20046 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

3/25/20047 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

3/25/20048 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

3/25/20049 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)

3/25/ 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

3/25/ 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

3/25/ 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

3/25/ 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

3/25/ 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

3/25/ Perspective on Lawyers “The first thing we do, let’s kill all the lawyers” William Shakespeare, “King Henry VI, Part II”

3/25/ 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

3/25/ 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

3/25/ 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)

3/25/ 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

3/25/ 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”

3/25/ 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

3/25/ 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

3/25/ Conclusions Don’t shoot the experts --- they perform a valuable job Don’t kill the lawyers --- in this age, we cannot live without them