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The Role of Engineering in Patent Litigation

The Role of Engineering in Patent Litigation. David Barkan Fish & Richardson, P.C. May 11, 2009. Two Worlds That Connect? Or Collide?. Major Roles for an Engineer in the Life of a Patent Case The Role of Standards The Role of Reverse Engineering Patent Semantics and Engineering Truth

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The Role of Engineering in Patent Litigation

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  1. The Role of Engineering in Patent Litigation David Barkan Fish & Richardson, P.C. May 11, 2009

  2. Two Worlds That Connect? Or Collide? • Major Roles for an Engineer in the Life of a Patent Case • The Role of Standards • The Role of Reverse Engineering • Patent Semantics and Engineering Truth • Prior Art Archeology • Working with Graphics Professionals

  3. The Life of a Patent Case for the Engineer • Pre-suit/Pre-Answer Due Diligence • Initial Discovery • Claim Construction • Discovery on Technical Issues • Summary Judgment • Trial • Appeal

  4. Standards • Standards are particularly significant in some areas – telecommunications, multimedia, electronic components, optical media • Standards are a Plaintiff’s short-cut and a Defendant’s headache • But, there’s often more than meets the eye – engineering analysis is needed to find the match/mis-match between the patent claims and the standard • Case Study: Optima v Sonic Solutions

  5. Case Study: Optima v Sonic • The ‘531 Patent’s “Track Info Map” vs the UDF Standard

  6. Reverse Engineering in Litigation • Why is it necessary? • How it differs from commercial reverse engineering • Commercial goals are functional • Litigation goals are evidentiary • Resources • Stakes may support substantial external resources • Some resources are off-limits because of the constraints of discovery, confidentiality, and strategy

  7. Patent Semantics • Engineers tend to read the “gist” of the patent • But, the law (and Judges and Juries) focus on the particular words chosen by the patentee • Claim Construction is often critical • But, never give up – even a losing claim construction requires technical analysis that can preserve non-infringement argument • Case Study: Block v Yodlee

  8. Case Study: Block v. Yodlee • The Court accepted the Plaintiff’s claim constructions: • Despite those constructions, the Court later granted summary judgment of non-infringement

  9. Case Study: Block v. Yodlee • How did the Court find no infringement, even with some broad claim constructions? • The Court dug into the engineering details • The Court’s analysis describes how Yodlee used a fundamentally different infrastructure and specifically focuses on aspects such as indirection among various system components

  10. Prior Art “Archeology” • Process and Documentation Matter . . . A Lot • Find, Preserve, and Revive • Sometimes you need a Rosetta Stone . . . • Evidence, Evidence, and Evidence • Live Demonstrations – “If the glove fits . . .” • Case Study: Quantel v Adobe • Acknowledgement in the Engineering Community • SIGGRAPH ’98 • http://www.siggraph.org/publications/newsletter/v32n3/contributions/phillips.html

  11. Graphics Professionals and the Engineer • A Picture is Truly Worth a Thousand Words • Accuracy, Analogies, and Communication • Case Study: Power One v Artesyn

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