Expert Witness Cases

With more than 30 years' experience designing electronic, optical, and mixed-technology systems, and 43 US patents issued or pending, I have amassed a lot of expertise in a number of fields, including optics, optoelectronics, electro-optics, photonics (especially silicon photonics), analog electronics, optomechanics, optical and atomic force microscopy, semiconductor processing, signal processing, simulation, electromagnetics, due diligence, and the drafting and technical interpretation of patents.

Expert witness work is one natural application, and I've been testifying expert in 27 matters to date, including  inter partes reviews and cases in district court and before the International Trade Commission.  I'm expert in optics, photonics, microscopy, and analog electronics, as well as some areas of semiconductor processing and testing.  I've also written about 150,000 lines of code, mostly for electromagnetic simulation, instrument control, and embedded applications, so I do a lot of reverse engineering and source code review as well.

My reports, reverse engineering, and deposition were instrumental in Uber's big win over Waymo in the patent side of their $2 billion suit in 2017. I've written dozens of expert reports and declarations, as well as testifying in a $100 million trial in February 2015 (ED Texas) and at six depositions concerning validity, infringement, and claim construction. I work with both plaintiffs and defendants.

As an expert, I get to be "an advocate for the facts". Besides the chance to help people and work with some smart and articulate folks, it's enjoyable because it uses a different set of skills from my engineering work. Send me an email or call me at the lab +1 914 236 3005 and we'll see if I can help in your latest case.

~Dr. Philip C. D. Hobbs, Principal


Active Cases

Case Name Align Technology, Inc. v. 3Shape A/S, et al.
Jurisdiction Case No. 18-1949-LPS-CJB, US District Court for the District of Delaware
Counsel Paul Hastings LLP
Defendant 3Shape A/S, et al.
Work Product Detailed review of source code for accused products, declaration in claim construction, help with tutorial
Notes Testifying expert working with plaintiff in an action alleging patent infringement in dental imaging technology
Status In discovery; claim construction ruling issued 1/21
Dates 9/2020 - Present
Case Name Obert, Inc. and Jiaxing Super Lighting Electric Appliance Co., Ltd. v. MaxLite, Inc.
Jurisdiction Case 2:19-cv-04047-PSG-MAA, US District Court for the Central District of California
Counsel Quinn Emanuel Urquhart & Sullivan
Defendant MaxLite, Inc.
Work Product Declaration in claim construction, consulting on reverse engineering strategy
Notes Testifying expert working with plaintiff in an action alleging patent infringement in LED lighting. A very slow-moving case due to the COVID-19 pandemic
Status Underway
Dates 7/2020 - Present
Case Name SEMICAPS Pte Ltd. v. Hamamatsu
Jurisdiction Case 4:17-cv-03440-DMR US District Court for the Northern District of California
Counsel Quinn Emanuel Urquhart & Sullivan
Defendant Hamamatsu Ltd.
Work Product Claim construction declaration, support for technology tutorial
Notes Testifying expert working with defendant in an action alleging patent infringement in laser-based microscopic testing of semiconductors
Status Ongoing
Dates 8/2019 - Present

Completed Cases

Case Name Night Vision Devices, Inc. v. Carson Industries, Inc.
Jurisdiction Case 5:2019-cv-04686-JDW, US District Court for the Eastern District of Pennsylvania
Counsel Quinn Emanuel Urquhart & Sullivan
Defendant Carson Industries, inc.
Work Product Consulting only (case settled very quickly)
Notes Testifying expert working with defendant in an action alleging trade secret misappropriation in night vision equipment.
Status Settled 9/20
Dates

8/2020 - 9/2020

Case Name CERTAIN ROTATING 3-D LIDAR DEVICES, COMPONENTS THEREOF, AND SENSING SYSTEMS CONTAINING THE SAME
Jurisdiction Investigation No. 337-TA-1173, US International Trade Commission
Counsel Quinn Emanuel Urquhart & Sullivan
Defendant Hesai Photonics Co., Ltd. and Suteng Innovation Technology Co., Ltd.
Work Product Draft report on invalidity, review of source code
Notes Testifying expert working with defendants in an action alleging patent infringement in lidar (laser radar) for autonomous vehicles
Status Settled
Dates

12/2019 - 6/2020

Case Name Polaris PowerLED Technologies v. VIZIO, Inc.
Jurisdiction Case # 8:18-cv-01571-JVS US District Court for the Central District of California
Counsel Quinn Emanuel Urquhart & Sullivan
Defendant VIZIO, Inc.
Work Product Reverse-engineering and testing of 8 accused products, Rule 11 declaration, consulting.
Notes Testifying expert working with defendant VIZIO in an action alleging patent infringement in backlight technology for flat screen TVs. The Court granted half of VIZIO's Rule 11 motion, and subsequently struck the opposing expert’s infringement report. No material issues of fact remained, so the Court granted summary judgment in favor of VIZIO.
Status Summary judgment granted
Dates

4/2019 - 12/2019

Case Name Carl Zeiss SMT GmbH v. Nikon Corporation
Jurisdiction Investigation 337-TA-1128, US International Trade Commission
Counsel Morrison Foerster LLP
Defendant Nikon Corporation
Work Product Consulting on prior art, draft invalidity report
Notes Testifying expert working with defendant Nikon in an action alleging patent infringement in automatic adjustment systems for photolithography tools used in semiconductor manufacturing.
Status Case settled 2/19
Dates

10/2018 - 2/2019

Case Name Polaris PowerLED Technologies v. Samsung
Jurisdiction Case 2:17-cv-00715-JRG US District Court for the Eastern District of Texas, Marshall Division
Counsel Covington & Burling LLP
Defendant Samsung
Work Product Prior art, invalidity declaration for inter partes review; claim construction declaration, source code examination and extensive testing and reverse engineering of both accused and prior-art products; invalidity and noninfringement reports for district court; deposition in invalidity and noninfringement; support in ex parte re-exam; trial prep.
Notes Testifying expert working with defendant Samsung in an action alleging patent infringement in automatic display brightness controls using ambient light sensors, and in the associated inter partes review of the patent in suit. Damages claimed were $378 million.
Status The case settled nearly on the courthouse steps—June 20th, 2019, during trial prep in Marshall TX.
Dates

5/2018 - 6/2019

Case Name CRX Technologies LLC v. Samsung Electronics Co.
Jurisdiction Case 2:17-cv-00611-JRG US District Court for the Eastern District of Texas, Marshall Division
Counsel Arnold & Porter
Defendant Samsung Electronics Co.
Work Product Finding prior art, consulting for invalidity and noninfringement contentions
Notes Testifying expert working with defendant Samsung in an action alleging patent infringement in antireflection surface textures for diode lasers and LEDs.
Status Settled July 30, 2018.
Dates

3/2018 - 7/2018

Case Name Skybell Technologies, Inc. v. Ring, Inc.
Jurisdiction Case No. 8:18-cv-00014, US District Court for the Central District of California, Southern Division
Counsel Susman Godfrey LLP
Work Product Testifying expert working with plaintiff Skybell in an action for patent infringement in video doorbells. The case was stayed for 2-1/2 years and then settled after several inter partes reviews.
Notes Testifying expert working with the plaintiff in an IoT patent infringement suit.
Status Settled
Dates

1/2018 - 8/2020

Case Name Waymo LLC v Uber Technologies, Inc. et al.
Jurisdiction Case No. 3:17-cv-00939 US District Court for the Northern District of California, San Francisco Division
Counsel Morrison & Foerster LLP, Goodwin Procter LLP, Susman Godfrey LLP
Work Product Testing and reverse engineering of accused products, expert report and deposition in claim construction, reports on invalidity and noninfringement, reply report on invalidity, extensive SPICE simulations of accused and patented circuits, finding prior art for trade secrets
Notes Testifying expert working with defendants Uber and Otto on the patent side of a combined alleging patent infringement and trade secret misappropriation action concerning lidar for autonomous vehicles. Requested damages were $2.3 billion.
Status Plaintiff dropped the patent side of the case entirely on September 13, 2017 after my reports and deposition; trial started February 4, 2018 and the case settled four days later.
Dates

7/2017 - 9/2017

Case Name Neutral Referee in IP Dispute Between Former Joint Development Partners
Jurisdiction Petition for declaratory judgment filed in Arizona
Counsel Undisclosed per retention agreement
Work Product Audit report examining evidence for misuse of confidential information following an abortive joint development program, based on a site tour and discussions with technical people and attorneys from both sides.
Notes Referee tasked with determining if either party misappropriated the IP of the other in a joint development in the avionics space. An interesting and fairly novel assignment, working with both sides equally.
Status Completed
Dates

2/2017 - 5/2017

Case Name EXFO Inc. et al. v. Viavi Solutions, Inc.
Jurisdiction Case No. 2:15-cv-01685, US District Court for the Eastern District of Texas, Marshall Division
Counsel Brinks Gilson & Lione
Work Product Source code examination, declaration in claim construction, work on IPR
Notes Testifying expert working with the plaintiff in an action for patent infringement in optical fiber measurement equipment (OTDR)
Status Settled
Dates

5/2016 - 12/2016

Case Name Daniel L. Flamm v Samsung Electronics Co Ltd et al.
Jurisdiction Case No. 1:15-cv-613, US District Court for the Western District of Texas
Counsel Arnold & Porter LLP
Work Product Testifying expert working with the defendant Samsung in an action alleging patent infringement in plasma processing for semiconductor manufacturing. The case was stayed for 2-1/2 years pending IPRs, and then settled after the PTO invalidated the asserted claims in August 2020.
Notes Testifying expert working with the defendant Samsung in an action alleging patent infringement in plasma processing for semiconductor manufacturing.
Status Case stayed pending IPR petition
Dates

2/2016 - 8/2020

Case Name Inter Partes Review of U.S. Pat. 7,430,355
Jurisdiction Patent Trial and Appeal Board IPR2015-00393
Counsel Wood Herron & Evans
Work Product Consulting
Notes Expert working with the patent owner, University of Cincinnati, on a patent concerning ultraviolet-activated fluorescent information displays
Status I had to tell counsel for the University that in my opinion their patent would not hold up due to widespread anticipation in the prior art. On June 6, 2016, the PTAB ruled that the claims under review were unpatentable.
Dates

6/2015 - 9/2015

Case Name Finisar Corp. v. Innolight Technology USA, Inc, et al.
Jurisdiction Civil No. 3:14-cv-01505, US District Court for the Northern District of California
Counsel Cooley LLP
Defendant Innolight Technologies USA, Innolight Technologies
Work Product Reading documents (case settled very fast)
Notes Testifying expert working with the defendant in an action alleging patent infringement in optical transceivers for telecoms
Status Settled
Dates

4/2014 - 6/2014

Case Name Yufa v. Hach Ultra-Analytics, Inc.
Jurisdiction Civil No. 1:08-cv-3022-PA, US District Court for the District of Oregon
Counsel Parsons Behle & Latimer
Defendant Hach Ultra-Analytics, Inc.
Work Product Draft report, reverse engineering of accused products demonstrating noninfringement (related to Yufa v Lockeed Martin), leading to successful motion for summary judgment
Notes Testifying expert working with the defendant in an action alleging patent infringement in optical particle counters
Status Summary judgment granted in favour of defendant
Dates

3/2014 - 6/2014

Case Name Optical Devices LLC v. Lenovo Group et al.
Jurisdiction Investigation 337-TA-897, US International Trade Commission
Counsel O'Melveny & Myers LLP
Defendant Lenovo, LG Electronics, Nintendo, Panasonic, Samsung, Toshiba, MediaTek
Work Product Extensive reverse engineering of accused products
Notes Consulting expert working with defendant Samsung in an action alleging patent infringement in the optics of DVD and Blu-Ray drives. This related to a declassified 1963 patent that covers a broad swath of laser-based technology.
Status Samsung settled out of the case, which was later terminated due to the complainant lacking prudential standing.
Dates

1/2014 - 9/2014

Case Name Morgan Solar v. Banyan Energy
Jurisdiction Patent Interference 105,972 (RES) USPTO Trial and Appeal Board
Counsel Foley & Lardner LLP
Defendant Banyan Energy
Work Product Draft declaration
Notes Expert working with Banyan in a patent interference case concerning solar concentrators.
Status Decided in Banyan's favor due to priority
Dates

12/2013 - 5/2014

Case Name Yufa v. Lockheed Martin Corp.
Jurisdiction Case No. CV-06-3923 BRO (FFMx), US District Court for the Central District of California
Counsel O'Melveny & Myers LLP
Defendant Lockheed Martin Corporation
Work Product Expert report and declaration, including substantial testing and reverse-engineering of accused products, demonstrating noninfringement, which led to the successful motion for summary judgment
Notes Testifying expert working with the defendant in an action alleging patent infringement in optical particle counters
Status Defendant's Motion for summary judgment granted 12/23/2013
Dates

8/2013 - 12/2013

Case Name Industrial Technology Research Institute v. LG Electronics, et al.
Jurisdiction Case No. 2:12-CV-00949-ES, US District Court for the District of New Jersey
Counsel Shore Chan DePumpo
Defendant LG Electronics, LG Electronics America
Work Product Extensive reverse engineering of accused products, assisted with tutorial
Notes Testifying expert working with the plaintiff in an action for patent infringement concerning the positioning mechanism in optical disc recording. The case settled shortly before reports were due.
Status Settled
Dates

1/2013 - 6/2015

Case Name ThinkOptics, Inc. v. Nintendo of America, et al.
Jurisdiction 6:2011cv00455 U.S. District Court for the Eastern District of Texas, Tyler office
Counsel Slater & Matsil LLP
Defendant Nintendo of America,Inc.; Intec, Inc.; Nyko Technologies, Inc.; Nintendo Co. Ltd.
Work Product Three declarations and one response in inter partes review of three patents
Notes Testifying expert working with the plaintiff in an action for patent infringement concerning video games, specifically the human interface of the Nintendo Wii.
Status Settled
Dates

11/2012 - 11/2014

Case Name Voxpath RS, LLC v. Desay A&V Science and Technology Co. Ltd, et al.
Jurisdiction Case No. 2:12-cv-00952-DMC-JAD, U.S. District Court for the District of New Jersey
Counsel Greenberg Traurig LLP
Defendant Desay A&V Science and Technology, LG Electronics; Samsung; Best Buy; Sony; Toshiba; Onkyo; Hewlett-Packard; JVC; Yamaha
Work Product Review only
Notes Testifying expert working with defendant Samsung in an action for alleged patent infringement concerning optical storage: holographic optical elements, tracking servos, and electronic signal integrity.
Status Samsung settled out of the case
Dates

10/2012 - 10/2014

Case Name DCG Systems, Inc. v. Checkpoint Technologies LLC
Jurisdiction Case No. 5:11-cv-03792-PSG, US District Court for the Northern District of California
Counsel Hopkins & Carley LLP
Work Product Declaration on claim construction, deposition, tutorial, work on expert report on invalidity
Notes Testifying expert working with the defendant in an action for alleged patent infringement concerning laser scanning and solid-immersion microscopes for semiconductor inspection and failure analysis.
Status Settled
Dates

1/2012 - 12/2012

Case Name Finisar Corp. v. Oplink Communications Inc.
Jurisdiction Case No. 1:11-cv-04381, U.S. District Court for the Northern District of Illinois
Counsel Cooley LLP
Work Product Invalidity contentions and drafts of invalidity report, reverse engineering of one of the plaintiff's products
Notes Testifying expert working with the defendant in a patent infringement action concerning fiber optic transceivers. The case settled before reports were due.
Status Settled
Dates

8/2011 - 12/2011

Case Name Texas Advanced Optoelectronic Solutions, Inc. v Intersil Inc.
Jurisdiction Case No. 4:08-cv-451-RAS, Sherman Division, Eastern District of Texas
Counsel Bragalone Conroy LLP, Dechert LLP
Work Product Testimony and technical support during trial; deposition; rebuttal report; assessment of prior art bearing on trade secret claims.
Notes Testifying expert working with the defendant on the trade secret side of an action alleging patent infringement and trade secret misappropriation following an unsuccessful negotiation for Intersil to acquire TAOS. My testimony was about 2-1/2 hours direct and one hour cross.
Status Award vacated and case remanded by the Federal Circuit
Dates

11/2009 - 3/2015

Case Name NTech Industries, Inc. v. Holland Scientific, Inc.
Jurisdiction Case No. CIV 08-475-PHX-SRB, Arizona District Court, Phoenix Division
Counsel McKee, Voorhees & Sease LLP
Work Product Expert reports on invalidity and noninfringement, reply to infringement contentions
Notes Testifying expert working with the defendant in an action for alleged patent infringement involving real-time spectroscopic sensors for adjusting the dose of agrichemicals as a function of local plant health within a field. The case was settled shortly before my scheduled deposition.
Status Settled
Dates

3/2009 - 6/2009