Neutral Referee in IP dispute between former joint development partners

In the spring of 2017, I was approached by lawyers from two technology companies working in civil avionics (instruments for airplanes).  I can't say who they were due to NDA restrictions, but the job was an unusual and interesting one.  The two companies had been joint development partners, but the relationship had soured and trust had now broken down completely.  Both were concerned that the other was misusing intellectual property disclosed during the joint venture, and they asked me to do do an audit to see whether this was in fact true.  The situation was made more complicated because one company was several hundred times as large as the other, and of course there was no court-ordered discovery and no one was under oath.

After interviewing engineers for both sides and visiting SmallCo's facility, I was able to report that SmallCo's development pattern was essentially unaltered following their interaction with BigCo, and that in fact there was no evidence that BigCo had actually transferred the IP they claimed to be most concerned about.  (BigCo, like many large corporations, has a policy of deleting email archives more than a year or so old.)

Voxpath RS, LLC v. Desay A&V Science and Technology Co. Ltd, et al.

Testifying defense expert representing Samsung in an action for patent infringement concerning optical storage, holographic optical elements, tracking servos, and signal integrity.

Industrial Technology Research Institute v. LG Corporation, et al.

This was another fun one with a lot of reverse engineering.  This time round I was working with the plaintiff, Industrial Technology Research Institute, which is a research lab owned by the Taiwanese government.  It was an action for patent infringement in the focusing and tracking servos of optical disc drives, as well as in the arrangement of the laser sources.  The patent claims at issue concerned the way the magnetic "voice coil" actuators simultaneously adjusted focus, tracking, and tilt, so I needed to take several of the accused products apart and run the head servos by themselves in my lab.  I also had to cut apart some of the coils to show how they were wired, and decap the lasers to show that there were two chips side-by-side in the CD/DVD source and one in the BluRay source.

The case settled before the expert reports on infringement were due, apparently quite favourably to our side, though one usually doesn't hear the details.

ThinkOptics, Inc. v. Nintendo of America, et al.

Testifying expert representing ThinkOptics in an action for patent infringement concerning video games, specifically the human interface of the Nintendo Wii.
February 15, 2015: Settled after an inter partes re-examination.

Two strange cases: Yufa v. Lockheed Martin and Yufa v. Hach Ultra-Analytics

Particle counter showing gold mirror

This was quite an unusual situation.  Dr. Aleksandr L. Yufa had several patents relating to optical particle counting, and tried to get various companies to license them.  I don't know if any actually signed up, but obviously some didn't, because he sued several manufacturers and users of these technologies for infringement.  The unusual part was that Dr. Yufa was acting pro se, that is, he was acting as his own lawyer.

I was retained as testifying expert by defense counsel in two of these cases: Yufa v. Lockheed-Martin and Yufa v. Hach Ultra-Analytics.   An inter partes review had significantly narrowed the scope of Dr. Yufa's patents.  After reviewing the schematics, mechanical drawings, and source code for the accused instruments, and doing a bunch of reverse engineering and data-taking, I was able to demonstrate that there was no infringement of the remaining claims.  The Court agreed, and granted the motion of summary judgment in favour of Lockheed-Martin.  This was especially satisfying because the case had been in litigation for six years by the time I got involved, and a previous motion for summary judgment had been denied.  Summary judgment was also granted in the Hach case, based on the same evidence.

Dr. Yufa appealed the Lockheed case and one other all the way to the Federal Circuit, and lost both.  The lower court awarded partial attorney's fees to the defendant, which (according to publicly-available court documents) Dr. Yufa was apparently unable to pay, resulting in his patents being assigned to a court-designated receiver.  He appealed that ruling and lost again, so he applied for a writ of certiorari to the US Supreme Court, which was denied, making a fitting though rather sad end to a strange case.

Dates: August - December 2013 (Lockheed); March - June 2014 (Hach)