Testifying defense expert representing Samsung in an action for patent infringement concerning optical storage, holographic optical elements, tracking servos, and signal integrity.
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.
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.
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)
An interesting though brief patent interference case concerning flat-panel solar concentrators. The plaintiff (Morgan) had filed a continuation patent application, which is a means of getting additional claims out of a previously-filed specification. The new patent gets the same priority date as the old one, so you don't have to worry about later art (such as that of the competitor whom you want to pay you royalties), but you don't get the usual 20-year patent lifetime. Morgan then came after Banyan.
These concentrators are made by gluing together complicated sheets of plastic which have reflecting and guiding structures inside, so that the light comes in the flat side and goes out the edge of the sheet. That means you don't need as many expensive solar cells. Banyan, whom I was working with, had managed to avoid the asserted patent claims--all except one, which I had to tell them was a direct hit. Of course that ended my usefulness to them, but that's how these things go; the lawyers are advocates for their clients, and the expert is an advocate for the facts. That's a privilege.
The bright side of all this is that the review board awarded priority to the defendant, so it all worked out for our team in the end.