Expert Witness Work
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 35 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, metrology, and testing. I’ve also written about 150,000 lines of C++ 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, in 34 cases and counting.
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
and we’ll see if I can help in your latest case.
~Dr. Philip C. D. Hobbs, Principal
Active Cases
| 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 |
| 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 |
| 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
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
| 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 |
