An initial patent analysis and rendered opinion for a client resulted in infringement lawsuits requiring my expert witness testimony. All but one suit were settled out of court for several million dollars in damages. The last infringement lawsuit went to trial. I served as the sole technical expert witness for the plaintiff. The resulting jury award was forty million dollars for my client.

 
For the past eight years, I have been working with a client whose company owns a patent related to the accurate calibration of electro-optical scanning devices. He is the major investor in a small company that designed and built an engineering model of a facsimile machine that incorporated the new technology of the patent. The company had limited resources so they had to interest one or more of the major players in that field to invest in their company in order to help them complete their development. To that end, a number of meetings and demonstrations of the engineering unit were set up and the system was demonstrated. They failed to make a deal and finally closed the doors. The major stock holder, who subsequently became my client, was advised that one or more of the company's patents was possibly being infringed. At that point I came into the picture.

Upon reading the patent, I realized that the technology was very similar to work that I had done while designing government scanners and facsimile machines some years back. I also concluded that it was more likely than not that modern equipment would utilize that technology because it was the key to high quality grey scale reproduction.

We then went about purchasing many facsimile machines and scanners from several manufacturers to analyze their performance and determine if they contained the technology of the patent, i.e., infringed. We found the technology present in the preponderance of the machines tested and my client informed the manufacturers of our findings via a program to license its patents. None of the manufacturers agreed with our findings or that the patent was valid.

Initially small settlements were made with some manufacturers. These settlements were used to build a war chest in order to adequately enforce the patent rights of the company against the larger manufacturers who virtually ignored my client until he filed suits against them. Subsequently during discovery, I analyzed the documents and hardware that the litigation required them to produce. My analyses revealed the full extent of their use of the patented technology. The discovery process also included deposition testimony by myself and others, from both sides, who could shed light on the technical materials as well as on the alleged infringing sales figures. The discovery process resulted in settlements totaling several million dollars.

There remained one stubborn manufacturer of facsimile machines, document scanners and electronic publishing equipment, with more than one billion dollars in allegedly infringing sales. This manufacturer, who had been demonstrated the original engineering model, would not offer a reasonable settlement, so we had to prepare for a trial in Federal District Court.

There were several issues that had to be decided by the six person jury with two alternates. It was incumbent on the plaintiff (my client) to prove with the preponderance of the evidence that the equipment in question infringed the patent. It also was an opportunity for the defendant to prove with clear and convincing evidence that the patent was invalid because of anticipation of the prior art or its obviousness in light of the prior art. Other issues for the jury were to decide if the proposals for development funds constituted an offer of sale a year before filing the patent. Also, if the patent was infringed, was it willfully infringed? If so, it would mean that whatever the award, it would be subject to increase. Finally, if the jury decided that the patent was infringed and valid, it had to arrive at an award to the plaintiff.

First the plaintiff presented his case. His witnesses in order of appearance were the inventor, myself as the expert witness, the owner of the patent and our damage expert. After our direct examination by the attorneys for the plaintiff, we all were cross examined by the attorneys for the defendant. The plaintiff then rested and the defendant called his witnesses which included; several engineers for the various accused products, their company's in-house head of the patent department, several retired engineers, their expert witness, and damage expert. They were each cross examined by the attorneys for the plaintiff. The defense then rested and the plaintiff called one rebuttal witness, myself. I was then cross examined and one week into the trial, the testimony phase was over.

The remaining tasks were the charging of the jury by the Judge with the law as it applied and the decisions that the jury had to make. Then each side presented its final summary arguments starting with the plaintiff's. The jury was then sent to the jury room to deliberate, and the waiting period began.

One and a half days later, the jury announced that it came to a decision. The jurors were led into the courtroom and asked to read off answers to twenty-three questions. They upheld the validity of the patent. They agreed that the patent was infringed. They disagreed that the infringement was willful. They awarded the plaintiff forty million dollars in damages. The trial was over. Now we await the appeal.

It was very exciting to participate in a trial as an expert witness. It is nothing like Perry Mason but one can easily get caught up in the drama. One can actually sense whether or not he connects with the jury because the communication is with more than words. Standing up to the cross examinations requires that one truly believe in his position because anything less, as evidenced at this trial, would result in a disaster. One should also be aware that the language witnesses use and the composure they exhibit during their time on the witness stand, especially during cross examination, reveal the strengths and weaknesses of their arguments. This is readily picked up by the jury. As for the jury, they are our peers with little or no technical training or legal experience. They hear very esoteric arguments which are technical and financial and come to a decision. They were told by the judge to use their life's experience in judging the witnesses as people with their testimony to determine their credibility. In this case, they did, and the little guy won.

Leonard Zuckerman designs electronic, electro-optical and electro-mechanical products for automotive, industrial, consumer, government and space applications. He draws on 30 years of engineering experience and holds a BEE degree from CUNY, City College. Len can be reached at (631) 673-3881.

Electronic Development Associates, Inc.
1 Westcliff Drive
Dix Hills, New York 11746-5618
Phone: 631-673-3881   Fax: 631-673-5979
E-mail: eda@eda-design.com
Contact Leonard Zuckerman, Principal Engineer

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