David Smith (00:03):
Welcome to the Expert Witness Podcast. I’m your host, David Smith, and I’m excited to have Nathan Macdonald here with me today. Nathan is a licensed professional engineer, a certified safety professional, and has over a decade of experience designing new products ranging from thrill rides to exercise equipment, to trailers, and consumer products. Now, Nathan and I have had the pleasure of working together at Alpine Engineering and Design for the last 13 years. We’ve worked on multiple design projects, personal injury cases, and patent cases together. He’s not only a brilliant engineer, but he’s a great person and a good friend too. So, Nathan, welcome to the podcast.
Nathan Macdonald (00:48):
Thank you for having me.
David Smith (00:50):
Now, today we wanted to talk about patent litigation, and we thought it might be fun to walk through different stages in the patent litigation process and share some stories and insights from each one. Now, as a disclaimer, we are both mechanical engineers. We work on mechanical patents with apparatus and method claims. We don’t work on software cases or pharmaceutical cases. So this information may or may not be applicable across the board. We don’t know. But that said, hopefully, you find it entertaining and insightful. And with that, let’s jump right into it. So, Nathan, when do experts usually get involved in patent litigation cases?
Nathan Macdonald (01:42):
Well, that can be from a whole range of timeframes. You know. I’ve been retained on cases where they needed opinions that same day and had a bunch of documents and depositions to review. I’ve also been retained in cases where they haven’t done the Markman hearing yet. So, claim construction is to be determined. And we’ve done cases also where there’s a pre-litigation testing to make sure that there’s a good cause of action, make sure that there’s, you know, that will usually be some kind of testing for whether there’s, whether we have a high confidence that there will be a good infringement argument to be made and everything in between.
David Smith (02:33):
All right. So, let’s start out talking about claim construction. So, claim construction, what is it and why is it important?
Nathan Macdonald (02:44):
Well, claim construction is a hugely important topic. The outcome of a patent case can rise or fall depending on how the claim construction goes. And it basically comes down to the fact that the claims are what the patent is basically, and every word in a claim has meaning. And they are to be given the broadest general meaning that’s consistent with the intrinsic evidence, and they’re to be interpreted through the lens of a person of ordinary skill in the art. And so, that’s where you need to have somebody, an expert, usually, that has the minimum criteria, or in our case, oftentimes far more than the minimum criteria, that would make them a person of ordinary skill in the art, in the design of a particular product. And so, we are able to take a look at the claims and read them as a POSITA, which is a person of ordinary skill in the art, and figure out what they would mean in light of the intrinsic evidence. Sometimes the intrinsic evidence doesn’t tell you exactly what a term would mean, but we’re also able to look at general industry knowledge and other extrinsic pieces of evidence that would help us to show what terms would mean.
David Smith (04:18):
Yeah, that’s great. That’s a lot of interesting words, uncommon words that you used in that answer. So let’s back that up a little bit. Sorry about that. Just to clarify, when we’re talking about claim construction at the basic level, what that is, is we’re determining what the words and phrases in the claim mean.
Nathan Macdonald (04:42):
That’s right.
David Smith (04:44):
So depending on a person’s experience or background or the way they look at things, they might interpret different words or phrases differently in a claim. And claim construction is the process where the court determines what the claims mean.
Nathan Macdonald (05:07):
Yeah, that’s right. I mean, basically, you can look at it this way where, you know, there’s infringement. The question of infringements is always a two-step process versus the claims have to be construed, and then you have to, then you can consider the question of whether there’s infringement. And if you think about intellectual property as an analogy, well, construing the claim terms is kind of like defining where your property line is. And so you can go from there and determine, okay, here’s where the property line is. Now, did somebody cross that property line or not?
David Smith (05:44):
Excellent analogy. So you also talked about intrinsic evidence and extrinsic evidence. What does that mean for people who may not be familiar with patent litigation?
Nathan Macdonald (05:54):
Well intrinsic evidence fundamentally is anything that is within the four corners of the patent and the file history. So there’s a series of documents and exchanges that become part of the record when a patent is being prosecuted and before it issues. That is all also part of the intrinsic evidence. But you look at the specification, the figures, the claims, and the file history in its entirety. That’s the intrinsic evidence. Intrinsic evidence is the first place you would go to figure out what terms mean. A patent applicant or inventor is permitted to be their own lexicographer, and they’re also able to look at, and they can define terms to have custom meanings within their patent specification.
David Smith (06:49):
Okay. And what, what is this extrinsic evidence?
Nathan Macdonald (06:53):
So extrinsic evidence would be basically anything that is not intrinsic evidence that is salient substantive. So that could be industry knowledge, that could be mechanical engineering, dictionaries, manuals, treatises and technical papers and the like. All of these things can have valuable extrinsic evidence that can form the basis for an opinion as to what a claim term should be construed to mean.
David Smith (07:27):
Awesome. Thank you. That’s, it’s so important to understand the difference in how you can go about determining what these claims mean and understanding the difference between intrinsic evidence, which is, you know, always a more powerful argument than extrinsic evidence, but knowing, you know, what each of those are and where to find and how to use those when construing claims. All right. So let’s talk about sometimes they talk about claim construction being a case within a case. Have you ever heard that, and why do you think people might say that?
Nathan Macdonald (08:14):
Oh, certainly, and I think it’s very, very true. You know, not only procedurally from a literal standpoint, there are hearings. There’s you know, basically there’s a markman hearing, which is basically a trial of sorts. That is there to determine how the claims should be construed. And you’ll have legal representation for plaintiff and defendant. They will go and present their arguments regarding how claims should be construed. And that matter will be adjudicated as it’s basically a trial within the trial, literally. But at the same time, the other reason why we can talk about it this way, and it’s apropos, is that in a very real sense, defining that property line, like I talked about with that analogy before, is crucial to determining whether somebody crossed it or not. And so, where that property lines up, you know, where the property line ends up can be the deciding factor as to whether there’s infringement or not. And so a lot rides on claim construction, and that goes without, you know, it’s pretty self-evident considering that the claims are made out of words and words, have to be construed and you have to know what they mean. Exactly.
David Smith (09:42):
Yeah. I had a case that I worked on a while back where, you know, I was looking through the claims, looking at the accused products, and, you know, I thought there might have been, you know, a good infringement argument, but claim construction had already happened in that case. And once I read how the claims were construed, it was not helpful to the case that I was working on. And so I told the attorney, look, based on this claim construction, I can’t see how there’s any infringement here. And so I wasn’t, I didn’t provide any opinions in that case and didn’t write any reports. And I think the case settled shortly after that because claim construction had come out so poorly. Have you had any experiences like that?
Nathan Macdonald (10:34):
I have had experiences with not, you know, not exactly like you described here, but I’ve had a lot of experience with claim construction and using that to help determine whether there’s a good infringement case or, or non-infringement. And one of the cases that I’m thinking of is. I did a case with regard to, it was a patent case on telescopic ladders a number of years ago. And I was retained by counsel representing the plaintiff. And by the time I got into the information and, you know, that was presented to me, I really felt like that was the side that I was happy to be retained by, because it was very, that was, you know, in some cases or 60-40 some cases, or 90-10, this was more like a 95-5, if that even. And the defendants in that case, they didn’t seem to have any experience whatsoever with patents. And they had they had basically picked out every term they could possibly imagine from the patent that was asserted and disputed the meaning of every word in every term.
And their constructions, their proposed constructions, they weren’t just plain ordinary, meaning they weren’t even based almost in, you know, it’s basically they’re importing every possible piece of verbiage they can possibly grab at out of the specification saying it has to have all of this. They’re importing limitations from the spec, which is a big no-no. And their proposed constructions were, were paragraphs long. And as you and I know from our experience, though it’s not a hard and fast rule, generally, the longer the proposed construction, the less likely it is that it’s correct, and therefore, the less likely it is that the court will adopt it. We’ve generally been very happy to see that the courts generally get claim construction right. And have a pretty fair take on it.
David Smith (13:08):
I would agree with that. Not, not always the case, but …
Nathan Macdonald (13:12):
Not always the case
David Smith (13:13):
Most often. I would agree with that that the courts do a really good job in construing terms fairly and in accordance with how someone would really understand it. All right. So clearly, same construction is a crucial part of patent litigation, and maybe we’re biased, but I think we both agree that it usually goes better when an expert is involved in claim construction. But after claim construction, what’s the next step in patent litigation? Where do you go after claim construction?
Nathan Macdonald (13:49):
Well, after claim construction, it depends on the nature of the case, but it’s gonna be one, generally one of two pathways. If we are retained by counsel for a plaintiff, then we’re going to do an infringement analysis and we’re going to take a look at the accused product and compare it with the claims as properly construed and determine if we believe that there’s infringement that’s taken place.
David Smith (14:21):
Okay.
Nathan Macdonald (14:21):
If we’re retained by counsel for a defendant, then the next thing that we’ll do is generally an a validity analysis, and we will take a look at the claims that have been asserted and compare them with prior art and determine if these claims are, you know, if we believe these claims are actually valid or not.
David Smith (14:46):
And those usually happen at the same time, right? Both sides. That’s right on those at the same time. And you actually submit reports on those issues at the same time, on the same day, typically.
Nathan Macdonald (15:01):
That’s right. And then 30 days later, you exchange reports again and rebuttal reports, so,
David Smith (15:07):
Okay. Yeah, we’ll get to that. So, talk to me about infringement. How might an expert go about showing infringement in a patent case?
Nathan Macdonald (15:17):
Well, the way we typically do that is the ordinary and customary way is by putting together a set of claim charts. Infringement generally takes less by way of claim charts than validity. Because validity can often be, you have multiple considerations. Is it valid with respect to this prior art or that prior art. But infringement is with respect to just the accused product, which I guess you can have multiple claim charts that way, too, if there are multiple accused products. But essentially, you step through each limitation of each of the asserted claims, and you do a side-by-side comparison with the accused product. And it’s kind of like, you know, if you have a stencil and you have a backlight and you’re trying to put it over top of the accused product and see if there’s some way that it lines up
David Smith (16:17):
Mm-hmm
Nathan Macdonald (16:17):
If it does, then there’s a case for infringement. If it doesn’t, then there isn’t infringement.
David Smith (16:26):
Okay. And so, when you do that, how detailed does that analysis need to be? Is it okay to just say, Hey, look, these things are pretty much the same, therefore it infringes or, how detailed does that need to be?
Nathan MacDonald (16:41):
Well, I have come across infringement analyses from other experts that are basically as cursory and conclusory as that. And that’s generally insufficient. You have to look at, because the way the claims need to be read is specifically, every word in every claim has meaning, and it has to be present in the accused device. So there can’t be any hand-waving approach. It has to be every word; it has to meet every word of every claim, essentially.
David Smith (17:25):
Okay. So there is an exception to that, though, right? If there’s a limitation that isn’t literally found in the accused product you can sometimes show infringement under what they call the doctrine of equivalence.
Nathan Macdonald (17:43):
That’s right.
David Smith (17:45):
Talk to me about that. Have you ever had to do anything like that? Or what does that look like?
Nathan Macdonald (17:50):
You bet. And yes, what I was describing is more literal infringement, which is where you start in terms of an infringement analysis. There is also infringement under the doctrine of equivalents. So the way it works is it’s very hard to write patent claims and specifications as 100% clear and definitive. And so, basically, patentees are given some leeway in that they are able to exclude others from the market for literal infringement as well as equivalence thereof. And equivalence has to be such that there are only insubstantial differences between what is claimed and what is accused. And one way, the common way to do that test is with the function way result test. And, you can do that by determining if the accused device performs substantially the same function, in substantially the same way, and produces substantially the same result. And, if you can show that there are only insubstantial differences, there may still be a case for infringement, though I would also say generally a DOE or doctrine of equivalence argument is not always, is not as strong as a literal infringement argument.
David Smith (19:29):
Very true. So can you give me an example of a case that you’ve worked on where you use the doctrine of equivalence?
Nathan Macdonald (19:37):
Yeah, you bet. And this is an interesting case because it’s a little bit different than, you know, the vast majority of the time, the way that you’d evaluate doctrine of equivalence or whether something is an equivalent is with function way result tests. But the specific verbiage is not necessarily a function way result test; it’s whether there are insubstantial differences between the accused device and the claims. And so, one of the things that we’ve done in the past, I was working on a case with blenders, blender jars between two pretty big companies, well-known companies that do blenders. And there was a question as to whether a particular piece of jar geometry would be equivalent to other jar geometry. And basically, one of these companies, they had a patent that issued, and they went and filed an infringement, you know, a patent case against this other company.
Nathan Macdonald (20:48):
And the jar geometry had little protuberances that were in the wall in the periphery of the jar. And the question came up as to whether those were insubstantial or not. And so I did some testing, blender testing and did a bunch of different sequences with that. I designed and programmed the electronics to run the blender testing. So, they did a full statistical analysis of a randomized control. And, you know, there’s a control and an experiment side of this, and did in a randomized order, and did a full statistical analysis and showed that there was a statistically significant difference between the blending performance of one jar versus the other. In other words, there was more than an insubstantial difference between the two.
David Smith (21:45):
Yeah, that’s really interesting. That sounds like a lot of work to show that, to show that. But in reality, that’s what the case comes down to. And so it’s worth the effort, and it’s worth the time to go through and do that sort of analysis.
Nathan Macdonald (22:01):
Oh yeah, definitely.
David Smith (22:02):
Yeah. No, that’s really, really interesting. All right. So, before we talked about, you know, one side does infringement, the other side does invalidity at the same time what is invalidity and what are different ways that an expert might show a patent to be invalid?
Nathan Macdonald (22:26):
Well, there are a variety of ways. There’s a variety of criteria that must be met in order for patent claims to be considered valid. And there are two that are the main challenges for patents: anticipation and obviousness, though there are other ancillary considerations, such as lack of written description, lack of enablement. There’s the on-sale bar, you know, there’s various other pieces here. Indefiniteness, it’s probably, you know, after anticipation and obviousness, I would probably say that indefiniteness is probably the next most common challenge for validity. But by and large anticipation and obviousness are the two biggest, two most prominent challenges that are most often made to the validity of patent claims.
David Smith (23:26):
Okay. And so what does, what does that mean if a patent is anticipated, what does that mean and why does that make it invalid or an unenforceable patent?
Nathan Macdonald (23:39):
Well, if somebody’s you know, basically fundamentally the patent process is an exchange, right? So, we have inventors who nominally will contribute something to the development of a field that will give us new products that have new functions or new methodologies that would be beneficial to society. And in exchange for that disclosure and that value, we give them, you know, society gives them the opportunity to commercially exploit that and to be able to exclude others from being able to do the same. Because it takes more work to develop this than it does to copy. And if we didn’t have a patent system, then patentees, you know, inventors would be basically taken advantage of. They’d do all this work to develop something new, they’d put it out in the marketplace, and then somebody else would copy it and put them out of business straight away. So there’s not a whole lot of motivation to invent at that point.
Nathan Macdonald (24:44):
So, in order to enjoy that privilege of being able to exclude others from the market, their invention needs to be a real invention. It needs to contribute real value. It means it needs to be, you know, as, as the laws have been written, it needs to be new and non-obvious. So anticipation means basically if a claim is anticipated, that means that it’s not new, that every limitation in that claim has already been done by somebody else. It doesn’t even have to be in the same industry. It can be, you know, anywhere, in the prior art. If it’s already, if we can show that it’s already been done, and therefore this is not new and not inventive, then that’s what anticipation means.
David Smith (25:35):
Okay. So yeah, it’s interesting. I worked on a case not too long ago that involved a stadium chair, and the way that, you know, the seat part of the chair would lift up so people can walk past it when they’re getting to their seats. And the patent was fairly new. It was not very old, you know, five, 10 years old. And as I was looking through prior art and searching to see, you know, what had been done in the past, I found a patent from way back in the early 19 hundreds, like 1920, 1930 time period that showed exactly like you talked about, it showed this exact invention had been done almost a hundred years ago. And I sent that patent on to the attorney, and he was amazed. He was like, where on earth did you find this patent? This is really good prior art. And so it was, it was kind of fun, you know, probably sad for the patent owner, but you know, for the person that they had accused of infringing, it was great to show that, hey, this patent isn’t valid or shouldn’t be valid because everything that you’re claiming was done way back in 1930.
Nathan Macdonald (26:59):
No, it is what it is. You know, and I understand, you know, the patent, the patentee probably feels like they at least independently developed this. And so they weren’t looking at that piece of prior art when they were putting together what they supposed to be inventive. But at the end of the day, if it’s not new, it’s not new. I’m sorry.
David Smith (27:19):
And that’s the way it works. You know, have you had any cases that you worked on where you’re able to find anticipation or obviousness?
Nathan Macdonald (27:28):
Oh yeah, you bet. You know, in terms of an anticipation specifically though by and large, it seems to me the most common validity challenge would be in terms of obviousness. But for anticipation specifically, you know, I remember working on a case with decorative hardware, for instance, for fascinating license plates and the like. It’s a whole industry. And there were some utility patents and some design patents in that as well. You know, there’s different types of patents here. And in that case, we had some anticipatory references that we found in the prior art, specifically for the design patent. And that you know, we put them all side by side in our, in a claim chart. And it was, you know, we had probably four or five different anticipatory references, and they all looked identical to the claim design, and they were in the same, you know, they met the same article of manufacturers so, you know, they’re decorative hardware and the like. So it came down to a very strong anticipation argument that we were able to make there. You know, I’ve also done, you know, like you said, you know, not only is there prior art in the patents, and you sometimes there are patents that are not found in any kind of prior art search.
Nathan Macdonald (00:29:01):
So they end up not being disclosed, but they end up needing to be disclosed because they’re important to whether this piece is inventive or not. There’s also non-patent literature. There’s non-patent prior art. And you know, I’ve worked on many cases where non-patent prior art is very important. You know, basically, if it was known and in a person, ordinary skill in the art, they’re presumed to be aware of all of the prior art that’s publicly disclosed. And if it’s already known, then I’m sorry, you know, that’s, this isn’t new. And so, you know, looking at we, you know, we have a series of manuals and catalogs and different search strategies that we have that help us really get a good feel for not just the patent prior art, but also the physical products that are, that are prior art.
Nathan Macdonald (00:30:02):
We have catalogs by year, you know, and we have a lot of reference material and books and the like, spanning over the, you know, the past 50 years worth of material. And those sorts of resources have become very valuable over the years for us. You know, we’ve also done, I’ve worked on a case that involved concrete reinforcement pieces. You know, they’re little toothpick size concrete, concrete reinforcement bars that are twisted. And what we found in that case was that the patentee had actually been commercially exploiting this well in advance of the, you know, well, well before the critical date of the patent. And so we were able to find, actually find some of those installations, and do the inspection and, and show how, look, this was, you know, that’s, that’s the on sale bar that came into play in that one in terms of validity challenge as well as there was a lot.
David Smith (00:31:14):
And that’s where the company, they’d been using this technology, you know, making, using, selling the technology for a period of time greater than a year. And then, that’s right. They decided, Hey, this is really cool, let’s patent it. And that’s not how it works, right?
Nathan Macdonald (00:31:31):
That’s right. It was certainly not just an experimental use. This was, let’s sell this product and let’s put it out into the market. Oh, and then much further down the road, let’s try to patent it anyway.
David Smith (00:31:46):
Right?
Nathan Macdonald (00:31:47):
Yeah. That’s not allowed, so, all right. But I’ve also done a lot of obviousness arguments. You know, even for instance, in the that same decorative hardware case, you know, the, there were many great obviousness arguments that were, you know, based on the prior art and both patent literature and non patent literature that you know, showed that this, this alleged invention was you know, the design patent was anticipated, and the utility patent was was definitely at the very least obvious, you know, and fit multiple of the rationales of obviousness. And it was, it was a pretty clear argument that we were able to make there.
David Smith (00:32:35):
So let’s talk about obviousness for a reason because to the average person, you know, obvious has a meaning, you know, something that makes sense or, you know, you can see it happening that way. But obviousness in patent litigation has a very specific meaning. Can you talk to that a little bit?
Nathan Macdonald (00:32:57):
It does, and I think that’s primarily because it’s a legal matter, a legal question that has to be adjudicated. So, we have to get specific about what obviousness means. I think fundamentally, though, what it means is generally consistent with what the term would mean in common parlance, you know, whether it’s obvious or not. It’s just that now we have to get specific about it, right? Determine if it’s specifically obvious. But generally, if somebody does something that’s maybe it hasn’t been done all in one place, as-is before, but it’s just combining known methods in known ways and producing highly predictable results. Or it’s, you know, it’s perhaps the result of ordinary design tasks that are routinely carried out, or, you know, perhaps it’s the combination of elements from, you know, one or more pieces of prior art. And there’s a motivation to combine that is not based on hindsight bias, then, and, and it’s with analogous art. Then there could be a good argument. There are several different rationales of obviousness, but basically, if this is the case, then I’m sorry, there’s still nothing that’s actually truly inventive that’s been done here. And this right to exclude would be improper or unfair.
David Smith (00:34:34):
Yeah, absolutely. So I find that in patent litigation, it’s actually very important to understand the law to some degree when you’re putting together these arguments and writing these reports so that you can make arguments that are in accordance with the laws. Because a lot of times we see people making arguments that don’t have a legal basis. It doesn’t turn out. So, alright. So we talked about this, you know, initially, you know, both sides are writing a report, the infringement report or the invalidity report. And then after those reports are submitted, you had mentioned earlier, usually it’s about 30 days to write a rebuttal report. Talk to me about those rebuttal reports. What do they, what do they look like? You know, how do you show, you know, what are you, what are you trying to do in those rebuttal reports?
Nathan Macdonald (00:35:46):
Well, you know, you would think that if the questions at play were extremely straightforward, that, and you retained two different independent experts to analyze and opine on a subject matter that maybe they’d come up with the same opinions and there wouldn’t be anything, you know, they’d be in agreement. There wouldn’t be anything to rebut. And certainly, there are some aspects of a case where there’s not really a dispute, and expert reports on those particulars end up being consistent with each other. But it really comes down to taking a look at you know, an opposing expert’s work and and analyzing and opining, and as appropriate, you know, if there’s something that they did that you don’t agree with, or that there’s some kind of mistake that you believe that they’ve made to, to provide rebuttal opinions on that.
Nathan Macdonald (00:36:42):
And so I’m, as far as patent work goes, I’m a pretty straight shooter. I don’t, I write my own reports, and there’s a good reason for that. And, you know, I try to operate in as fair of a way as I possibly can for the best possible outcome, the outcome that should happen in my opinion. And so, when it comes down to reviewing another expert’s report I’ve all too often found that not every expert adopts that same mentality. And sometimes they are very, very biased. And that bias shows up in the report, and those are the types of opinions that you know, that maybe they’ve gone out on a limb to try to make an argument that’s in favor of the client that retained them. And I generally am not in favor of that. And so I will, I don’t think that’s necessarily appropriate.
David Smith (00:37:47):
Yeah. Sometimes, it might be intentional. Other times though, it may be that they just made a mistake. You know, they made a mistake, they did a calculation wrong or they misread something.
Nathan Macdonald (00:37:58):
Certainly.
David Smith (00:37:59):
You know, I did a, I did a case, so in this particular case, the claimed product was flat. And when you’re looking at a 2D drawing, a lot of times, things look flat. But if you actually read the patent and the description of the figure that he relied on, it said that this is round and has three equally spaced fins on it, which is not flat at all. And so, you know, in that instance, we called him out on that and said, “Hey, you know, your analysis is incorrect. What you’re saying that this patent discloses is actually not what this patent is disclosing, and therefore, your analysis is incorrect.”
Nathan Macdonald (00:38:47):
Sure. And that can absolutely happen. There’s always the, the figures of a patent are just as much part of the specification as the text, and they need to be interpreted in a way that is consistent with one another. There are, at the same time, there are things that are gonna be in the text that are not in the figures, and they’re gonna be things that are in the figures that are not in the text. But if you’re going to espouse an opinion that is pointing out, you know, that is, that is, you know, and, and, and I’ve come across patents that have mistakes in figures, like sometimes the figures are actually drawn wrong. And I as a POSITA can review that and say, look, they’ve drawn something that doesn’t comport, you know, this isn’t actually, you know, I’ve even done cases where the patent figures were a bit of an Escher sketch.
Nathan Macdonald (00:39:37):
And you know, this is something that doesn’t physically look this way, and now that’s particularly more important when it comes to design patents. But even in utility patents, if you’re going to espouse an opinion about what’s disclosed in the figures, unless there’s an error in the patent, which can happen, then the figures ought to be interpreted in a way that is consistent with the text. And they, the text tells you what’s in the pictures, essentially.
David Smith (00:40:08):
Absolutely. Absolutely. So, one of the things that my mentor taught me when putting together, you know, an infringement report or an invalidity report, is that you have to be precise and you have to take great care because there’s most likely going to be a whole room full of very smart people trying to poke holes in anything that you say, trying to show any mistake that you’ve come up with to discredit you or discredit your arguments So that their side can win the case, and essentially that’s what these rebuttal reports are, right? They’re trying to, you know, looking at and analyzing, and sometimes there’s not much to rebut, and sometimes there’s a lot of things that you can rebut. And it really depends on, you know, what’s been written. And so, that gives the other side a chance to look at what an expert has said and whether or not what they said should be reliable, whether or not it’s trustworthy information, and, and give the court both sides of the coin to consider when they move forward and try and make decisions.
Nathan Macdonald (00:41:26):
Yeah. And I’ll give you an example of a rebuttal argument that I had to make. This was a few years ago, I was doing a patent case on urinal screens, of all things. You know, it’s not you know, it’s not everybody’s favorite subject necessarily, but in this case there was an opposing expert and he had written a report having to do, you know, trying to show that there was some kind of infringement going on here. And it was very clear as I was going through this opposing expert’s report that he didn’t have any experience with patent litigation. You know, he was an inventor himself, and he had a patent, but he didn’t have any experience with disputes in terms of infringement or validity. And what I showed in my report was that the accused product actually practiced a design, a utilitarian design, that was already contained in the prior art.
Nathan Macdonald (00:42:42):
It was basically another instance of prior art that was expired and, no more, no less. And as you know that which after infringes, if before invalidates, and in this case, in my opinion, this wouldn’t exactly comport with that because I don’t think there was any infringement. I think they were just different, and the accused product didn’t actually read on the claims but specifically, since it practiced a method in the prior art, you know, if it had a design that was already, had already been done, and was old hat essentially, then it would be impossible to, you know, it should be impossible to read the claims broad enough to ensnare the accused product without becoming simultaneously so broad and too broad to be valid anymore.
David Smith (00:43:43):
Yeah. It’s interesting how that works. Writing patent claims is a science and an art. And to be able to do that in a way so that you claim as much of the space as possible without claiming so much that you become invalid is, hats off to the guys that do that because that’s a lot of really hard work. You gotta keep a lot of stuff in your head as you do that.
Nathan Macdonald (00:44:18):
For sure.
David Smith (00:44:19):
Alright, so let’s review for a little bit real quick. So first, we did claim construction. An expert may write a report or declaration for that. Then we talked about infringement or invalidity. An expert may write a report for that. Then we talked about rebuttal reports, which would be non-infringement or validity, and maybe a third report written by the expert. So there’s a lot of work that goes into these cases, both by experts and, you know, even more by the attorneys that are working on the case.
Nathan Macdonald (00:44:51):
Oh, yeah, for sure.
David Smith (00:44:52):
And, so after these, you know, three, possibly three reports, you get to the point of a deposition. And in my experience, depositions for patent cases are pretty different from depositions for, for example, a personal injury type case. In your experience, talk to me about depositions on patent cases.
Nathan Macdonald (00:45:21):
You bet. I’ve been deposed in personal injury cases as well as in, as well as in patent cases and on, on multiple occasions. And there they are. It’s a fundamentally different animal. Everything from the way the law is written to the subject matter and the like, personal injury cases are, you know, there are salient points and, and crucial facts that need to be established. And that will vary from case to case pretty wildly in personal injury cases and in patent cases,on the other hand, though, they are far more consistent in terms of where the salient points will be, where the most critical arguments were the, you could, you could call them the frontline of the battle, you know, the battle front, if you will. They tend to be fairly consistent from point to point.
Nathan Macdonald (00:46:21):
Now there will be some variation based on this claim element or versus that claim element. It’s construed in this way versus that way. But from a 50,000 foot point of view, you know, the structure of them is pretty similar. And so, a deposition on a patent case will generally reflect this fact. And so, it’s, it’s very, very easy to see where a line of questioning, especially if you’re familiar with how patents work and how patent litigation works, you know, the, the terms, you know, that you’re familiar with the jargon and the, like, it can be very easy to see where a line of questioning is headed. And that way it’s, you know, what the attorney has taken your deposition is trying to get out of you. Or, you know, it depends on the attorney.
Nathan Macdonald (00:47:17):
Some attorneys are asking legitimate questions. Some are trying to manipulate you, though, and you’ll get everything in between. And sometimes they’re trying to manipulate you into some kind of contradiction or alleged contradiction. Sometimes they’re trying to manipulate you into making a statement that would be, you know, in favor of their side. They’re kind of militaristic about it unfortunately, when it should be an honest inquiry as to whether something happened here that shouldn’t have happened, and what do we do about that? And so it becomes important to keep an eye out for where they’re trying to head and respond accordingly. I remember, for example, there was a case I was deposed in a number of years ago, and it was actually a dual case. And so that deposition ran for 12 hours. That was the longest deposition I’ve done so far. I guess we won’t, we don’t know. Maybe I’ll have a longer one at some point in the future here, but that was a pretty long deposition. It was a long day.
David Smith (00:48:29):
That is a long day.
Nathan Macdonald (00:48:31):
Yeah. And so it actually went really, really well. Fundamentally, we got some very good points in you know, to help with adjudicating the matter properly. But it can be; it’s a challenge unto itself, like by the time a deposition drags on and on to stay sharp and alert and attentive to what’s going on, because everybody’s going to start to get fatigued.
David Smith (00:49:03):
So a couple things that you mentioned that are very similar to what I’ve found is that depositions are somewhat like a chess match, where you have to kind of anticipate where things are going so that you can answer the questions appropriately. And oftentimes. I’ve been told that the best outcome for a deposition is to not lose. You can’t win in a deposition, but, you know, if you answer questions wrong, and, you know, maybe that’s what the facts support, but cases can be lost in depositions but they’re rarely ever won.
Nathan Macdonald (00:49:50):
Sure.
David Smith (00:49:53):
So, depositions are great for both sides to be able to clarify and really understand what the experts have written in their previous reports. And particularly in patent cases, when you get to trial, the expert can only testify on things that they’ve already said either in their reports or in their depositions. And so if there’s something that you think is important or that’s come up after your reports that you want to be able to testify on, usually you try to get that in and talk about that in your deposition so that if and when it comes up during trial and there’s an objection, then they can point to that in the deposition and say, look, this has already come up. They already knew about this. This is not new information. We should definitely consider this in this case.
David Smith (00:50:52):
You know, I had a, I was in a trial a couple of years ago, and it was on some vacuum cleaners and the motors and things like that, and we had talked about how the motors had different settings. It would be on a high setting for part of a cleaning cycle and then on a lower setting. And for one particular piece of prior art, I hadn’t talked about that in my reports. And so in the deposition, the attorney asked a question like, was there anything else that you wanted to say about this particular piece of prior art? And so I added that in, and I said, “Hey, you know, one thing that is really important to understand is that the motor in this piece of prior art changes speed during the self-cleaning cycle.” And when we were in trial I brought that up, and the other side objected to it. And so, you know, both sides, you know, went back to the documentation, and my side, you know, pulled this up in the deposition, and the judge says to opposing counsel, he says, “you did ask him this question, right? And, this is how he answered.” And the guy said, “yes, I did.” He said, and the judge says, “all right, then we’re gonna let it go.” And so,
Nathan MacDonald (00:52:15):
Yeah, that’s how it works.
David Smith (00:53:16):
Depositions are a good way to clarify and really solidify your opinions as you go through and prepare for trial.
Nathan Macdonald (00:52:25):
You know, and I would even go so far as to say, you know, look you know, you as an expert, I put together my analysis in my opinions, and I’ve supported them in my report. And the deposition is where I get to be questioned as to whether, you know, whether I’ve dotted my i’s and crossed my T’s. And, you know, if my opinions really are correct, they ought to stand up to scrutiny. And so I’m happy to be deposed on anything that I’ve written down in a report. Because I’m not gonna put something in a report unless I feel strong enough, like I can defend it in a deposition if somebody’s gonna try to poke holes in it. And so in a very real way, it’s kind of like defending your thesis essentially, you know, and I think that fundamentally, while it’s important to know how to communicate effectively, it’s also at the end of the day, right is might, as far as I’m concerned.
Nathan Macdonald (00:53:22):
And so that’s, I’m, it’s usually very exciting for me to be able to see, you know, here’s the, the biggest, you know, baddest and best arguments that somebody else, some very smart people have been able to come up against me with. And how am I gonna respond? You know, if they can show that I’ve made a mistake, I will, I have no issue admitting that, and I have no issue correcting that. But if they, if all they come up against me with all that they can come up with, and it still doesn’t change any of my opinions, it’s by and large, most often the case for me. Then, there you have it.
David Smith (00:54:00):
Yeah. If you’ve done a, if you’ve done the work, putting your reports together, then depositions usually aren’t that big a deal.
Nathan Macdonald (00:54:08):
That’s right. And that’s been my experience for sure.
David Smith (00:54:12):
All right. So, every once in a while, a patent case will still make it to trial, and trials and patent cases are a huge amount of work, trying to get all of the different pieces in place and present that clearly and concisely. Patent cases are often, you know, 3, 4, 5, 6 years worth of work for whole teams of people. And then, then we get to the trial, and we try to present this to, you know, six, eight, maybe 12 people, jurors that really don’t know anything about patent law that haven’t been immersed in this for the last five years, and give the decision-making power to them. I’ve always just found it kind of interesting that it turns out that way that you put so much work into this, and then we essentially hand it over to a jury that, you know, they only get a small taste of everything that you’ve gone through over the last years. So
Nathan Macdonald (00:55:21):
It’s true.
David Smith (00:55:22):
But I mean, I think you’ve found this too, but generally speaking, in the cases that I’ve worked on, the jury gets it right. You know, the legal system may have some flaws, but overall, I think it does a very good job of getting all the facts together and arriving at the right outcome.
Nathan Macdonald (00:55:47):
But it’s also a matter of how effective a communicator is, and being able to make this complicated system, you know, the patent system is very complicated certainly for somebody who they had no experience with it prior to this case, such as a juror. And so an effective communicator really makes a huge difference to be able to make this complicated thing look very, very simple and boil it down to the simple points. Right. I think, you know as you can agree for sure, with the experience that you have, and based on my experience, a lot of times what a patent case boils down to really is fundamentally quite simple. And I think to that end, to the extent that that can be effectively communicated and that the decision can be made clear and easy, that’s where you have the highest likelihood of a jury being able to make the right choice. And all of that has to come together, you know, in a procedural symphony of sorts to make that outcome happen.
David Smith (00:56:54):
Absolutely. And kudos to the attorneys that do that.
Nathan Macdonald (00:56:59):
Oh yeah.
David Smith (00:57:00):
Most of them do an excellent job.
Nathan Macdonald (00:57:03):
That’s right.
David Smith (00:57:04):
And I’m just happy to play a small part in that as an expert witness, so.
Nathan Macdonald (00:57:11):
Absolutely.
David Smith (00:57:13):
All right. Well, Nathan, thank you so much for being on the podcast today and for talking through the different stages of a patent litigation process. It’s been fun to share stories and learn from you, and hopefully this has been educational and entertaining for any of the listeners. So thank you again for being here.
Nathan MacDonald (00:57:34):
Yeah, thanks for having me.