FORENSIC ENGINEERING TESTIMONY in an OIL & GAS … ENGINEERING TESTIMONY in an OIL & GAS PATENT CASE by Gerald J. Hietpas, P.E. National Academy of Forensic Engineers (NAFE) January,

Footnote: Author – Gerald J. Hietpas, P.E. as President of Causey Engineering, LLC P.O. Box 341057-0018, Austin, TX 78734 April 2009 Page 1 of 23

FORENSIC ENGINEERING TESTIMONY in an OIL & GAS PATENT CASE

by Gerald J. Hietpas, P.E.

National Academy of Forensic Engineers (NAFE)

January, 2009 Austin, TX

ABSTRACT

This paper covers basics for a Forensic Engineer interested in learning how to

work on Patent cases. It assumes the reader is familiar with other forensic work such as serving as an Expert on a civil case. It discusses a specific Intellectual Property case from the Experts point of view, and the associated patent research. It explains how a patent is organized, and how to find patents of interest. It covers the basics of patent law that an Expert must deal with. And it gives references for additional information.

CASE DESCRIPTION Mr. Hietpas testified for a Defendant as an Expert in an Intellectual Property case

where a former employer filed suit against a former employee alleging breach of a Confidentiality Agreement and violations of the state’s Unfair Trade Practices Act. The Plaintiff was an oil drilling service firm in Louisiana. The Defendant worked for the Plaintiff from 1994 through 2004. He was the head of the Special Operations Group, a design and engineering group charged with the responsibility to conceive, invent, and construct new oilfield tools for the Plaintiff.

The Defendant was an experienced machine designer when he came to work for

the Plaintiff, having a number of Patents to his credit. At the start of his employment with the Plaintiff, the Defendant signed a Confidentiality Agreement, a contract that precluded the Defendant from disclosing to third parties any of the Plaintiff’s confidential and proprietary information. During the last couple of years working for the Plaintiff, the Defendant had been asking for more money, but could not work out an acceptable wage, gave notice, and quit. The Defendant shortly thereafter set up his own company, and obtained a contract to design a Flush Mounted Spider (FMS) for a cross-town competitor of the Plaintiff.

While the Defendant was yet employed by the Plaintiff, he and others there had

worked on such a tool off and on, but did not build it. Other competitors did have an FMS out in the oil patch. The Plaintiff contends the Defendant relied on confidential and proprietary information belonging to the Plaintiff in designing the FMS after he left the Plaintiff’s employment. In his defense, the Defendant contends he designed the FMS on

drawings he developed from scratch, his own calculations, as well as generally known and readily available information obtained from textbooks, patent records, Experts in the field, and the Internet.

During the 3 1/2 week long jury trial, the Plaintiff had a five-lawyer team in court,

a librarian, and other assistants, headed up by a patent attorney. The Defendant was a “poor boy” by comparison with two lawyers, headed up by a patent attorney, and sometimes an assistant. The Plaintiff took 3 weeks to present their case, the Defendant used 2 days. The jury found that the products developed by the Defendant after he left the Plaintiff were not substantially derived from the Plaintiff’s confidential and proprietary information. They decided in favor of the Defendant on all counts, and the Plaintiff’s claims were found to be in bad faith, warranting an award of attorney fees to the Defendant.

A common thread in the defense was that the claimed Confidential Information

was “known or knowable to one familiar in the art”. To defend against some claims, the defense used common items to demonstrate that the concept was known. This will be discussed later. Patents were used to defend most of the claims. Patents are public knowledge, and therefore not Confidential Information. The Defense legal team searched for patents that included references to the claimed Confidential Information. And the Plaintiff’s legal team had all of the patent computerized search tools as well. As it turned out, over and over again during their 3 weeks of presentation, the Plaintiff attorney had developed a fist-pumping action while saying the “combination of the split case, spring retractor, and stepped die seats” was the Confidential Information. That is, it was not any particular one of those concepts, but the “triple combination” that was Confidential Information.

The Defense understood that there is case law covering combinations to which

he was making reference. However, the Plaintiff had not introduced the “combination theory” until just before the trial. So during Mr. Hietpas’ cross examination, he looked for an opening where he was able to refer to one particular patent on his list where “the casing has the added feature of a hinge for ease of handling, but if you don’t like it, pull the hinge pin, and use it that way as an unhinged split casing, it will work fine.” Fortunately Mr. Hietpas had that patent on his list ---, and perhaps the only U. S. Patent in existence with that combination --- if a hinged split casing counted! The jury decided it counted.

Obviously the Plaintiff team could search patents too. It appeared they looked

until they found a combination they thought did not exist in a patent --- if they could convince the jury a hinged casing was not a split casing. All this is mentioned only to indicate the level of preparation and detail that is required on a patent case.

A Flush Mounted Spider is used on the drilling rig platform, where it grabs, holds,

lowers, raises and spins casing or drill pipe in the hole. In deep well drilling offshore the casing might be up to a two-mile long 30-inch diameter pipe hanging down a drill hole. The spider grips the casing or drill stem like a drill chuck grips a drill bit, but is more

Prepared by G.J. Hietpas 7/28/2009 Page 2 of 23

sophisticated, and sized to handle a specified range of pipe diameters. The tool must securely grip the top end of the long heavy pipe without crushing it, and never let it be said your FMS dropped a casing or drill stem down the hole. There are a number of other inventors holding patents on spiders, or parts of it, and various versions of spiders that have been in use in the oil patch for years.

As the Expert Witness, Mr. Hietpas needed to educate the jury how his

understanding and experience in tool design transferred across industries. He explained how the FMS works by comparing it to how a commonly known item, the drill chuck, works. Below is the exemplar he developed:

Given that Mr. Hietpas’ working experience was in the pulp & paper industry, sawmills, and engineering and construction of primarily those type plants, why was he retained as an Expert on a Confidential Information infringement case for oil patch equipment? The defense lawyer who retained him found him on his web site. The lawyer did not know Mr. Hietpas. He had not worked in the oil patch industry, but he did call on oil field service firms in Houston to offer general facilities design. He studied a book that explained oil & gas drilling. Most every industry has a few introductory books. The defense lawyer was looking for an Expert in “flush mounted spiders”, a rather obscure tool. But he took Mr. Hietpas’ advice to hire a machine tool designer with industrial forensic experience. Mr. Hietpas had done machine and tool design in other industries. He told the lawyer the design office scenario; the drawings, the buy-outs, the


custom machine shop practices, the field-testing and several other buzzwords were all so familiar to him. It was the truth. He could spread the figurative net wider than just the oil patch. And the lawyer agreed.

By the time Mr. Hietpas got on the stand at trial, a dozen oil patch engineers and designers had testified during the exhaustive 3 weeks used by the Plaintiff. The defense team knew Mr. Hietpas’ lack of oil patch would be an issue. So on direct examination, he testified that he was a mechanical engineer, an experienced machine tool designer, that there are but six basic machine elements, and he listed them off. He told a story of his visit to a Chicago museum the weekend before, and saw a model of the moon rover, a machine designed by the very brightest. Money was no object, the best of everything for the moon rover. On close examination he noticed that there was not a single machine element that was not included in the six he had been taught in engineering school. It would be the same on the moon as it was on earth, and as it was on an FMS. It struck him how machine design of equipment has the same elements no matter what industry.

On cross-examination, the questions soon dealt with Mr. Hietpas’ credentials; did

he ever go out on a drill rig in the Gulf? He had anticipated a challenge of his credentials, answered “no”, but added that he had worked thirteen years with a big oil patch firm in Houston. He capped it off on redirect by saying he had broad machine tool design experience, and in that regard had every bit as much experience as any oil patch engineer who had preceded him on the stand. He sprinkled in a few oil patch terms for good measure. Every industry has some. He was not down in the trenches with them, but he was not up at 40,000 feet either. Rather, he was like in a helicopter, close enough to meld the details into a broader perspective, and know that his opinions were based on facts he could back up.

Like others, Mr. Hietpas was able to use a reference binder on the stand. It had

all the patents he used to form his opinions, well annotated and tabulated. It became apparent that if he was able to find this claimed Confidential Information in the public domain, certainly a machine tool designer working in the oil patch industry, i.e. the Defendant could do so as well. But of course to do so, he had worked hard being diligent and thorough, and used his forensic experience on the stand to exude confidence in a planned communication with the jury.

Most of the Plaintiff’s claims were FMS features that the defense wanted to find

in earlier patents, if they indeed were there somewhere. For these ten features/claims, Mr. Hietpas was tasked with finding patents that had included some or all of them. Soon after reading several patents he realized that he needed a way to keep track of what he had uncovered. More importantly, he needed a way to show the jury what he had found. He developed EXHIBIT 3 shown below. Both the Defense lawyer and the Plaintiff’s lawyer put this spreadsheet up on a large screen in the courtroom for everyone to see. Mr. Hietpas briefly explained the chart below:


On direct examination he was able to say how he read about 50 patents found on

the U.S. Patent Office website using their search tools. When he got the chart developed this far, he had done what he had set out to do, so he quit. He had found multiple patents where every one of the ten features had been divulged. And every patent he put on the spreadsheet had multiple pink cells. He finished the answer by saying, “there is a lot of pink on that chart” and sat back, silent. The chart and the pink visually screamed that the claims were not “Confidential Information” since he found them all on the Internet. Mr. Hietpas chose pink as an effective color for him. His large stature and persona does not turn the men off, and the ladies like it. His point is, think, keep it simple, and develop an effective and well-orchestrated visual. Leave nothing to chance.

DEFENSES OTHER THAN PATENT DEFENSES

The Plaintiff alleged the Defendant violated the Confidentiality Agreement on five specific pieces of information where patents alone were not a strong defense. Also, some were quite remote from the FMS, and therefore did not lend themselves to the


above chart that concentrated on FMS features. Here are those five claims and how the defense responded:

1- The design of a flush mounted spider with a universal profile. In the business, there are four drive manufacturers, each with a different odd shape that must match to engage the spider to rotate it. A FMS with a universal profile allows the flexibility of using any of four drivers out on the drill platform, because they all match. The Plaintiff claimed that the Defendant’s FMS universal profile looked like theirs, and it did until close examination. They also claimed the concept of a universal profile was confidential; the defense was that the concept of a universal drive was out in the oil patch in several different versions for all to see. The Defendant’s CAD designer explained how a designer would go about acquiring the exact dimensions from the four drive manufacturers, and by overlaying and rotating them on CAD, a universal female profile for the FMS could be developed by cutting away the hole to suit each driver. And that this type of design work is part and parcel of the methods a machine tool designer uses. So the design techniques were not Confidential Information. Mr. Hietpas, as the Expert Witness, helped drive the point home in his report by explaining the development of a 12-point box-end wrench, and a 12-point socket wrench, that was a universal profile that fit both square and hex nuts and bolt heads. The defense’s multi-approach was persuasive.

2- Stolen CAD templates of the Plaintiff’s drawings. The Plaintiff’s employees used their personal laptops in the Plaintiff’s office for design work, including AUTO-CAD. The Defendant testified that no AUTO-CAD drawings or title blocks were found on his computer, because he did not have or use AUTO-CAD himself. One of his designers at the Plaintiff’s office who used AUTO-CAD was a job-shopper, and later left the Plaintiff to work for the Defendant. In discovery the Plaintiff found the Plaintiff’s drawing “title block” on the job-shoppers PC, and pressed the point that it had to have included full drawings as well. The Defendant’s response was that this was just a “title block” with the Plaintiff’s name and included the usual machining tolerances common in the machine tool design business. It was an inadvertent mistake to not have deleted it from the laptop, and in no way was instrumental in designing the FMS. It turns out that in the ordinary use of AUTO-CAD while yet employed at the Plaintiff, the title block was copied many, many times all over the hard drive, and it was difficult to find and delete all the copies.

The Defendant’s designer connected his lap-top to the large court room screen for the jury to see, and the Defendant’s lawyer put him through a well planned rigorous examination wherein the jury could see the Defendant’s designer had no motive to use or want the title block, and was largely unaware of all the places it existed until he needed to find it for this trial. The big screen and adept use of the laptop in a “hands-on” demonstration was persuasive. The designer wrote the script.


Mr. Hietpas’ report and testimony helped some by showing that the Plaintiff had every opportunity, and was even invited to erase all Confidential Information before the designer left the Plaintiff’s employment. He also explained that Confidential Information must be identified to employees, treated and stored as such. It was not sufficient to tag it after an ex-employee left, and then pick out something to claim as Confidential, when it was not treated as such while they were employees. In discovery it was found there was lax, or non-existent safeguards for the information that was being claimed as Confidential and whose use by others was damaging the Plaintiff.

3- An Excel spring calculator algorithm on the Defendant’s laptop. He did take on his PC an Excel spreadsheet with formulas when he left the Plaintiff. Mr. Hietpas analyzed it, and almost all of them were beam deflection and stress calculations. One of the 87 was a spring algorithm. The Defendant had brought the spreadsheet with many formulas along with him when he started with the Plaintiff, added some more to it while there, let anyone there use it, and left it behind on other PCs when he left. Those familiar with spring calculations know that there are several steps to select a spring with the correct force, acceptable stress, correct travel distance, and fit in the intended location The defense was that mechanical engineers study how to do beam and spring calculations, and they are part and parcel of what a machine design mechanical engineer does. There are algorithms available on the Internet, and that one needs only to phone a spring manufacturer and have them do the calculations for you. In fact, one on the Internet was from a high school in New Mexico that had won a prize for their spring calculating algorithm. Neither party was in the spring business, just occasional users. There was no damage.

4- The concept of manufacturing a FMS using bolted plate construction. The Defendant, while employed by the Plaintiff, had sketched a design using laminated boilerplate, each cut out into stepped doughnuts to approximate the shape needed for the bowl of the spider. Then the stacked doughnuts were to be bolted together. This was in place of traditional castings, which are sometimes hard to get. It was like the Master Lock Company has been doing for years as was pointed out by the defense. Also, Mr. Hietpas found patents on other laminated fabrications. The Plaintiff had never completed a tool using the concept. The Defendant tried one when he was on his own. It was a commercial failure because the bolts that held the laminations together had to have a close fit in every hole, and the many holes did not line up for the bolts. However, that disaster spawned a design by the Defendant after he was on his own of using plates on edge. It was a huge commercial success for the Defendant. That is what the Plaintiff really wanted to stop in order to put the Defendant out of business. Figures 1 and 2 below show the two concepts. The defense was that laminated plates have been published in a patent, although it was not an oil field


tool, and laminated plates are seen in any hardware store that sells Master Locks, and it did not work on FMS fabrication. Mr. Hietpas made the point in his report and on the stand that Confidential Information is two words. The second word implies that something useful is contained in it, not a useless unworkable goof. It cost the Defendant plenty to find that out, and did not damage the Plaintiff, who never tried fabricating a laminated design. In fact, they could benefit from the Defendant’s failure when word of the failure spread about the town. The Defense made the point throughout the trial that the Defendant was not riding a gravy train with the experience he had gained at the Plaintiff’s place.

Figure 1 - Laminated Plates

Figure 2 - Plates on Edge

5- The design and concept of a slip retracting spring. In an ordinary drill chuck it is called a jaw; in a spider it is called a slip. While the Defendant was employed by the Plaintiff, he had made a hand sketch of a concept where a spring


operated on a linkage that in turn urged the slip to open up. But it was never built, not even converted to a completed design. After the Defendant was working on his own, he designed a spring arrangement for retracting the slips. It was different to hopefully overcome the binding inherent in the hand sketch arrangement. The defense was that other spider patents had springs for that purpose, and springs are a common basic machine element in general use. On the stand, Mr. Hietpas was able to tell the jury that the improved spring design built by the Defendant for his new client was a complete disaster on the drill rig, and was replaced by the current design that used no springs. He again emphasized that Confidential Information is two words, the second word “information” implies it is useful, not a trap that will not work. Information has an implication of validity.

The above examples are intended to show several defenses where patents alone

were not strong enough. They were intended to create vivid images of simple real world knowledge that could be applied to machine tool design. WHAT MAKES PATENT LITIGATION UNIQUE?

The United States Patent and Trademark Office is an agency of the United States, within the Department of Commerce. It is responsible for the granting and issuing of patents and the registration of trademarks, and for disseminating that information to the public. Nowadays it does that effectively via its website so one can research those documents anywhere with a PC connected to the Internet. The website has search capabilities, and the complete patents can be printed out on any basic printer.

Patent attorneys are detail professionals, who understand engineering principals

and grasp an amazing amount of details that they can talk about freely. On this case, both the lead Plaintiff and Defense lawyers seemed to have an encyclopedic knowledge of about 20 patents and would speak of “in the Buck patent there is a ----” or “in the second Joe Blow patent---”. Often Patent Attorneys were engineers before they became patent lawyers.

Mr. Hietpas found that whereas in civil industrial cases he deals with a plethora

of standards and regulations, the part of Patent Law that the Expert must deal with is short. But, it takes study and time to comprehend all the nuances and implications of those few short paragraphs. It is not as simple as he thought at first. One of the key concepts is “would have been obvious to a person having ordinary skill in the art ---”. Then there is the need to do effective patent research. And patent attorneys want Experts who understand all this - and are experienced in patent work. However, as mentioned above, although he did not know flush mounted spiders, he knew machine design. So the question of what is relevant technology has several inferences.


Here are experiences gained in civil forensic work that transfer to patent work: • “Playing in the legal sandbox” • Researching and applying Standards and Regulations • Ability to find, organize and retrieve vast amounts of information • Differentiate fact from hearsay • To give a legally acceptable opinion • Professional Credentials • Daubert Challenge • Communicate in a Report, and under direct and cross examination • NAFE, i.e., the training and network available to all members.

Rights associated with patents, trademarks, copyrights, trade secrets, publicity,

morals, and unfair competition, all come under the legal umbrella of Intellectual Property. Expert Witnessing in patent litigation involves some skill sets that are not part of civil litigation. The case strategy, research and technical expertise differs some from civil litigation, and patent infringement or validity is litigated only in Federal Court.

Patent cases generally last longer and require more Expert time than civil cases.

This case described above required 4 banker boxes stuffed full of documents that had to be reviewed. It seemed odd, but another Defense Expert, a Plaintiff Expert, and Mr. Hietpas, were paid to sit through 3 ½ weeks of trial. These were long days because they would huddle with their attorneys in the evenings to help plan the next day, and organize materials for it.

Patent Infringement cases are the usual type work envisioned when one opines

on a Patent case. Sometimes the outcome determines if a business folds or not. If one is found to be infringing a patent, it is the choice of the patentee whether to grant use through a licensee or royalty, or deny use of the invention outright.

U.S. Patents are issued by the Federal Government, and litigation is in the

Federal venue. The more popular places are in CA, TX, IL, NY, MA, DE, PA, VA, and DC.

Because patent cases can extend over several years, the “Rocket Docket” was

developed recently in TX and VA to expedite patent cases. Expert testimony is limited; fact and Expert discovery is accelerated, and the entire process is quicker. These venues are popular with Plaintiff’s because of the difficulty in defending a patent litigation in a compressed time frame. These matters are conducted as Bench trials, i.e., Judge only, or Jury trials in which the jury panel is limited to 6 individuals.

The small city of Marshall in East Texas has developed a successful industry of

hearing patent cases. The understanding it that the locals are geared to provide all the related services, and the judges seem to attract patent Plaintiff lawyers.


The International Trade Commission (ITC) tries patent litigation where U.S. Patents are being infringed upon by a foreigner. It is heard in the District of Columbia by an Administrative Law Judge. There is no jury.

When the U. S. government is the Defendant, the United States Court of Claims

hears those cases. The U.S. Court of Appeals for the Federal District in Washington, D.C. hears

appeals. They are the highest court for patent law and the rulings of lower courts. However, losing parties may go on to the U.S. Supreme Court.

On patent infringement cases the Expert helps the trier of fact to determine if the

Defendant infringed on the Plaintiff’s patent. That requires an understanding of the U.S. Patent Act, which is found in Title 35 of the U.S. Code and contains the federal statutes. Title 35, Part II Patentability of Inventions and Grant of Patents, Sections §100 through §103 relate to how the issues in patent litigation are litigated.

PATENT LAW

Here is a glimpse at patent law on when a patent can be granted. One who

invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions of the patent law. The Inventor informs all how an invention is practiced. In return the inventor gets the right to exclude others from manufacturing, selling, offering for sale or using the patented invention without the Patentee’s permission for 20 years from the date the “Patent is filed”.

Patent Law 102 – Title 35, Part II: “Patentability of Inventions and Grant of Patents” states:

• Section §102(a)&(b): “Conditions for patentability: novelty and loss of right to patent”

A person shall be entitled to a patent unless-

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention. There are four additional less notable parts to paragraph 102 on reasons why a person shall not be granted a patent.


Patent Law 103 – Title 35, Part II: “Patentability of Inventions and Grant of Patents” states:

• Section §103: “Conditions for patentability; non-obvious subject matter”

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if -- (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person. Patentable technology can be New Art or can be built on relevant Prior Art.

David A. Burgh, Esq. in a book titled “Patent and Trademark Practice and Tactics”, John Wiley & Sons, Inc., 3rd Edition, Copyright © 1999 ISBN 0-01-32 & 32-0, explains this complex issue with something called “Parable of the Chair”. This metaphor gives insight into the application of the above law, and likely will give an Expert some trepidation before diving into Patent work. The metaphor traces the evolution of what man has sat on over time, i.e. a rock. But then a portable thing to sit on was invented, a 3-legged stool. That was followed by a 4-legged chair with arms and a back, and then the addition of rockers on such a chair. The rights of a patent for each of the 3 inventions differ as they exercise their “negative right”. It provides a basis for understanding how a patent gives a “negative right” to exclude others from making, using or selling the invention. A patent for a portable seating appliance (three legged stool) is art for the basic patent. Patent holders that follow have additional restrictions if they were to make, use, or sell a chair or a rocker.

Prior Art is all the information that has been disclosed to the public in any form

before the filing date. It may be referred to as the “Critical” or “Priority” Date. Prior art includes all printed material, i.e. anything in the public domain that can be reproduced. The Art must “anticipate” every Claim of the patent and every element therein. Patent offices deal with prior art searches as part of the patent granting procedure


An Expert must understand what Claims are being enforced, and how they are being asserted against the Defendant’s products or services. The Markman hearing becomes so important partly because it is there that the terms used in the patent’s claims are defined. Infringement or not might be decided using the definition or construction of the patent’s claim language. The validity of the patent, as it relates to the Prior Art asserted by the Defendant, is also effected by the court’s definition of terms.

The Jerome Lemelson patent for a tape recorder filed in 1955 was successful

against Apple Computer’s Mac memory system architecture forty years later because his patent claim language was so broadly written that they applied to the Apple product.

He was also known for his ability to keep a patent application pending by the

USPTO for decades before issuance. It precipitated changes in patent law that extended the life of a patent from 17 years after date of issue to 20 years after date of filing. What inventors like Lemelson and Hyatt (who claimed to have invented the microprocessor), used to do was keep a patent application active for decades, changing the patent’s claims as technology advanced.

Patents can be written broadly or narrowly. Broadly written claims cover a large

base of products and services, but are susceptible to huge amounts of prior art. Narrowly written claims that are so specific that they aren’t subject to a bombardment of prior art, and are intended to prevent others from practicing a very specific invention. For broadly written patents, the Expert’s role is to produce and analyze Prior Art and aid in the creation of validity arguments. For narrowly written patents, the Expert’s main role is to argue non-infringement or possibly even assist in developing “work arounds” that circumvent the patent claims.

Enclosed is the following ruling from the appeals judge on the Patent Case

described at the beginning of this paper because it is educational in understanding how the legal side of the case is viewed:

“On appeal, Plaintiff urges the court to adopt pertinent federal court holdings such as Reingold v. Swiftships, Inc., 126 F.3d 645, 652-53 (5th Cir. 1997), which stated ’Protection will be accorded to a trade secret holder against disclosure or unauthorized use gained by improper means, even if others might have discovered the trade secret by legitimate means.’ See also, Standard Brands, Inc. v. Zumpe, 264 F. Supp. 254 (E.D. La. 1967). The appeals judge found evidence before us, however, revealed the fallacy of this argument as it pertained to this particular case: Plaintiff failed to prove that anything actually relied upon by Defendant was a trade secret of Plaintiff’s or otherwise confidential. While it is certainly true that Plaintiff does in fact own proprietary information, in this case, Plaintiff has been unable to show that any of that information was stolen by Defendant and then used to design his new spider. Rather, Defendant, an experienced tool designer with specialized skill and knowledge who was referred to as the ’Einstein of flush mounted spiders,’ was able to show that the


information he relied on was not only part of his own knowledge and skill, but was also available to the industry as a whole and, therefore, was not secret. The Standard Brands case actually highlights the public interest in ’the reasonable mobility of such skilled persons from job to job in our fluid society . . . [who] must be afforded a reasonable opportunity to change jobs without abandoning the ability to practice [their] skills.’ 264 F.Supp. 254, 259.”

“Therefore, Plaintiff’s evidentiary arguments regarding improper, public domain ’hindsight‘ information gathered after misappropriating the same information from Plaintiff is simply untenable.”

REFERENCES Here are references or background for Expert Witnesses doing patent litigation:

• The law published as US Code Title 35 Patents at http://www.access.gpo.gov/uscode/title35/

• “Patent Trademark and Copyright Laws,” edited by Jeffrey M. Samuels, The Bureau of National Affairs, Inc., Washington, D.C.

• United States International Trade Commission (http://www.usitc.gov/) • United States Court of Claims (http://www.uscfc.uscourts.gov/) • U.S. Court of Appeals for the Federal Circuit (http://www.fedcir.gov/ • Markman Hearing; Markman v. Westview Instruments, Inc. 116 S.Ct. 1384

(1996) HOW TO FIND AND RESEARCH PATENTS

Complete U.S. Patents can be found via the Internet at the United States Patent and Trade Office. (USPTO) Main website www.uspto.gov. For direct search by patent number use www.patft.uspto.gov.

PATENT FORMAT & INFORMATION Patents nowadays generally have a similar format as shown in the annotated

patent below. This format should be studied in order to speak about patents and work with them. The first one, Catalog Data, is a generic title, but the remaining eight are titles found within a patent. In the Catalog Data, note that there is a list of referenced patents that are related. The last section, Claims, gets to the heart of what they are claiming in order to be awarded a patent, and can later claim as being infringed on by others.

Suffice it to say that each word, each phrase, is considered and written carefully.

This is precision writing in a manner suitable for patents. It should be read slowly,


http://www.access.gpo.gov/uscode/title35/

http://www.usitc.gov/

http://www.uscfc.uscourts.gov/

http://www.fedcir.gov/

http://www.uspto.gov/

http://www.patft.uspto.gov/

carefully, remembering exactly what information is researched and needed, using highlighting and making notes in the margins. Developing a spreadsheet after each reading will keep the broad picture in perspective, and be a basis for conferring with Counsel, and later as an Exhibit.


PATENT FORMAT EXAMPLE: Overview Page: Sample Details of 3) Abstract:


Examples of 4) Figures (Drawings):


Background Information Section: Sample Details of 5) Background of the Invention:


Summary of the Invention Section: Sample Details of 6) Summary of the Invention:


Brief Description of the Drawings Section: Sample Details of 7) Brief Description of the Drawings:


Detail Description of the Drawings Section: Sample Details of 8) Detailed Description of the Drawings:


Claim Section: Sample Details of 9) Claim:


SUMMARY Patent cases have unique aspects that are not involved in civil case for a

Forensic Engineer. On patent cases a forensic engineer must know how to find patents of interest, and how they are organized and written. He should read and understand certain parts of Patent Law. The enormous amount of detail usually involved in patent work must be organized so it can be retrieved, and also presented to the trier of fact. And finally, to work with patent attorneys, a forensic engineer ought to understand the litigation venues, procedures and history sufficiently to be able to “play in the patent attorneys sandbox”


Documents

FORENSIC ENGINEERING TESTIMONY in an OIL & GAS … ENGINEERING TESTIMONY in an OIL & GAS PATENT CASE by Gerald J. Hietpas, P.E. National Academy of Forensic Engineers (NAFE) January,