My Time in Delaware –or- Fun With Patent Litigation

I was recently involved in a major patent infringement case. Quite a few people knew I was involved and asked me questions I couldn’t answer until the case was finished. That happened recently — the jury returned a verdict on December 20 — and so I’m going to recount a little of the experience here (I still have to be somewhat circumspect and not reveal any confidential information). But first, I’ll provide a few comments about patents themselves, although the reader should understand this is not intended to be a formal or complete description; I’m not a lawyer, and I’m not trying to convey even what I know about patents here — simply provide enough detail to give context to my story.

A Little About Patents

Patents are an important part of research and commerce. They are one form of protection of inventions. Without patents, many inventions might be kept in secret with the potential that they might not be widely used; in the middle ages, many discoveries were kept within families or small guilds, and some were lost as a result of accident or disaster. Patents help ensure that discoveries are disclosed for the public good, but still allow the inventors some opportunity to profit from their hard work (or accidental good luck).

Very generally speaking, in the U.S., patents are granted to parties that file for them based on new, non-obvious inventions, processes, or formulations that they have developed/invented. Applications that are obvious or represent inventions already available in some other form are supposed to be rejected. The usual legal language when discussing a patent is that it “teaches” the claims made: the patent is supposed to enable others to build/practice the claimed item. Patents are supposed to be granted only for new and novel things, and granting the patent should “promote the progress of science and useful arts” (as stated in Article I.8 of the U.S. Constitution).

Patents are composed of a general description (“specification”) that usually includes drawings and references to related work, and a set of numbered claims. Each claim is a description of an item that may teach a particular aspect of the claimed invention. The applicant is supposed to disclose any relevant related references to the U. S. Patent Office at the time of application. The examiner at the Patent Office will look at references, look at other patents and materials, and make a determination of which (if any) of the claims will be granted. Sometimes there is a back-and-forth between the Patent Office and inventor to clarify issues, revise claim language, and change scope. A patent may take years to issue.

Claims have elements, which are identifiable parts, often expressed as comma-delimited clauses. Complex claims may have many elements. Claims may be independent, that is, standing on their own, or dependent, which means they are an extension of an independent claim. For instance, an independent claim might be for a table, and a dependent claim would be for that same table but with casters on the legs, and a different dependent claim could be for the table with a drawer in the side.

Where things get complicated in computing is patenting software. Those of us who work in computing know that a computer — anything from an FPGA to a general-purpose mainframe — may be programmed to do different things. When equipped with the right peripherals and software, the computer becomes a new “thing.” It is because of this general equivalence that software has been patentable for several decades. Most patents involving software have parallel claims for patenting a “system” and a “method” to be sure to cover the possible permutations.

There is a lot more about patents (and more precise legal info) that I won’t try to summarize. Instead, I will now expand a bit about infringement.

If the holder of an issued patent finds that someone else is “practicing” any of the invention patent claims, then that owner has the right to seek compensation or control over that use by the other party. That can include retroactive compensation, and it may include some kinds of prohibitions on the other party continuing to use the patented inventions. Typically, the patent holder would contact the other party to negotiate licensing terms. If such negotiations fail, or the other party disputes the infringement contentions, then the next step is often a lawsuit in Federal court. (Patents are granted under Federal law, and therefore trials take place in a Federal court.)

In an infringement lawsuit, the plaintiff (patent owner) will try to prove that some claims of the patent have been infringed (used). This may involve court-ordered discovery of documents, source code, equipment, and more, as well as sworn depositions by various people. To prove the infringement, every element of each asserted claim must be shown to be present in the alleged infringing product. This is typically a task that is performed by one or more domain experts.

The defendant(s) have two main kinds of defense when accused. The first is to try to show that the claims in the patent are invalid — that there was prior art or other patents that exactly matched the claims and were in public view before the claimed patent was filed. To do this, it is necessary to show that each and every element of a claim was present in some prior art in a fashion that would allow someone skilled in the art (familiar with the field and its literature) to reproduce it, or that some combination of items would make the claim obvious to that person. The second level of defense is to show that even if the claim is judged valid, the product doesn’t infringe because one or more elements of the claim are not present in the accused item. Invalidity and non-infringement presentations are also often argued by domain experts (such as me, in this case). (There is more to it all than this, but this is the gist of it.)

In the trial, if the patent is held as valid and infringing, then the two sides argue over what level of damages should be awarded to the plaintiff based on market share, value, and more.

The jury hears evidence of all this, and then deliberates on the questions — are the claims valid, are they infringed, and if the answer to both is yes, then how much should be awarded? If the jury finds the patent invalid, it’s all over and the patent claims can’t be asserted against anyone else, either. (Leaving out issues of appeals courts.)

The Case In Question

In July of 2010, a company named Finjan sued 5 other security companies over alleged infringement of many claims in two patents held by Finjan governing protection against malicious software (in the vernacular, “viruses”). Those companies were Symantec, McAfee, Websense, Webroot, and Sophos. The suit was filed in Delaware. (Why Delaware? I’m not certain of the exact reasons in this case, but many companies incorporate in Delaware, or have a presence there, so it is a likely venue for such disputes.) The patents at issue were 6,092,194 and 6,480,962. They were effectively filed in late 1996/early 1997. They described methods and systems for gateway and host (respectively) protection against malware. Finjan had won a different infringement trial against another company (Secure Computing) a few years prior on one of these patents, and got a significant judgment. Thus, the assertion of two patents against these five defendants — including arguably the 2 or 3 of the largest in the antivirus industry — was a Big Deal.

I have been doing occasional legal consulting for over 20 years through a small consulting firm where I am a principal (CSSCS, LLC). I’ve testified several times, and done work including rendering invalidity and non-infringement opinions on patents. As someone with degrees, work experience, publications, and peer recognition, it is straight-forward to be recognized by the court as an expert in computing generally, and issues of cyber security more specifically.

I was approached in late 2011 by lawyers representing Symantec about serving as an expert to provide an opinion regarding the validity of the asserted claims in the patents. I was, in many senses, the best choice: I was primary author of the first book in the US about computer viruses and malware (in 1989), had done research in the field early on (1987 onwards), taught classes in the subject, was on related editorial boards, wrote research articles in the area, and attended many of the professional conferences. Additionally, I have a good reputation, present well, and have nifty bow ties. 🙂 There really isn’t anyone else with quite the background and qualifications that I have. Additionally, I had worked as an expert before for both Symantec and McAfee, but currently had no connection with any party to the trial. I was retained, with the understanding that I would analyze and provide an independent opinion on the asserted claims of the two patents for several of the defendants (the same argument works for all); each would have their own non-infringement experts, however. I had worked with some of the firms and people before, and respected them for their professional behavior, so I agreed.

Over the course of 2012, I re-read a number of references from years past and read some I had not seen before. I ran experiments with software from the time (some of which I had been using and testing back in 1989-1995) on period computers. I pored over source code. I read the patents and their history. Finally, I whittled my list down to about a dozen instances of prior art; I was thoroughly convinced by then that the patents were invalid because all the ideas in them were present in the public for some time before the patents were filed — including some going back to the late 1980s.

Following this effort, I supervised the preparation of my final report. It was quite long because of the element-by-element matching against prior art from different places. Because of the dependent claims, and parallelism of elements in independent claims, a lot of material was duplicated from claim to claim, but each instance adjusted to directly address the specific claims. The result was a document that, including all the appendices, was many hundreds of pages long. This was then delivered to the plaintiff.

The next step in the process for me was a deposition. A lawyer for Finjan had a day to ask questions about my report and opinions. Think of it as a day-long thesis defense, under oath, on camera, surrounded by lawyers, with high stakes. Every word is recorded, transcribed, and examined for hidden meaning. Precise answers are required.

And here I’ll note one of the important things about being an expert witness that is sometimes overlooked: the expert should be candid and not seek to be an advocate for whoever is paying his/her fees — advocacy is the job of the attorneys. If the expert believes the truth of the matter is against his/her client, and is truthful about it, then it probably never even reaches this stage (i.e., no report is submitted). This is not simply an issue of the deposition being under oath. I have found in these situations, as in most of life, being honest is the simplest way forward. One doesn’t have to volunteer information beyond what is asked, but answering what is asked truthfully and directly is decidedly less stressful. After all, as the expert in the case, I’ll get paid for my time no matter how it turns out (experts should not get paid differently based on win/lose — it creates an obvious conflict of interest). Experts are retained to present the facts.

Most lawsuits on patents such as this end up settling without going to trial. Usually, the defendant would rather pay a small settlement than take the risk of losing big at trial as well as paying all the legal costs. Meanwhile, the plaintiff is often willing to settle for a smaller amount rather than run up the legal bills and risk losing in court. Thus, the chances of the case going to trial were not certain. (In fact, two of the defendants — McAfee and Webroot — were dismissed from the case before the trial.) So, I had some hope this would be as far as it went.

Trial

Yes, there was a trial. After all the reports, depositions, hearings, claims, counterclaims, and more, the trial was scheduled for Dec 3-19. The judge allocated a fixed amount of time for each legal team (1 plaintiff, 3 defendants) to present cases and rebuttal. I was tentatively scheduled to go to the stand to testify on December 7. I was asked to show up in Wilmington on November 29 to prepare. Luckily, I wasn’t teaching this semester, so it didn’t present a significant scheduling problem.

So, November 28th, I hopped in my car and drove to Wilmington — a 12-hour, 750-mile trip. Why drive? Well, I wanted to take extra clothes and reading materials, and I had room in my car. And it was a new car that was fun to drive. I also thought I’d have many free evenings and weekends so I could use the car to go out to eat, shop, maybe see a movie or two. Ha!

Symantec’s legal team had taken over a whole floor of a building with offices, meeting rooms, and kitchen. They had a graphic arts team in place, and all sorts of staff support. The whole group, plus the outside experts (including me) were housed in the classic Hotel DuPont, a block away. It is a beautiful older hotel that I recommend to anyone staying in the area. It has much more character than a chain hotel.

I never got to see those movies or head out to shop. Instead, I ended up working long hours every day I was there, preparing to testify. That included, among other things, supervising the preparation of slides for use during my testimony, and reviewing the voluminous materials relevant to my testimony: I wanted to be ready for anything! All three meals were brought in each day for all the staff and witnesses — I was far from the only one working long hours. Basically, the scenery for me was the walk between the hotel and office building, and some trips down to the courthouse to sit in on some parts of the trial. Although the hotel was beautiful, and almost everyone associated with the effort in the “war room” was quite pleasant, it really got to be wearing after a short while.

Zero Hour…or Day

Finally, on Wednesday the 12th, I was called to the stand a little before 11 am. My direct testimony to the 6 jurors took slightly over two hours. (I was on the stand at 12:12:12 of 12/12/12 :-). I was a little tense at first as I described my background so as to be certified as an expert, but felt right at home after I started describing the code and the patent language. At 1, my direct testimony ended and we broke for lunch. I was not allowed to talk to anyone about anything relating to the case. Luckily, I could order my sandwich as it was unrelated to the patents or trial!

A little after 2pm, I was back on the stand for cross exam by the plaintiff’s attorney. It was the same person who questioned me during the deposition, and I was comfortable responding to all of the questions he asked. When that was done, I was then asked more questions by Symantec’s counsel as redirect. All of that didn’t seem to be 2 hours, but with an afternoon break, I seem to recall I was the last witness of the day and the jury broke around 4:15.

I was all set to drive back home, but we had scheduled a thesis proposal presentation by one of my Ph.D. students for Thursday afternoon. So, I slept late on Thursday, then dialed in via Skype to participate in the presentation (his dissertation proposal was approved, so now the hard part for him begins). I drove back to Indiana on Friday (12 hours), and spent the weekend in a haze trying to get caught up on sleep and email.

The trial continued, with other experts being called on non-infringement, various legal motions, and then the rebuttal witnesses and presentations for Finjan, along with their cross-examinations. In my view, the defendants’ non-infringement cases were really solid, with source code to back them up. Finally, the jury got their instructions from the judge on Wednesday, December 19. He explained the nuances of the law and the jury’s charge. They were to begin deliberation on the next day. And everyone else held their breath waiting.

They didn’t have to hold their breathing long. I was told that after only 4 hours of deliberation, the jury returned its verdict: all asserted claims of both patents were invalid! All the preparation and effort had paid off — the jury was able to see how all the claims were old ideas that had been out in public for some time prior to the patent filings.

That said, in my view, no one really wins in these cases, at least in the general sense. For example, while the plaintiffs lost the patents and undoubtedly paid some significant legal fees of their own, prior to the verdict, they had licensed the patents to others. As for the defendants, well, they won and didn’t. They won a moral victory, certainly. However, the expense must be huge. At least 5 law firms have been involved with all sorts of staff and multiple senior partners. A bunch of experts, many of whom don’t work cheaply were involved. Company personnel, many senior, had to miss work for depositions and testimony. All the expenses for travel, lodging, copying and document duplication, food (and more food plus lots of coffee and Red Bull), court costs, and more. Moreover, I’m told they have to fend off several lawsuits like this each year — it’s a hazard of being leaders in the marketplace. That’s one reason why so often these cases settle out of court: to short-circuit the expense. Ultimately, it is the consumers who pay extra to cover these costs. But there is no clear alternative that would also protect the rights of a single inventor or small firm with a justified claim against a big company (which does happen: see the movie Flash of Genius).

Final Thoughts

This whole experience was trying, and I don’t mean that as a pun. I put in a lot of time on this. Yes, I was compensated well, but it added stress because I don’t have a lot of free time as it is once I get the most pressing of my university work done. There were some weeks where I wondered if I was even going to sleep at night. And some of the self-induced stress was significant (I try to do everything really well, and that takes extra effort).

On the plus side, I helped kill two patents that really shouldn’t have been granted. I learned more about some nuances of patent law that — if I can remember them — will be useful in some of my teaching. I got to visit Delaware and see more of Pennsylvania in transit than I really wanted. I met some interesting people who were other witnesses for the defense, and some great people at the law firms involved. I expect that I may get some other calls for work as a result of this, too, and that is probably a plus (although not without some downside if I say “yes” too often).

The whole experience plus observation of the case reinforced my understanding of being an expert in these types of cases. I’ll share a few thoughts here for those who might (want to) be in a similar position:

  1. Be certain you have the expertise needed. Don’t take on a case that is outside your areas or experience and expertise, because you can’t make up for the lack of knowledge. As attractive as something may be, the best thing for all parties may be to decline to take the case. Getting caught being ignorant (or wrong!) about something basic is really embarrassing and hurts the client’s case and your own professional credibility.
  2. Tell the truth, simply and directly. If you don’t know, say so. Don’t try to anticipate where opposing counsel’s questions are going — because so long as you tell the truth, it doesn’t matter. The attorneys, the jury and the judge can get a sense of whether you are being evasive, and that matters at least as much as the answers themselves.
  3. As an expert, you are not presenting a case for either side — you are presenting your view of the facts of the matter. The lawyers are the advocates for their clients, while the experts are the advocates of the truth. The judge is the arbiter of the law. The jury is the final say in the facts at issue. Knowing the limits on one’s role is critical.
  4. If you are going to be an expert, you should be sure there are no conflicts of interest that could mar your credibility or limit your ability to consider all the facts. Most professional organizations have a COI clause in their codes of ethics for a reason. As attractive or lucrative as something may be, sometimes the best thing for all parties may be to decline to take the case. (Cf, 1.3 and 2.5 of the ACM Code of Ethics, and item 2 of the IEEE Code of Ethics.)
  5. Working with a professional, experienced legal team can make you look even better than you may be. They’ll really make you think and work hard, but it is worth it. Lawyer jokes aside, the vast majority of attorneys I have worked with, over time and in this case in particular, are dedicated, pleasant professionals.
  6. Present to the jury. They are the ones deciding the case, even if a lawyer is asking the questions. Engage them. Look at them. Talk to them. If nothing else, you might help keep them awake.
  7. Bow ties rule. 🙂
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