Depending on qualifications and experience, technology experts might be able to:
- Respond to questions about a technology
- Respond to questions about a product or family of products
- Compare and contrast technologies and their applications
- Compare and contrast products or families of products
- Respond to questions about the development of a technical product or service
- Respond to questions about potential or actual applications of a technology
Often the expert writes a report that addresses specific questions posed by the client, after which the expert discusses the report in confidence with their client. If the report is sent to the opposing side of the case the expert will most likely need to defend their report under oath.
Structuring the Client / Expert Relationship
Justice cannot be said to exist if some people have privileges before the law that others do not. To this end, I apply the same terms and conditions to all clients.
Sometimes my findings are not what the client wants to hear. The most effective way to ensure that I can be frank with clients is to have them pay in advance. I have found that an evergreen draw-down retainer is mutually convenient.
I was once retained by a company to render a preliminary opinion on whether litigation that they were contemplating might have merit. In order to develop my opinion, I had to download and reverse engineer the prospective defendant’s software without their knowledge. Having done that, my opinion was that there was likely no intellectual property infringement, and I suggested to my client that they make a business deal with the other party instead. I suggested this because during the course of my research, I came to believe that the other party had developed better software using a different approach. This suggestion was unpalatable to my client but as I explained, until my client reworked their own product to match the fresh and modern technology used in the other party’s product, my client’s only other recourse would be to compete on a non-technical basis. This would have required them to expend a significant amount of additional resources for sales and marketing. My client followed some of my advice, and never initiated litigation; the other party never knew they were in the crosshairs. However, my client did not attempt to develop a business deal.
Games Some Attorneys Play
There are millions of competent technologists, but few are comfortable in the role of high-profile participant in an adversarial justice system. Attorneys should be aware that when a legal case requires the opinion of a technology expert with specific skills, or a specific background, it is not uncommon for certain qualified and experienced experts to be contacted by both sides.
Some attorneys attempt to engage all available experts at no cost to themselves or their clients. It is quite easy to retain an expert – all that is required is for the expert to agree to the terms expressed in an engagement letter. The letter might mention an attractive hourly rate with favorable terms, but these particular attorneys never assign any work.
Experts that have been engaged in this manner cannot ever work for the other side; they have been taken out of action for the remainder of the case. Patent trolls in particular commonly employ this tactic.
The solution that I use is simple: my standard terms and conditions include a non-refundable minimum engagement fee. I have found that a fee equivalent to 2 day’s billings is sufficient to discourage this practice. I stipulate that this minimum fee must be received in full before an engagement is deemed to begin, within a short time period. If the fee is not received in time, then I am available to be engaged by the other side without conflict. I inform prospective clients that they should not tell me any non-public details about the case until their minimum engagement payment has cleared.
What is Software?
The IEEE Standard Glossary of Software Engineering Terminology defines software as:
Computer programs, procedures, and possibly associated documentation and data pertaining to the operation of a computer system.
Many people are surprised to learn that software is not just program code. Software is a term that applies to all digital artifacts pertaining to the development of a program, including the program code, documentation, associated data, and more. Non-programmers regularly create new software artifacts; for example, technical writers write documentation, which is a form of software.
Considering that transcripts of conversations between technicians are a primary source of documentation, those transcripts might also be included in the definition of software. This might include git commits, Jira / Pivotal Tracker / Trello logs, and transcripts of chats in online forums where developers talk to each other about the software project that they are collaborating on. I am skilled at weaving multiple sources of information together into a chronology, and then inferring habitual behavior from the transcript. This insight can be used to determine where to look next, and what to look for. It is amazing what one can find when one knows what to look for!
Git is a free and open-source distributed version control system (VCS). It became the most popular VCS in 2008.
Git is particularly useful for determining what particpants did during a software development project. Because git normally retains the complete history of all the contributions made by the technical team as they work together to create software, a software expert should examine the git history early in a case. Sometimes the git history is doctored in an attempt to remove evidence. In a recent case easily identified when that had happened, and the person who erased the git history had no choice but to admit that he had erased the history when deposed.
The articles in this series explore topics of interest to attorneys who are contending with cases involving intellectual property issues of software or hardware. This article discussed issues of clear, honest communication between experts and attorneys, how to avoid the problem of mass engagements of experts designed to deny qualified and experienced experts to the opposing side, and the importance of constructing a detailed chronology of the dialog between those involved in development projects.
About the Author
Michael Slinn (resume) is a technology expert. Mr. Slinn has an electronics engineering degree and 44 years‘ experience as a software professional. During that time, he has created dozens of innovative products himself, managed technical staff (including assuming VP, CTO and CEO roles several times), founded and run commercial and volunteer organizations, performed technical due diligence for investors, and mentored founders and founding teams. He has 35 years of experience assessing the technology capabilities of companies for raising public and private funds. Mr. Slinn reports and advises on technology, the process of creating intellectual property, and the suitability of a technology for producing business value.
The author of 3 books on distributed software systems, Mr. Slinn has taught computer science academically and commercially throughout most of his career. He opines on software and hardware; the processes by which intellectual property is produced; trade secrets and the intellectual property status of software, hardware, and processes. Mr. Slinn frequently draws on his decades of experience in product and project management. He has performed technical due diligence of software and hardware companies for investors since 1985.
Activities Mr. Slinn has performed as a software expert include:
- Assisting with patent litigation (researching, reporting)
- Assisting with inter partes patent reviews and reviews of covered business methods (researching prior art, etc)
- Reverse-engineering software
- Identifying copied software (source code and object code)
- Detecting evidence-tampering
- Reconstructing activity timelines by integrating disparate sources of information
- Correlating plaintiff's and defendant's data
- Writing and producing explainer videos for the courtroom
Mr. Slinn has been retained 17 times as a technology expert:
- 14 times as a software expert, and in 3 cases that required opinions on intellectual property related to electronic hardware and software.
- 10 times on behalf of defendants; 7 times on behalf of plaintiffs.
- Deposed 4 times and testified in court 4 times.
Retained as an expert on 9 patent-related cases: 8 times for defendants and once for a plaintiff.
Retained for 8 contractual disputes:
- 4 times for defendants, and 4 times for plaintiffs
- 7 cases have required Mr. Slinn to examine source code.
- 4 of them required him to opine whether IP theft or copying had likely occurred.
- 2 cases have required that he opine whether significant IP had been generated or not.
For a European ITC case Mr. Slinn was the lead expert witness of 7 software experts; for this case he testified and was cross-examined before a tribunal of 5 judges.
Mr. Slinn has written expert reports and declarations for 5 clients. He has written 2 declarations for inter partes (IPR) patent review petitions and one declaration for a covered business method (CBM) for an online auction site.
Mr. Slinn has extensive experience with the following technologies:
- Blockchain and distributed ledger software
- Artificial intelligence, in particular hybrid machine learning / simulation / processing systems
- E-Commerce – server-side and client side (design, implementation, testing, integration)
- Online auctions (design, implementation, testing)
- Computer aided design (CAD) software (design, implementation, enhancement, testing, integration)
- Cartography and geographic information system (GIS) software (design, implementation, integration)
- Client-server and other types of distributed systems (design, implementation, testing, integration)
- Software and hardware communications protocols (design, implementation, testing, training)
- Operating systems (design, implementation, installation)
- Computer languages (design, implementation, marketing, testing, training)