SOFTWARE INTELLECTUAL PROPERTY EXPERT WITNESS: TESTIFYING CONSULTANT FOR TRIAL SERVICES

For software intellectual property expert witness testifying consultants operating in the space of app or program development and technology innovation, it’s no secret that IP disputes are becoming increasingly common and complex. Advisors weigh in on a host of concerns.

1. Patent Infringement and Validity – Software intellectual property expert witnesses frequently testify about patent infringement and validity issues. Testifying consulting pros analyze the claims of software patents and compare them to accused products or prior art. That generally means breaking down complex software systems into their component parts and mapping them to specific patent claims. Leaders opine on whether the accused software implements the patented invention and whether the patent itself is valid in light of prior art. A software intellectual property expert witness must be able to explain intricate technical concepts to non-technical judges and juries, often using diagrams, flowcharts, and code comparisons to illustrate their points.
2. Copyright Infringement in Software – In copyright cases, partners assess the originality and copyrightability of software elements from source code to user interfaces. Leading software intellectual property expert witness advisors conduct detailed code comparisons to identify potential copying, distinguishing between literal copying and non-literal copying of structure, sequence, and organization. Partners opine on whether similarities between software products are due to infringement or other factors like independent creation, industry standards, or functional requirements. And also address issues related to open-source software and license compliance.
3. Trade Secret Misappropriation in Software Development – Famous software intellectual property expert witnesses testify in cases involving alleged misappropriation of trade secrets in programs. Presenters evaluate whether specific software components, algorithms, or development methodologies qualify as trade secrets, considering factors like economic value and secrecy measures. Authorities sometimes analyze source code, development logs, and documentation to determine if trade secrets were improperly acquired, used, or disclosed. And software intellectual property expert witnesses opine on the reasonable measures a company should take to protect its program-related trade secrets.
4. Software Reverse Engineering and Clean Room Development – Folks frequently address issues related to software reverse engineering and clean room development practices. Presenters explain the technical processes involved in reverse engineering software and opine on whether these activities fall within legal bounds or constitute infringement. In clean room development cases, advisors evaluate the effectiveness of procedures used to create non-infringing software with similar functionality to a protected product. Partners assess whether proper safeguards were in place to prevent contamination from protected IP.
5. Damages and Valuation in Software IP Cases – Consulting firms provide opinions on damages and valuation in infringement cases. Think assessing reasonable royalty rates for patented software features, determining lost profits due to copyright infringement, or calculating unjust enrichment from trade secret misappropriation. Software intellectual property expert witnesses consider factors such as the importance of the infringed IP to the overall product, market conditions, and industry licensing practices. Authorities also opine on issues like apportionment of damages when only part of a software product is found to infringe.