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The deposition of the inventor in a patent case is an event of extraordinary opportunity for the accused infringer. If the deposition is taken early in the case, the patent owner and inventor will not be fully versed on all the prior art and on all the features of the device accused of infringement. Early in the case, they will be relatively uneducated about your defenses to the validity or enforceability of the patent. Unlike the seasoned testifying experts you will see later in the case, the inventor may be new to litigation, uncomfortable with the deposition process and unskilled at dealing with effective, aggressive cross-examination. Take this deposition early, promptly after the patent owner’s first production of documents. Do not wait until all production disputes have been resolved — that could take months. If the inventor is not employed by the patent owner, couple the deposition notice with a subpoena duces tecum for the inventor’s documents and try to get the documents produced some reasonable time before the deposition begins. In most cases, you will want to obtain relief — by motion or agreement — from the seven-hour limit set forth in Federal Rule of Civil Procedure 30(d)(2). On claim construction, the patent owner wants to retain as much flexibility for as long as possible so that he can broaden or narrow his proposed claim construction in the face of newly discovered prior art or newly surfaced non-infringement arguments. You want the opposite — to force the patent owner to take an early position on claim construction. In addition to taking an early Rule 30(b)(6) deposition of the patent owner on claim construction, you want to cover claim construction with the inventor. Indeed, the inventor may be the patent owner’s Rule 30(b)(6) witness on this issue. During the deposition of the inventor, pin him down on the meaning of the language in the claims. At the Markman hearing, if the trial court considers any extrinsic evidence, it probably will consider an admission on claim construction made by the inventor and offered by the accused infringer, particularly if the inventor is employed by the patent owner. Ask the inventor for the ordinary meaning of all claim terms at issue. Ask if he intended terms used in the claims to have a meaning different from the ordinary meaning. If so, ask him to point out in the specification where such terms are given a special definition. For means-plus-function elements, ask the inventor to point out in the specification the corresponding structure that performs the recited function. Using specific questions, have him define the universe of equivalents to the structure specifically identified in the specification. Do not conduct this drill in a vacuum. Know where you want to go. If you want the inventor to adopt a broad claim construction that will ensnare prior art, ask these questions in the context of an exhibit that shows the device accused of infringement. In this context, the inventor instinctively will want to broadly define claim terms. If you want the inventor to narrowly define claim scope, ask these questions while discussing a patent, article or device that the inventor understands is prior art. PRIOR ART AND INFRINGEMENT Once the inventor is committed on what the claim terms mean, you can move to the topics of prior art and infringement. As to prior art, if you have a reference that you believe anticipates or renders obvious a claim, confront the inventor with specific passages from the art related to the claims and pin him down to a position on that art. Get a complete list — hopefully a short one — of the differences between the patent claim and the prior art. On infringement, if the inventor is not familiar with the accused device, cross-examine with a schematic, drawing or other document that succinctly shows or describes the device. Once you establish that a claim element is missing in the accused device, you will need to cover the Doctrine of Equivalents. If you ask these questions outside of the infringement examination, the inventor may not understand their significance, a good thing for you. Have him identify the function performed by the missing element, the way that function is performed and the result obtained — then try for an admission that the accused device does not have anything that performs substantially the same function, in substantially the same way, to achieve substantially the same result. See if he will admit that the missing claim element in the accused device makes the device substantially different from the claimed invention. Have the inventor identify and describe the role of all others involved in conception and reduction to practice. Misjoinder of inventors with deceptive intent — an infrequent occurrence that is difficult to prove — may invalidate the patent. Failure to list an inventor may create a title/ownership issue. The accused infringer can defeat an infringement claim by obtaining a license from an unlisted inventor who has not assigned his rights to the patent owner. Best mode and enablement defenses usually are best established using the inventor’s and patent owner’s own documents, lab notebooks, design specifications, construction drawings and the like. Best mode is the more promising of these two defenses in an inventor’s deposition. Using these documents, have the inventor admit that he preferred a particular implementation of the invention — not disclosed in the specification — as being superior to other implementations. Do not use the phrase “best mode.” There are a host of other issues that you may want to explore with the inventor, including on sale bar, ownership/title issues, dates of conception and reduction to practice, whether the patent owner conducted a prior art search, production of documents, the prosecution history, licensing activity, marking, what is a reasonable royalty, and inequitable conduct. A good trial lawyer can accomplish much by deposing an inventor early in a patent case. This deposition will suggest leads for further discovery and provide fodder for cross-examination at trial. With a little luck and a few helpful facts or documents, an inventor’s deposition can furnish grounds for a motion for summary judgment of non-infringement or invalidity. Larry D. Carlson is a partner in the trial department of the Dallas office of Baker Botts. He is a fellow in the American College of Trial Lawyers and is board certified in civil trial law by the Texas Board of Legal Specialization. Patent litigation has been a substantial part of his practice during the past decade.

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