(32b) Obviously New or Just a Copy – Engineers Play a Critical Role in Evaluating Patent or Trade Secret Infringement Claims

Innovation is a key driver for the future of the chemical industry. Inventors face the choice to protect their novel technologies using patents or keeping them trade secrets. The intent of a patent is to foster innovation by providing inventors an assurance that they hold exclusive rights to the invention which is legally protected for a defined period of time. However, the issuance of a patent also includes technical details of the invention and its merits, which become a matter of public record. As a result, patented technologies may be susceptible to infringement (unauthorized use, manufacture, sale, or importation), which can result in litigation. Trade secrets, on the other hand, are not disclosed publicly and must be actively protected, for example, using non-disclosure agreements. Similarly, litigation may arise out of trade secret disputes related to breach of contract, unauthorized disclosure, and validity of a trade secret claim.

Engineers play a critical role in assessing claims in patent and trade secret litigation either as a technical consultant, or a testifying expert witness. Engineers can help legal professionals analyze and understand the technical claims in a patent or trade secret, which oftentimes, are related to very complex, novel, and complicated technologies. Engineers can evaluate patent validity through review of prior art, the claims in prior patents, and the state of scientific knowledge at the time a patent was issued. Engineers also provide insights into if trade secrets could have been obtained independently. Additionally, engineers can also help design experiments and/or analyses to test and validate a patent’s technical claims. Lastly, engineers can provide supporting analysis that helps demonstrate the novelty, or lack of novelty, of a patent or trade secret.

In this presentation, we review the application of chemical engineering principles as a tool to help evaluate patent infringement or trade secret breach claims in intellectual property litigation. Three case studies will be used to illustrate key concepts. First, an example involving a company that raised questions about the technical basis for claims in a patent filed by an industry competitor will be presented. Second, a case study involving the misappropriation of a trade secret for removing fuel contaminants specifying reactors and their operating conditions will be discussed. And lastly, a case study surrounding a defendant’s use of a patented catalyst used to manufacture an industrial chemical will be discussed.