(32b) Obviously New or Just a Copy – Engineers Play a Critical Role in Evaluating Patent or Trade Secret Infringement Claims
AIChE Annual Meeting
2023
2023 AIChE Annual Meeting
Chemical Engineering & the Law Forum
Issues in Law for Practicing Engineers
Monday, November 6, 2023 - 4:30pm to 5:00pm
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 patentâs 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 defendantâs use of a patented catalyst used to manufacture an industrial chemical will be discussed.