This equipment design patent infringement case takes place in Virginia and involves a piece of laboratory equipment that is used to rapidly sequence multiple samples of DNA. The device contains a staging area in which tubes containing multiple samples are placed awaiting use in the machine. When the machine is ready to test the sample, it pierces the top of the sample tube and extracts the genetic material automatically. It was alleged that this method of retrieval was incorporated into this machine in violation of a patent held by a competitor. An expert in intellectual property (IP) was sought to opine on the issue.
Question(s) For Expert Witness
- 1. Have you served as an expert on an intellectual property case before? Please explain.
- 2. Please describe your experience engineering/designing collection devices similar to the one described above.
- 3. Please explain why you are qualified to serve as an expert on this case.
Expert Witness Response E-030446
I have a Ph.D. from the Massachusetts Institute of Technology in electrical engineering with a specialty area of bioengineering. I am the primary inventor of several biotechnology patents. I have served as an expert witness on eight patent infringement cases and one medical malpractice case. I have experience analyzing endovascular stents, their delivery catheters, and patent litigation related to their unique designs.
Expert Witness Response E-030854
I have worked on 3 or 4 patent infringement cases and been formally deposed. I am quite familiar with patent structure and have done first drafts for MIT and my current institution (more than 40 submissions since 1979). I was involved with DNA microdevice forensics from 1995 until 2005 or so. At that time I was leading a group of 35 people at MIT Whitehead Institute half of whom were working on the microfluidic version of this collection device. We had contracts from the National Institute of Justice and a close collaboration with the FSS (Birmingham, UK). FSS is credited as the world leader in introducing the STR DNA fingerprinting methods. This was one of the very first commercial applications of microfluidics at any scale. Standard samples are by mouth swab – saliva. I also attended many of the NIJ review meetings in this period in which all the national forensics labs were participants. Before that I was co-author of a white paper that went to the top of DARPA and kicked off the original DARPA funding in BioMEMS microfluidics in the United States (1993). From 1996-2006 I was PI and Director of the BioMEMs Lab at MIT Whitehead.