Materials-Science Expert for Patent Matters

Matters this covers

• Infringement — whether an accused material, formulation or process falls within the claims, including testing where the claim turns on a measured property.
• Invalidity — whether the claimed invention was anticipated or would have been obvious to a person of ordinary skill in the art.
• Prior art — searching and reading the scientific, patent and trade literature in the relevant materials area.
• Patentability and prosecution support — patentability research, and technical support on initial filings, valuations and prosecution or defence before the U.S. Patent and Trademark Office.

The technical questions that usually decide the matter

• What would a person of ordinary skill in this field have understood a claim term to mean at the priority date?
• Does the accused product actually have the claimed composition, structure or property, and by which test method?
• Does a prior publication disclose every element of the claim, or only something close to it?
• Does the specification teach enough to make and use the claimed material without undue experimentation?

Where the product under evaluation cannot be assessed with standard equipment, custom test equipment can be acquired or built to suit it. That is often what produces the measurement an infringement question depends on.

Why this sits inside the principal’s field

The principal is a named inventor on seven patents and the author of more than 150 refereed publications, so he reads claims and prior art from both sides: as someone who has written them and as someone whose own work has been examined against them. Four decades of teaching also bear directly on explaining polymer chemistry to a court without distorting it.

Credentials relevant to admissibility

• PhD in polymer science and engineering, University of Manchester (UMIST), England.
• Professor Emeritus of Polymer Science & Engineering, The University of Southern Mississippi; formerly professor of chemical engineering and of materials science and engineering, Iowa State University.
• Registered Chartered Engineer (UK) and Registered Chartered Scientist (UK).
• Fellow of the Institute of Materials, Minerals & Mining (UK), the Society of Plastics Engineers, and the Nigerian Academy of Engineering.
• Holder of seven patents; author of more than 150 publications in refereed archival scientific and engineering journals and books.
• Senior industrial experience, including as Senior Project Leader and Engineer at Corning Incorporated.

The full record, including awards and appointments, is set out on the credentials page.

How an engagement runs

Conflicts are cleared first. After an engagement agreement is in place, the evidence is reviewed, any testing is commissioned through independent university and industry laboratories, and the opinion is reported to counsel before it is written up. The scope of expert work, and answers to the questions counsel usually ask first, are on the Expert Witness & Litigation Support page.