- 29 -
the practice of patent, trademark, and copyright law. He is
currently the senior partner in the firm of Thomas, Kayden,
Horstemeyer & Risley in Atlanta, Georgia.
Mr. Thomas prepared two expert witness reports (first and
supplemental) which addressed the validity and enforceability of the
Amoco patents, and the reasonableness of the royalties paid pursuant
to the Tri-Podd license agreement.
Mr. Thomas began his analysis of the validity of the Amoco
patents by noting that patent applications are subject to a rigorous
examination process performed by a patent examiner trained in the
particular technical field to which the patent application is
directed. He noted that an issued patent is presumed to be valid
and that one who challenges validity must prove by clear and
convincing evidence that the patent is invalid. Mr. Thomas then
performed a detailed analysis of each claim of the Amoco patents,
and, after comparison to other patents issued for intermodal
container liners, concluded that both patents were valid.
Next, Mr. Thomas analyzed the enforceability of the patents.
He noted that, because of the ex parte nature of a patent
application, a patent applicant has a duty to act with candor, good
faith, and honesty in dealing with the U.S. Patent and Trademark
Office and must disclose all prior art known to the applicant which
is material to the patent application. If that duty is breached, a
patent may be held unenforceable because of the inequitable conduct.
In order to prove such inequitable conduct, one challenging a patent
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 NextLast modified: May 25, 2011