Expert Witness and Litigation Consultant Services

Dr. Sacerdoti is a highly effective expert witness and consultant supporting software litigation. He has served or is serving as a litigation consultant and/or expert witness in 21 cases – 17 involving software and internet patent litigation and 4 disputes regarding contractual issues concerning complex software products and professional services. His activities on these cases include patent claim analysis, prior art research, invalidity and infringement analysis, technical consultation on litigation strategy, technical analysis of commercial software systems, assessment of performance under warranties, and assessment of performance to professional standards. He has been deposed for over 150 hours, served as a testifying expert at 2 jury trials and at hearings before a Judge, a Special Master and an arbitrator, prepared expert reports, prepared expert declarations, performed prior art search and code analysis, and provided advice and analysis on infringement contentions, claim construction, and narrowing of cases.

The patent cases addressed these technologies:

  • Automated configuration of complex products
  • Expert system development tools
  • Expert systems and automated process control
  • Application servers and Web Services
  • Web site architecture and functionality
  • Medical device software
  • Secure software architecture
  • Enterprise incentive management software
  • Extract-transform-load (ETL), data analysis, and data quality software
  • Motion tracking and game technology
  • Virtual reality systems
  • Image processing on mobile devices

Dr. Sacerdoti is an internationally known expert in Artificial Intelligence (AI), and has had a variety of roles in the software industry for 40 years. He can speak with technical authority about many advanced software technologies, and about many aspects of the commercial software business, including product design, product development, licensing and distribution agreements, quality assurance, professional service agreements, research and development, joint ventures, Small Business Innovation Research grants, and issues involved in founding, bootstrapping, and funding software businesses. His clients have included both major industry players such as IBM, Sun Microsystems, Apple, Schlumberger, and Tandem, as well as many startups working in such areas as database management systems, data center management, audio conferencing, web metrics, interactive graphics, mobile services, knowledge engineering, and health care. He is the author of a book and over 20 papers and articles on a wide range of advanced software topics. He has lectured at the graduate level at many schools, including Stanford, University of Edinburgh, UC Berkeley, MIT, and Carnegie-Mellon. He has given invited presentations at numerous national and international conferences on such topics as expert systems, database management, problem solving, technology transfer, robotics, and the utility of AI technologies. He has presented tutorials at national and international conferences on technical, managerial, and architectural issues concerning AI software. He is effective at reducing complex concepts and technical distinctions to simple terms.

He is a named inventor on eight issued, three pending, and two abandoned U.S. patents covering data visualization (and expert systems for generating them), social media advertising, ranking real estate parcels by their likelihood of selling, selecting and interpreting biomedical, psychological and neuropsychological tests, and a monitoring and surveillance device configured as a light switch:

Patents

Principal inventor, US Patent No. 6,188,403, “User-friendly graphics generator using direct manipulation”

Inventor, US Patent No. 6,222,540, “User-friendly graphics generator including automatic correlation”

Co-inventor, US Patent No. 6,954,728, “System and Method for Consumer-Selected Advertising and Branding in Interactive Media”

Co-inventor, US Patent No. 7,797,168, “System and method for consumer-selected advertising and branding in interactive media”

Co-inventor, US Patent No. 7,996,264 “System and method for consumer-selected advertising and branding in interactive media”

Co-inventor, US Patent No. 8,407,086 “System and method for consumer-selected advertising and branding in interactive media”

Co-inventor, US Patent No. 8,417,535 “System and method for consumer-selected advertising and branding in interactive media”

Co-inventor, US Patent No. 8,583,562 “Predicting real estate and other transactions”

Patents Applied For

Co-inventor, US Patent Application            20120221251, “Systems and Methods for Selecting, Ordering, Scheduling, Administering, Storing, Interpreting and Transmitting a Plurality of Psychological, Neurobehavioral and Neurobiological Tests”

Co-inventor, US Patent Application 20130166364, “System and Method for Consumer-Selected Advertising and Branding in Interactive Media”

Co-inventor, unpublished US patent application

Abandoned Patent Applications

Co-inventor, US Patent Application 20060000971, “Intelligent sensory platform for wireless two-way sensory surveillance”

Co-inventor, US Patent Application 20070120978, “Intelligent sensory platform for wireless two-way sensory surveillance”

Contact us for enthusiastic references regarding this service.

Details about the cases:

  1. Trilogy Development Group v. Teknowledge Corporation (1995-6); N.D. California. I can’t find the case number without going through my off-site archive files, but I think you can find it referenced at 1996 U.S. Dist. LEXIS 13095 (N.D. Cal. 1996) which reports a summary judgment of invalidity of the patent in question.

I consulted for Morrison & Foerster as their sole expert. The litigation concerned infringement of a patent for automated configuration of complex products.

 

  1. DSC Communications et al. v. Trilogy Development Group (1999); 366th District Court of Collin County, Texas No. 366-581-97

I consulted for Haynes & Boone. The litigation concerned performance under contract of a professional services group of a configuration software vendor.

 

  1. Dr Pepper/Seven Up, Inc. v. The Descartes Systems Group, Inc (1999); Case No. 50 T 00034 99 before the American Arbitration Assn.

I consulted for Haynes & Boone. The litigation concerned performance under contract of a product and associated services by a vendor of supply chain automation software.

 

  1. SAP America, Inc., and SAP Aktiengesellschaft v. Teknowledge Corporation (2000); Civil Action No. 99-667-GLS

I consulted for SAP, working with Morgan, Lewis, and Bockius as their sole expert. The litigation concerned infringement of several patents for expert systems development tools.

 

  1. Pavilion Technologies, Inc. v. Computer Associates International, Inc. (2002); United States District Court, Western Texas Division; Case number A 01CA 507 SS before a tutorial related to a Markman hearing.

I consulted for Heller, Ehrman, White, and McCaulliffe as one of three expert witnesses, with a primary focus on expert systems technologies as applied to manufacturing. The case concerned infringement of several patents concerning expert systems and automated process control.

 

  1. Software AG and Software AG, Inc. v. BEA Systems, Inc. (2004-5); United States District Court for the District of Delaware; Civil Action No. 03-739 GMS.

I consulted for Venable LLC as an expert witness regarding the market and technical environment for application servers and Web Services technologies. The litigation concerned infringement of a patent on object broker technology.

 

  1. Regional Income Tax Agency v. BearingPoint, Inc. (2005)

I consulted for Tucker Ellis and West LLC regarding professional practices in a consulting engagement to develop a web-based system for tracking tax payments. I interviewed the plaintiff’s technical team and reviewed key documents, then advised them from technical and business perspectives on which issues to pursue and the defendant’s likely responses to them.

 

  1. Versata Software Inc. v. Sun Microsystems Inc. (2008-9); 06cv358, U.S. District Court, Eastern District of Texas (Marshall).

I consulted for Skadden Arps Slate Meagher & Flom as an expert witness on invalidity and inequitable conduct regarding three patents concerning automated configuration of computer systems. I reviewed prior art, relevant license agreements, and source code (in C, C++, and Nexpert Object), prepared expert reports, was deposed, and testified before the jury at trial.

 

  1. ShopNtown, LLC v. Landmark Media Enterprises, LLC (2009); United States District Court for the Eastern District of Virginia (Norfolk Division); Civil Action No. 2:08-cv-00564-RAJ-JEB.

I consulted for Proskauer, Rose as the sole expert witness on infringement and patent invalidity concerning a patent for localized web portals. I reviewed prior art, web site architecture and functionality, technical documentation and source code, prepared expert reports and a declaration, was deposed.

 

  1. LifeWatch Services, Inc. v. Braemar, Inc. and eCardio Diagnostics, LLC; United States District Court for the Northern District of Illinois (Eastern Division); Civil Action No. 09-CV-6001

I consulted for Proskauer, Rose as the sole expert witness on infringement and patent invalidity concerning medical device technology. I reviewed prior art and prepared a declaration.

 

  1. Versata Software, Inc., et al. v. Callidus Software, Inc. (D. Del. C.A. No. 10-781-SLR)

I consulted for Davis Polk Wardwell on defense strategy concerning enterprise incentive management software, including claim construction and lines of inquiry for inventor depositions, and as the principal expert witness on patent invalidity. I researched prior art and developed a dozen detailed claim charts, supported development of invalidity contentions, and reviewed source code.

 

  1. JuxtaComm-Texas Software, LLC v. Axway, Inc. et al., No. 6:10-CV-011-LED, U.S. District Court, Eastern District of Texas

I consulted for Jones Day supporting SAS Institute Inc. as a testifying expert on invalidity and noninfringement concerning data management and data quality. I reviewed prior art, technical documentation and source code, prepared expert reports and declarations, interviewed defendant’s technical personnel, and was deposed.

 

  1. Aloft Media, LLC v SAP AG  and SAP America, Inc.; No. 6:2011cv00110, U.S. District Court, Eastern District of Texas (Tyler).

I consulted for Williams, Morgan, & Amerson regarding infringement contentions.

 

  1. Impulse Technology v. Microsoft Corp. et al. (2012- ) (District of Delaware No. 11-586-GMS).

Ongoing

 

  1. Summit 6 LLC v. Research In Motion, et al. (2012-13) No. 3:11-cv-00367-O, Northern District of Texas (Dallas)

I consulted for DLA Piper supporting Samsung as a testifying expert on noninfringement concerning image processing on mobile devices. I produced an expert report and declarations, and testified before a jury.

 

  1. Robocast , Inc v. Apple, Inc. (2012); Case 1:11-cv-00235-UNA, District of Delaware

I consulted with Simpson, Thatcher, and Bartlett regarding invalidity contentions.

 

  1. Virtual Solutions, LLC, v. Microsoft Corp. (2013); Case 12-CV-1118 (SAS), Southern District Of New York (Manhattan Division)

I consulted for InnovaLaw and testified at a Markman hearing on a case concerning immersive virtual worlds.

 

  1. Re-examination of US Patent 7,010,508 (2013)

I consulted with Sterne, Kessler, Goldstein and Fox developing arguments distinguishing alleged prior art from the claimed invention.

 

  1. Mount Hamilton Partners LLC v. Groupon, Inc. (2012 - ); No. 3:12-cv-1700 SI

Ongoing

 

  1. Publications International Limited v. Mindtree Limited, No. 1-13-cv-05532 (N.D. Ill.)

Ongoing

 

  1. Clouding IP LLC v. EMC International US Holdings Inc., EMC Corporation and VMware Inc., (District of Delaware No. 1:2013cv01455).

Ongoing.

 

 

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