When Experts Talk, Judges Listen

It's generally a good idea to let your expert know when you are going to contend that a patent specification does not adequately support one of the steps in a claim.

In Space Systems/Loran v. Lockheed Martin (Fed. Cir. April 20, 2005), Lockheed's expert answered over his counsel's objection when asked to identify where the second step of the patent claim was depicted on Figure 2A and 2B. Nonetheless, rather than admit defeat, Lockheed's attorneys then tried to argue that the second modulating step of the claim was not "inherent" in the written description because the specification did not state that the second step is necessarily used. But the court was not hearing any of it:

To the extent that Lockheed is arguing that the second step need not always
be performed, Loral agrees that there may be occasions when the second step need
not be performed because the prebias correction was adequate and no actual error
remained after the first firing. According to the '375 patent the actual error
and historical error are compared after the thrusters have been fired in the
prebias correction; it is only after this comparison that the second modulating
step is employed. This does not diminish the descriptive content of the
specification. The evidence established, on undisputed facts, that the
specification describes the two modulating steps of the claim.

In all fairness, Lockheed also argued that the deposition tesimony of its expert was an improper new issue because Loral did not offer this part of the Alfriend deposition until after Loral's motion for reconsideration. But the court noted that "the district court specifically allowed Loral to refer to the deposition, and that the entire deposition was already before the court. This was a matter of district court discretion, and cannot be faulted."