Why Reverse Engineering
Reverse engineering reports can be used in multiple contexts
Often, it’s used by IP professionals, such as lawyers or licensing professionals, to determine or confirm IP infringement. The reverse engineering report supports the analysis by IP professionals by providing an accurate technical depiction of a product, but the report does not typically provide IP analysis per se. In other words, the IP professionals will analyze the work product to reach an independent determination on IP infringement. This division is labor typically protects the engineer from being involved in subsequent litigation over the work product.
The reverse-engineering report can be used to support licensing discussions (e.g., when the need for the license is tied to patent infringement). In some cases, a licensing entity will obtain reverse engineering before approaching a company about taking a license to confirm how a product operates and that the operation is infringing. This approach is particularly apt when the licensing is based on actual patent usage, rather than patent infringement based on practicing a technical standard like 4G, WiFi, or various video compression standards, which in turn infringes patents essential to practicing the standard (so-called standard-essential patents infringement). The reverse-engineering report could be used in the content of standard-essential patent infringement if there is a question about whether a standard-compliant product actually infringes when operated.
The reverse engineering report can also be used in connection with anticipated or pending patent infringement litigation (either before a lawsuit is filed to support pre-complaint-filing determination of infringement as required in certain jurisdictions or during the lawsuit, such as during fact or expert discovery or to support the evaluation of potential re-designs alleged to be non-infringing). In all cases, the reverse-engineering effort is conducted independently of the IP infringement analysis, which is typically done by clients of S.P.A.R. Strategies.
In some cases, suppliers take steps to conceal how their products operate, e.g., by using epoxy or potting material in electronics to inhibit easy analysis, such that even if a buyer successfully obtains a product, the information that can be learned is limited by the concealment means. In these situations, the potting materials can make reverse-engineering difficult because disassembly of the device may involve destruction of the device or individual components, either by mechanical disassembly or chemical removal.