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In November last year, four attorneys from D.C.’s Sughrue Mion put on a mock trial M twice � in Japan. The goal was to educate Japanese companies with intellectual property interests in the United States on how Americans litigate patent disputes. More than 150 Japanese in-house counsel and other executives attended the two two-day presentations.Legal Times talked to partners William H. Mandir and John F. Rabena about what they did and how it worked out. What made you think the Japanese would be interested in an American-style mock trial? William Mandir:Most Japanese managers don’t get a chance to see this type of thing until it’s their company on trial. The mock trial allows them to see how the trial is conducted and how the American jury thinks, without the risks. John Rabena:Also, most patent cases settle before trial so the managers don’t usually get to learn how a trial actually pans out or how juries deliberate. There has been somewhat of a trend of Japanese companies becoming more aggressive in enforcing their own patents, particularly against their Asian neighbors. The primary economic market for these companies is the United States, so these battles get played out with U.S. patents in U.S. district courts. When we bounced the idea off a couple of clients, we got the expected response that they would be very interested in this type of seminar. Can you describe the setup? Where did you hold these seminars, and who participated? Rabena:The entire seminar was done in Tokyo at the office of NGB Corp., a Japanese company we’ve worked with for over 40 years. They rented a movie set from an actual movie about a U.S. trial. The room looked like a real courtroom with a large audience section for the seminar participants. There was a complete film crew with at least five cameras shooting from different angles, and lots of TV displays throughout the audience section so that people could see close-ups of the witness or whoever was talking at the time. The TV monitors also displayed the exhibits, real-time transcripts, and Japanese language summaries of what was happening. [Magistrate] Judge [Elizabeth] Laporte from the Northern District of California presided over the mock trial. The jury was made up of Americans living in Japan. And two teams of lawyers from Sughrue’s litigation department, including ourselves, were the trial attorneys for the plaintiff and the defendant. What specifically did you do on the first day? Mandir:The first day was mostly lectures, but we mixed in a few demonstrations, like a summary judgment and Markmanhearing [addressing claim construction issues], and a deposition of the defendant’s IP manager. The lectures covered patent litigation topics like effective management of discovery, opinions of counsel, pretrial issues, etc. The mock trial involved a U.S. sporting goods company suing a Japanese company for patent infringement. Like the rest of the world, Japanese love golf, so we picked a hypothetical high-tech golf grip as the subject of the patent. What specifically did you do on the second day? Rabena:That was the trial day. It started off with opening statements, then each side called two witnesses. The patentee called the inventor and an expert witness, and the defendant called the IP manager to defend against willfulness and a technical expert to say the patent was not infringed and not valid. The IP manager, Mr. Ikeda, testified in Japanese, as he would in a real trial. The audience, which consisted mostly of IP managers, were naturally very interested. In the Q&A period, we received several comments and questions regarding how Mr. Ikeda’s testimony and presentation could be improved. For example, some of the audience recognized that Japanese have different idiosyncrasies than Americans, and thought that might impact how an American jury perceived the Japanese witness’s credibility. Mandir:By the way, while the trial was somewhat scripted, we frequently deviated to emphasize a point or prove a new point. Each side began to really want to win, which made it more realistic as well. How did you make sure that the attendees could follow the proceedings? Mandir:Most of the trial and the hearing were purely in English, as would be the case in the real world. The lectures were translated in real time by interpreters. NGB had prepared comprehensive summaries of the issues in the case, of each demonstration, and of each witness’s testimony. They also had a live feed or real-time display of the trial in English. Many of the attendees spoke and read some English, so having a scrolling English text of what was happening helped them keep up. What were the Japanese most interested in? What raised the most questions? Rabena:We were somewhat surprised at the level of interest in the mock deposition on the first day. In hindsight it makes sense because the audience was mostly IP managers, and they are faced with possibly being deposed in the early stages of any lawsuit. We received the most questions from the audience following the deposition. One question I recall specifically came from an older gentlemen who asked if the deposition of the IP manager was “purely voluntary.” Much to his disappointment, we answered that it was not. Mandir:They were also very interested in what the jury found as strong points in the case � this we fully expected as that is one of the big points that drove the entire seminar. Were there any surprises for you in terms of what you thought you knew about U.S. patent litigation? Mandir:We’ve been through many mock trials before in preparation for actual trials, and we always learn something because we are able to receive feedback from the jurors as to what’s important to them in deciding the case. This was no different. We, along with the audience, were able to watch the jury deliberate through a closed circuit camera, and thus we were able to learn which themes hit home and which did not. In our hypothetical scenario, the Japanese company failed to get an opinion of counsel. Following the Federal Circuit’s recent decision in Knorr-Bremse [v. Dana Corp.], Judge Laporte didn’t instruct the jury as to any adverse inference to be drawn from that. But during deliberations the jury spent a considerable amount of time wondering why the defendant had not obtained an opinion of counsel. Ultimately, it was one of the reasons they concluded the defendant willfully infringed the patent. Would you consider the venture a success? Rabena:Absolutely. From the level of interest of the audience during breaks and at the cocktail parties afterward, it was clear that they learned a lot of practical points that you just can’t absorb without seeing it happen. We have already been asked to present the mock trial again in Japan, and we have plans to do it in other countries. William H. Mandir ( [email protected]) and John F. Rabena ( [email protected]) are partners in the D.C. office of Sughrue Mion, where they focus on intellectual property litigation.

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