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Throwing hand signals as he spoke, John M. Desmarais looked more like a referee than a litigator this spring in a San Diego federal courtroom. He wanted to persuade the jury that Microsoft Corp. had infringed on two valuable music file compression patents held by his client, Alcatel-Lucent. But the panel couldn’t decide the case without understanding some complex matters, including thresholds of human hearing and how frequencies are coded as music. So Desmarais devised some simple hand signals to help make his case. He raised his left hand when referring to one type of sound threshold and his right hand when discussing another. He interlaced his fingers while explaining how Alacatel-Lucent’s patent combined them into a composite for converting audio into a digital music format. “The jurors got so used to seeing it in the courtroom that they started to do it themselves and laughed when I did it,” Desmarais, 43, said of his hand gestures. After the panel awarded Alcatel-Lucent $1.53 billion � the largest patent infringement verdict ever � jurors told him that his signals aided them in comprehending the technology during the 12-day trial. Lucent Technologies Inc. v. Gateway Inc., No. 02-CV-2060-B (S.D. Calif.) (consolidated with No. 03-CV-0699-B and No. 03-CV-1108-B). Desmarais, a partner at Chicago-based Kirkland & Ellis’ New York office, has a knack for helping courtroom audiences see things his way. Last year, for example, he won a bench verdict against Ivax Corp. on behalf of Forest Laboratories Inc. and H. Lundbeck in a patent infringement case involving a generic version of the antidepressant Lexapro. Ivax sells more than $2 billion in Lexapro each year. Trying three cases Though Desmarais’ hand gestures in the Microsoft case appeared to be a simple mnemonic device, they were part of a carefully executed strategy. Desmarais, Lucent’s outside counsel for a decade, says he always simultaneously tries three cases: one for the jury, one for the judge and one for the appellate court. His primary audience is the jury “because you have to win in the first step,” he said. Jurors demand credible witnesses and experts paired with positions that are easily conveyed and repeated. At the same time, Desmarais is tailoring his evidence and argument to the bench. “You have to win arguments in court and preserve the verdict,” he said. “You have to make sure to get a little more granular for the district judge.” His last audience, the U.S. Court of Appeals for the Federal Circuit, required an analysis of the technology at issue and a detailed linking analysis of claims. That material could bore jurors out of their seats, yet a patent infringement victory won’t hold up on appeal without it. “That’s one of my struggles,” Desmarais said. “We’re often making calls about cutting detail to please the jury, but you don’t want to cut out so much that you’re impaired at the court of appeals.”
TRIAL TIPS • Use memorable visuals to help jurors understand complex data. • Try your case for the jury, the judge and the appellate court. • Be better prepared than your opponent.

Microsoft has said it will appeal the Feb. 22 verdict. The software giant claimed it had paid $16 million to license the MP3 technology from Germany’s Fraunhofer Institute and thus owed nothing to Alcatel-Lucent. Microsoft’s lead attorney was John E. Gartman of Fish & Richardson’s San Diego office. The firm referred questions to a Microsoft spokeswoman, who said she could not comment on the case because the verdict will be appealed. Desmarais said he “struggled mightily” with how to ask the jury for a substantial award. He told jurors that Alcatel-Lucent initially wanted only $5.65 in licensing fees for each Windows computer that contained the patented technology, but Microsoft refused. “Yeah, it adds up,” Desmarais said of the billion dollar-plus demand, “but it’s because of them, not us.” The jury awarded what he sought: a 0.5% royalty payment on the value of Windows computers sold from mid-2003 to the end of 2005. The panel deadlocked on whether Microsoft had willfully infringed on the two patents, preventing Alcatel from collecting triple damages. Desmarais’ trial team included Robert A. Appleby, Elizabeth Bernard, Paul A. Bondor, Edward C. Donovan, Jordan N. Malz and Michael P. Stadnick. During a trial, Desmarais moves into a hotel and focuses exclusively on the litigation. “You can’t do these trials part-time,” he said. “You can’t go home every night or on weekends or you’re going to get burned. The only way not to get burned is to be more prepared than the other side.” That’s a lesson he learned the hard way more than a decade ago. As an assistant U.S. attorney, Desmarais was outmaneuvered by a veteran defense attorney representing a bank robbery getaway driver. “The defendant walked,” Desmarais said, still chagrined, “and I knew he was guilty!” Desmarais isn’t finished with Lucent’s patent infringement battles. More cases are ready for trial, and Desmarais is prepared to prove himself again in the courtroom. “You’re on the line and your reputation, your skill and ability are on the line,” he said. “I tell my clients, don’t worry, because I want to win this case more than you do.”

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