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Attorney: George P. McAndrews, 65 Firm: Chicago’s McAndrews, Held & Malloy Case: Southern Clay Products Inc. v. United Catalysts Inc., H-98-1756 (S.D. Texas) Winning Points: � Excise all jargon from testimony. If a witness strays into jargon, get him or her back on track. � Tell a complex story chronologically. � Put a human face on a technological dispute. In preparing and trying a case involving technology, George P. McAndrews believes in getting all his witnesses to translate the science into laymen’s terms. “I have to get rid of all the jargon, to get it to the point the jury can understand.” He tells inventors and experts to put their testimony at a “high school sophomore” level or risk losing the jurors. “I tell the inventors, ‘If I can understand it, anyone can, but I’m not going to go up to your level, you’re coming down to mine.’ “ If a witness talks above the heads of jurors, McAndrews will interrupt — even his own witness — and say, “I haven’t the slightest idea what you just said.” Then he’ll get the witness back on track. This is an approach that has served McAndrews well. His verdicts in patent infringement cases include awards of $30 million, $17.2 million, $14.6 million and $80 million; he has also defeated numerous actions seeking millions. About 90 percent of his work is in patent litigation. In his most recent victory, McAndrews represented Southern Clay Products Inc. of Gonzalez, Texas, which had developed and patented a process for improving organoclays, industrial chemicals used as gelling agents to improve the performance of oil- or organic solvent-based greases, inks, paints and coatings. In the early 1990s, he says, Southern Clay began to suspect that United Catalysts Inc. (UCI), which had come up with its own line of organoclays, was infringing on the patents. UCI is a Louisville, Ky., company partly owned by the German industrial giant Sud Chemie A.G. Southern Clay’s parent, Britain’s LaPorte, did not want to sue, McAndrews says. Patent infringement litigation is expensive and unpredictable. Southern Clay wasn’t sure there was any infringement, he adds. “They were sending polite letters to UCI and receiving responses that ‘We don’t infringe your patent.’ “ In 1996, LaPorte sent another letter to UCI. But this time, he says, “UCI didn’t say there was no infringement, but that the patent was invalid.” McAndrews was called in to evaluate the Southern Clay claim before any suit was filed. Reading the latest UCI response, he thought immediately that Southern Clay had to sue. “When [UCI] said the patent was invalid, they were really saying they’re using it. It was an admission of infringement.” Any evaluation of a claim requires, before recommending a lawsuit, a thorough investigation. “We checked the patent, talked to engineers, determined if there is prior art.” They also researched if the potential damages, in terms of lost sales, were large enough to make a lawsuit viable. The lawyers decided that the patent was valid and infringed and that Southern Clay was suffering substantial damages by not enforcing the patent. “In effect I told them, ‘Your patents are worthless if you’re not going to enforce them.’ “ Southern Clay sued. The evidence was going to be highly technical. To prove the contentions before a jury of nonscientists, McAndrews began by telling the story of the Southern Clay process chronologically. This meant going back to the beginning, showing the clay mines in Wyoming where the clay used in the process originates. Then he explained how Southern Clay inventors created a new process to reduce clay to minute particles, almost elemental size, so that the chemical could coat more of the surface area of the grains of clay. A HUMAN FACE In McAndrew’s opening, he established his themes: “This was a breakthrough invention of unbelievable importance to the market. UCI misappropriated the invention and misrepresented the facts so that Southern Clay had no way to find out.” He says, “I’m putting a human face on it.” UCI had charged that an inventor of the Southern Clay process, Butch Knudson, “had taken this idea from his first employer,” McAndrews says. “I went at this in my opening. I said they would hear these charges that Dr. Knudson stole this idea. The evidence will show nothing like that happened. He independently conceived and put into practice this invention.” This put an emotional charge into the dispute between two companies — he was defending the integrity of the inventor. Knudson was his first witness. “I didn’t get emotional yet. There had not been enough presentation of the evidence.” Instead, he had the inventor explain the invention, using plenty of demonstrative exhibits, “so a lay jury can understand.” To show the process, the plaintiffs’ team brought in mason jars filled with clay. Each jar passed to the jury contained ever-smaller particles of clay. Dr. Knudson explained the process, noting that the machines Southern Clay used would grind the clay into particles so small they were no more than a fine powder. As for Knudson’s testimony, he says, “I just let him narrate. I don’t break it up continually. I just want him to tell a story.” ICE CUBE ANALOGY Throughout the trial, McAndrews says, he and his witnesses would continually use analogies to better explain scientific material and patent concepts to the jurors. One expert, Gary Beall, a chemistry professor at Missouri Baptist College, for instance, used a simple analogy to explain the function of surface area. “Maybe a good example of that would be, if you took large cubes of ice and put it in a drink, it’s not going to cool down nearly as fast as when you take crushed ice and put it in a drink,” Beall testified. “That’s just a function of a surface area.” McAndrews used another analogy to combat the defense contention that the Southern Clay process was based on prior art. Southern Clay countered that even if the elements weren’t unknown, the way the patented process put them together was “new, useful and not obvious.” McAndrews noted that no one claims that the Oxford English Dictionary is a replica of the works of Shakespeare. “All the words in Shakespeare are in the dictionary, but the words aren’t in proper order.” It was the same with the processes that preceded the one developed by Southern Clay — they weren’t in the proper order. In the closing, McAndrews ratcheted up the emotions, telling the jury that “Dr. Knudson has had to live for 10 years being accused of being a thief. You have to decide who the thief is. I say it’s UCI.” In any closing, he says, “I allow myself to get emotional.” At this point, he believes, the lawyer has to “make this a human event. Let the jury know this is not just cold, hard numbers.” On June 6, 2000, a Houston jury awarded Southern Clay $20.9 million, finding willful infringement of the two patents. In February, federal Judge Kenneth M. Hoyt of the U.S. District Court for the Southern District of Texas trebled the actual damages to $62.7 million and added $12.42 million in prejudgment interest and $2.92 million in attorney fees. He permanently enjoined UCI, all its officers, agents and employees from infringing, making or selling any organoclays using the Southern Clay process. UCI has appealed.

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