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For many years, patent litigation was considered a dry, quirky, arcane field. Those who were not directly involved in it did not understand it, nor did they want to. However, beginning in the late 1970s, companies such as IBM began to mine the value of their patent portfolios. Some law firms, particularly those based in Silicon Valley, recognized that patents were becoming an essential tool both offensively and defensively in the development of a business. These firms recognized that what is really needed in a patent case is a pure courtroom litigator, simply because they know what it takes to prevail at the end of the day. In addition to that, they needed a full complement of technically skilled people. My background is as a homicide prosecutor. I was a fair country trial lawyer who wanted to see if he could compete in patent cases. As a prosecutor, I was often handed a file and told to go try the case. Preparation consisted of reading the file during breaks in jury selection. Obviously, a lot more preparation goes into a patent case. Nevertheless, the basic courtroom instincts and trial skills involved in any type of litigation are essentially the same. Because I do not have a technical background, I spend a significant amount of time in preparation, learning about the field and the technology. In every case, I try never to forget the sense of confusion I had when I first read the patent. You must recognize that most judges and jurors will always have that view, and they will probably never be interested in getting up to speed unless you give them a reason. A courtroom litigator must make the case interesting. MAKE IT SIMPLE Patent litigation involves a variety of arts. One of them is the ability to distill a complex idea to something that is easy to understand and digest. When I started as a patent litigator, I was often tasked with distilling a patent into a single picture or a visual metaphor. My first assignment, for example, was to analyze a very complicated telecommunications patent, which I likened to a light switch that turns on and off. In contrast, our product operated like a dimmer switch. This analogy was subjected to a group critique. If we were ultimately going to use the metaphor, we had to be able to defend it, as analogies can often be turned against you. We used that picture in every brief we filed, hammering the metaphor home. Our opponent complained we were oversimplifying its patented technology. But the patent was ultimately dismissed from the case because the judge agreed our product did not perform like the light switch metaphor. DOING YOUR HOMEWORK The first step in preparation is learning about the patent and technology. Before the initial client meeting, you can get reasonably up to speed on whatever the technology is simply by reading the patent, doing research on the Internet, and perhaps reviewing articles from Lexis Nexis or another electronic database. Nevertheless, clients are always the ones who know the most about the industry and are typically ahead of any published literature. When you are dealing with cutting-edge industries, academics and generalists will never be as knowledgeable as the people in the industry. Your client should recognize — and they usually do — their obligation to educate their lawyer. The lawyer cannot be expected to have complete knowledge, and the client must fill in the gaps. However, the client does expect that their lawyer will be generally familiar with the basic technical concepts and nomenclature so that substantive discussions can begin immediately. AVOIDING THE MONEY PIT Patent cases tend to be massive, and litigation teams often work on any potentially viable avenue of success, regardless of the cost. Litigators lacking in confidence or experience often try to cover themselves by overlitigating and developing every aspect of the case. They can talk for hours about the arcana of the patent and the technology but can’t answer the question: “How are we going to win this case?” This unfocused, shotgun approach, becomes a money pit for the client. A good litigator must identify the key issues at the outset of the case. You should be able to state, for example, “We must win the following two issues to prevail in this case. … ” or “ This is the key to our victory.” Once the path to victory has been identified, the litigator must lay out the options to the client and offer a recommendation. You must then go to the client with that understanding, explaining, “Here are your alternatives. You can now make a rational business cost-benefit assessment. We can take depositions all over the country, looking under every stone for prior art. It will cost $X. That approach does not look as successful as proceeding in a more narrow direction, where we think we can show inequitable conduct. You can either pay $X, and we will go everywhere, or pay $Y, and we will start here, and see what happens before we expand our range.” RISK AND NEGOTIATION I have been involved in cases in which I felt that lawyers folded their cards out of concern for their personal risk — fears they may have had about failure in upcoming trials and the personal risk of losing. That should never factor into a decision. As a prosecutor, I remember trying a homicide case, where the only witness was a scared 10-year-old boy. I asked him whether he saw the killer in court. He looked right at the defendant and said, “No, and that’s definitely not him!” I managed to continue on as if that were the answer I had been expecting. Once you’ve experienced that and survived, you really don’t fear the uncertainties of a trial. Assessing the client’s risk is complex. In addition to the financial issues, there are subtler costs. Losing a patent case can be devastating to the morale of a company; yet many companies fail to consider this in advance. The client needs to understand all the repercussions involved when they say, “We need to take this to the brink.” I find that ego often interferes with negotiation. While the client’s ego can be a relevant consideration, the lawyer’s ego almost never is. Also, your negotiations should always be from a position of strength. If you draw a line in the sand, you must be prepared to back that up with action. Bluffing is not a good course to take in negotiations. SKILLS OF PERSUASION I have seen numerous lawyers make the mistake of not being candid with the court and jury. If you believe you will be able to mislead people in a case that lasts any longer than a day or two, you are simply wrong. I do not know whether lawyers do it intentionally, or they actually convince themselves they are not being fast and loose with facts. If you lose your credibility, you have lost everything. You cannot fool judges and jurors in a long trial. One of the problems in maintaining credibility is that people tend to fool themselves. Earlier this year I was trying a case, and the plaintiff’s lawyer mischaracterized a key document in his opening statement. I do not think it was an intentional lie; rather, he must have looked at the document and read only what he wanted to read because he lacked objectivity in his preparation. In response, we were able to quickly revise our opening statement, and that document went front and center in our own case. The opportunity to undermine our opponent’s credibility at an early stage, by showing that he had just told the jury something that was not true, was crucial. Some lawyers think if they simply try not to lie, they will maintain their credibility, but it is much deeper than that. It requires an ability to step outside yourself and your own biases and look at evidence objectively. As a lawyer, you should constantly ask the question, “Is my perception objective?” When you think a document is great for your case, have someone else look at it and see if they agree. You cannot let yourself be carried away with your own view of the facts, not recognizing that other people may see things differently. That is one of the keys to real credibility — to actually be able to self-criticize and ensure that your words cannot be turned against you. Brandon Baum is a partner at Cooley Godward (www.cooley.com) in Palo Alto, Calif. This article is reprinted with permission from Aspatore Books (www.aspatore.com), publisher of the book, “Inside the Minds: Leading Intellectual Property Lawyers.”

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