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Lawyers talk about creating a record at trial for appeal. But most appellate victories come years after trial when the thrill of victory is diminished. Not for David Godkin, a partner at Boston’s Testa, Hurwitz & Thibeault. His preparation for an appeal paid quick dividends late last year. Two months after he lost a jury trial defending client Nidek Co. Ltd., a federal judge set aside the $17.2 million verdict. Godkin says he would not have been able to file his post-trial motions so quickly if he had not been preparing for an appeal all along. Summit Technology Inc. sued Nidek in 1998, claiming that Nidek’s EC-5000 laser system, a device used to perform laser eye surgery, infringed two of Summit’s patents by using similar laser techniques. In September 2002, after a lengthy discovery period and an 11-day trial, a jury found that Nidek infringed all of the patents. The verdict could have cost Gamagori, Japan-based Nidek $100 million in trebled damages. Judge Edward Harrington found that there was no evidentiary basis for the jury’s verdict. In his 31-page opinion, he explained that the jury misunderstood or was misled by some of the plaintiff’s testimony. One of the opposing side’s expert witnesses admitted to only looking at FDA submissions that Nidek provided about its products. In the end, there was not enough proof to show that the procedures used identical laser techniques. Harrington found that no reasonable jury could have properly found infringement. Alcon Laboratories Inc., which now owns Summit and its patents, has appealed the ruling to the U.S. Court of Appeals for the Federal Circuit. Wayne Stoner of Boston’s Hale and Dorr represents Alcon. Godkin, 47, has been with Testa’s litigation practice group since 1987 and has negotiated a string of multimillion-dollar settlements for computer software companies claiming copyright and license infringement. Instead of being intimidated by his initial trial loss, Godkin was prepared for the outcome and ready to turn it around. Here’s how he did it. RELY ON EXPERTS When Godkin began research and preparation for the case, he also called on a number of experts to help him understand the technology described in the patents. If he could understand their explanations, then the judge and jury, he thought, could too. (One out of two isn’t so bad, in this case.) Godkin’s witnesses included a medical expert, who performed more than 7,000 laser eye surgeries; a person involved in manufacturing laser technology in Germany; and an expert who worked in the original testing of laser products in the 1980s. In reviewing the evidence, the judge found that the trial testimony of these experts refuted all three evidentiary bases that Summit claimed supported the verdict. HEDGE YOUR BETS Godkin was aware that the jury might not understand the technological differences between the companies’ products, so he was careful to create a thorough record of evidence for the judge. “I always try to anticipate what could go wrong,” he says. If he lost at trial, Godkin wanted to be ready to immediately file the appeal. “We didn’t want to end up winning the battle and later losing the war.” Along with his team and help from co-counsel at Washington, D.C.’s Sughrue Mion, Godkin presented his defense, always keeping post-trial motions in the back of his mind. He was careful to put in evidence at trial that showed Nidek’s laser eye surgery product didn’t work the way the patent’s claims described it. Within a week of the jury verdict, Godkin was ready to pounce with a motion to set aside the verdict. The strategy worked and the pay off was quick. When Judge Harrington held the post-trial hearing, he made it clear he only wanted to examine infringement issues, rather than act on Summit’s motion for an injunction. The judge overturned the jury’s verdict just six weeks after the trial ended.

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