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In nearly three decades as an IP litigator, Irell & Manella partner Morgan Chu has racked up dozens of court victories, and he’s learned a thing or two about presenting a persuasive (and winning) case. So in going before the jury in client Immersion Corp.’s patent infringement case against Sony Corp., Chu followed a couple of tried and true lessons — and brought home an $82 million verdict. Lesson one: Try to win the jury’s trust by taking time to thoroughly teach them the relevant technology and law. “It’s such a precious gift to have someone teach you something,” says Chu, who is based in Irell’s Los Angeles office, “and people tend to trust the person who taught it to them.” Lesson tw Seize every opportunity to show that the other side’s witnesses are less believable. “In cases involving a heavy dose of technology, it can seem like a battle of experts,” says Chu. “You have to be able to present your case so jurors know who should win.” With those rules in mind, Chu’s eight-lawyer team’s first move in the September trial was to give jurors some essential background information on the San Jose, Calif.-based Immersion’s technology. That technology, now standard in video games, makes it possible for game players to feel a sophisticated range of vibrations and sensations, such as car wheels on pavement or horses galloping, when gripping a computer joystick. Chu’s first witness, Mark Yim, was a co-inventor of the two Immersion patents. Yim recounted how in the mid-1990s, fresh from earning a Ph.D. from Stanford University in mechanical engineering, he had devised a low-cost system in which a computer program controlled tiny motors that created vibrations that a user could feel. Yim first applied for the patents in 1995. “We basically said, ‘Here’s the inventor, he’s a straight-shooter, and here’s what he did,’” says Chu. From there, the Irell & Manella team called on patent expert George Gerstman, a partner at Chicago’s Seyfarth Shaw, who Chu had worked with before for a mutual client. Gerstman explained how an invention is patented, and how Immersion’s patents were approved. “Lawyers are often not good witnesses because their egos get in the way,” says Chu “But he was engaging, articulate, and easy to understand.” Next up was Immersion chief executive Victor Viegas, who testified that the 140-employee company had invested heavily to develop a portfolio of some 240 patents in the field of haptics, or touch-related digital technology. He also noted that while the 11-year-old company earns a portion of its $20 million in annual revenue from other sources, such as joint development agreements with other companies, it relies heavily on fees earned through licensing. To drive home the nuts and bolts of its infringement case, the Irell & Manella team turned to Northwestern University mechanical engineering professor Edward Colgate. Using a variety of charts, diagrams, and animated graphics, as well as a simple yo-yo, Colgate gave jurors a more intensive primer on how Immersion’s technology works. Then he went through the specific claims in Immersion’s patents, and discussed how the series of engineering tests he performed showed that Sony’s PlayStation 2 had infringed Immersion’s patents. (Microsoft Corp. had originally been named as a co-defendant, but settled with Immersion for $26 million last year.) Sony’s lawyer was another heavyweight in the intellectual property bar — Matthew Powers, a partner in Weil, Gotshal & Manges’ Redwood Shores, Calif., office. In opening arguments, Powers tried to portray Immersion as a small company that was targeting a deep-pocketed corporation with a meritless infringement case. His first witness, Shinichi Okamoto, Sony’s former chief technology officer, recalled the millions of dollars Sony had spent to develop the PlayStation. Okamoto also insisted the company had developed its own touch-related technology, as featured in such games as SOCOM: U.S. Navy SEALS, in which players can feel the sensation of a Navy SEAL’s beating heart. Powers argued that Immersion’s patents were invalid because other inventors, including engineers at AT&T Corp., had come up with the technology first. Chu’s team, however, pointed out that the Patent and Trademark Office had already examined key pieces of the prior art put forth by Sony at trial, and still issued the Immersion patents. In a bid to undermine Sony’s efforts to minimize damages, Chu also cast doubt on a survey commissioned by Sony that purportedly showed that the touch-related technology was not important to video game buyers. That survey was done by San Francisco-based Field Research Corp. In his cross of Field Research chief executive Debra Jay, Chu pointed out that Sony had paid roughly $100,000 for the survey, and argued that Field Research had failed to validate its results in accordance with Federal Judicial Center evidentiary guidelines. Chu hammered home the credibility issue during his cross of Sony’s chief expert witness — Kenneth Salisbury, a Stanford University computer science professor. Showing jurors transcripts and video copies of Salisbury’s deposition testimony, Chu pointed out that in numerous instances, statements Salisbury had made concerning prior art and invalidity differed from his trial testimony. “Our witnesses were more consistently credible across the board,” says Chu. The jury in federal district court in Oakland, Calif., apparently agreed: After deliberating for a week, it found that Sony had infringed and awarded Immersion $82 million in damages. “Obviously, Sony was hoping for a defense verdict,” says Powers, though he adds that the good news is that the infringement was not found to be willful. If Sony isn’t able to reverse the verdict during posttrial hearings, he says, “there are a variety of issues that are ripe for appeal.” Immersion chief executive Viegas isn’t worried. “I think they misread the strength of our legal team,” he says.
CASE: Immersion Corp. v. Sony Computer Entertainment America Inc. WINNER:Immersion TECHNOLOGY:Software that enables video game players to experience tactile sensations when wielding a joystick during gameplay THE STAKES:Immersion was awarded $82 million, and plans to seek a permanent injunction to block Sony from selling 47 PlayStation games that use its technology. LESSON LEARNED:Attack the credibility of survey results.

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