Last month’s installment of this column focused on strategies for “winning patent cases on a budget,” with an emphasis on setting and sticking to efficient budgets. This month, I will focus on the “winning” part of that topic.
There are three drivers of success in patent cases that stand out above others:
Success in a patent case almost always hinges on a small number of issues. From the outset, it is essential that counsel ferret out the claims, defenses and trial themes that have a realistic chance of determining the outcome of the case.
Lawyers by nature are cautious and prefer to preserve every argument. The simple truth, though, is that preserving every argument makes winning harder. The arguments that win are the ones that are developed superbly. Working up every prior art position, for example, tends to dilute them all. If a prior art reference is great, it should not be buried under a dozen others.
Some attorneys believe in hiding the ball from opposing counsel. There are technical risks to that strategy (such as waivers). The biggest risk, though, is that by hiding the best arguments, they will not be adequately developed. Sandbagging is a paper-pusher’s strategy. The approach that wins cases is to develop winning arguments relentlessly and in the open. More often than not, being aggressive leads to favorable settlement or success at trial because strong, well-developed arguments are difficult for the opposition to counter even with preparation.
Developing good arguments is not enough. The arguments need to be communicated to the judge or jury, and the single best vehicle for doing that is through cross-examination. If your expert says something, the jury will discount it; admissions by the opposing expert, by contrast, are in the bank.
The litigation team should be working on cross-examination “chapters” (the component parts of the cross) as soon as key witnesses are identified (for example, in initial disclosures). Discovery is not a precursor to considering the content of cross; it is a vehicle for testing and strengthening cross. Developing an effective cross is one of the most difficult aspects of patent trial practice, and requires dedication from the outset.
2. Find the Right Expert
One often cannot choose the key witnesses who are needed to prove a claim or defense. For instance, as plaintiff’s counsel in a patent case, one is stuck with the inventors one is dealt. They may or may not be great witnesses.
Experts, though, present an opportunity because counsel enjoy unfettered discretion in selecting them. . The right expert is, of course, knowledgeable in the relevant field and a credible presenter. More than that, he or she is cautious and strong-willed. Pliable experts are easy for lawyers to work with, but they do not make it simple to win cases.
Experts who adopt the positions urged on them by counsel too easily are also easily undermined by a skilled opponent. Better experts push back and adopt only positions that they can defend with complete confidence. Again, this may mean taking fewer positions and weeding out arguments—but as noted above, doing so is part of what it takes to win anyway.
Selecting an expert requires diligence. In a recent case, I cross-examined an expert who, in a book written three years before the patent was filed, wrote exactly the opposite of what he said at trial. That expert would not have been selected if opposing counsel had read his book first.
3. Bring the Real World into the Courtroom
Sitting through a patent case can be boring for the judge and jury. Counsel know all of the case’s ins and outs, and have invested themselves in minutia like dependent claims, the doctrine of equivalents, and non-infringing substitutes. From interviewing jurors, though, one learns quickly that most of those points whiz by decision-makers who have not been living and breathing the case for years. They cannot realistically be expected to absorb it all—or, frankly, to care nearly as much as the lawyers.
The best way to ensure success is to make the case interesting by inviting the real world into the courtroom. For example, bringing the patented or accused product into court; passing it up to the judge or around with the jurors; letting them see and touch it and explaining it in detail. Counsel also can create a graphic that faithfully (conservatively, so it is beyond reproach) represents how the science works and show it several times with the expert as the narrator.
One of the simplest but most important strategies for keeping it real is to maintain eye contact. One should never read an opening or a closing, but rather should work from sparse notes and practice until important points are known by heart. It helps to ask: If I was telling my friends about this case, would I need notes? Of course not. Notes should not be relied upon too heavily in court either.
The key is to tell a story that takes place in the real world, the way someone in the real world would tell it. When standing before a jury we are not patent lawyers. We are people, story-tellers and teachers; we need to explain the facts the way someone would explain them on the sidewalk outside the courthouse or in the bar down the street—that is, in the real world, where every one of the jurors lives.