Courting a Jury

Advice from top patent litigators on how to sell a high-tech case

These factors explain why there were only 102 jury trials about patent disputes in 2006, out of 2,830 such cases filed, according to the Administrative Office of the U.S. Courts. Jameson, for instance, has won nearly 20 cases on summary judgment in his 19 years as a patent litigator, but he has tried only four cases in front of a jury, including a February defense win for client EarthLink Inc. in federal district court in Wilmington. "In some respects it is mind-boggling" how infrequently jury trials occur, Jameson says.

So when the rare dispute does arrive before a jury, each side must be convinced that it has a decent chance of winning. And what usually tips the scale to the winner? Lawyering.

Because patent trials are rare, the few lawyers who have actually tried patent cases in front of juries are in high demand. Special skills are required: While every trial lawyer has to be adept at building rapport with a jury, patent litigators also often face the difficult challenge of making complicated technology understandable to those six or eight ordinary folks.

The attorneys trying these cases have changed, too. Little more than a decade ago patent trials were argued almost entirely by IP boutiques, moving claim by claim in a laborious and time-consuming process, says Ernie Brooks, a trial attorney with IP boutique Brooks Kushman in Detroit. The advent of Markman hearings in 1998 changed the game, putting interpretation of claims before the judge alone and leaving just the substantive factual issues to the jury. Steven Zager, a litigator at Akin Gump Straus Hauer & Feld in Houston, says the pretrial hearing "makes the whole process a lot easier."

As Zager's experience illustrates, the move to Markman hearings coincided with general practice firms showing new interest in IP litigation. Big firms started to appreciate that patents are the key to many of their clients' businesses and that it might be a mistake to leave that crucial aspect of their affairs to another firm. What's more, patent litigation is long and complex. With cases bouncing between district courts and the Federal Circuit on appeal, they can provide years of steady billable hours. And the opportunities for patent litigation exploded in 1998 when the Supreme Court's State Street decision opened the door to both business method and software patents.

The advent of new trial presentation technology has also rewritten the rules. Zager says early patent trials were boring. "Now, with animation and video and the ability to present evidence electronically, we have so many more tools to teach the jurors than we had twenty years ago," he says. Top patent litigators identify three factors that contribute to winning: crafting a compelling story, educating the jury with a high-tech trial presentation, and savvy use of local counsel.

CRAFTING THE STORY

Some of the most important steps toward victory occur long before showing up in district court. Peter Chen, a partner at Latham & Watkins in Menlo Park, Calif., stresses the importance of mock trials, especially in cases that require untangling a knot of complicated technology. "It's valuable to hold a mock trial even before the Markman hearing," Chen said recently at a briefing on patent litigation hosted by ALM Events, the conference division of IP Law & Business' parent company. "That way you have time to change the tenor of the case if the jury doesn't understand what you are talking about after ten minutes." Chen also stresses the importance of recruiting credible expert witnesses. "Your legal team may not be ten times better than the other side, but if you get the best expert, it makes a huge difference," Chen says.

Once in the courtroom, communication with jurors is a two-step process, says Zager. "First you make them want to decide the case in your favor, then you give the evidence. Most lawyers forget that first half," he says. That tactic is seconded by Jeff Risher, a litigation counsel at Apple Inc., who also spoke at the ALM briefing. "It's a problem because litigators start living and breathing a case. By the time they get to trial they can lose what the jury cares about. You have to explain the technology in a way to drive home that you are the good guy," Risher says.

Zager operates under the assumption that jurors make up their minds within the first two days of trial, then use the rest of the time justifying their decisions. Complicated technological issues are reduced to simple questions of morality. "Jurors want to know, what did you invent, how did you go about doing it, and what was your motivation?" says Zager. "Basic human interest questions. Jurors don't want to know claim 36 is a dependent claim; 39 is an independent claim."

"The first and most important issue is to make the case simple," says Larry Laycock of Salt Lake City-based Workman Nydegger, who won a $79 million verdict for Finisar Corp. against DirecTV last June in Beaumont, Texas. The case revolved around a patent covering a method of regulating the organization of data during a satellite transmission. "I tell every one of my teams, if you can use a nickel word instead of the 50-cent word, it's always best."

Fish & Richardson patent litigator Frank Scherkenbach says that if you ever find yourself having to make an academic argument to win a case, you're in trouble. "These issues, while legally complicated, are really not complicated for a juror to understand if they're reduced to basic principles," says Scherkenbach. "Not only did the defendent do something wrong -- the infringement -- but did they know they were doing something wrong, which is willfulness. Did you see the light turn red when you ran it?"

Even with a theme firmly in mind, litigators have to make many tactical decisions. For instance, they have to decide whether to put their clients on the stand before or after expert witnesses. By calling the client first, defense attorneys can establish sympathy for their client before delving into technical details. But if a client talks over the jury's head, the benefit of striking first can be nullified.

There is also the factor of sizing up opposing counsel. In a Houston courtroom last February, Zager won a $152 million trade secrets verdict for Hexion Specialty Chemicals Inc., based in part on a gamble. "I had it in my head [an assumption] that Rusty Hardin, a remarkable trial lawyer, was not the guy who would cross-exam our experts," says Zager. Hardin is famed for his rapport with juries. "I thought, if we can keep him in his chair for the first five or ten days of the trial, then the jury doesn't bond with him," said Zager. "By the time the jury got to hear him [after seven days] they had already made their decision."

Even with the advantage of striking first, litigators have to make the most of their time. Ernie Brooks has tried more than 20 patent cases before a jury. "When I started trying cases in the '70s you wanted to teach the jury everything you knew," he says. Over time judges with crowded dockets started putting tighter time limits on lawyer arguments, and the jury's attention span shrunk. "Now you provide the global backdrop, then focus on the key issues," Brooks advises.

During a six-day trial in April 2006, Brooks argued that Microsoft and Autodesk Inc. infringed on his client z4 Technologies Inc.'s digital rights management technology. The Tyler, Texas, jury returned a $115 million verdict against Microsoft, with an additional $18 million from Autodesk. Brooks' client, a tiny Michigan-based company, walked away with $133 million for its two patents.

Brooks' strategy? "Keep it brief." Brooks presented a few simple schematics on white boards to show jurors how the defendants had used z4's anti-piracy technology in Windows XP and Autodesk's AutoCad software. Though he admits to the occasional extemporaneous quip during cross-examination, Brooks is convinced jurors quickly tire of repetition. "I patronize nobody," he says. "I'm not gonna stand and tell you the same thing 16 times." " Zager agrees. "Most jurors tend to say, 'I got it the first time," he says.

USING GRAPHICS AND ANIMATIONS

"I don't know how you could try one of these cases without graphics, and without really good graphics at that," says Peter McCabe, a Winston & Strawn partner who won a $58 million verdict for Verizon Communications Inc. against Vonage Holdings Corp. in March. McCabe's litigation team relied on Chicago-based trial support company nextPoint, Inc. "Jurors under 40 are expecting a show," says nextPoint founder Rakesh Madhava. "A talking-head approach is not something they have the patience for." Weil, Gotshal & Manges patent litigator Matt Powers agrees. "The mistake I see a lot of people making is that the graphics just aren't very good, and they have boards that have a ton of text on them," Powers says. Weil has trained its paralegals to create and run its graphics using TrialDirector software, from inData Corporation. Powers will use outside consultants for very high-end animations, but he prefers using someone who is part of the team. "We found that we don't really get value-added from the outside services, certainly not to justify the money they charge," he says.

Outside consultants can be pricey. Following its $79 million win in Beaumont for Finisar, Workman Nydegger partner Larry Laycock requested fees of $410,999.65 to cover "audio/visual professional services" alone, including the cost of maintaining a war room for nearly two months, according to court documents. Judge Ron Clark found the request excessive and granted only $18,225. Laycock would not comment on how those services ultimately got paid for.

The Winston & Strawn trial team used graphics to build the story of how Vonage's technology infringes five Verizon patents, starting with a very basic definition of terms. "We needed to explain the operation of the public switch network phones versus the new technology," says nextPoint's Courtney Gray, who worked with McCabe in preparing for the trial and in the courtroom. Verizon's patents covered the technological steps leading up to the ability to provide Internet-based phone calls. Gray displayed graphics and animations illustrating traditional telephone lines -- which in effect establish a direct connection between phones -- and Internet phone calls -- which convert sound waves to packets that can be dispersed and sent online to be reconstructed on the other end. In the jury trial, McCabe and nextPoint went step-by-step and compared Vonage's service with the technology covered by Verizon's patents.

Heller Ehrman partner Patricia Thayer, whose trial team won a November 2006 patent trial in Oakland for biotech company Genentech,Inc. is emphatic about trial graphics. Genentech, along with Tercica Inc. represented by McDermott Will & Emory, claimed Insmed Inc. infringed their patents over recombinant DNA technology in a treatment for children with a severe growth disorder. "With every witness we had graphical representation of some type or another," Thayer says. "Here's your bacteria, here's a gene, this is what DNA is. It would be prohibitively expensive to animate everything, but you can use PowerPoints and graphics to do more than just talk."

LOCAL COUNSEL

James Pooley, a litigator at Morrison & Foerster, says that going before a judge and jury is like paying a to visit someone else's house. "You want to know how the family gets along before you get there," Pooley says, "and because you are trying to sell something, it's invaluable to know how to avoid doing something they don't like." Local counsel can greatly affect the lead lawyers' ability to communicate with the judge and jury, Pooley stresses. Does the judge like live testimony at the Markman hearing? Will she take offence if you put your briefcase on your trial desk? (Some do.)

Patent reform legislation pending in Congress may make it harder for plaintiffs to pick where to go to trial, and therefore change the demand for local counsel. As evidence of the need for reform, proponents point to the variation in plaintiff win rates by jurisdiction, from 12 percent in the Eastern District of Michigan to 60 percent in the Eastern District of Texas and 63 percent in the Western District of Wisconsin, according to a 2007 survey by PricewaterhouseCoopers.

In Texas, in particular, say many litigators, the choice of local counsel has to be part of the strategy. "It's a very tight bench," says Fish & Richardson's Scherkenbach, who has worked on two cases in East Texas. "It's critical to have somebody who's in the club." Before East Texas became known as a hotbed for patent litigation, its litigators were famous for personal injury cases and big tobacco litigation. Scherkenbach points to local counsel Sam Baxter of McKool Smith and Otis Caroll of Ireland, Carroll & Kelley as the kind of Texas litigator visiting firms want to put on the trial team. "Those are guys you hire to get on their feet and let them do their thing," he says, "not just to sit and smile."

Irell & Manella patent litigator Morgan Chu has learned that local counsel in small towns can help downplay preconceived notions the jury might harbor about high-paid lawyers flying in from the big city. In the April 2006 case TiVo Inc. v. EchoStar Communications Corp., Sam Baxter served as local counsel for Chu, representing TiVo. During voir dire, Baxter addressed several potential jurors by name, like old friends from the neighborhood. "Oh, hi Gladys, how are your children?" he asked one woman. Baxter then asked Chu, who is of Asian descent, to stand up, and he put his arm around his shoulders. "Morgan here is different," he told the jurors, then paused for dramatic effect. "Morgan wears a bow tie." TiVo's team walked away with a winning verdict and $74 million in damages.