PRACTICAL TIPS FOR JURY TRIALS IN PATENT CASES. Scott K. Reed and Ralph A. Dengler FITZPATRICK, CELLA, HARPER & SCINTO

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1 PRACTICAL TIPS FOR JURY TRIALS IN PATENT CASES Scott K. Reed and Ralph A. Dengler FITZPATRICK, CELLA, HARPER & SCINTO INTRODUCTION Explaining cutting-edge technology in fields such as biotechnology, pharmaceuticals, and electrical engineering against the backdrop of some of the most unique substantive concepts in law (e.g., indefiniteness, enablement, best mode and the doctrine of equivalents) makes trying patent cases to juries one of the most challenging and rewarding endeavors a trial lawyer can undertake. In the end, the ultimate goal is to persuade jurors to see the case your client s way, within ethical boundaries and the court s instructions. The following practical tips help maximize your chances of obtaining a favorable outcome before the jury. PRETRIAL PREPARATION The Demand The first order of business is to reach an informed decision as to whether to demand a jury as a plaintiff or defendant. That involves a careful evaluation of the facts to determine whether your client s story would be appealing to a jury and more appealing than the story your adversary will tell. If you reach those conclusions based on the information you have, then it is prudent to make the jury demand. Recognize, too, that you can withdraw the demand should circumstances change during the course of discovery.

2 Keeping Your Eye On The Ball From Day 1 Never lose sight of the end game the jury trial itself. It is never too early to begin thinking about the actual trial. From day 1, you should be thinking, in order to prevail, how do I tell my client s story to the jury and how do I cast doubt on the story my adversary will tell. That includes thinking about who the witnesses likely will be, what they will be able to say, what evidence needs to be presented, how it will be presented, and what will be the theme of your case. Naturally, it is easy to get bogged down in the daily grind of discovery. But in order to avoid the gaps in evidence and fire drills that can result when you wait until after discovery is concluded to begin thinking about how the case will be tried, keep the trial in mind throughout discovery, motion practice and the pre-trial stages and conduct fact and expert discovery with it in mind. It is important that all members of the trial team not just lead counsel are thinking about the end game and are being kept informed of strategy. And by the trial team, I do not mean just outside counsel. The client, fact witnesses and expert witnesses are often the best resource for information that may prove significant or even dispositive. Be sure to include them as well. Know Your Judge Even though you have a jury, it is still the judge s courtroom and the judge s customs and practices can drastically alter the manner in which you present your case. This can include the time you will be given to present your case, the manner in which evidence will be admitted and the way the judge will act in front of and interact with the jury. All this information can be learned in advance of the trial through others who have conducted jury trials in front of the particular judge, including local counsel if you are outside your

3 local jurisdiction. Such research and background knowledge will be beneficial to your cause. Know Your Jury Assuming that in federal court a judge will conduct all the voir dire and that there is little if anything you can do to learn about your potential jurors can be a huge mistake. First, general surveys of the local community can often provide basic information that should be factored into your strategy. You might be representing one of the world s largest pharmaceutical or electronics companies, but it is possible that the vast majority of the potential jurors in that area may have never heard of your client. Alternatively, there may be some particular good or bad will about your client or your adversary s client in the jurisdiction that you need to know about. In terms of the actual jury pool, many federal courts will allow jury questionnaires to be distributed in advance of voir dire. From these questionnaires, it is possible to learn relevant basic information and in some cases elicit information that will provide a basis for jurors to be dismissed for cause. While a judge may conduct the initial voir dire, attorneys or jury consultants are often allowed to participate in follow-up questioning. This opportunity can help you identify those individuals who will likely be leaders for your case and those who may favor your adversary s, thus allowing you to prudently use your peremptory challenges. Aside from the more conventional methods of jury research, it can often pay huge dividends to spend time in the community where the trial will take place. Remember, not all cases are going to be tried in New York, LA, or Chicago. Before your trial, get out

4 of your hotel. Go to a mall for dinner or a movie and get a sense of what people in the jurisdiction look like, dress like and act like. Read the local newspapers. Learn as much about the people who are going to decide your case as possible and factor that into how you present your case at trial. Remember too that politeness and civility will go a long way. When you ask a paralegal or associate or court clerk to put up a demonstrative exhibit, make sure to say please and thank you. Demonstrative Exhibits It is never too early to be thinking about the demonstrative exhibits you are going to need to explain your case to a jury. Attempting to put them together at the last minute will almost certainly result in sub par exhibits that will be of little, if any, use. The best exhibits are simple, with few words and with one basic message. Given the vast number of choices that exist today with animations, computer graphics and boards, it is imperative that you start early to ensure that you have sufficient time to revamp them as additional information is learned and research is conducted. Doing so will also mean that there will be time to incorporate suggestions by your fact and expert witnesses into the demonstratives and that they will be available for use with those witnesses in their trial preparation. Practice Before You Play The Big Game Mock Trial Focus Groups The teams that will be appearing in this year s Super Bowl will certainly have practiced their plays repeatedly before they will try them out in the big game against their opponent. Given that many patent jury trials are superbowls to companies involved in them with huge financial and other ramifications, consider mock trial focus groups as

5 practice. These offer you a chance to try your case and your opponent s case (as best you know it) to mock jurors from the locale of your venue and observe how they react to various arguments and statements; it is a virtual must in jury trial cases. Clients are often receptive to these exercises because they typically use focus groups before launching products and fully recognize the benefits of learning beforehand what works and what does not. Initially, like most, I doubted the value of such exercises when there was so much other real work that needed to be done in the scarce time before trial. While I saw the benefit of getting everyone to concentrate on the evidence and to start preparing demonstratives and openings, over the years I have come to appreciate how much useful information can truly be derived from these exercises. Finding out what types of analogies, explanations and arguments don t work in a focus group is certainly better than finding out that they don t work at trial. These exercises, however, are only as good as the effort that is put into doing them. Unless you have your most effective advocates doing the presentations for your client and perhaps more importantly for your adversary s client and unless both presenters are up to speed on the most crucial facts and evidence in the case, the results will certainly be of lesser use. If done appropriately, on the other hand, these focus groups can cause you to rethink the case in its simplest, most understandable form, carefully considering each side s evidence and witnesses if we say this, the other side will say that. The information learned from these focus group exercises can then be used to structure motions in limine, revamp demonstratives, caution witnesses about certain pitfalls and validate or jettison

6 themes and stories. Ideally, these exercises are repeated to determine whether you have fixed what needed to be fixed. Witness Preparation It is surprising how many trials have the appearance that the witnesses are being asked questions on direct-examination for the first time; they answer in incomprehensible gibberish, often without the aid of demonstratives and at a speed even those skilled in the art might not understand. A Nobel-laureate expert is of little value to a side if the jury cannot understand him or her. Similarly, it is even more common to see witnesses answering cross-examination questions like they have never been told they are coming, when clearly, the lawyers on both sides should have anticipated them. The witness stand is not a place for a first-time audition. To effectively examine or cross-examine a witness in front of a jury takes careful planning months in advance of trial. That requires witness outlines and crossexamination outlines to be done early; it requires coordination of schedules of counsel and witnesses often from around the world; and it requires significant time commitments of witnesses who have other things to do with their time i.e., their real jobs and lives. It is also imperative for the person who is going to be doing the direct examinations to spend time with the witness before trial, building trust and a relationship, rather than asking someone else to do the legwork and then allowing the examiner to just walk in with a script. In my experience, it has become clear that regardless of how the time is made for witness preparation weekends, nights, traveling to the ends of the earth the time must be made for things to go well when the witness takes the stand. The more

7 comfortable the witness is with the facts, issues and documents before taking the stand, the more credible, persuasive and understandable the witness will be in front of the jury. THE TRIAL ITSELF Repeat Your Theme Develop a straightforward theme for your case and repeat it at every possible opportunity. It should be something that appears on your demonstrative exhibits. It should be something that is emphasized in your opening statement. It should be something that is built into your direct-examination and cross-examination of fact and expert witnesses. And, it should be featured in your closing argument. This theme should be something that the jury can easily repeat in the jury room as it deliberates. It is the culmination of all the hard work and expense that has gone into your pretrial preparation. You and your team have taken the best shot possible at undercutting this theme by anticipating each and everything that your adversary can say about it. By the time of the jury trial, your theme should be unassailable. Teach and Build Credibility As you address the jury in your opening statement and closing argument and as you conduct direct and cross-examinations, keep in mind that the side that teaches and establishes credibility will usually be the side that prevails. Contrary to popular beliefs, jurors take their jobs very seriously and want to make the right decision. The side that helps them reach their decision by teaching and building credibility will win their hearts and minds and likely, the case as well.

8 In complicated patent jury trials, involving anything from advanced biotechnology to sophisticated electronics, the jury will reward the side that presents its material in the most understandable form. Use demonstratives to help explain important points, in your opening, direct-examinations, cross-examinations and your closing. Surveys suggest that the chances of people understanding what you are saying more than double when you show them what you are saying as well as telling it to them. Your witnesses must be understandable. As you cross-examine the other side s witnesses try to show why what they are saying does not make sense and is not understandable. Teach the jury what they need to know to find in your favor. It is imperative that you give the leaders in the jury room the necessary explanation and facts that they require to convince the rest of the jurors to vote in your favor. If the jury can follow what you and your witnesses are saying they will likely believe what is being said to them, and if they cannot, they likely will not. In addition to teaching, building credibility for your side and undercutting the other side s credibility is usually the difference between winning and losing at trial. That includes your credibility as well as your witnesses. When you are delivering your opening statement don t over extend yourself, and remind the jury in closing that you proved everything you said you would. Conversely, in your closing, emphasize that your opponent did not deliver on what he or she promised. In order to undercut the credibility of the other side s witnesses, use your team s mastery of the case and documents to make your points on cross-examination. Take the expert out of his or her environment and into yours. Rather than starting with the science of the case with the other side s expert, show the jury the mistakes the expert made

9 on direct-examination concerning the legal framework of his or her opinions. This line of questioning will allow you to not only teach the jury, but also to build your credibility and assail the credibility of the other side s expert. You must also keep your witnesses credible; do not over extend them. When the other side over extends its witnesses, do whatever it takes to show the jury that what they are saying is not supportable, not believable, inconsistent with established facts and simply not true. Juries may not understand every technical nuance in complex cases but they can usually tell who is telling the truth and who is not. Credibility is King. You can also enhance your credibility by treating your adversary and everyone else in the courtroom with courtesy and respect. Jurors expect a certain level of civility and if you do not deliver that you are likely to be punished. Work the Case During The Trial While a great deal of work must go into the pretrial preparation to get ready for trial, resist the temptation to think that you can stop working the case once the trial begins. A trial (especially a jury trial which is normally conducted at a much quicker pace than a bench trial in order to impose as little burden on the jurors as possible) is a dynamic, fluid event. It is imperative that each day, the evidence from the trial day is catalogued and analyzed with an eye toward the next day and ultimately toward the closing argument. If something happens during trial that is not anticipated or did not go as planned it will be necessary to retool. That may mean making adjustments to witness outlines. It may mean going back into the laboratory notebooks again to try to figure out how the pieces fit together in light of the new testimony or evidence. And, it may even

10 mean throwing away the canned closing you wrote before trial and substantially revamping it. Persuasively marshal the evidence that was presented to the jury and save the rhetoric. Your closing argument needs to reflect what happened at trial not what you wish would have happened. CONCLUSION The challenges and complexities of a patent jury trial are not insurmountable. Thorough preparation, from the beginning of the lawsuit through closing arguments, coupled with a practical, common sense approach to a jury trial can drastically improve your chances of success.