Authored by Raymond Chen, Ph.D. and Patrick J. Coyne
Patent Infringement litigation in the U.S. looks so intimidating that you may be tempted to give up before you start. There are plenty of things that you can do to improve your chances of winning, without spending a lot of money or time. Here are some tips to maximize your chances of winning.
I. Get the Best Legal Representation, Consistent With What the Case is Worth Based on an Early Case Assessment:
To understand how much the case is worth, you first have to understand what is at stake. Assess the claim─promptly─and figure out what is at stake. An early case assessment will help. Evaluate the case as soon as possible. If you are the defendant, you just want it to go away! Why should you devote the extra time and effort to assessing the case? Because you cannot afford not to. Work with your lawyer, gather key records, and interview the witnesses who know the most about the case. What are the key claims? How likely is the plaintiff to prevail? What are the strongest defenses? What evidence do you need and how will you get it? What are the likely damages? Is there a risk of an injunction? Decide how much it is worth to defend the case and how hard to fight.
II. Do Your Homework:
There is plenty you can do before a case is filed. You know your business, what it costs to make your product, and who your suppliers are. Consider intellectual property to be one of the inputs to your product. Include it in your product planning. Figure out who has intellectual property rights in your market and what they have. It is much less expensive to design around a patent before you launch than it is to defend an infringement case later.
Second, maintain your records in a way that they can help defend you. Document how you developed the product. How is it different from your competitors’ products. If you are copying a competitor’s product, investigate whether or not it is not patented and, if it is, establish how your design is different or that the patent is invalid.
III. Develop an Effective Discovery Plan and Schedule:
Discovery is one of the most expensive and disruptive stages of U.S. district court litigation. Some Chinese companies are tempted not to make records or, if they do, not to keep them. Failing to keep records, however, often causes more problems than if the documents were produced. As soon as you find out about a claim, notify everyone in the company who has information relating to the issue to keep their records─everyone─not just the two or three people who are primarily responsible for the accused product. The judge and jury will expect that any company will keep certain basic records about its products; if these records are not available, they will be suspicious.
Many Chinese companies wait until the last possible time to begin collecting documents in the hope that the case will settle, or that they can at least delay this expense. Delaying means rushing at the last minute, and it ends up costing more. Start collecting relevant information early. Collect not only what you think your opponent will ask for but everything that can help you.
IV. Get Effective Pre-Trial Agreements:
There are many disputes that can arise during a patent case. These disputes can waste valuable time and money and often offer little benefit to you. Some of the things you can do to limit wasteful disputes and control costs include: requiring lead counsel to confer before motions are filed; taking depositions by agreement; use email service; limit electronic discovery; provide detailed privilege logs; produce documents in electronic, not paper, form; exclude communications with the other side’s experts; and limit the issues for trial.
V. Take Depositions Early:
Depositions can be very valuable, as well as very dangerous. Delaying depositions until the end of the discovery period may be necessary, if the documents are not available, but it makes the discovery process more expensive and time consuming. Start taking depositions in the middle of the discovery period, not at the end.
VI. Witness Preparation:
Testifying can be frightening. A number of psychological stresses are at work on the witness; cultural differences may also work against a Chinese witness. What you may consider a sign of respect may be taken as being evasive. It is important to be both confident and respectful. Tell the truth in a way that is consistent with the decision maker’s perceptions and is persuasive.
Patent cases typically involve expert testimony. This can dramatically increase the cost of the case. Choose an expert who is knowledgeable, clear, and the jury can relate to. Use experts who have practical experience. They may not be as polished as a professional witness but they are often more knowledgeable and are typically better able to relate to a lay jury. The worst kind of expert is a high-priced, professional witness, who does not know the technology and is arrogant.
VIII. Think About How the Jury May React to Adverse Facts:
It is not always necessary to retain a jury consultant. If the issues are simple, you don’t need one. If the facts are emotionally charged, however, critical documents are missing, the product was copied, etc., it is important to figure out how the jury may react.
Consider breaking the research into two stages: a focus group stage (testing how people react to certain themes); followed by a mock argument stage (in which both sides’ arguments and evidence are presented and the jurors deliberate to a verdict). Do this work well in advance of trial, so that you can adapt your case to what you learn from the research.
The single most important factor is to develop a clear, consistent, and comprehensive theme. Juries want to be fair and people love stories. That is how we learn. Tell a story that fits all of the evidence the jury will hear in a way that shows why it is fair that you win.
Trials in patent cases are increasingly rare. Only about 4% of the patent cases are tried to a judgment. Most either settle or are resolved on summary judgment. In addition, patent trials are getting shorter. Many district courts limit trial to 5-10 days, regardless how complex the case is or how many patents are involved. This places increased importance on narrowing the issues and adopting a persuasive theme.
Although this product or invention may be one of hundreds that your engineers or inventors have worked on, it is the only one that this jury will hear about. Bring enthusiasm and conviction to your testimony. Make it credible and persuasive. If key witnesses are able to testify in English, it eliminates one more barrier between the witnesses and the jury. What is important is to be sincere and credible. Careful preparation, and being open with the jury, are keys to maintaining credibility.