In part 1 of this topic, we covered the different types of intellectual property cases and the process that jurors use to evaluate these cases, based primarily on the litigants involved in the case. In the second part of this article, we discuss how invalidity and infringement arguments in IP cases are perceived and discussed. 

The most common adage heard among IP litigation teams—and it is common because it happens to be true—is that invalidity and infringement questions are not generally decided on substantive technical issues so much as they are decided on conduct issues. In this context, the term “conduct” is a very broad concept that consists of factors such as the initial notice of infringement and various aspects of communication between the parties; the prosecution history of the file; characteristics and behavior of the inventor; licensing negotiations and agreements; royalties paid to others; and the marketing and sales information associated with the related or accused products. Jurors consistently gravitate toward, and retain information pertaining to, these topics and resist processing and retaining information connected to the patent itself and the accused device(s) that is more technical in nature. Indeed, many litigators express the view that IP litigation outcomes are entirely determined by such “conduct” issues. This view is indeed difficult to refute.

In the bewildering morass of arcane technical issues that surround the lay juror in an IP trial, jurors look for something to “hold on to” as a basis for their verdicts because they cannot adequately comprehend the nuances of the technical issues that are, in principle at least, critical to infringement and validity decisions. Many IP litigators with whom we have worked over the years start with the premise that jurors will never adequately understand the technical issues involved and accept from the beginning that it is imperative to secure these various “other” determinants of the verdict. Moreover, with regard to juror comprehension, the ultimate in cynicism was expressed by one particularly successful IP litigator who stated, “The most important thing is to act like you believe your side of the case more than the other lawyer.” We don’t believe that this view can be decisively discredited either.

Capture the Room

Obviously, however, one should not approach the IP case with the supposition that “jurors will never understand it anyway.” Here, the consideration of graphics, demonstrative exhibits, boards, 2- and 3-D animations, and other digital presentation systems as a means to educate the jury plays a central role. The pivotal task of dominating the visual side of the trial is a topic that has been dealt with in many fine publications elsewhere, and the breadth of this topic is beyond the scope of this post. It is important to note, however, that the production of effective demonstrative exhibits is not something that should be relegated to brainstorming sessions by the trial team; rather, the effectiveness of graphics and exhibits should be tested with a mock jury panel, using the results as an empirical basis for augmenting and refining the graphics according to what they (mock jurors) say that they need to see in order to assimilate case issues in a manner that gives the maximal tactical advantage to your client.

You win by out preparing the other side. The way to gain an edge in the crucial fight for the minds of the jury is to captivate the jury visually, with exhibits that are developed through an iterative process. In other words, graphics are created, then tested, then re-created until the trial team has what it needs to convince the jury. In today’s “trial by hurry” atmosphere, it is still not uncommon to see trial lawyers sketching concepts with felt pens on flip charts, justifying this practice with “I can communicate better with the jury this way.” Alternatively, impossibly complex charts by experts are used as the expert created them, with meager consideration for whether the jury can comprehend and retain the crucial information.

It is important to remember that if the jury does not retain the information and bring it back to the deliberation room in their memories, then the communication is just as effective as if it had never been presented at all. With the typical damage awards that are at stake these days in IP cases—often tens or hundreds of millions of dollars—Rethe time simply must be set aside to get the graphics right.

Plan for Misinformation during Deliberations

One peculiar aspect of IP cases is that, since jurors are struggling tenuously to understand the issues, the emergence of a “self-appointed expert” on the jury panel can change the entire complexion of the deliberative process. With jurors wandering aimlessly through the issues trying to make sense of what they have heard, the emergence of the “expert” in the jury room allows jurors to let someone else handle issues that they cannot understand. The emergence of the “expert” in the jury room is, therefore, often met with relief by those troubled jurors who feel inadequate to the task at hand. When this occurs, misperceptions and “myths” about patent law; patent application; standards; the approval process; and validity issues generally, can and do become “truth” if propounded by the “expert” on the jury.

In particular, observation of deliberation processes in mock trials reveals a number of spontaneous perceptions and specious arguments pertaining to validity and infringement issues that are often naively accepted by other jurors. A careful consideration of many of these perceptions and arguments that occur at the jury level shows that their appeal often derives from the fact that they reduce the “cognitive load” on the jury. In other words, adoption of such specious perceptions and arguments allows jurors to escape having to grapple with the core objective technical nuances involved in validity and infringement arguments. The potential themes and arguments generated by lay jurors must be considered carefully by the litigator who must plan for the likely jury dynamics that could affect the outcome of an IP case. 

Continues in part 3 next week.