Patently Persuasive: Strategies for Influencing Judge and Jury

Patently Persuasive: Strategies for Influencing Judge and Jury


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Patently Persuasive: Strategies for Influencing Judge and Jury by Karen, Lisko, Kevin Boully

The unique facets of intellectual property law coupled with the complexities of most patent cases create a unique set of litigation challenges. Providing "how to" strategies for effective persuasion in patent cases, this manual discusses the most important aspects of patent juries to consider when trying cases. The findings that underlie these strategies are based on nationwide surveys and extensive mock trial research the authors have conducted with jurors, arbitrators, and judges.

Product Details

ISBN-13: 9781627221238
Publisher: American Bar Association
Publication date: 02/16/2015
Pages: 308
Product dimensions: 6.90(w) x 9.90(h) x 0.70(d)

About the Author

Dr. Karen Lisko has more than 25 years of experience in courtroom persuasion in intellectual property litigation and is a senior litigation consultant at the firm, Persuasion Strategies in Denver, CO.

Dr. Kevin Boully is a litigation consultant with the national litigation consulting firm, Persuasion Strategies in Denver, CO.

Table of Contents

Acknowledgments ix

About the Authors xi

Chapter 1 Introduction 1

I Introduction: Your Patently Unique Niche 1

A The Jury: Your Patently Unique Fact Finder 7

II Juror Perceptions of the American Patent 9

A Patent Jurors Perceive Magic in the Patent Process 10

B Patent Jurors Are Marked by History 11

C Patent Jurors' Trust in the U.S. Patent and Trademark Office 12

D Juror Perceptions of the Federal Judicial Center Patent Video 16

III Juror Perceptions of Patent Litigants 19

A The Power of the Individual Litigant 19

B The Importance of Initiating the Action 19

C The Advantage of Patent Holding: Inventors and Patent Assignees 20

D The Influence of Non-Practicing Entities (NPEs) 23

E Corporations and Their Offspring 25

IV Patent Juries' Unique Challenges 27

A Patents Inherently Involve Technical and Difficult Concepts 27

B Patent Juries Do Their Job Well 30

V The Takeaway 31

A The Busy Future of Patent Jury Trials 31

B Your Patent Persuasion Challenge 32

Chapter 2 Judicial Persuasion in the Markman Process 35

I Our Research in Patent Litigation with Judges 36

A Comparing Judges to Juries 36

II Persuasion in the Claim Construction Process 41

A Persuasion in Claim Construction Briefing 41

B Persuasion in Markman Hearing 54

Chapter 3 Jury Selection in Patent Litigation 69

I Identify Your Opponent's Stronger Case 71

A Understand the Risky Juror Tension 71

B The High-Risk Juror Profile Prioritizes Risk 79

II Develop a High-Risk Jury Profile 82

A High-Risk Jurors for Patentee Plaintiffs 82

B High-Risk Jurors for Accused Infringers 88

C The Importance of Jury Leadership 96

III Make the Most of Judge-Conducted Oral Voir Dire and Supplemental Juror Questionnaires 97

A Sample Motion for Supplemental Juror Questionnaire 98

B Basic Juror Questionnaire Elements 99

C Juror Questionnaire Elements for Patent Plaintiffs 99

D Juror Questionnaire Elements for Accused Infringers 100

IV Deliver an Effective Three-Part Oral Voir Dire 100

A Judge-Conducted Oral Voir Dire 100

B Three-Part Attorney-Conducted Oral Voir Dire 104

C Sample Oral Voir Dire Questions for Patent Plaintiffs 107

Chapter 4 Patent Infringement 119

I Patent Infringement and the Jury 119

A Presumption of the Patent Office's Credibility and Enforcement Authority 120

B The (Sometimes Fleeting) Celebrity Status of the Inventor 120

C Party Behavior Predominates 121

D The Effect of the Patented Technology on Jurors' Lives 122

E The Lack of an Ability to Make the Case Facts Fit the Verdict Form 122

F The Need for a Compelling Infringement Story 124

G Jurors' Predominant Focus on First to File 125

H Jurors' Struggle with the Lack of a Requirement to Prove Intentional Copying 126

I Your Judgment Regarding What Not to Teach in Your Case 127

II Persuasion for the Patent Infringement Plaintiff 127

A Choosing the Right Infringement Theme 127

B Teach the Vital Need for Litigation to Protect Inventors' Rights 128

C … Even When That Means the Plaintiff Has a Legal Monopoly 129

D In a World of Legal Monopoly, Choices Are Critical to Jurors 130

E "Accidental" Infringement Is Still Infringement 131

F Jurors' Judgments of the Importance of the Claimed Invention Color Their Perception of the Plaintiff's Infringement Claim 131

G Licensing Behavior Speaks Representatively of Competitive Intent 131

H Create a Framework That Sets the Context for Your Infringement Case 132

I Avoid Being "Just a Number" 135

J Use Concrete Language 136

K Teach the Law 138

III Persuasion for the Accused Patent Infringer 142

A Choosing the Right Noninfringement Theme 142

B Wording the Right Theme 142

C Beginning Your Argument 143

D Distinguishing Fair Competition from Anticompetitive Behavior 144

E Structure with the Fairness Theme and Fair Competition in Mind 144

F Making a Complete Contrast in Your Internal Structure 148

G The Defendant's Challenge of Not Having Its Own Relevant Patents 149

H Overtly Claim Your Motive Not to Infringe 149

I A Defendant's Behavior in Taking a License Speaks to Belief 150

J Teaching the Law 150

K Teaching the Technology 153

L Wave Your Patents as Often and as Loudly as Possible 153

M Use a Time Line-But Use the Right Kind of Time Line 154

IV Teaching the Technology Well 156

A Achieve the Lowest Common Denominator of Technical Simplicity 156

B Teach the Technology within the Broader Scope of Your Party's Story 157

C Technical Detail to Keep or Cut 157

D Three Ways to Make the Technology More User-Friendly 158

E Keeping Track of Duplications and Distinctions: Universal Formula for Animating Your Technology 159

F Sometimes Low Tech Is Best 160

V Willful Infringement and the Jury 161

A Strategies for Willful Infringement Plaintiffs 162

B Strategies for Willful Infringement Defendants 163

Chapter 5 Invalidity 165

I Patent invalidity and the Jury 165

A A Psychological Presumption of Validity 166

B Certain Demographics Can Correlate with Patent Jury Attitudes 168

C The Patent Jury "Flip" 171

D Views of the PTO Affect Views of Invalidity 172

E The Federal Judicial Center Video (Slightly) Influences Views of Invalidity Claims 172

F Endorsing the PTO as a Strategy for Both Sides 173

G Jurors' Focus on Behavior over the Technical Details 173

H Jurors' Need for Story within Your Invalidity/Validity Case 174

I Jurors' Desperate Need for Primers on Patent Defenses 174

J Handling Confusion between Anticipation and Obviousness 175

II Persuasion and the Accused Infringer 177

A General Invalidity Strategies 177

B Telling Your Proactive Invalidity Story 182

C Choosing the Right Invalidity Theme 182

D Persuading through Specific Legal Defenses 185

III Persuasion and the Patent Holder 204

A General Validity Strategies 204

B Telling Your Proactive Validity Story 206

C Choosing the Right Validity Theme 207

D Continuing Your Validity Story 210

E Persuading by Legal Claims 210

Chapter 6 Patent Damages 223

I Juror Perceptions of Patent Damages 224

A Juror Motivations for Awarding Patent Damages 226

B Juror Approaches to Determining Damages 227

C Damages Decisions in Practice 231

II Dealing Strategically with Damages Claims as Patentee Plaintiff 236

A Recognize General Strategies for Patent-Holding Plaintiffs 236

B Strategies for Reasonable Royalty Claims 241

C Strategies for Lost Profits Claims 246

D Asserting Enhanced Damages for Willful Infringement 252

III Defending Against Damages Claims as Accused Infringer 254

A General Strategies for Defending Patent Damages 254

B Defending Against Reasonable Royalty Claims 260

C Defending Against Lost-Profits Claims 262

D Defending Enhanced Damages for Willful Infringement 265

IV Conclusion 267

Appendix A Example Fact Pattern 259

Big Luggage Corporation v. Amos Baggage Company 269

BLC's Contentions 269

AMOS's Contentions 270

BLC's Patent Validity Responses 270

Appendix B Confidential Juror Questionaire 271

Appendix C Supplemental Juror Questionnaire Sections for Patentee Plaintiff 279

Appendix D Supplemental Juror Questionnaire Sections for an Accused Infringer 283

Index 287

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