Locke Lord Article: Five Best Practices in Defending a Company in Patent Litigation

by Locke Lord LLP
Contact

1. Unlearn the case from the Complaint; learn it from the Client.

The Complaint is the first voice you will hear about the case. Many roads begin there, but that is not the case, not your Client’s case. Your Client’s history begins before the Complaint was filed. Much like a jury must listen to both sides, you must investigate the facts and listen to your Client’s perspective. You must view the legal issues and the facts from both perspectives, as opposed to just looking for defenses in a responsive mode. There may be counterclaims, prior invention stories and pre-existing licensing obligations that dramatically alter the landscape as first viewed through the Complaint.

It is true that when serving as defense counsel, we have to be in a responsive mode initially to prepare the Answer, assess counterclaims and defenses; but don’t stay in that mode. Reevaluate the alleged dispute from your Client’s position. What is our affirmative story? Learn the facts, documents and witnesses. And remember, although the litigation will be fact and document intensive, the trial will be witness-driven. Jurors listen to witnesses. They do not read volumes of documents or do any investigation on their own. They just listen and may -- repeating “may” -- read a few exhibits after they begin deliberations. So our case will be conveyed through our employees; employees that are first a witness (i.e., knows facts) second, able to communicate those facts and third, likeable. There are a lot of fact witnesses, people who know the accused products, the technology at issue and the key documents, but they may not be good communicators and may not appeal to a jury. Our case is not what is contained in the Complaint, but rather what our fact witnesses and expert witnesses can convey to the jury in an understandable and persuasive way.

2. Protect the employees that are helping you defend the Client; focus discovery.

CEOs, CFOs, GCs and other executives and in-house counsel who “win” the job of interfacing with defense counsel are under pressure from all sides. They want to get you what you need, but can’t spend all of the company’s time and resources on the case. So minimize the time needed from the company for discovery. Work first with opposing counsel to narrow the issues. Seek the Court’s assistance in limiting electronic discovery. Many courts employ Electronic Discovery Orders that limit the number of record custodians from whom electronic documents must be collected. Use them or move for entry of such an order.

Luckily, most patent litigation attorneys are reasonable. So find out what opposing counsel really needs and what is reasonably available and work from there. Nobody benefits from over collection or over production. Negotiate – both sides will want to reduce the discovery load.

With respect to preparing witnesses for deposition, lay the groundwork ahead of time. These meetings should occur after the key legal issues have been identified and the key documents collected. Finding documents and producing them the day before a deposition is sometimes unavoidable, but is certainly undesirable.

3. Budgets and Settlement.

Patent litigation can be budget based. Even with a budget, however, the amount at issue can be indeterminate until fact discovery and expert discovery is complete. Moreover, the cost of employee time and distraction of the litigation may not have been fully appreciated by some clients at the beginning of the case. A good patent litigation budget is based upon experience, and lays out a reasonable timeline of costs that takes into account the amount of money at issue. A great patent litigation budget should also include an estimate of the amount of time needed from the client to assist in defense of the case. This budget item gets back to the second best practice mentioned above. It helps to protect the employees who need to take time away from their other obligations and work on the case. And it helps their supervisors sign off on the effort.

The settlement analysis, from a pure business perspective, is whether the cost of litigation plus the risk of loss at trial are more than the settlement demand from the plaintiff. Timing is also important. The parties may become more or less inclined to settle as the case continues and as pre-trial issues are resolved, such as claim construction issues or motions for summary judgment. Outside events, like the results of an IPR, may also impact the settlement analysis.

4. Experts.

Find them early.  Hire them early.  Work with them early.  Make sure they get paid.

These third parties are expensive and every client hopes to resolve the case before needing to substantively engage them.  However, experts, at least for patent cases, are extremely important and their input is needed from the beginning of the case.  Technical experts can assist with prior art searching and the invalidity contentions which are usually due early in the case.  Both technical and damages experts can help focus discovery.  And when they get more involved in the case, they become more interested and more focused themselves.

And making sure they get paid timely is just the right thing to do.  They also can be more responsive and more available if they are happy to work on your case.

5. Build and maintain your trial strategy and trial team from day one.

Work backwards from trial.  What are the triable issues? What witnesses and documents are relevant to those issues?  Building the trial strategy throughout the case prevents inefficiencies in the pre-trial phase.

There should be at least one associate and one partner that stay with the case from the beginning to the end.  There are certain important aspects of a case, such as the details of discovery and assessments of the quality of witnesses that can be lost when the trial team lacks the historical perspective of the case.

Some clients have raised objections to first year or second year associates being staffed onto a patent case; but fresh-out-of-law school attorneys who have passed the patent bar or who are slated to take it soon, in my experience, are always a valuable asset.  These attorneys will have likely worked for two summers on IP matters, taken more IP courses than my law school even offered when I graduated in 1995, possibly worked in the technical field at issue and also probably clerked for a federal judge.  They work just as hard and have fewer distractions than mid-level associates.  Moreover, most patent cases go on for several years and have a huge amount of case-specific knowledge.  Younger attorneys absorb these details like sponges.  Some staffing changes are unavoidable, but younger attorneys are less likely to lateral to another firm or to go in-house.  

Employee witnesses also benefit from stability.  They need to know who to contact and who will be with them through deposition and trial.  Defending a witness at deposition and presenting a witness at trial involve a personal relationship.  This focus on stability gets back to the second best practice mentioned above. 

And it is great to have people at trial that when an issue comes up, recall having already addressed the issue months ago, and send you what you need immediately.  A good trial team includes the people who have been in the trenches together for a long time.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Locke Lord LLP | Attorney Advertising

Written by:

Locke Lord LLP
Contact
more
less

Locke Lord LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.