<img height="1" width="1" alt="" style="display:none" src="https://www.facebook.com/tr?id=1482979731924517&amp;ev=PixelInitialized">

The Litigation Consulting Report

How the New Commil USA Supreme Court Opinion Changes Patent Litigation

Posted by Ryan Flax on Mon, Jun 1, 2015 @ 09:00 AM

 

us-supreme-court-patent-decision

by Ryan H. Flax, Esq.
(Former) Managing Director, Litigation Consulting
A2L Consulting

On May 26, 2015, the U.S. Supreme Court released its opinion in Commil USA, LLC v. Cisco Systems, Inc. (575 U.S. ____ (2015)) and it will significantly change patent litigation in the U.S.1

In Commil USA, the Court clarified when indirect patent infringement known as “inducement” occurs and how [not] to escape liability. As a bit of background, a patent can be infringed directly and indirectly. The Patent Act, at 35 U.S.C. § 271, makes it unlawful to make, use, sell, or offer to sell (in the U.S.) a patented thing or process without the patent holder’s permission. Part (a) of this section provides liability for direct infringement, that is, outright doing the thing that infringes a patent. Part (b) governs the first of two indirect infringements, induced infringement, and states “whoever actively induces infringement of a patent shall be liable as an infringer.” This is the focus of the Commil USA case. Part (c) of section 271 deals with the second of the indirect infringements (and interestingly, the one that was first statutorily identified), which is contributory infringement, which makes it an infringement to supply a non-staple, component for use in a patented thing or process.

Both types of indirect infringement require that some direct infringement occur and that the accused infringer actually know that its actions will constitute infringement of the patent at issue. The question before the Court was whether it was a proper defense to induced infringement that the accused infringer had a reasonable belief that the asserted patent was invalid. There is no question that there can be no infringement liability of an invalid patent claim, but does that matter when an accused infringer knows that its actions would otherwise infringe?

The Supreme Court held that, no, it does not matter. It’s no excuse and does not absolve liability for induced infringement that the accused infringer had a reasonable belief that the infringed patent was invalid. This is contrary to (and overrules) several years of precedent from the U.S. Court of Appeals for the Federal Circuit, which has held repeatedly that you cannot infringe an invalid patent and so reasonable arguments that a patent was invalid prevent induced infringement liability.2

indirect-patent-infringementThe law of the land on induced infringement is that if there is (1) a direct infringement of a patent and (2) you knew of the asserted patent and (3) you knew that the acts you actively encouraged would infringe that patent, you’re liable for infringement whether or not you thought that patent was valid or invalid. Validity is presumed, so as an accused infringer you can’t assume otherwise.

How will this affect patent litigation and patent counseling going forward?

If clients are potential indirect patent infringers, meaning they don’t actually directly infringe, but they either contribute to infringement (e.g., they supply the key component making infringement possible in an otherwise not-infringing product) or their actions would arguably encourage the direct infringement of others (e.g., a patent claims playing a video game and the client developed the software and sold the game hoping hundreds of thousands of gamers would play it), how can we help insulate them from liability?

Opinions of counsel are key and they must address non-infringement. The point of the legal opinion is to instill a reasonable belief in your client that they do not infringe.

As soon as your client learns of a patent and potential infringement, a well-reasoned (I’d suggest formal) opinion should be developed and it should focus first on a reasonable claim construction that takes the behavior at issue out of the scope of infringement. I do not advocate ignoring validity issues in these opinions, but no matter how well reasoned they are they will not mitigate against indirect infringement unless you actually succeed on the invalidity arguments at trial.

patent-infringement-willfulPre-trial opinions should set out solid reasons why there is no direct infringement. The claim construction is the first step. A reasonable claim construction that pushes the claimed invention away from the client’s behavior or product is the goal. The second step is identifying why the potential infringer’s (this is some third party because the client will be an accused inducer) actions fall outside the patent’s claim scope when properly construed. An alternative, more conservative argument on claim construction and non-infringement may also be warranted, using a claim construction more likely to be adopted by the patent holder. If a direct infringer’s actions reasonably do not infringe the more conservatively construed claims then you likely have a good argument against inducement.

The reasonable claim construction(s) developed at the pre-litigation counseling stage should be carried through to any litigation that ultimately develops so that the pre-litigation reasonable belief in non-infringement is reinforced. District courts get some deference in their claim construction holdings – that is, factual conclusions underpinning a claim interpretation under the law are reviewed for clear error, not de novo, thanks to Teva Pharma. USA, Inc., et al. v. Sandoz, Inc., et al., 135 S.Ct 831, 574 U.S. ___ (2015). This should be taken into consideration when developing non-infringement arguments and the facts upon which your claim construction is based should be carefully planned and soundly supported. Winning at the district court is important for this reason and, so, winning (or at least doing a reasonable job) the Markman is essential. If you had a pretty good, but still losing claim construction argument at the district court, you have an argument to the Federal Circuit that you had a reasonable believe you didn’t infringe the patent because of it.

Above all else, you must plan early to be the most reasonable man in the room when it comes to arguing non-infringement, whether your reasoning is based on claim construction or the facts.

Other articles on A2L Consulting's site related to patent litigation and the use of visuals in patent trials, in the ITC and in IPRs:

[1] The Court’s opinion was written by Justice Kennedy, the same judge who wrote the opinion in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

[2] It should also be noted that the Federal Circuit has ruled similarly on the issue of enhanced damages for willful infringement – that a reasonable belief that a patent is invalid prevents the satisfaction of the first, objective recklessness prong under Seagate(497 F.3d 1360 (Fed. Cir. 2007)). It will be interesting to see if the Supreme Court has anything to say in the future on this issue. The Seagate rule does add that the risk of infringement must be of a “valid patent,” but this is a court-made rule and not statutory.

The materials on this website are provided for informational purposes only and do not constitute legal advice.

Tags: Markman Hearings, Litigation Consulting, Patent Litigation, Claim Construction, ITC, Federal Circuit, Inter Partes Review

5 Tips For Inter Partes Review Hearing Presentations at the PTO

Posted by Ryan Flax on Thu, Jan 29, 2015 @ 03:57 PM

 

inter-partes-review-presentation-graphics-patent-office-ptoby Ryan H. Flax
(Former) Managing Director, Litigation Consulting
A2L Consulting

Inter Partes Review, or IPR, has drastically changed the way we litigate patent infringement in the U.S. In big-budget patent cases, it is now almost inevitable that an IPR will be requested (and likely granted). The process is supposed to take no longer than a year to complete, but under current case law that’s a year’s delay in the district court case. Moreover, the odds are that any patent that enters IPR will not leave it unscathed.

So, whether you need to win an IPR to save your client’s patent’s claims or to insure your client against infringement allegations, the bottom line is that it’s critically important. And, you need to win.

Here are what I believe to be five important tips for improving your chances of victory once you get to the oral argument stage at the end of an IPR. At that point, you’ll need to convince Administrative Patent Judges that you’re the most reasonable person in the room and what you’ve said throughout the IPR “just makes sense.”

alexandria-inter-partes-review-presentation-graphics-patent-office-pto1. Always Support Your Argument With Visuals

As in any situation where you need to be persuasive in a presentation, there are steps you must take to be as persuasive as possible. The use of visual support for your argument is essential. Studies show with scientific certainty that it will make you more persuasive, all things being equal.

Moreover, other studies establish that it does you no good to merely make some PowerPoint slides and show them just “when you need them.” It has been confirmed that you must support the entirety of your oral argument with visuals in an immersive way – always give your audience something to see while you speak. This is the only presentation style that provides a significant improvement in persuasiveness over pure oral argument alone.

The PTAB itself (read the APJs that will be hearing your oral argument) wants you to use visual support for your argument and provides you the means to do so. As explained at the USPTO website:

[a]t the Alexandria hearing rooms, the Board has an easel, an Elmo projector, a laptop projector, and a screen, which may be requested for oral arguments. For Microsoft PowerPoint and other computer-based presentations, the party must provide its own laptop. Animation and video demonstratives cannot be presented at a hearing without specific prior authorization. The hearing rooms do not have Internet access capabilities – all information must be stored on the party’s laptop (e.g., a hard drive, flash drive, or CD).

So, use the tools available to you and follow these rules and get the permissions you need. But, the bottom line is that you must do more than explain why the claims at issue are or are not patentable – you must show the judges why it’s so and do so in an engaging way.

2. Keep Your PowerPoint Presentation Crisp And Clean

IPR-patent-litigation-crisp-clean-presentationIn both your argument and your visual support thereof, get right to the point. The Board doesn’t want any hyperbole, nonsense, or fluff.

The USPTO guidelines request that counsel begin their “conversation” with the Board with the critical issues, not extensive background. So, first explain the main reasons (each of them – I always suggest having 3) why you should win and show these reasons in your first slide. This presentation style sets a clean agenda for your oral argument and one you can return to as you move through your presentation. The APJs will know what to expect from you and will be able to work in their questions a little more on your schedule this way – if they have questions they brought to the hearing they can ask them at the appropriate time if they know you’re going to hit on that subject. This helps you make the points you want to make with less interruption.

You want to make the APJs’ jobs easier for them. Help them understand the technology as you see it, the facts as you see them, the claim language as you understand it, and the prior art as you know it. This help to the Board will come in the form of pinpointing and highlighting the special things about the technology and claim language that might not be clear enough from the papers alone. Point out the things, and do so visually, that seem to have been or might be overlooked by the APJs.

patent litigation webinar free litigation graphics demonstrative Use graphics to establish why your interpretation of things is the MOST REASONABLE one. When what you’re saying and showing can only be responded to with, “that seems to make sense,” you’re on the right track. The first step here is to separate the wheat from the chaff and made things more, not less, clear.

Likewise, your graphics should be clear and unembellished. Make them easy to see, easy to read, easy to interpret, and memorable. Don’t use unnecessary animations – control the urge to go “PowerPoint crazy.” But make your graphics look professional and make them well composed.

3. Simplify The Complex

patent-trademark-office-alexandria-litigation-trial-support-graphicsTechnology is, by its nature, complicated. Throw in claim language written by a patent prosecutor with little time and a penchant for using less than standard-everyday-English, a thick stack of prior art, and the nuances of Sections 102 and 103 and you’ve got the recipe for confusion. APJs are human beings and, so, they will appreciate you distilling the facts, science, and law for them into a more easily digestible pill. Doing so will make you more persuasive.

Always ask yourself the question, “why are we really here” or “what is this really about” when beginning to develop your oral argument and accompanying graphics. If you can explain in words and images what claim language really means or what a prior art references fails to disclose and why, simply and clearly, you are certainly ahead of the game.

This is not so easy and many patent attorneys find it difficult to simplify the complex. Using graphics and, actually, planning the development of the graphics you’ll use, makes this job easier. You’ll have to determine how to economically tell your story in images and doing that will help you cull the key facts and storylines from fluff and extraneous details.

4. Minimize Text

Beyond helping litigation counsel develop their case so they are the “most reasonable person in the room” come time for argument, my most important job is often forcing attorneys to reduce the amount of text they want to include in their visual support for oral argument. A text-heavy PowerPoint presentation is a barrier to connecting with your audience, a barrier to good communication, and a barrier to persuasiveness.

pto-alexandria-litigation-trial-support-graphicsIf you are asking (aka, forcing) your judges to read your argument while you’re also making it orally, you’re not connecting with them on a human level and you’re not engaging them. You want your hearing graphics to support what you’re saying and to make it more readily understandable and memorable. You don’t need or want to be redundant.

Incorporating too much text in your visual presentation introduces several potential problems. It increases the chance that you’ll use PowerPoint as a crutch and will base what you say on what you’ve written into your slides. Besides being boring, this presents another problem – that of the “redundancy effect,” where you simultaneously say what you show in text on the slide and thereby turn off your audience’s brains. Finally, as much as most attorneys love them, having too much text probably means you’ve includes lots of bullet-point lists in your presentation, which is a presentation killer for many reasons.

Use your opportunity to show graphics to pinpoint the important evidence for the Board and highlight language and facts that you want to stand out. Compare the language of your claims to the disclosure or non-disclosure of the prior art visually. Don’t simply show your briefing in PowerPoint form.

best of the national law journal A2L Consulting

5. Develop A Related, But Different Leave-Behind Document

If you’ve followed my tips above, you’re using a graphics presentation, but you’ve significantly reduced the text content of your graphics and doing so has probably caused you some heartburn. Do not dismay. My last suggestion is to save all that text you wanted to put into your PowerPoint slides, e.g., your oral argument script, and combine it with the graphics you ultimately did use in the hearing. This will be your hand-out and leave-behind for the Board.

As discussed at the USPTO website:

For AIA trials, unless otherwise directed, demonstrative exhibits must be served on opposing counsel at least five business days before the oral argument and a copy served electronically at the Board no later than the time of the oral argument. 37 CFR § 42.70(b).
***
Parties are advised to bear in mind that some judges may appear remotely from other locations. It is incumbent on the parties to ensure that any demonstratives used during an oral hearing are visible and available to all judges on the panel. For example, demonstrative exhibits displayed on an easel or via a projector may not be able to be seen by judges participating remotely. Those remote judges will refer to the electronic copy of the demonstrative exhibit provided by the party in advance or to a copy of the relevant document as it appears in the record. As such, parties should also clearly identify during the oral hearing any demonstrative exhibit to which they are referring to enable all judges participating in the hearing to follow along with the argument being presented.

patent-litigation-inter-parties-review-ptoAs the USPTO suggests, make sure all the judges have access to your demonstratives. This leave-behind is a good way to do that. It will combine the memorable and engaging graphics you used at your oral argument with what is essentially that same, scripted argument (uninterrupted by questions) in the notes associated with those graphics. Package it nicely so the APJs can refer back to your demonstratives and recall how they relate to your argument (the document can also easily be in PDF format to email remote judges).

Other patent litigation-related resources on A2L Consulting's site:

patent litigation toolkit 3rd edition free ebook

Tags: Patent Tutorial, Trial Graphics, Litigation Graphics, Demonstrative Evidence, Patent Litigation, PowerPoint, PTO, Alexandria, Inter Partes Review

Confidential A2L Consulting Conflicts Check Form

Join 9,000 Subscribers and Get Notified of New Articles Every Week

Watch Now: Persuading with Storytelling



Free Litigation Webinars - Watch Now

ryan flax a2l litigation consultants webinar recorded


patent litigation webinar free litigation graphics demonstrative

Featured E-Book: The Patent Litigator's Guide to Trial Presentation & Trial Preparation

patent litigation ebook 3rd edition

Featured Free Download: The Complex Civil Litigation Trial Guide

a2l consultants complex civil litigation trial guide download

Free Webinar - Integrating Expert Evidence & Winning Arguments - Watch Anytime.

expert witness teach science complex subject courtroom webinar

Nationally Acclaimed - Voted #1 Jury Research Firm and #1 Demonstrative Evidence Firm in the U.S.

voted best demonstrative evidence consultants

A2L best demonstrative trial graphics consultants
best demonstrative evidence litigation graphics consultants

Download the (Free) Storytelling for Litigators E-Book

describe the image

Considering Using a Trial Technician at Your Next Trial? Download this first.

trial technicians trial technology atlanta houston new york boston virginia

Featured Free Download: Using Science to Prevail in Your Next Case or Controversy

using science to win at trial litigation jury

Featured FREE A2L E-Book: Using Litigation Graphics Persuasively

using litigation graphics trial graphics trial presentation consultants

Free Jury Consulting & Trial Consulting Guidebook for Litigators

jury consulting trial consultants guide

Timelines Appear In Most Trials - Learn how to get the most out of using trial timelines in this ebook

trial timelines graphics consultants litigators

Featured Complimentary eBook - The 100-page Antitrust Litigation Guide

antitrust ebook a2l litigation consultants

Featured Complimentary eBook - Leadership Lessons for Litigators and Litigation Support

leadership lessons litigation law firms litigation support

Featured E-Book: The Environmental Litigator's Guide to Trial Presentation & Prep

environmental litigation trial presentation trial prep ebook a2l

Authors

KenLopez resized 152

Ken Lopez founded A2L Consulting in 1995. The firm has since worked with litigators from all major law firms on more than 10,000 cases with over $2 trillion cumulatively at stake.  The A2L team is comprised of psychologists, jury consultants, trial consultants, litigation consultants, attorneys and information designers who provide jury consulting, litigation graphics and trial technology.  Ken Lopez can be reached at lopez@A2LC.com.


tony-klapper-headshot-500x500.jpg 

Tony Klapper joined A2L Consulting after accumulating 20 years of litigation experience while a partner at both Reed Smith and Kirkland & Ellis. Today, he is the Managing Director of Litigation Consulting and General Counsel for A2L Consulting. Tony has significant litigation experience in products liability, toxic tort, employment, financial services, government contract, insurance, and other commercial disputes.  In those matters, he has almost always been the point person for demonstrative evidence and narrative development on his trial teams. Tony can be reached at klapper@a2lc.com.


dr laurie kuslansky jury consultant a2l consulting







Laurie R. Kuslansky, Ph.D., Managing Director, Trial & Jury Consulting, has conducted over 400 mock trials in more than 1,000 litigation engagements over the past 20 years. Dr. Kuslansky's goal is to provide the highest level of personalized client service possible whether one's need involves a mock trial, witness preparation, jury selection or a mock exercise not involving a jury. Dr. Kuslansky can be reached at kuslansky@A2LC.com.

Articles by Category

Follow A2L Consulting

Member Red Well Blog
ABA Blawg 100 2013 7th annual

Follow Us on Google+

A2L on Google+