Since our founding 20 years ago, nearly half of our consulting work has involved patent litigation. Patent cases are uniquely suited to our brand of consulting, which relies on storytelling, persuasive demonstratives, and the simplification of complex materials for communication at trial. So it is with great pleasure that we release the 4th edition of our Patent Litigation Toolkit (download here).
It seems obvious that our litigation consultants and litigation graphics consultants would routinely help patent litigators make their cases presentable and digestible for jurors. After all, these cases are often incredibly complex, involving issues of detailed mechanics, organic chemistry, and cutting-edge electronic technology.
Less obvious perhaps, is the need for good storytelling. In fact, a lack of good storytelling is the undoing of many a patent case and patent litigator. After all, jurors will develop a story about your case whether you give them one or not. If you've done your trial preparation correctly, you will have offered one to them that they can believe in.
This complimentary 270-page book is designed to help you with all of your patent litigation challenges - from storytelling to the simplification of complex material. I think you'll find articles like these very helpful:
5 Tips For Inter Partes Review Hearing Presentations at the PTO
11 Tips for Winning at Your Markman Hearings
16 PowerPoint Litigation Graphics You Won't Believe Are PowerPoint
Introducing Mock Markman Hearings to Patent Litigation
Trial Graphics in Patent Litigation - 11 Great Demonstrative Tips
Explaining a Complicated Process Using Trial Graphics
10 Things Every Mock Jury Ever Has Said
5 Questions to Ask in Voir Dire . . . Always
5 Essential Elements of Storytelling and Persuasion
by Ryan H. Flax (Former) Managing Director, Litigation Consulting A2L Consulting
Sometimes a trial graphic really does make the difference.
We can’t say that in each case we’re involved in, a trial graphic likely won the case or played a major role in the win. We support some of the best lawyers in the country and they use the tools we provide to do what they do at trial. Usually we’re there to make sure they do the best they can do, but sometimes we provide that key image or animation (and the associated consulting input) that really clicks with a judge or jury and enables the win. Here’s a recent example.
“Insert, Pivot, and Lock”
This was a patent infringement case before the U.S. International Trade Commission concerning the connection mechanism between automobile windshield wiper blades and wiper arms – that little piece of plastic that might as well be a Rubik’s cube for most of us almost every time we need to change our wiper blades. Our client held several patents covering a very special wiper blade connector that was being ripped off by a competitor. To win at trial (final hearing at the ITC), we had to get the judge to agree to our way of understanding the rather verbose patent claim language covering what was a simple, although elegant, invention.
Here’s an example of the claim language captured as an image from the patent:
I’d say that this is a challenging read, whether you’re a judge, a patent attorney, or a fast food restaurant cashier. It’s pretty technically complex and rather long. Definitely “lawyery.” No doubt that it satisfies the legal requirements for claim language, but it almost takes one’s breath away.
We needed to distill this language and the concepts behind it into something that was easily understandable, but we couldn’t be over-argumentative about it. Upon reading this claim language with the benefit of the rest of the patent’s disclosure and the reader’s own common sense, the invention had to seem simple (but elegant).
With that understanding, how do you do it?
After a good deal of brainstorming with the litigation team, we found that the core of the invention was the configuration of elements that allows a user to join a wiper blade to a wiper arm by simply inserting the end of the wiper arm into the connector and then pivoting the two parts together so that they securely lock with one another. Easy enough to say, but it wasn’t so easy to actually identify this concept and explain it with any level of simplicity and specificity and persuasiveness.
After a good deal more brainstorming and whiteboard drawing, we developed a graphic design that really explained it. It was much easier to grasp the inventive concept and more convincing to show it visually, as follows:
With the animation above, we boiled down the claim language into something understandable by anyone, tangible, and acceptable for the judge. We can SEE it; he could see it. It makes perfect sense. The invention (and the infringing products) must work this way – of course.
It may look exceedingly simple, but I assure you it is not. It was not so simple to conceive as a solution to the obstacles in the case. It was not so simple to design conceptually. And it was not so simple to develop the 2D animation (all in Microsoft PowerPoint, I might add). It all works and worked perfectly.
After we showed this animation to the judge during the claim construction hearing, and after the accompanying argument, he eventually began reciting the tag-line of “insert, pivot, and lock” himself in addressing questions to counsel. A pretty good result to that point.
The results of the case were even better.
In the public version of Judge Pender’s Initial Determination (at 32), when discussing the claim construction, he titles one section “The End Portion of the Wiper Arm and the Connecting Element Can Pivot with respect to Each Other About the First Location Until Said Securing Portion Secures the Second Part of the End Portion of the Wiper Arm.” This illustrates that he really gets it. He doesn’t mention the insertion part here, but this part of his final opinion is devoted to the concept that after that insertion the two wiper system components pivot together to lock securely, just as the demonstrative shows. It is clear that the accused devices do this and equally clear that the prior art does not, so the judge’s recognition of this concept is critical to both making the infringement case and overcoming the opposing invalidity case.
In the infringement part of his Initial Determination (at 36 et seq.), Judge Pender identifies that the accused devices are assembled via a “simple pivoting motion.” Thus, in his finding, they infringe the patent’s claims. The claims cover “insert, pivot, and lock.” The covered product works by “insert[ing], pivot[ing], and lock[ing].” And the accused devices infringe because they, too, “insert, pivot, and lock.”
Moreover, the animation above does more than establish that the wiper blades are connected by inserting, pivoting, and locking. It shows that this motion of locking can be engaged from either side of the wiper blade, that is, in a “toe-to-heel” or in a “heel-to-toe” insertion and pivoting. This was also crucial to establishing infringement by the accused devices (see Initial Determination at 40 et seq.). Judge Pender found that the respondent’s arguments that they couldn’t infringe because their products connected in a backwards sort of way compared to the complainants’ devices were just plainly erroneous.
The result of all these favorable events was a complete victory for our client. The judge found a violation of Section 337 and recommended that the commission issue an exclusion order against the opposing party, which will stop importation of the accused, infringing wiper blade products.
It is not my intention to minimize in any way the wonderful advocacy by our client in this matter. It was truly outstanding. I believe that counsel’s trial strategy combined with the effective demonstrative evidence really sealed the deal here. Seeing, in this case, was believing.
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:
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
The 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.
Pre-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:
 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).
 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.
I am a patent litigator, and I have participated in dozens of Markman or claim construction hearings both as a lawyer and as a litigation consultant. The results of some of my cases (where a Markman hearing has occurred) are on the lists of top patent litigation damages awards of all time. It was true in my cases as it is in essentially all patent cases that without a successful Markman outcome a successful trial is unlikely. This is even more true today as we near the Federal Circuit’s en banc ruling in Lighting Ballast Control LCC v. Philips Elec. N. Am. Corp., where the degree of deference to be given a district court’s claim construction will be decided. It seems clear that some deference will be conferred to the district courts as claim construction fact finders.
If you don't know, the term "Markman" refers to the 1996 Supreme Court case of Markman v. Westview Instruments where the Court held that a judge should decide what the language of a patent means as a matter of law and not a jury. In patent litigation, a Markman hearing is also called a claim construction hearing.
So, when preparing for your Markman briefing and ultimately the hearing, consider the following:
1. Know your judge: There are many ways to learn about your judge. A2L published an article recently called 21 Ingenious Ways to Research Your Judge. That is a big help, and I think it pretty well covers what you need to do. Some other things to consider about your judge are whether he/she is technically savvy (or whether he/she merely believes him(her)self to be so)?; does he have a lot of patent experience?; does he appreciate the use of demonstratives and, if so, does he have a preference for type (electronic, boards, models, etc.)?; is he prone to following counsel’s proposed constructions or “going his own way”? There are many more considerations, but these will help you prepare your arguments and presentation style.
2. Understand your tech tutorial procedure: Not all cases require a tech tutorial, but for those that do, learn what your judge prefers. Some judges like to conduct a separate tech tutorial live event where he will entertain live presentation from counsel or an expert and have the opportunity to ask questions. This is not common and I was a bit surprised to have been engaged in such a hearing recently, but it is one way for the judge to go. Some like to have electronic tutorials of 30 minutes in length submitted to them. This will be a packaged presentation with graphic animations and voice over scripting, in most cases. Other judges like to merge a tech tutorial with a Markman hearing.
3. Consider a Mock Markman exercise: A mock Markman hearing is not for every case. There are natural challenges with it, especially trying to model the anticipated behavior of your judge. But, if you’re trying to hone your claim construction positions, develop strategic plans for your argument, and/or see how you come off in oral argument, a mock exercise is a great way to do it. Also, you can keep costs down by just engaging a litigation consultant with patent experience to evaluate your presentation (along with any co-counsel you want included), or you can add evaluators like PhD psychologists and/or retired judges.
4. Work with your expert: Sometimes an expert participates in a Markman hearing. When they do, their presentation is critical to your success. Even if your expert is not participating in the claim construction, he or she will later be presenting a report and testifying in depositions and in court, so you all had better be on the exact same page during this crucial first step and all along the way. I encourage you to work with your litigation consulting and graphics team to prepare the expert for what’s to come.
5. Practice: They call it the practice of law, but nobody seems to be doing much practicing. At A2L, we advocate for a 30:1 ratio of practice time to presentation time. You need to be able to present your case without notes and without relying on your graphics as a crutch, while also speaking to and effectively using your demonstratives for support and persuasion. Don’t be afraid to “fail” or look bad in practice (which I find to be a trait commonly holding back attorneys). As Bruce Lee once said, “[m]istakes are always forgivable, if one has the courage to admit them.” Make all the “mistakes” during practice so you have a flawless victory at the hearing.
6. Know what are your must-win points:. This requires carefully considering how you’ll win your case and/or why you’ll lose your case. Know where the landmines are (as they relate to your claim language in dispute) relating to infringement and validity. Know what you can still lose at the Markman stage without losing the war. Likewise, know what you can’t lose and focus your energy and spectacular logic there. You MUST plan for every contingency.
7. Set up some okay to lose points: Per the last point, there will be plenty of claim terms in dispute that, regardless of who wins, it won’t matter to you. Like a well-trained judo master, you can make a big deal about these with opposing counsel as a lure for their argument at your Markman, while knowing that you’ll be focusing on the terms that are your “must-wins,” as discussed above.
8. Make sure your paper is perfect: Generally, you will submit your Markman brief before your hearing. It is an opportunity to win on paper, which happens often. Look at your brief as an opportunity to familiarize the judge with the technology at issue while of course encouraging the best claim construction possible. Take the opportunity to insert professionally crafted graphics into the brief to make your key points. Also, your brief is also going to be representative of you and your client, so make sure it’s well written, easy to read, and grammatically and typographically flawless. I was surprised to recently read an opposing party’s Markman brief that was rife with typos and poor grammar. In my opinion, this is unforgivable.
9. Start your graphics early: Conducting a Markman hearing without graphics is patent litigation suicide. At a minimum, you are going to want to show the claim language and probably a lot of the patent specification and drawings. You’ll likely also want to refer to and show parts of the prosecution history. You should go further of course. If the technology is particularly complex, you’ll want to explain it visually so the judge has no question what he/she is dealing with.
10. Try to come to an agreement with opposing counsel on as many disputed terms as possible. Point it out to the judge that a lot has been resolved independent of him. He will appreciate the collegial spirit of the parties and it will pay off down the road. On the terms you cannot agree on, have a rock solid reason for your refusal to agree. This reason must flow from the intrinsic record and must never appear to be an infringement-focused or validity-focused rationale.
11. Finally, I’m not a fan of offering the court alternative claim constructions. When you want a claim term construed a certain way, stick with it. For example, if the term’s plain and ordinary meaning is what you think is proper, don’t offer a “next best” interpretation. Tell the judge what the plain and ordinary meaning is. If he thinks it warrants inclusion in his construction order, that will be the construction you want him to use later, whether it’s called the plain meaning or not. I believe you’re either right about a construction or wrong about it. Pick one.
U.S. district court judges often lack the scientific or engineering background to fully understand the issues in highly technical patent cases without outside assistance. And ever since the Supreme Court’s Markman ruling in 1996 finding that claim construction – the interpretation of the words of a patent claim – is a task given over to the judge, it has been more important than ever for judges to get a solid working knowledge of the subject matter of a case.
Judges now routinely convene so-called Markman hearings, also known as claim construction hearings, before trial to help them in their task of claim construction, which is at the core of many patent disputes. Many patent lawyers say the Markman hearing has become second in importance only to the trial itself.
In a Markman hearing, judges must resolve all the disputes about the interpretation of a patent and must construe the claims for trial. The Markman hearing is therefore a key opportunity for both parties to guide the judge through the thicket of the evidence and to help him or her understand the case.
There are a number of ways to give the judge the needed guidance. One of them is a patent tutorial, which is generally presented months or weeks before the Markman hearing, in the form of a 30-minute factual documentary presentation that explains the technology. Typically, each side is given the chance to create a tutorial, which must stick to the facts and must not be argumentative. The tutorial can be presented either live, usually using a combination of PowerPoint and Trial Director, or as a DVD with a voice-over.
As Vincent P. Kovalick of the Finnegan Henderson firm wrote in China IP News in October 2009, “Often judges will request a brief tutorial on the technology of the patent either before or in conjunction with the Markman hearing. This is a great opportunity to stage your case in your favor. Lawyers often hire graphics consultants to help create insightful and persuasive graphical animations and tutorials for the judge. This is costly, but it is money well spent as most U.S. judges do not have technical backgrounds.”
Indeed, the use of Markman hearings is expanding in the courts and in administrative hearings. Judge Davis in EDTX is holding Markman hearings early in a case, so-called mini-Markmans, in an effort to resolve cases more efficiently. In the International Trade Commission (ITC), Markman hearings were introduced in 2009. Patent tutorials are used in many of these cases as well, so their use is also on the rise.
At A2L Consulting, we have produced many such patent tutorials. Below are several examples of patent tutorials for judges. Each is designed to provide an overview of the technology, the prior art and the patents involved. Each includes just a hint of advocacy.
The patent tutorial presentation below was presented on DVD in the In re Katz Interactive Call Processing Patent Litigation MDL. It provides an overview of call processing and call center technology and is structured so that the judge or clerk can view portions that are important to them whether an overview, prior art or patents in issue.
The Katz MDL Patent Tutorial
The below litigation PowerPoint, used as a patent tutorial, demonstrates the workings of an optical disc drive, using the analogies of writing and erasing on a legal pad to show the concepts of data storage, erasure, and retrieval. With clear graphical icons, it also shows the technical problems that the inventors of an optical disc drive had faced and the patented solutions that they came up with to solve them.
PowerPoint Patent Tutorial
The below patent tutorial shows graphically the way in which a doctor’s prescriptions for aspirin and Lipitor are translated into a hospital picking machine that automatically selects and removes the medicines for the patient.
Flash-Based Patent Tutorial (Pre-Markman)
With careful planning and attention to detail, even the most complex technology can be explained to a judge unfamiliar with that particular technology. The use of litigation graphics and either a voice over or in combination with a live presenter makes this job managable.
Additional patent resources on the A2L Consulting website include:
And all its trials occur in a nondescript federal building in Southwest Washington, D.C., not far from our Washington, DC headquarters.
A holder of a U.S. patent typically files a case at the ITC in order to block an allegedly infringing product from being imported into the United States. The ITC cases are used as an alternative to or in conjunction with patent litigation. These cases are filed under Section 337 of the Tariff Act, which prohibits unfair competition in imports into the United States. There are no juries, but it remains extremely important to capture and hold the attention of the judge.
In some ways, ITC work is a world unto itself – one that requires a specialized knowledge of the court and of its predilections.
Jim Adduci, an experienced ITC practitioner and managing partner of well-known D.C. international trade law firm Adduci, Mastriani & Schaumberg LLP, says, “At the ITC under Section 337, it’s due process with dispatch. Final decisions in just over a year, and an automatic injunction if you win, explain why the ITC docket has nearly tripled in recent years. Patent-savvy judges and consistent, well-reasoned decisions by the commission itself make the ITC the forum of choice for international patent-based trade disputes.”
Michael Oblon, a partner at Perkins Coie and a past client of ours, says, “When representing a respondent in a multi-party investigation at the ITC, it is critically important to have effective visual presentation materials that enable the administrative law judge to easily discern how your client's devices differ from those of the other co-respondents. I have had great success by using visuals that capture the ALJ's attention while quickly and accurately conveying the facts needed to make my case.”
Blaney Harper, a partner at Jones Day and also a past client, says, “The key at the ITC is to know your judge. You've got to get his or her attention and focus the judge as quickly as possible on the main issues that you need to win. This is especially true on cross-examination with regard to demonstrative evidence. If you bore the judge, the issue you care about may be missed.”
Andrew Thomases, a partner at Skadden, Arps, Slate, Meagher & Flom and another past client, agrees. “Presenting at the ITC requires a fast-paced judge-focused presentation. Since the issues we typically present are complex and technical in nature, use of compelling visual presentations help the judges quickly process the key information in a case,” Thomases says.
While ADR in all forms is common and increasing in frequency, so too are proceedings at the World Bank, the ICC, the FTC and the ITC. In each of these venues, costs of litigation are generally lower than a district court proceeding, rules are somewhat more liberal and they offer a legal playing field that favors high-caliber litigators.
With the passage of patent reform, new ALJ-led patent review proceedings at the PTO will likely require similar litigation skills and tactics to those of the ITC. As these judicial proceedings supplant some patent court cases, patent litigators must be prepared for faster and more efficient presentations.
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 firstname.lastname@example.org.
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.