Studeo Legal

Jurors Ask Witnesses Direct Questions in Patent Case

Chief U.S. District Judge Leonard David (Eastern District of Texas) recently allowed jurors in a patent trial to ask questions of the witnesses.  The Chief Judge had wanted to try the experiment for a long time, especially in a complicated patent litigation, due to the amount of technical material that jurors were expected to interpret during the trial.  The idea emerged after a conference he attended that consisted of chief U.S. district judges.

Judge David said that he had been considering the concept for the last year based on post-trial polling that he had been conducting of jurors.  He feels that the truth seeking role of a jury is improved when the jury is more engaged in the process.  He asked jurors whether it would have been helpful to their understanding of the case if they had been allowed to ask questions.  Based on the responses that he received, he felt that it would be beneficial to have jurors submit questions for witnesses as long as it did not delay or complicate the patent trial.

The case that he elected to try his experiment on was CEATS Inc. v. Continental Airlines, et al.  The patent dispute involved ticketing software that passengers interacted with to select seats on commercial airlines.  Given the somewhat complicated nature of the software processes, he felt it would be useful to allow the jury to submit questions. 

The Rules Created by the Court
Davis did not set out to reinvent the wheel; in fact he relied heavily on a review of cases in the 5th U.S. Circuit Court of Appeals which permits jurors to ask questions of witnesses.  He developed the following set of parameters to guide the process and make the implementation transparent to both sides.

• All jurors received forms to record witness questions which were handed directly to the judge
• All jurors handed in the forms for each witness so that attorneys would not be able to determine which juror or jurors were asking a question.
• Attorneys were able to review the questions and make objections before the judge directed the questions to the witness.
• The Judge reserved the right to change the questions so that they would be presented as “neutral”, without a bias towards either side of the case.

The judge stated that he was impressed with the quality and preciseness of the questions.  He felt that they were often on point and helped to clarify the often lengthy, technical presentation by the witnesses. Davis felt that the questions really highlighted that the jurors understood the major issues and were seeking further clarification.  In summary Davis felt that:

• On average, jurors only added one or two questions for each witness during the trial so there was no major impact on the length of the proceedings.
• Most of the questions that were submitted were relevant and useful in understanding the complicated software issues.

Impact on Case Strategy

Counsel did not receive advance notice of the experiment before the trial, so there was little time to adjust any trial strategy to account for the new procedures.   However, witness preparation included an extra step not normally covered.  Witnesses were informed ahead of time that the judge might be asking questions that members of the jury had submitted and defense attorney Melsheimer, a partner with Fish and Richardson, make it clear that these questions would likely be the most important questions that they would be asked and that they would require full and complete answers.

In fact, some of the juror questions helped the attorneys refine their own questions and switch the emphasis of their planned witness presentations.  Listening to what is important to the jurors can allow the attorneys to adjust the information presented by witnesses to respond to those particular concerns and therefore impact the juries decision. 

The case resulted in a March 21 defense win.  After the trial, Judge Davis polled all the jurors and the 11 attorneys involved with the case and the response from all was that the experiment had been useful to the proceedings.  While Judge Davis has not said that juror questions will become a standard part of ongoing patent cases, attorneys should certainly be aware of the possibility and be prepared to incorporate it into their trial strategy.

 

New Model Order Would Control EDiscovery During Patent Cases

A new model order that would place some limits on eDiscovery in patent cases was just unveiled by Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit.  Announced during the 2011 Eastern District of Texas Bench Bar Conference, the reasons cited behind the changes focused on the excessive costs of the discovery process, particularly in patent cases, which produce “disproportionately high discovery expenses”.  Judge Rader posited that the Model Order serve as a starting point for district courts to create “responsible, targeted use of e-discovery” in patent cases, with the purpose of streamlining and imposing discipline on the process.

The Order makes the observation that the most consequential discovery in patent litigation focuses on what the patent states, how the accused product works, what the prior art discloses, and the proper calculation of damages.  Thus, far reaching Ediscovery, such as mass email searches, is mostly tangential to the making a determination regarding the patent.

The Model Order would force litigants to narrow their focus on gathering only “material” information which according to Judge Rader, is the “proper purpose of e-discovery”. The Model Order would halt the use of Ediscovery as an unlimited fishing expedition, particularly with respect to the gathering of email documents.  Reducing the expenses of Ediscovery would remove some of the pressure that accused infringers felt to settle non-meritorious claims simply to avoid the high costs of Ediscovery.

During his speech at the conference Judge Rader made several important statements and observations:

- “the greatest weakness of the U.S. court system is its expense.  And the driving factor for the expense is discovery excesses.”
- "These vast expenses can force accused infringers to acquiesce to non-meritorious claims. This only serves as an unhealthy tax on innovation and open competition."

The complete order should be read (HERE) to understand the full impact the Model Order will have on patent litigation and the limits it places on the production of electronically stored information.  Several of the provisions are highlighted here:

• Metadata is excluded from e-discovery production requests without "a showing of good cause." (date and time as well as the distribution list(s) shall generally be included in a production).
• A requirement that email be specifically requested (email requests will not be considered part of a general ESI production request).
• Limits on when email productions can be requested  - only after the parties have engaged in "core" discovery concerning the patents at issue, prior art, the accused products, and relevant financials.
• A requirement that emails may only be requested regarding a specific issue vs. a general discovery of a product or business.
• The Model Order also requires that the search terms be narrowly constructed pertaining to specific, limited issues.
• Courts may consider up to five additional custodians per producing party and five additional search terms per custodian. Litigants who submit e-discovery requests to adversaries that exceed court orders and the parties' agreement must pay for the extra production.
• Provisions for cost shifting to the requesting party for disproportionate production requests for electronically stored information (ESI), including if the request exceeds the ‘accepted’number of requested custodians and number or scope of search terms.
• The production of electronic information in a mass production, or the inadvertent release of privileged or work product protected electronic data, is not a waiver or permission to use it. (Clawback protection under FRE 502(d). These provisions are included in the Model Order to help minimize the costs of human preproduction review.

Judge Rader concluded that purpose of the Model Order was to provide some strong guidelines to help control Ediscovery, but understands that they can not possibility be applied literally to every patent litigation.  Some will require more witnesses, and some will rely more heavily on email correspondence based on the facts of that case.  But it is the hope of the entire subcommittee that the Model Order offer guidance to all patent litigants.

 

The Markman Process is Changing – US District Judge Leonard Davis (Eastern District of Texas) Pushes a New Approach

I have written in the past (November 15, 2010) about how using EBrief technology can improve your changes of a favorable ruling during a Markman hearing. EBrief technology is advantageous because they provide immediate, hyperlinked access to the complex material that you have prepared for the court. Providing the court with an electronically linked set of documents and demonstratives that is fully text searchable assures you that the Judge can re-access the key information you have emphasized during the hearing.  They can help move the process forward on an expedited basis.

US District Court Judge Leonard Davis of the Eastern District of Texas is employing an additional tool to help expedite patent cases.  He has begun to set early claims-construction hearings in some patent cases that some are calling “Mini-Markmans”.  A full Markman hearing is a crucial and often time consuming part of a patent infringement suit wherein the judge interprets the patent claim as a matter of law.  The goal of the Markman is to define the scope of the patent rights by the holder.  Then the court can make a determination during the trial as to whether or to what extent the patent has veen violated.

Patent litigation is further complicated when there are a large number of defendants involved in the claim, especially if the plaintiff is seeking a nominal settlement from each defendant.  When defendants argue that a few claims-construction issues could dispose of the cases, Judge Davis asks the parties to focus on the key issues early in the suite and provide short briefing statements of explanation.

The goal, according to Judge Davis is to level the playing field where the defendant’s choice is often to “pay a little money to settle the case(s) or pay a lot to undergo a full trial and be vindicated.  By focusing an early Markman hearing on the key issues in the case, it can provide valuable insights to the defense about which strategy makes sense in the long term.

Since the Eastern District of Texas are extremely popular with patent litigations due to both firm scheduling rules (read expedited)  and the expertise of the bench in handling complicated patent case, Judge Davis is trying to remove any advantage a litigant seeks by filing under the courts streamlined patent process. He does not want the court rules used to force settlements on defendants without exposure of the viability of the top construction claims in question.  By providing a forum early in the case to brief the major issues in the case, both sides in a patent case are forced to reveal important information about their position which can then be evaluated by the sides in determining a case strategy moving forward.

Combining Judge Davis’s approach to early claims briefs and summary judgment motions, along with a complete hyperlinked presentation system (EBriefs) will allow parties to obtain the best of all worlds; an effective early argument focused on the key points in question presented in manner that makes it easy for the court to understand the claims. The combination will help parties make the correct litigation strategy decisions before years of litigation and untold sums of money are spent. 

How to Improve your Chances during a Markman Hearing using EBrief Presentation Technology

During your Markman hearing in U.S. District Court, a judge rules on the interpretation of patent claims as a matter of law, essentially interpreting the appropriate meanings of relevant key words used in a patent claim.  This determination of language determines whether a case will move forward to trial.  It is imperative to convince the judge of your case using all possible methodologies.  There are two areas of evidence in a Markman hearing: intrinsic and extrinsic.  Intrinsic evidence consists of the voluminous patent documentation, the claims, written description and any prosecution history of the patent in question.  Extrinsic evidence is defined as "all evidence external to the patent and prosecution history, including inventor testimony, dictionaries, and learned treaties."

The Federal Circuit has indicated that trial courts may consider extrinsic evidence, including expert testimony, for education and background, even where the intrinsic evidence is sufficient to construe the claims. If the trial court is not inclined to hear testimony at the Markman stage, however, then stressing its educational value will likely not be enough.

Rather, the most likely way to convince the court that it needs to hear expert testimony is to show the existence of technical terms in the claims that are not defined in the patent specification. Faced with a choice between competing definitions of technical terms, where the answers are not readily supplied by the intrinsic evidence, the court may be willing to turn to outside help. Of course, this may also require convincing the court that seemingly ordinary claim terms in fact have a technical meaning in the particular field.

How can EBriefs assist throughout this entire process?
By providing immediate, hyperlinked access to the complex material that you have prepared for the court. Providing the court with an electronically linked set of documents and demonstratives that is fully text searchable assures you that the Judge can re-access the key information you have emphasized during the hearing. It provides the best chance for a favorable outcome.  A hyperlinked presentation improves your presentation to the court by highlighting and making accessible:

1. Voluminous intrinsic evidence which allows the judge to access the contents of the patent wrapper, including all patent documentation, claims and prosecution history of the patent in context.
2. Detailed extrinsic evidence testimony that you provided to support the written intrinsic evidence which improves the veracity of your argument.
3. The extensive tutorials you prepared for the court.
4. All support materials which are accessible with one mouse click
5. All visual evidence which is more powerful than the written word alone
6. The final product which can be distributed to clients, press, experts, etc. and
7. Perhaps most importantly, Judges (and clerks) love the ease and convenience!

    Proof of Concept
The U.S. Department of Labor studied how people retain information depending on the method presented to them.  The studies suggest that three days after an event, people retain 10% of what they heard from an oral presentation, 35% from a visual presentation, and 65% from a visual and oral presentation. By using an EBrief not only do you combine written, oral and visual presentations, but you have the added advantage of having this in front of the Judge to review repetitively.

USDOL Study  "Presenting Effective Presentations with Visual Aids" May 1996 OSHA Occupational Safety & Health Administration U.S. Department of Labor