e.Digital

We are lucky to haveLouis Norwood ("Woody") Jameson as head of theintellectual

property litigation on behalf of e.DIGITAL.

Duane Morris is one of the most active law firms in the United States in all aspects of intellectual property litigation. National publications like IP Law & Business, IP Law360 and others have ranked the firm among the nation's leading firms for patent, copyright and trademark cases. The litigation survey published by IP Law360 in 2007, which analyzed the number of litigation matters undertaken, ranked Duane Morris in the top 20% of firms for patent litigation matters, the top 10% for copyright litigation, and the top 5% of firms for trademark litigation. In 2009, IP Law360 ranked Duane Morris fifth on its list of the busiest trademark litigation practices in the U.S.

Our intellectual property litigators have been involved in many of the cases that have defined the scope of intellectual property rights. These cases resulted in decisions of the Supreme Court of the United States or of the Court of Appeals for the Federal Circuit, the special appeals court for patent cases. Representative lawsuits include College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., a case that resulted in two Supreme Court decisions defining the limits of applicability of federal patent and trademark laws to state entities; Nobelpharma AB v. Implant Innovations, Inc., a Federal Circuit decision affirming a major award of damages to our client for the plaintiff's antitrust violation in attempting to enforce a patent procured through fraud; and Markman v. Westview Instruments, Inc., which resulted in decisions of the Federal Circuit and the Supreme Court establishing that interpretation of patent claims is a question of law to be decided by a judge rather than by a jury, in what have become known as Markman hearings.

In today's legal environment, however, only a small percentage of cases go to trial. Thus, it is crucial to have counsel who is focused on clients' business objectives and the most cost-effective means of achieving those objectives. If a creative business resolution is in order, we will litigate the case in a manner that will drive the case toward such a resolution. We also have extensive experience in the use of alternative dispute resolution mechanisms. From the outset of each case, we explore with our clients the potential risks, opportunities and costs associated with various strategies for dispute resolution, including litigation, mediation, arbitration and negotiated settlements.

HIRING THE BEST LEAD ATTORNEY

Jill Hubbard Bowman on May 9, 2010

Whether you make the strategic decision to enforce your patents or your company has been sued for infringement, you will need to hire litigation attorneys.

As I discussed in my last post in this series, winning and cost effective litigation is really predicated on the personality, skill and experience of the individual attorneys and not the law firm at large.

Consequently, you want to hire the best lawyers without bankrupting your company.Most importantly for cost containment, you want to hire the best lead litigation attorney to run the case.

But what are the characteristics of the best lead patent litigation attorney?

Some companies think that a flashy, fast-talking trail lawyer, like on TV, is the best attorney to lead a patent case.

I don’t.

I’ve done patent litigation for over a decade in federal courts across the country.I’ve worked with and against hundreds of litigation attorneys at some of the most well-respected and prestigious law firms from New York to San Francisco.

What I know for sure is that patent cases are not like other types of general business cases where the trial skill and verbal ability of an attorney can be the key to winning.

Patent litigation is far more difficult, complicated, and convoluted than typical business litigation.In large part this is due to the complicated nature of patent law.When you add complex technology, patent litigation becomes a very specialized and tricky game.It becomes insanely difficult when you add foreign parties and key documents in Chinese.

What many companies don’t understand is that the key to winning a patent case is the interpretation of the claims in the patent — the claim construction.

Very, very, very few patent cases ever go to trial.After a judge determines the interpretation of the patent claims, most patent cases are settled or decided by a judge on summary judgment, usually on briefs that the parties write outlining their arguments about why they should win without a trial.

Both parties propose their claim construction in what is called a Markman brief.Usually, the judge will allow both parties to explain the technology and their respective claim interpretations at a Markman hearing.There the judge may ask tough, critical questions about both the technology and relevant patent case law.

At the Markman hearing, the lead litigation attorney needs to be able to answer anything the judge asks very quickly while projecting an air of knowledge and certainty. The lead litigator will lose credibility if it looks like he doesn’t understand the technology or isn’t fully prepared to address any legal issue.

The interpretation of the scope of the claims of the patent determines whether a product or process infringes.The claims may be interpreted narrowly and in a way that does not read on the accused device or process.

This is critical!

Claim construction frequently means the difference between winning and losing a patent case.

And a narrow claim construction for the plaintiff usually means they will settle cheaply.

In my experience and opinion, the key to success in a patent case is the intimate involvement of the most experienced, lead attorneyin the claim construction. If the claim construction turns out badly, it is also critical that the defendant’s head attorney be an expert in destroying patents and the testimony of expert witnesses.They need to know patent law and understand the technology.

It is highly unlikely that the flashy, trial attorney will dig into the minute details of the claim construction or even understand the basics of the technology at the claim construction stage.Some head trial attorneys barely know what is going on in their cases before the trial stage.They may hand over the most important part of a patent case to an inexperienced, junior attorney who may or may not even be able to think at a high, strategic level or have any idea how to craft the critical claim interpretation in creative, supportable ways.

Even if I had a billion dollars at stake, I wouldn’t hire a flashy, superficial trial lawyer.I would rather hire the brilliant, patent guru who had mastered the intricacies of patent law and who was intimately involved in the claim construction.Even jurys seem to give more credibility to the trial attorney who clearly knows the technology and the law even if he isn’t the most articulate or personally engaging.

I’ve known a few patent guru trial experts but they are rare, in large part because patent cases seldom go to trial.Registered patent lawyers with extensive trial experience have sometimes gotten their trial experience in another context like criminal law or in ITC actions.Some of these super patent litigators are highly articulate women.These type of litigators are in a league of their own and well worth the cost if you can find them.

The Best Head Lawyer for a Typical Patent Case

If I were going to select a lead lawyer for a typical patent case, with under $250 million at stake and one to three patents at issue, I would hire what I call a Pragmatic Litigator. (I would have a different strategy and hire a different type of lawyer if the damages at stake in the case were over $250 million and there were many patents at issue.These types of cases are an order of magnitude more difficult.)

Case management styles vary widely.A Pragmatic Litigator sees the big picture, runs a tight ship with a small team and actually considers the costs verses the benefits of each motion or inquiry.