On Patents

Patent cases are some of the most challenging case to try in front of a jury.  Juries are often intimidated by the complex technology and the dense and obscure terminology of the technical documents relating to patent infringement and validity.  Juries often feel they are not qualified to determine which of competing PhD experts are correct on the issues of infringement and validity.  Trial lawyers must perform the difficult task of balancing the need to make issues accessible and coherent to the jury against the need to address every element of a patent claim.  On top of that, the lawyers must put together a story or framework that empowers the jurors to discuss the merits of the case and to decide the case in their favor. 

Patent trial lawyers would face the same challenges that any trial lawyer would face when litigating complex, detailed, and obscure subject matter were it not for the patent invalidity defense of obviousness.  The invalidity defense of obviousness is a very common defense in patent cases and presents unique challenges for a jury trial.  Further, the issue of obviousness is ultimately a legal issue for the Court, not the jury, to decide.  As a result, many districts (including the Northern District of California) have jury instructions and verdict forms that require the jury to make certain factual findings relating to the factors that the Court will consider in determining obviousness.  However, importantly, the forms restrict the jury to those factual findings and do not allow it to make the ultimate finding (even in advisory form) of whether the defendant met its burden of proving the patent was invalid as obvious.

                For example, in the Northern District of California model verdict form on the “obviousness” defense, a proposed verdict form includes a series of questions requiring the jurors to make specific findings on: (1) scope and concern of the prior art; (2) differences between the claims and the cited art; and (3) secondary considerations that could impact whether or not a claim was obvious to a person of ordinary skill.  Again, it is important to note that the jurors’ answers to these questions are not determinative of the outcome of the validity defense.  The Court will weigh the jurors’ answers on the verdict form and other information to determine whether a patent claim is obvious.

                What impact will such a verdict form on obviousness have on how you try a patent case? 

                It definitely makes the presentation at trial more challenging.  It is no longer enough to make the binary argument that a disputed patent claims is or is not obvious.  The trial lawyer must educate the jury on the field of the patent and the problems relevant to the claimed inventions.  The lawyer must then, in detail, describe the differences between individual pieces of prior art and the claims.  Lastly, the trial lawyer must address each “secondary consideration,” such as “commercial success” or “long felt need,” and tie them to the patent claims.  Such a presentation can create many “side issues” and “detours” for the jury.  For instance, the standard for determining whether a piece of prior art is or is not within the relevant scope of prior art is different from whether the prior art actually discloses an element of the patent claim.  Accordingly, the jury will be required to make detailed findings without a strong understanding of how such findings will ultimately impact the case.

While the above decisions on sub-issues can create confusion, the big issue for trial lawyers is the fact that jurors will be required to make decisions on damages regardless of their view on the obviousness of a patent claim.  In traditional cases, if the jury believes that there is no liability, there is no decision on damages.  Here, the jury will be making a damages decision that is, to an extent, independent of the decision on liability.  For example, if a jury believes that a patent claim in invalid, what impact will that belief have on its award of damages?  Will the jury “discount” the damages to reflect its view that a patent is invalid?  Will the jury be able to make a decision on damages separate and apart from its view on the validity of damages?  It is a difficult tactical issue for both plaintiff and defendant trial counsel.

                Traditionally, trial lawyers for the defense attempt to minimize discussion of damages in opening and closing arguments.  If possible, they simply want to present that they do not infringe and that the patent is invalid.  In an obviousness case, they will be forced to address the issue of damages.  This requirement will skew how they present the case and will put additional timing pressure in the opening and closing argument (which are often limited to approximately 1 hour each).  The obviousness issues also impact the plaintiff trial lawyer.  If the defense counsel can establish the obviousness sub-factors, the jury may believe that the patent is obvious and, as a result, find that the patent had little or no value.  Such a finding or belief by the jury may cause them to award only a very small amount of damages.  Such findings are difficult to overturn on appeal in the event that the Court finds that the claims are valid and not obvious.

                In light of the above concerns, both plaintiff and defense may be inclined (for different reasons) to consider the possibility of bifurcating the liability and damages phase of the trial.  The advantage for both sides is that damages will be decided for only the patent claims that are expressly found to be infringed and valid.  The drawback of such an approach is that it would substantially increase the time and expense of litigation.  For the plaintiff, it would also give defendant the opportunity to provide a focused challenge on the issue of damages.  For the defendant, it would eliminate the ability for them to devalue the patent in light of the prior art.  Each trial lawyer will have to determine how to address obviousness at trial and whether there are potential, mutual advantages in bifurcating the case at trial.

James Yoon is a partner at Wilson Sonsini Goodrich & Rosati LLP, where he is a patent trial lawyer and strategic advisor. James also teaches courses on technology, the practice of law and IP litigation at Stanford Law School and Santa Clara Law School.