trategies and Advice On Thursday, September 28, 2006, BNA hosted a conference at the Four Seasons Hotel in East Palo Alto. The presenters consisted of an all-star line up. The specific focus of the day was patent litigation strategies. Barry Grossman chaired the event. Important Patent Cases and What to Learn from them The event started with a presentation by one of the leading, if not the leading, patent scholar in the country, Professor Mark Lemley. He reviewed some of the most important current patent law cases. Considering the Supreme Courtââ?¬â?¢s recent interest in patent law, Professor Lemley suggested litigators should consider making arguments in their upcoming cases that they normally wouldnââ?¬â?¢t make. The theory apparently being that it may be beneficial to challenge settled law in order to get the Supreme Courtââ?¬â?¢s attention. Who knows, your case may be the next eBay. If your case does make it to the Supreme Court, Professor Lemley counsels, all bets are off. Donââ?¬â?¢t worry about citing any authority from the Circuits, only Supreme Court precedent will matter. The last piece of advice given by Professor Lemley was to raise all your arguments from the footnotes and put them in the main text. In Smithkline Beecham an argument was rejected because the argument was in a footnote and was not preserved. e-Discovery Ken Brothers and Jerry Riedinger each gave a presentation on e-discovery. Mr. Brothers focused on the importance of knowing the new e-discovery rules. His advice was to never represent that all ESI (Electronically Stored Information) has been disclosed, it hasnââ?¬â?¢t. Mr. Riedinger focused his presentation on how to reduce the immense costs of e-discovery. The best way to reduce cost is to focus your discovery requests and seek a non-aggression pact with opposing counsel. Both speakers mentioned the importance of ââ?¬Ë?clawbackââ?¬â?¢ agreements (agreements that if a privileged document is produced in e-discovery, each counsel agrees it is not waived and can take it back). These agreements help reduce the cost of discovery because each counsel does not need to do an expansive search of their own documents for privilege information. Case Themes Two litigators, Ronald Schutz and Joe Lipner, gave a joint presentation on adopting a theme for your case. Mr. Schutz emphasized answering the question ââ?¬Å?Why should you win?ââ?¬Â? Be sure to manage juror expectations. To do this Mr. Schutz mentioned he makes a point to watch at least 2 ââ?¬Ë?lawyer showsââ?¬â?¢ to have a feel for what the juryââ?¬â?¢s frame of mind may be. He isnââ?¬â?¢t afraid to talk to the jury about CSI and how that kind of thing doesnââ?¬â?¢t happen in real life. Mr. Lipner recognized the need to humanize your client, especially if your client happens to be a corporation. Be sure to not only make the legal arguments concerning the technology, but be sure to stress the importance of the technology. The presentation ended with a demonstration of these techniques using a quick fact pattern and a question and answer portion. An audience member asked about the difficult position defendants are put in when they have to argue non-infringement and alternatively argue for reduced damages. Mr. Schutz shared 2 pieces of advice in these situations: 1) start your closing statement with a discussion of damages and then talk about invalidity and non-infringement and 2) use a different attorney to present the damages evidence to the jury than the attorney who presents the rest of the case. Rule of Law The lunchtime address was given by the William Neukom, the original General Counsel of Microsoft. His speech focused on the importance of the Rule of Law. Creating strong IP rights encourages smart people to expend the sweat equity to innovate, which developing countries should strive to accomplish in order to create a healthy economy. Judges Panel After lunch came a judgeââ?¬â?¢s panel of Judge Susan Illston from the N.D. Cal. and Judge Otero from the C.D. Cal. Both agreed patent cases are easily the most time consuming cases to try. Both also seemed to disagree with the de novo standard of review for Markman hearings. Judgeââ?¬â?¢s Oteroââ?¬â?¢s pet peeves are not owning up to your errors and ââ?¬Ë?kitchen sinkââ?¬â?¢ arguments. Judge Illstonââ?¬â?¢s pet peeve is overly aggressive litigators. Expert Witnesses Sharon Barner and Thomas Smeagal, Jr. gave a joint presentation on how to choose and use an expert witness. Both suggest getting your expert out of his chair and teaching in front of the jury as often as possible. Donââ?¬â?¢t overlook client witnesses as expert witnesses. Consider inventors who own related patents. The last 3 speakers were William LaFuze, Claude Stern, and Joseph Re. Mr. LaFuze was in a rush to catch a plane so he gave a quick presentation on Echostar and the waiver of privilege. Mr. LaFuze asked not to be quoted, but discussions of Echostar can be found on other blogs on this website: Dissing Dish, Clarifying Echostar and Waiver of Privilege, and Another Note on ‘Waiver of Privilege.’ Markman Hearings Mr. Stern gave a presentation on 3 recent Federal Circuit cases (Lava Trading v. Sonic Trading Mgnââ?¬â?¢m, Wilson Sporting Goods v. Hillerich and Bradsby, and MIT v. Abacus Software) and how they relate to Markman hearings. Mr. Stern predicts the new rule from the Federal Circuit is that claim construction should be in proper context; this may be good for District Courts who may now look at the infringing product. This may drastically change the way Markman hearings are performed. All Markman hearings may start to look more like summary judgment hearings due to the amount of relevant evidence parties may present. Appellate Practice Mr. Re appropriately ended the day with a lively, concise, and important presentation on appellate practice. Mr. Re is an accomplished attorney who is quite familiar with winning cases in front of the Federal Circuit. Some of his advice is: 1) never use power point or a whiteboard when presenting to the Federal Circuit, they want all visuals in the brief, 2) when the judges ask a question, stop, listen, answer and make sure that judge is satisfied with the answer, and 3) pick your issues to appeal on the standard of review. He noted a pet peeve of the Federal Circuit is cross-appeal abuse. This conference was well run and informative. It was a pleasure to listen to these attorneys at the top of the game.

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