2013 02 20 gguls pat lit - post disc strategies and trial prep (class 7)(final)

7/29/2019 2013 02 20 GGULS PAT LIT - Post Disc Strategies and Trial Prep (Class 7)(FINAL)

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Justin T. Beck Robert B. Morrill

Brian E. Mitchell February 20, 2013

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} Beck:◦ (408)938-7900

◦ [email protected]

} Morrill:◦ (415) 823-8214

◦ [email protected]

} Mitchell:◦

(415) 766-3514◦ [email protected]

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} SETTLEMENT

} ADR

} SUMMARY JUDGMENT} FINAL PRETRIAL CONFERENCE

} MOTION IN LIMINE

} PHASES OF TRIAL

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} SETTLEMENT} ADR


} MOTION IN LIMINE

} PHASES OF TRIAL

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} Most cases are about money

} A bad settlement is often

cheaper than a goodlitigation

} Sooner or later most casessettle

} Litigation strategy mustinclude settlement strategy

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} Patentee◦ Litigation costs◦ Early bird special

◦ Threat of big damages/injunction◦ Eliminate business uncertainty

} Accused Infringer◦ Litigation costs◦ Cross-license will enhance patentvalue

◦ Merits/Risk to patent

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} After complaint, before answer

} After initial disclosures

} Before Markman hearing} Just after claim construction

} After summary judgment motions

} Before trial

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Any case in

which the

demand is less

than twice the

offer can, and

must, settle

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} SETTLEMENT

} ADR


} MOTION IN LIMINE

} PHASES OF TRIAL

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} Early Neutral Evaluation◦ Assessment by attorney in field◦ Usually morphs into mediation

} Mediation◦ ADR Program/Magistrate/Private

} Nonbinding Arbitration} Binding Arbitration} Nonbinding Jury Trial

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HOW MEDIATION WORKS

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} Procedure is confidential

} Parties exchange statements outliningtheir positions

} Opening statements

may be made at the

mediation

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} Mediator uses shuttle diplomacy◦ Keep the parties moving tosettlement

◦ Listen and explains but neveradvocates

◦ May be evaluative

◦ Uses time and patience◦ Mediator’s offer

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} SETTLEMENT

} ADR


} MOTION IN LIMINE

} PHASES OF TRIAL

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} Why move for summary judgment?◦ Win the case◦ Settle issues which are not really disputed◦ Smoke out the other side◦ Educate the judge

} What sorts of issues?◦ No genuine issue of a material fact◦ Party entitled to judgment as a matter of law

} What proof needed to defeat motionfor summary judgment?

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} Before claim construction◦ Is discovery needed?◦ Is claim construction needed?

◦ Judicial efficiency} Part of claim construction

◦ Will the court agree?

} Before trial◦ Does the court have time?◦ Does the court have the interest?

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} Court may grant summary judgmentagainst you sua sponte

} Too many motions

} The other side may cross move forsummary judgment◦ Cross-motions for summary judgment suggest

that there is no disputed issue of fact

} The Court’s ruling may be broad

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MORRILL’S

MANDATES• Be Selective

• Focus on what you can win

• Remember the burden of proof

• K.I.S.S.

• “Tactical” motions - specialcare

• Educating the judge

• Shaping the trial• Loss of good will

• Give the other sidesomething to shoot at

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} Is a summary judgment of patentinvalidity or non-infringementeasier to obtain?◦ Invalidity requires clear andconvincing evidence for each claim

◦ Non-infringement requirespreponderance of the evidence for

one element of independent claimsonly

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} Defendant does not have to provenon-infringement, and therefore onlyhas to suggest the absence of evidence

} Burden remains on the plaintiff topresent evidence of infringement

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} Many judges limit thenumber of summary judgment motions

} One or two targetedmotions are better thansix or seven

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} Most judges do not favor earlysummary judgment motions

} If you plan an early motion, raiseit at the CMC

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} Manufacturers of wafer metrologytools used in semiconductormanufacturing

} Nova – Israeli company vs.Nanometrics – US company in NDCA

} Nova claims to have invented

“Integrated Metrology”} Nova was known for “wet” metrology,while Nanometrics practiced “dry”

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} Non-infringement◦ “wafer transfer means”◦ “exit station”

} Inequitable conduct◦ Failure to disclose relevant prior art◦ Request separate trial of issue as alternative

} Indefinite claim terms◦

Alternative to non-infringement} Written description, scope of enablement◦ Renewed earlier motion

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} Anticipation/obviousness◦ Too many claims

◦ Too many issues

◦ Too much evidence

} Omitted inventor◦ Easily cured

} Damages

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} Plaintiff ◦ Infringement

◦ No inequitable conduct◦ No License, waiver or estoppel defenses

} Defendant◦ Non-infringement

◦ Invalidity

◦ No inducement

◦ No willfulness

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} Even if summary judgment is notgranted, the Court may issue anorder specifying the undisputedfacts for the trial

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} SETTLEMENT

} ADR

} SUMMARY JUDGMENT} FINAL PRETRIAL CONFERENCE} MOTION IN LIMINE

} PHASES OF TRIAL

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} What is the purpose?◦ Put the case “in the can” in the pre-trial statement

Witnesses identified

Exhibits exchanged, listed and marked Issues listed Motions in limine made (more may be made at

trial)

} Factors considered in whether to allow

modification of pre-trial statement: Prejudice to parties Impact on orderly/efficient conduct of trial

Bad faith/inexcusable neglect

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} SETTLEMENT

} ADR


} MOTION IN LIMINE

} PHASES OF TRIAL

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} What is a motion in limine ?◦ “At the threshold” … before trial to shield the jury

from hearing inadmissible and prejudicial evidence

} Why would one file a motion in limine ?

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} Exclude evidence because: ◦ Evidence is not competent

◦ Evidence is not admissible becauseof public policy

◦ Party offering evidence failed tocomply with discovery

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} Exclude LTC’s market share and follow-on

sales calculations◦ Unreliable under Rule 702

} Exclude LTC’s lost profits calculations◦ Failure to take into account the entire market

value rule

} Exclude copying of LTC’s product asevidence of infringement◦ Irrelevant

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} Exclude doctrine of equivalents evidence◦ Disclosure-dedication, prosecution history

estoppel

} Exclude Micrel’s data sheets as “offers to

sell”◦ Waived and bared as a matter of law

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} Minimize Damages

◦ Exclude Most of Rowe’s Lost Profits Claims◦ Exclude Damages Arising From Servicing

of Plaintiff’s Own Products◦ Exclude Testimony That Third Party

Products Infringe} Exclude Evidence of CommercialSuccess Relating to Obviousness

} Bar Certain Doctrine of EquivalentsTheories

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} Exclude Evidence of Plaintiff’s LaterDeveloped Products

} Exclude Testimony of PreviouslyUndisclosed Witnesses

} Limit Expert Testimony on Invalidity} Permit Use of Reexaminations onWillful Infringement

} Preclude Legal Expert

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} SETTLEMENT

} ADR


} MOTION IN LIMINE

} PHASES OF TRIAL

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} Liability – before a jury

} Damages – before a jury} Willfulness – before both jury andCourt

} Inequitable conduct – before theCourt

Why may trifurcation be appropriate???

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PHASE 1:

Jury decides validity and infringement

PHASE 2:

Jury decides willfulness and damages

PHASE 3: Judge decides inequitable conduct

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2013 02 20 gguls pat lit - post disc strategies and trial prep (class 7)(final)

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