OK, Smarty Pants ... You Can Invent, but Can You Talk the Talk?

Aaron Stiefel

Whether one is assessing the target="new">patent infringement action or plotting trial strategy in a patent case, a critical consideration, which may well dictate the outcome, is the strength of the inventor as a witness.

Indeed, the inventor is likely to be the centerpiece of any patent infringement litigation. Moreover, in the eyes of the jury, the inventor may be the face of the corporate patent owner, even if the patent owner is a massive target="new">prior art, how the invention came about and why the invention would not have been obvious to one of skill in the art.

Ideally, the inventor can establish a rapport with members of the jury who will come to trust the inventor, respect the inventor's scientific expertise and appreciate the invention as a signature moment in the life of the inventor. That connection between patent holder and jury gives the patent holder a distinct advantage over the accused infringer, which typically relies on hired experts who have no firsthand knowledge of the invention and with whom jurors are less likely to identify.

The relationship between inventor and jury is particularly important from the patent holder's perspective because a lay jury may bring to the courtroom an unrealistically high expectation as to what constitutes an invention that deserves patent protection. Those of us who deal with patents on a daily basis are well aware that most patents issued by the

The inventor's ability to communicate with the jury goes beyond whether the inventor has a command of the language and/or speaks with an unfamiliar accent.

Unlike most litigation, trying patent cases is effectively, if not literally, "rocket science" and the technical subject matter of the patent can readily overwhelm the jury. Whether the field is pharmaceuticals, computers or anything in between, a key goal in many patent cases is communicating complex scientific concepts to a wholly uninitiated jury in a very limited amount of time. To be sure, the litigator can facilitate the process in opening and closing arguments, in witness preparation, in framing examination questions and in employing effective visual aids.

In the end, however, much rides on the inventor's own ability to explain his or her invention to the jury in something resembling layman's terms.

Litigation often turns on the ability of a key witness to withstand vigorous cross-examination. This is of particular concern in patent cases where the inventor is typically subjected to relentless personal attacks by lawyers — Monday morning quarterbacks — intent on diminishing the inventor's life's work and invalidating the patent memorializing his proudest accomplishment. If the inventor unravels with his or her professional integrity on the line, any connection with the jury crafted during the inventor's direct testimony may vanish.

The current era — marked by corporate combinations and reorganizations, waves of layoffs and litigation brought by patent trolls — presents further challenges. Given the critical role that the inventor is likely to play in any enforcement litigation, the patent owner should determine before bringing suit whether the inventor is employed by the patent holder, or is at least available and motivated to aid counsel in developing the case, prepare thoroughly to testify and ultimately appear at trial.

Increasingly, one finds that the inventor no longer works for or never did work for the company seeking to enforce the patent. Thus, the inventor may have no loyalty to the patent owner and may have obligations to another employer which, understandably, take precedence.

The fact that the inventor does not work for the plaintiff may also pose a further, less obvious problem. Some years ago I tried a commercial case to a jury and (admittedly) lost. Virtually all of our witnesses had been former employees of our client, a major financial institution, who had worked on a loan transaction.

In my mind, the fact that our witnesses no longer worked for our client but were willing to testify for us only enhanced their credibility and reflected well on our client. When we spoke to the jurors after the trial, though, we found that they had a different take entirely. Given that our witnesses were no longer employed by our client the jury did not see them as the face of our client. The remaining senior level executive who did testify for us had never been heavily involved in the deal and did not satisfy the juror's need to be able to identify with our client.

Thus, even if the inventor is available and committed to the case, the fact that the inventor does not represent the patent holder at the time of trial may be a serious strategic problem.

Often at trials, be they patent or otherwise, large clients are represented in the courtroom by in-house counsel or some other senior business executive. Too often the "client representative" has minimal connection to the facts of the case and is reduced to rising briefly when introduced during the opening statement and smiling awkwardly at the jury.

Preferably, if the inventor does not speak for the patent holder, counsel can identify someone at the client who has a meaningful relationship to the invention or product at issue. Optimally, the non-inventor client representative is someone who had a hand in developing the patented product (if one exists). Often non-inventors play a major role in bringing a product to market and can tell parts of the client’s story. It is also advantageous if the client representative’s name appears on documents used as trial exhibits thus aiding the jurors in linking the witness to the invention.

In sum, clients and attorneys alike must be sensitive to the fact that the success of a patent infringement case may hinge on the inventor's ability to communicate effectively with a lay jury, the inventor's demeanor, the inventor's availability and motivation to appear at trial and whether the inventor represents the patent holder. Even strong patents are best linked in the hearts and minds of jurors to the face and voice of the inventor.

Aaron Stiefel is a partner in the intellectual property practice in Kaye Scholer's New York office, where he regularly represents leading pharmaceutical and biotechnology companies in patent litigations.