Justin T. Beck Robert B. Morrill Brian E.

Mitchell February 20, 2013

Beck:

Morrill:

(408)938-7900 jbeck@beckross.com (415) 823-8214 morrilladr@gmail.com (415) 766-3514 brian.mitchell@mcolawoffices.com

Mitchell:

} SETTLEMENT } ADR } SUMMARY

JUDGMENT } FINAL PRETRIAL CONFERENCE } MOTION IN LIMINE } PHASES OF TRIAL

} SETTLEMENT
} ADR } SUMMARY

JUDGMENT } FINAL PRETRIAL CONFERENCE } MOTION IN LIMINE } PHASES OF TRIAL

} Most } A

cases are about money

bad settlement is often cheaper than a good litigation settle or later most cases

} Sooner

} Litigation

strategy must include settlement strategy

6

} Patentee

} Accused

Litigation costs Early bird special Threat of big damages/injunction Eliminate business uncertainty Litigation costs Cross-license will enhance patent value Merits/Risk to patent
7

Infringer

} After

complaint, before answer } After initial disclosures } Before Markman hearing } Just after claim construction } After summary judgment motions } Before trial

Any case in which the demand is less than twice the offer can, and must, settle

} SETTLEMENT

} ADR

} SUMMARY

JUDGMENT } FINAL PRETRIAL CONFERENCE } MOTION IN LIMINE } PHASES OF TRIAL

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} Early

} Mediation

Assessment by attorney in field Usually morphs into mediation ADR Program/Magistrate/Private

Neutral Evaluation

} Nonbinding

Arbitration } Binding Arbitration } Nonbinding Jury Trial

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HOW MEDIATION WORKS

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} Procedure

is confidential } Parties exchange statements outlining their positions } Opening statements may be made at the mediation

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} Mediator

Keep the parties moving to settlement Listen and explains but never advocates May be evaluative Uses time and patience Mediators offer

uses shuttle diplomacy

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} SETTLEMENT } ADR

} SUMMARY
} FINAL

PRETRIAL CONFERENCE } MOTION IN LIMINE } PHASES OF TRIAL

JUDGMENT

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16

} Why

} What } What

Win the case Settle issues which are not really disputed Smoke out the other side Educate the judge

move for summary judgment?

proof needed to defeat motion for summary judgment?

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No genuine issue of a material fact Party entitled to judgment as a matter of law

sorts of issues?

} Before

} Part

Is discovery needed? Is claim construction needed? Judicial efficiency Will the court agree?

claim construction

of claim construction trial

} Before

Does the court have time? Does the court have the interest?
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} Court

may grant summary judgment against you sua sponte } Too many motions } The other side may cross move for summary judgment
} The

Cross-motions for summary judgment suggest that there is no disputed issue of fact

Courts ruling may be broad

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MORRILLS MANDATES Be Selective

Focus on what you can win Remember the burden of proof K.I.S.S. Tactical motions - special care
Educating the judge

Shaping the trial Loss of good will Give the other side something to shoot at
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} Is

a summary judgment of patent invalidity or non-infringement easier to obtain?

Invalidity requires clear and convincing evidence for each claim Non-infringement requires preponderance of the evidence for one element of independent claims only

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} Defendant

does not have to prove non-infringement, and therefore only has to suggest the absence of evidence } Burden remains on the plaintiff to present evidence of infringement
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} Many

judges limit the number of summary judgment motions } One or two targeted motions are better than six or seven

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} Most

judges do not favor early summary judgment motions } If you plan an early motion, raise it at the CMC
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} Manufacturers

of wafer metrology tools used in semiconductor manufacturing } 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 } Inequitable } Indefinite } Written

wafer transfer means exit station

Failure to disclose relevant prior art Request separate trial of issue as alternative Alternative to non-infringement

conduct

claim terms

description, scope of enablement

Renewed earlier motion
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} Anticipation/obviousness

} Omitted

Too many claims Too many issues Too much evidence Easily cured

inventor

} Damages

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} Plaintiff

} Defendant

Infringement No inequitable conduct No License, waiver or estoppel defenses Non-infringement Invalidity No inducement No willfulness
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} Even

if summary judgment is not granted, the Court may issue an order specifying the undisputed facts for the trial

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} SETTLEMENT } ADR } SUMMARY

} FINAL

IN LIMINE } PHASES OF TRIAL

} MOTION

PRETRIAL CONFERENCE

JUDGMENT

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} What

} 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

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)

is the purpose?

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} SETTLEMENT } ADR } SUMMARY

JUDGMENT } FINAL PRETRIAL CONFERENCE

} MOTION
} PHASES

OF TRIAL

IN LIMINE

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} What

At the threshold before trial to shield the jury from hearing inadmissible and prejudicial evidence

is a motion in limine?

Why would one file a motion in limine?

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} Exclude

Evidence is not competent Evidence is not admissible because of public policy Party offering evidence failed to comply with discovery

evidence because:

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Exclude LTCs market share and follow-on sales calculations Exclude LTCs lost profits calculations Exclude copying of LTCs product as evidence of infringement
Irrelevant Unreliable under Rule 702 Failure to take into account the entire market value rule

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Exclude doctrine of equivalents evidence Exclude Micrels data sheets as offers to sell
Waived and bared as a matter of law Disclosure-dedication, prosecution history estoppel

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} Minimize

} Exclude

Evidence of Commercial Success Relating to Obviousness } Bar Certain Doctrine of Equivalents Theories

Exclude Most of Rowes Lost Profits Claims Exclude Damages Arising From Servicing of Plaintiffs Own Products Exclude Testimony That Third Party Products Infringe

Damages

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} Exclude

Evidence of Plaintiffs Later Developed Products } Exclude Testimony of Previously Undisclosed Witnesses } Limit Expert Testimony on Invalidity } Permit Use of Reexaminations on Willful Infringement } Preclude Legal Expert

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} SETTLEMENT } ADR } SUMMARY

JUDGMENT } FINAL PRETRIAL CONFERENCE } MOTION IN LIMINE

} PHASES

OF TRIAL

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} Liability

before a jury } Damages before a jury } Willfulness before both jury and Court } Inequitable conduct before the Court 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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