3 keys to teaching patents to judges

November 8, 2011

Michael N. Rader
(as published in Inside Counsel)

What do judges want from the lawyers who appear before them? Education. Although the judge, like a teacher, is positioned in front of the room and controls the proceedings, the primary teachers in court are not judges but lawyers.

At the outset of every case, the judge knows none of the facts—the timeline, characters and technology all begin as a mystery to the court. Bit by bit over the course of the case, the judge learns the facts. Often the judge, who hears many cases in numerous subject areas, also needs help with the nuances of the legal principles on which the case will turn. For example, even judges who preside over a significant docket of patent cases and are familiar with the basic canons of claim construction (i.e., interpretation of patent claims) still rely heavily on the lawyers to identify the most important doctrines and the most relevant precedents.

Patent cases often present close questions. Claim construction is a good example. On the one hand, courts are supposed to interpret patent claims in light of the text and drawings provided in the body of the patent. On the other hand, though, it is forbidden to read limitations from the patent specification into the claims. Where a particular proposed claim construction falls relative to that line can be a thorny issue on which even appellate panels are split. The better teacher has an advantage in persuading the judge.

In court, good teachers display three key characteristics:

1. Candor

Being candid with the court is not only an advocate’s ethical responsibility, it is good strategy. Acknowledging the arguments on both sides of an issue is not a sign of weakness but of strength.

The judge wants to know both sides of a close issue, and will find more credible the advocate who acknowledges all of the key precedents going both ways. After showing how the key cases interrelate, one can place a particular dispute at an appropriate (winning) point on the spectrum.

2. Preparation

Patent cases present special challenges because the technical subject matter can be difficult to explain to a judge who lacks scientific training. Complex technology is best explained incrementally and with appropriate analogies to occurrences in everyday life. The lawyer must be fluent in the technology so that he or she can answer the court’s questions without hesitation.

Imagine, for example, a court that adopts neither side’s proposed claim construction, but instead proposes a construction of its own. (The most patent-savvy judges do this routinely.) It is a given that counsel must be prepared to defend the client’s position and attack that of the opponent. The best patent "teachers" are immersed enough in the pertinent details that they can also evaluate, in real time, a new proposal from the court, determine whether it benefits the client and respond appropriately.

3. Creativity in presentation

Presentation is as important in court as in a classroom. There is no single formula for success. Sometimes polished slides are helpful; sometimes a simple chalkboard (or whiteboard) is better. In other situations it is enough to provide an exemplar or model for the judge to examine. Creativity in presentation is always rewarded. Lawyers who take reasonable risks in their presentations come across as confident, which is an important step toward winning.

Bringing fresh perspectives and styles to the task makes advocacy interesting. Claim construction hearings in patent cases can last for hours (or even days), and it can be boring to listen to a single lawyer—no matter how skilled—for that length of time.

In a recent case, I prepared a talented young associate to argue a significant portion of an all-day claim construction hearing, preceded by an hour-long technology tutorial that she likewise delivered. Her exceptional preparation and candor with the court led to victory over an opponent with decades of experience. The client and I were so impressed that we asked her to argue the summary judgment motion that flowed from the court’s claim construction. She won that too.

An increasing number of judges are implementing standing orders requiring (or at least strongly suggesting) that junior lawyers be given substantial responsibility for oral argument. Judges enjoy the enthusiasm and excitement that junior lawyers bring to the task. With appropriate mentoring (discounted from the bill if necessary so that the client is not paying more), junior lawyers can be very effective advocates. Delegating to a younger lawyer also conveys confidence, which itself is a cornerstone of persuasion.