Preserving A Chance To Win

Proper preservation practice is an important component of a winning patent litigation approach.

Trials are full of passion, while appeals are usually dispassionate intellectual exercises. Especially in the patent space, where trials are won and lost on the strength of emotionally charged arguments about romantic inventors, heartless corporate infringers, or devious patent trolls. In contrast, patent appeals, which all originate and terminate in the Court of Appeals for the Federal Circuit in Washington, D.C., typically turn on discrete legal issues — often with little or no connection to the emotionally charged aspects of the underlying trial. Because of this dichotomy, and the sometimes radically different legal skills required to handle a patent trial and a patent appeal, there is a cottage industry of patent appeal specialists composed of by and large brilliant lawyers every bit the intellectual equals of their trial lawyer brethren. Sophisticated litigants know that involving top-tier appellate teams can be just as important as using a good trial team on important cases.

In baseball terms, when it comes to patent cases, the lead trial lawyer is the equivalent of the starting pitcher; the closer is obviously the lead appellate lawyer. Sometimes the starting pitcher is good enough to throw a complete game, and sometimes the client can’t afford to hire a closer. It can also be a relatively meaningless game, where bringing in the closer is an unnecessary luxury. Any way you approach it, however, the intelligent path towards actually winning a patent case involves preparing for the appeal as early in the case as possible. Sometimes it is easy to do so, such as when a case turns on a motion to dismiss or on summary judgment. When a patent case goes to trial? Then things can get a lot more complicated from an appeal perspective really quickly.

At bottom, the key driver of the importance of effective appeal preparation is the cardinal rule that issues not properly preserved below can’t be argued on appeal. Waiving an issue due to improper preservation below therefore becomes a prime example of a mistake bearing a steep penalty for what may only have been a relatively minor oversight. Since lawyers are paid handsomely to avoid those types of mistakes, the importance of proper care in preserving issues for appeal is an important challenge for trial teams. It is no secret that the typical patent case that goes to trial often presents a myriad of legal and factual issues for the judge and lawyers to deal with — often in a compressed and pressure-charged period of time. Infringement, invalidity, damages — each headline area of the case can demand attention at trial, or in post-trial briefing depending on how things go at the trial itself. Because the likelihood of a successful appeal can often be determined by whether the parties actually preserved the key issues for appellate adjudication, the importance of avoiding mistakes in this area at trial can’t be overstated.

Since patent trials can be few and far between — more so now in this age of declining case filings and IPR’s  — the occasional reminder of the importance of preserving issues for appeal is a welcome one. Recently, I was listening to a Federal Circuit oral argument in a case of interest to some of our investor clients, and it quickly became clear that even though the appellant had strong arguments on the merits, a shoddy preservation job below was really hampering their odds on appeal. One of the appeals judges on the panel even expressed sympathy with the appellant’s counsel plight in trying to argue for reversal on the merits, while simultaneously attempting to show that very key issues had not been waived for lack of proper preservation below. It was a stark reminder that the fate of a case can hinge not on the facts or law, but on the trial lawyer’s attention to detail.

As surgeons and pilots know, checklists are an effective tool for avoiding those mistakes that can cause catastrophic damage out of proportion to the lack of attention that caused them to happen. Accordingly, even in cases where an appellate preservation specialist is not present at trial, someone on the trial team must be charged with making sure that all critical issues are properly preserved for appeal. This team member should make a checklist of issues in the case, with prior research clarifying exactly what must be done in order to preserve that issue for appeal without question. Importantly, this team member (no matter how junior) must have unfettered access to lead trial counsel at the appropriate phases of the trial, to remind the lead lawyer what is needed to clearly preserve issues for appeal. There is no sense in having a robust checklist sitting on some associate’s laptop screen in the courtroom gallery. Lead trial counsel must be reminded in a timely manner about preservation issues, ideally right before they get up to inform the trial court what they are seeking to preserve.

Ultimately, proper preservation practice is an important component of a winning patent litigation approach. In fact, focusing on what issues are critical to preserve for appeal can help a trial team winnow out less useful issues that are not as important for achieving a winning result, but would require the wasteful expenditure of precious trial time. In other words, if an issue is not worth preserving, there is a very good chance it is not worth spending time on at trial. At the same time, failing to preserve issues is an almost inexcusable sin for a competent trial team, and there is no doubt that it can be challenging to do so during the typical controlled chaos of the typical patent trial. As with an important baseball game, the smart patent litigation move is to give your closer the best chance of securing the win, or snatching victory from the jaws of defeat. Preserve issues properly, so they have the best chance of doing so.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Sponsored


Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

Sponsored