I’ve repeatedly stressed that, for patent plaintiffs, two issues are paramount in any patent infringement action. First, is there infringement? Second, what are the damages? Although these are fairly simple questions, I’m amazed at the number of patent plaintiffs who apparently forget these simple matters while heatedly pursuing their claims.
Today the Federal Circuit sent a gentle (?) reminder that plaintiffs claiming patent infringement really ought to provide some evidence of infringement if they hope to win. While I honestly believe the Court’s decision might have been prompted by what I sense is an increasingly hostile attitude by the Court toward patents in general, there are still some important lessons for us in this case. We’d be wise to listen.
In the subject case, the Federal Circuit reversed a district court that found patent infringement after conducting a bench trial on the issue. The subject technology was apparently a bit complex and the central infringement issue — namely whether the allegedly infringing plasma cutting electrodes had a “relatively low work function” — was apparently not the sort of thing that could be determined simply by looking at them. The inventor himself claimed no expertise in this area, and the court, too, described the technology as a “black art.”
Significantly, the defendant relied on expert testimony to deny infringement, while the patent owner only called non-expert witnesses who infered infringement from the fact that the accused electrodes exhibited the longer life that the invention provided. Although the District Court concluded there was infringement, the Federal Circuit reversed on the ground that expert testimony was needed on the essential “work function” question. The only expert testimony that was provided opined that there was no infringement.
The lessons to be learned from this are twofold. First, patent owners and their counsel need to take very seriously their burden of proof and their obligation to establish infringement by a preponderance of the evidence. Although this is (thankfully) the easiest evidentiary burden to satisfy, the patent owner still needs to come forward with some evidence of infringement. Second, and equally important in my book, patent owners and their counsel need to think very, very carefully before waiving their right to a jury.
Let’s take the first point first. What’s needed to establish infringement? Well, it’s not too onerous. Someone needs to testify that he has read and understands the relevant claims, that he has compared the properly construed claims to the accused product, and that he finds each and every element specified by the claims in the accused product. You can anticipate that this witness will be expected to detail exactly how and where he finds each claim element in the accused product. To the extent the claims use fancy lingo and deal with esoteric technical subjects, you can anticipate that his understanding of these subjects and his qualifications to testify will be challenged.
So what do you do? That depends. If the subject matter is well within the understanding and experience of your client, he might well be able to establish infringement with his own testimony. If, for example, he has thirty years experience in a field he pioneered himself, who’s to tell him he doesn’t know what he’s talking about. On the other hand, I’ve had more than one inventor tell me “there must be infringement” because “my way is the only way you can do it.” Upon further investigation, it turns out there is indeed another, non-infringing way to do it — and the supposed infringer is using it. In such a case, it is wise to get a qualified expert to testify and establish the basic case of infringement before suing. In all seriousness, when it comes to establishing infringement, an expert can make or break a case and considerable thought should be put into expert selection.
The much more subtle question this case raises is why this particular plaintiff agreed to a bench trial and waived its right to a jury in the first place. As I’ve said before, one of the best protections available to patent owners, particularly smaller ones, is the right to have a jury hear the case. True, the evidentiary standard is supposed to be the same whether it’s a bench or jury trial. Experience suggests, however, that jury findings are much less likely to be disturbed on appeal than bench findings. Why? I don’t exactly know, except that perhaps even appellate judges continue to treat jury verdicts as somewhat sacred. Overruling a district judge, on the other hand, is something they do every day. Whether this difference is real or imagined, I don’t really know either. But I’d think long and hard before waiving a client’s right to a jury when representing a plaintiff in a patent matter. I’d also make sure I had someone available to testify that each and every element called for in the claims is found in the accused product — and that he has the knowledge and information to provide such testimony.