1. Article published in the January/February 2011 Issue of
Landslide®, a publication of the ABA Section of Intellectual
Property Law
For most technology, pharmaceutical, and healthcare companies,
intellectual property protection is vital for revenue and profits. In
fact, corporate stock performance is directly related to the quality
of their intellectual property portfolio.i
With over 2500 patent
lawsuits filed each year, many firms rely on patent litigation to
obtain licensing revenues or prevent other competitors from
bringing products to market.ii
The stakes are high for many
defendants in patent lawsuits as they may be enjoined from
offering important products and may also be required to pay
substantial damages.
Patent lawsuits can be expensive, costing an average of $3 million
to litigate.iii
Despite the legal fees, the rewards for prevailing at
trial may be significant. Patent holders who win jury trials are
awarded median damages of $10.1 million.iv
In many cases, jury
verdicts result in publicly-traded litigants’ stock prices changing
+/-10%, reflecting, on average, tens of millions of dollars in
shareholder value gained or lost.v
As a result of highly complex scientific and technological con-
cepts, the outcome of patent jury trials is generally viewed as
inherently unpredictable and often includes considerations other
than the relevant law.vi
Because of the perceived lack of uni-
formity in jury verdicts, there is an ongoing debate as to whether
juries should decide such cases.vii
In this article, we propose that
juries’ infringement and invalidity determinations may be antici-
pated prior to verdict. We have monitored 15 high-stakes patent
trials from voir dire to closings. In addition, we have conducted
mock trials for patent litigators. In some of these cases, we have
used shadow jurors to help us understand how juries make deci-
sions in patent cases. A shadow jury is a group of people who
are matched to the trial jury’s demographic characteristics and
who observe all trial proceedings as courtroom spectators. The
feedback provided by the shadow jurors offers insight into the
effectiveness of trial arguments and strategies.
We have found that although the subject matter in these trials is
complicated and tedious, there are strategies that enable attor-
neys to prevail in patent cases. In this article, we utilize a widely
accepted decision-making model for understanding how jurors
make verdict decisions in patent cases. Within this framework,
we outline the tactics that we have found lead to successful or
adverse jury verdicts.
Juror Decision-Making in Patent Trials
To understand the information-processing strategies of patent ju-
rors, the Elaboration Likelihood Model (ELM) provides a theo-
retical model of persuasion that is used for understanding how in-
dividuals make decisions based on complex information.viii
The
ELM has been significantly researched in communication studies
and social psychology and offers insight into ways in which in-
dividuals process information after being exposed to persuasive
arguments during trial.
According to the model, there are two distinct and mutually ex-
clusive information-processing pathways that people use when
making decisions. Which one of the two pathways used by an in-
dividual is determined by the complexity of the information pre-
sented and the ability of the message recipient to comprehend the
message.xi
When individuals have the ability to understand and
scrutinize a message, they form their verdict decisions by what is
known as the central route for decision making. This describes
decisions characterized by careful, deliberate, and rational think-
ing and requires for the decision-maker to carefully scrutinize
the content of the message.x
In a patent case, this would neces-
sitate jurors to rationally consider the invention, patent language,
infringement, validity defenses, claim constructions and other
court instructions. Litigators typically seek to deliver the types
of evidence and arguments that facilitate this careful and rational
approach to verdict decisions in patent cases.
The model also instructs that when complex information is pre-
sented, people make verdict decisions without scrutinizing the
www.MagnaLS.com 1200 Avenue of the Americas 866-624-6221
3rd Floor
New York, NY 10036
Litigation strategies that
win or lose patent jury trials
By: Eric A. Rudich, Ph.D.
Senior Litigation Consultant, Magna Legal Services

2. message. Such a superficial thought process is referred to as the
peripheral route of decision making. Under these conditions, a
complex message is not only evaluated on its merits, but is also
assessed based on surface characteristics otherwise known as pe-
ripheral cues.xi
A peripheral cue refers to information that is
tangential to the message, for example, the witnesses’ credibility,
credentials or demeanor.
Based on the model, jurors will use both the central route and pe-
ripheral route for making verdict determinations. Although most
jurors do their best to comprehend the technology and law, their
limited expertise in the technology and patent issues leads them
to rely heavily on peripheral cues for making infringement and
validity verdict decisions. While it is critical to educate jurors
about the technological and legal issues, these peripheral cues
provide insight into how jurors make verdict decisions in patent
cases.
Patent Litigation Strategies and Tactics
Credibility of experts and witnesses
Based on our experience, the credibility of the expert witnesses
and attorneys is an extremely important factor for the outcome
of patent trials. When jurors do not have a firm understanding
of the case issues, they rely on whether they believe the argu-
ments presented by one side more than the other when making
verdict determinations. During the trial of many of the cases we
observed, there were critical moments that impacted jurors’belief
in a litigant’s case-in-chief.
Expert and fact witnesses that educate the jury about the inven-
tion at issue are perceived as very credible, and in turn, jurors are
more likely to believe their infringement and invalidity testimo-
ny. The use of accompanying graphics and animation is also vital
for instructing the jury. A key point in the 2007 case of Mono-
lithic Power Systems, Inc. v. O2 Micro International Ltd.xii
was
Monolithic’s expert witness’ demonstration of a working model
of the invention in front of the jury box. The expert’s tutorial
was not only extremely effective for educating the jury about the
invention, but also persuaded the jury that Monolithic invented
the technology first. We have found that experts who leave the
witness stand to present the jury a tutorial of the patented technol-
ogy or legal issues capture the jury’s attention.
It is important that any demonstrative exhibits accurately portray
the technology otherwise the expert’s credibility is undermined.
In a high-stakes patent trial we attended, one of the key plaintiff
graphics was shown to be misleading by the defense expert and
thus challenged the plaintiff expert’s credibility. In the graphic,
the magnification level shown for the prior art was higher than the
adjacent graphic displayed for the patented technology. Although
this was noted as a footnote on the graphic, it was not discussed
during the expert’s direct examination. The defense attorney was
then able to use this graphic to refute the plaintiff expert’s testi-
mony and successfully argue that the patent was invalid.
When evaluating experts’credibility, jurors pay close attention to
credentials and experience. An effective way to diminish experts’
credibility is to demonstrate areas in which they lack the special-
ized knowledge and experience as well as the legal background to
evaluate the technological and infringement issues. For example,
in Elan Pharma International Ltd. v. Abraxis Bioscience Inc.,
the defense attorney spent considerable time during the cross-
examination of the plaintiff experts noting the areas in which they
lacked expertise and the relatively low national rankings of the
universities in which they taught. This tactic undermined the be-
lievability of the plaintiff experts’ testimony. As many experts
also hold their own patents, another effective way to diminish
their credibility is to ask them whether they believe that their own
patents are valid. These experts are seen as hypocritical when
testifying that the plaintiff’s patents are anticipated or obvious
while claiming that their own patents are valid.
Attorneys should also make sure that their opening and closing
statements are factually correct. Inaccurate information may
negatively impact the credibility of a litigant’s entire case. A crit-
ical point in another patent trial we attended occurred during the
defense’s closing argument. The defense attorney told the jury
that the defendant was a smaller company than the plaintiff and
was using its larger size to thwart the progress of a fledgling com-
pany. During the plaintiff’s rebuttal closing, the attorney pointed
out that the market capitalizations for the plaintiff and defendant
was almost identical, which we believe undermined the defense’s
closing arguments.
Defense focus on both infringement and invalidity
For most jurors, invalidating a patent is counterintuitive because
they believe the United States Patent Office examiners, who are
more knowledgeable about the technology, have approved the
patent or patents at issue. Most plaintiffs present the official pat-
ents to the jury, which adds credibility to the invention. Attack-
ing the validity of a strong patent can backfire, for some jurors
believe the defendant is desperately trying to find any loophole
to avoid compensating the plaintiff for infringing its intellectual
property.
For example, during the Tivo, Inc. v. Echostar Communications
Corporation et al.xiii
jury trial in Marshall, Texas, we thought
that Echostar had an effective non-infringement case. How-
ever, Echostar lost credibility in its infringement case when it
also claimed that Tivo’s DVR patent was invalid. When Tivo’s
counsel cross-examined Echostar’s invalidity expert, the attorney
asked the expert if he had ever heard of someone using the verb
“to tivo” in reference to recording a television program. Tivo’s
attorney asked this expert whether the expert was aware of or
knew of someone who had recorded a television program with

3. any of the prior art references used during the expert’s direct
examination. This line of questioning demonstrated that Tivo’s
technology was novel when compared to these unfamiliar prior
art references. During the trial, it was also shown that one of
the prior art references used by Echostar to demonstrate that the
DVR existed before Tivo’s patent was actually much larger than
Tivo’s DVR box. In our view, Echostar’s weaker invalidity case
undermined the credibility of its stronger infringement defense.
Interestingly, the following year, in Forgent Network, Inc. v.
Echostar Communications Corporation et al.xiv
jury trial, Echo-
star’s attorneys decided to adopt a different approach and focused
solely on the invalidity of Forgent Network’s patent instead of
also arguing that they did not infringe the patent. In a case in
which several other defendants settled prior to trial, Echostar’s
trial strategy was successful.xv
Patent as property
At the start of trial, jurors have very little knowledge about pat-
ents, particularly how they are issued and the legal rights and
limitations pertaining to them. At a fundamental level, many ju-
rors view patents as mere certificates issued by the government
and do not have a sense of their value. In the Eastern District of
Texas, local plaintiff attorneys in patent lawsuits often provide a
very useful framework in which jurors consider infringement as
analogous to someone trespassing on their private property. Dur-
ing voir dire, prospective jurors are asked about whether some-
one has entered their private property without permission. The
attorneys then relate the outrage of having someone trespass on
property to the plaintiff’s predicament.
Infringement as copying
Despite being instructed otherwise, jurors often think about in-
fringement as “copying” or “ripping off someone’s ideas.” De-
fendants may be able to refute this notion by showing how their
products are newer, better or different compared to the plaintiff’s
technology. At trial, it is important to explain these key differ-
ences. In many cases, defendants are able to show their own
patents to argue that the defendant’s technology is different. Ju-
rors are often confused about how the defendant may infringe the
plaintiff’s patents when the defendant has their own patents.
Deference to inventors
Many jurors have an idealized notion of inventors rooted in his-
toric figures such as Thomas Edison or Jonas Salk. From our
experience, inventors’ testimony often has a significant impact
on jurors’verdict determinations. For example, during the seven-
week patent trial of Amgen, Inc. v. F. Hoffmann-La Roche Ltd.,
et al.xvi
many highly credentialed experts testified as to whether
the patents for Amgen’s anemia drug franchise were invalid. In
our view, the turning point of the case for Amgen occurred dur-
ing the testimony of Dr. Fu-Kuen Lin, the inventor listed on each
of the patents at issue. Dr. Lin became very emotional as he
described the painstaking process that led to his invention. Dur-
ing his cross-examination, he broke down as he was so upset that
the patents for his invention were accused of being invalid. His
testimony was extremely persuasive in showing the jury that Dr.
Lin’s invention was a breakthrough that was neither anticipated
nor obvious.
Although most inventors will not become as emotional as Dr. Lin
during their testimony, juries are very interested in the ideas and
actions that led to the patented invention. While on the stand,
the inventor’s discuss their technology and the challenges to its
development in an effort to show that the technology was novel.
As Dr. Lin’s testimony demonstrates, inventors’testimony is very
compelling when they not only provide an overview of the chal-
lenges of conceiving the invention, but also when they express
their outrage that the validity of their patents is being questioned.
Business relationships and licensing deals
In some cases, the relationship between the litigants is also im-
portant for juries’ infringement determinations. In the Affyme-
trix, Inc. v. Illumina, Inc.xvii
jury trial, the plaintiff’s key trial
theme centered on the allegation that Illumina’s scientists took
Affymetrix’s technology when the scientists left the company to
start Illumina. In our view, an important reason why Affymetrix
prevailed at trial was their successful countering of Illumina’s
argument that the technology was newer and better. Jurors rea-
soned that the Illumina’s scientists used Affymetrix’s technology
to develop gene-sequencing products.
To determine infringement, jurors will also consider whether the
plaintiff has licensing deals with other companies. Licensing
deals are important to jurors for demonstrating that because other
competitors believe that the patents-in-suit are valid, they are
willing to pay to use the technology. To counter this argument,
defendants need to show that they respect intellectual property
and also have licensing deals with other companies. In addition,
if applicable, it is compelling for defendants to argue that the pat-
ents at issue represent a small portion of the patents included in
the plaintiff’s licensing deals.
Another factor for jury’s verdict decisions is whether the plaintiff
is currently using the patent to protect its products. Jurors are
persuaded by defendants who argue that neither party is using
the technology covered by the patent. Furthermore, defendants
may argue that the plaintiff is being greedy by seeking damages
for a patent that covers technology not being used. In these situ-
ations, it is important for plaintiffs to counter jurors’ beliefs that
the plaintiff is not being harmed if the defendant is not using the
technology covered by the patent.

4. Lawyer’s aggressive questioning
We have also regularly observed trial attorneys aggressively
question witnesses during cross-examinations, particularly when
attorneys are attempting to elicit agreement with clients’ posi-
tions. However, aggressive questioning frequently creates sym-
pathy for the witness. Cross-examinations are most effective
when important points are made in a collegial manner. It is when
experts become defensive, while attorneys remain courteous and
respectful, that attorneys have the greatest impact on the jury.
Conclusion
In a typical patent dispute, jurors are in a unique position to evalu-
ate highly complex subject matter. Although it is vital to educate
the jury about the technology and the legal issues, there are also
peripheral cues that jurors will inevitably consider when making
verdict determinations. As each case has its own particular set of
facts and legal issues, it is important to conduct pre-trial research
in order to assess the most effective way to communicate a pat-
ent case to a lay jury. Additionally, it is critical to determine how
peripheral cues may impact jurors’ decisions. Our experience
suggests that the difference between winning and losing a patent
jury trial is often related to an attorneys’ use of peripheral cues to
their advantage.
Endnotes
i Zhen Deng et al., Science & technology as predictors of stock performance, 55 Financial Analysts
Journal, 20-32 (1999).
ii Aron Levko et al., A closer look: 2009 patent litigation study: Damage awards, success rates and time-to-trial.
PricewaterhouseCoopers White Paper, 4 (2009). Available at http://www.pwc.com/en_US/us/forensic-services/publications/
assets/2009-patent-litigation-study.pdf
iii Richard D. Margiano, Cost and duration of patent litigation, Managing Intellectual Property, (2009). Available at http://www.
managingip.com/article/2089405/Cost-and-duration-of-patent-litigation.html
iv Levko et al., supra note 2, at 10.
v Eric A. Rudich, Wall Street’s reaction to jury verdicts involving publicly traded litigants, 22 The Jury
Expert, 15 (2010).
vi Deborah M. Altman, Defining the Role of the Jury in Patent Litigation: The Court Takes Inventory, 35 Duq. L. Rev. 699
(1997). See Advisory Comm’n on Patent Law Reform, A Report to the Secretary of Commerce 107 (1992)
vii Id. See also See, e.g., Kimberly A. Moore, Judges, Juries, and Patent Cases—An Empirical Peek Inside the Black Box, 99
MICH. L. REV. 367 (2000) “Judges and juries decide some issues differently. For example, juries are significantly more
likely to find patents valid, infringed, and willfully infringed than judges. The differences, however, are not as profound or
pervasive as one might expect.”
viii See Alice H. Eagly & Shelly Chaiken, The Psychology of Attitudes, 305-325 (1993).
ix Id. at 306.
x Id. at 306.
xi Id. at 306-307.
xii Monolithic Power Sys., Inc. v. O2 Micro Int'l Ltd., 476 F. Supp. 2d 1143, 1148 (N.D. Cal. 2007)
xiii TiVo Inc. v. EchoStar Communications Corp., 446 F. Supp. 2d 664 (E.D. Tex. 2006)
xiv Forgent Networks, Inc., et al. v. EchoStar Communications Corp., et al., 2007 WL 1775289
xv Echostar also relied much more on local counsel in its trial with Forgent Networks that it did in its trial against Tivo, Inc. See
Nate Raymond, Taming Texas, 6-7, The American Lawyer (March 2008).
xvi Amgen, Inc. v. F. Hoffman-La Roche Ltd., 581 F. Supp. 2d 160 (D. Mass. 2008)
xvii Affymetrix, Inc. v. Illumina, Inc., 446 F. Supp. 2d 277 (D. Del. 2006)