Lawyer Turned Thespian

By Jessica Ergmann, Dräger – IP Counsel, North America

Have you ever struggled with effectively conveying a message to a client? Well, power-point is typically less than stimulating, hence the phrase “death by power-point.” So, I have an idea for you. Become a thespian and put on a show.

It is not uncommon for an IP team, whether it be an in-house IP department or law firm, to encounter a lack of understanding or even resistance to a legal principle when working with a client. I will provide you with an example. We ask our clients to perform a patentability search prior to beginning a new R&D project, however prior to searching, we ask our clients to complete a short one-page form to ensure the searching, results, and analysis are protected under Attorney-Client Privilege. The response to our request- “You lawyers are ridiculous, I have to get permission to patent search?” So to teach our clients the principle of Attorney-Client Privilege, my IP team and I engaged in a court room drama. (Please keep in mind, the following is purely fictitious, and scripted so as to effectively, perhaps excessively, illustrate a point.)

Allow me to set the scene: Engineer was assigned to a new R&D project, so before expending countless R&D resources, he performed a patent search to evaluate the patentability of the new concept. In doing so, he stumbled upon US Patent ‘666, owned by Competitor, Inc., that he determined to be relevant to an existing product owned, manufactured and sold by his company. Engineer proceeded to promptly and prudently email his Manager the patent and his astute and thoroughly investigated legal conclusion of the product’s infringement of Competitor’s US Patent ‘666. Now, turn the clock ahead three years. Competitor files a complaint against Accused Company in the Eastern District of Texas (go ahead, pick any division), seeking damages for infringement of US Patent ‘666.

Fast forward another three years later (past discovery, including answering 43 Interrogatories, 78 Requests for Production, numerous hours in deposition, numerous unsuccessful settlement discussions, and gobs of money in attorney’s fees) to trial. Engineer is on the stand, the Texas Eastern District Court Judge presiding, and Competitor Counsel’s grueling examination begins.

First, the poking and prodding into every detail of Engineer’s past. (Our client is aghast at the intrusiveness of the questions and the repeated overruling of Defense Counsel’s relevance objections.) “Where did you attend pre-school?” “Did you make good grades?” “Did you have a dog as a child?” And on, and on, and on….

And then comes the credibility attack. Digging into Engineer’s past to find one iota of wrongdoing, a mere discrepancy on a job application, and inflating it in front of the jury as though he had committed murder. In every attempt to explain himself, Engineer was harshly quieted by Plaintiff’s Counsel and the Judge. He continued to elaborate on his answers, and Judge got really enthusiastic, went off script, and threatened him with a night in a “cold, dark cell.” (I am not sure if Engineer was genuinely scared, or confused because Judge went off script and caused him to lose his lines.) Anyway, Plaintiff’s Counsel continued attacking his credibility, while he had to sit there, tormented, answering in the form of “Yes” or “No” only.

And now for the smoking gun. The email sent from Engineer to Manager regarding Competitor’s Patent ‘666. As Plaintiff’s Counsel introduces the email into evidence: “Objection, your honor – This is a privileged communication.” Of course, I knew the email was not protected under Attorney-Client Privilege, however in my effort to demonstrate this principle to the audience, I objected. (Surely, our client thought, this cannot come into evidence, for Engineer sought legal advice from In-House Counsel after he emailed Manager.) Ah-ha! After you say, sorry, too late. OVERRULED. The email comes in.

“Engineer, please read Exhibit P0525 aloud to the jury.” Engineer squirms, and apprehensively reads the email, “Hi Manager, I was doing some patent searching and I came across a patent from Competitor, Inc. The patent number is 6,666,666, and as far as I can tell our product infringes the patent.”

Stick a fork in the Defense, we are done. Oh, and liable for treble damages too.

I attempted to rehabilitate Engineer, picking up the pieces of his integrity off of the floor and putting them back together, trying to showing the jury that he is a genuinely good guy who had one minor indiscretion in his youth. And look at all of the charity work he does!

I also attempted to show the jury that Engineer did not understand what the legal claim of infringement required, after all, he had a professional degree in computer science, not a J.D., and, get this jury, his determination was based upon the specification, not the claims. Yeah, like they give a rat’s you know what.

After the bloodbath ended, the point we emphasized to our client, was that even with my valiant attempt to rehabilitate the witness, all the jury sees is a guy who went to Columbia, surely a genius who knows how to read a patent. Oh yeah, and a big liar.

Accused Company was found to infringe Competitor’s US Patent ‘666, and damages totaled $30 million. Oh yes, and because we knew about the patent and proceeded to manufacture and sell our infringing product despite this knowledge, we are liable for a whopping $150 million. Why? – the client asks. Willful infringement = Treble Damages. “Ahhh” says the client as the light bulb makes its debut, “That Attorney-Client Privilege sounds important – Maybe we should fill out that damn form before performing a search next time.”

I would like to mention Dewayne Hughes, Senior IP Counsel Dräger, North America. This mock examination was his excellent idea, and it was a huge success with our R&D group. We effectively conveyed our message, and had fun doing it. Because they have a full understanding of why procedures are in place, they are willing, even encouraged to practice them. Dewayne has become a mentor to me, and I look forward to continuing to learn from him every day. Thank you.

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