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March 2021: Noted with Interest: Lessons from Trial: Potential Upsides to Foregoing Invalidity Defenses as an Accused Infringer

Patent trials tend to follow a familiar pattern:  Plaintiff argues infringement of patent claims; defendant argues the claims are not infringed and, even if they were, they are invalid.  Defendants typically raise both arguments because invalidity is a defense to infringement, the conventional way of thinking being that two defenses are better than one.  But not so fast.  As a trial team for Google recently proved, under the right circumstances, dropping invalidity might not only be beneficial for streamlining trial presentation and simplifying issues for the jury, but may just be the defendant’s ticket to a clear-cut victory.  Personalized Media Communications, LLC v. Google LLC, No. 2:19-cv-00090 (E.D. Tex.) (Judge Gilstrap) (Google winning jury verdict of non-infringement after dropping all invalidity arguments); see also December 2020 Business Litigation Report (detailing the trial).  

Indeed, the PMC v. Google trial stands as compelling evidence that there are situations where it could be strategically advantageous to forego invalidity altogether.  In this article, we discuss reasons why a defendant may want to buck the conventional wisdom and not pursue invalidity at a jury trial.  This is clearly not a decision to be made lightly, as it can have profound consequences on the outcome of a case—including giving up the chance to invalidate the asserted patent or patents for good.  The pros and cons of this approach thus should be weighed carefully based on the specific facts of the case.  

Reasons Why One Might Consider Dropping Invalidity

So why might you consider dropping your invalidity defense at trial?  To start with, both sides are nearly always under incredible time constraints.  While patent trials typically last a week or two, each party is pressed to get through its best arguments and witnesses.  And this is particularly true where there are multiple patents, numerous claims, or different technologies at issue, as frequently happens.  Admittedly, foregoing invalidity reduces the time pressure on both parties.  But typically the extra time is more helpful to the defendant, who often needs to provide more detailed testimony from more witnesses to show why the infringement allegations are wrong.  Because of this dynamic, and in the hopes of making it more difficult for the defendant to mount a successful defense, plaintiffs will often advocate for less overall trial time.  Absent the need to spend time putting on an invalidity case, the defendant should have ample time to focus on why it does not infringe, as well as to present any other jury-friendly defenses (e.g., licensing).

A second reason to consider dropping invalidity is that juries tend to react negatively if they hear too many defenses.  When presented with a veritable smorgasbord of different—sometimes inconsistent—defenses, jurors may decide that the defendant protests too much.  Jurors often see the layering of defenses on top of defenses as something that a guilty party would do if it were caught red-handed.  And if jurors don’t reach that conclusion on their own, savvy plaintiffs’ lawyers are often quick to point it out, frequently right from the outset in opening statement.  As such, defendants often start on the back-foot simply because they need to spend time rebutting the notion that they are throwing a bunch of defenses at the wall (i.e., the jury) and hoping something sticks.  By reducing the number of defenses presented at trial, a defendant can blunt the impact of these typical plaintiff-side arguments and potentially enhance its credibility with the jury.  

Yet another benefit of not presenting invalidity to the jury is that the case can be reduced to a single burden of proof—one that juries have an easy time understanding:  To win on non-infringement, a defendant only has to show that the plaintiff cannot win by a preponderance of the evidence, i.e., by showing there is a 50% or less chance the plaintiff’s allegation is true.  But to win on invalidity, a defendant has to show the patent is invalid based on a loftier standard: clear and convincing evidence, i.e., highly and substantially more likely than not.  That is because there is a presumption of patent validity under 35 U.S.C. § 282(a).  Clear and convincing evidence is understandably a difficult concept for jurors to grasp.  It cannot be distilled to a simple percentage, and the articulations in most jury instructions are difficult-to-understand legalese.  Thus, while a 51% chance that a contention is true means the preponderance of the evidence standard is satisfied, it’s much less apparent when clear and convincing is met in a particular case.  Jurors may struggle to draw a line and instead default to finding the standard has not been met.   

In addition, to prevail on invalidity, the defendant must effectively convince the jury that the USPTO made a mistake and should never have issued the asserted patent claims in the first place.  Depending on the jurisdiction, this may be a conclusion that jurors are reluctant to reach, even in the face of compelling evidence.  Jurors may find it easier to simply defer to the “experts” at the Patent Office.  By foregoing invalidity, defendants can not only avoid putting that issue to the jury, but can keep them focused on the arguments and patent elements most favorable to the defendant.      

Additional Reasons That May Further Tip the Scale

The benefits discussed above apply to just about any patent case, but may not be enough on their own to justify foregoing invalidity altogether.  There are, however, other circumstances that may further tip the scale in favor of taking this approach at trial.  

For example, dropping invalidity may be a more compelling option if the asserted patent has a very early priority date or the asserted claims have been construed exceedingly narrowly, making prior art invalidity arguments more difficult.  Less credible prior art arguments can be exploited by the plaintiff in rebutting the defendant’s non-infringement positions—for example, by pointing out where a defendant is interpreting claim language in a different way in service of its invalidity arguments.  Of course, defendants can also benefit from exposing inconsistences between a plaintiff’s infringement assertions and its rebuttal arguments on invalidity.  If such inconsistences exist and can be exploited, this may be a reason to pursue invalidity at trial. Either way, credibility is key in any jury trial, and making arguments that are not strong, simply to have something to say on a particular issue or defense, should only be done at the defendant’s peril.  The last thing you want as a defendant is to have a cross examination of your invalidity expert compromise your entire case.  By not pursuing invalidity, the defendant takes that arrow out of the plaintiff’s quiver.  

It may also make sense to drop invalidity if an advantage can be gained in terms of the anticipated expert testimony from each side.  Patent infringement trials can be won or lost based on how well experts do on the stand—the proverbial “battle of the experts.”  In a typical case where both non-infringement and invalidity defenses are presented by the defendant, each side will usually have at least two technical experts—one to testify on the background of the patents and their validity/invalidity, the other to testify on the accused products and how they infringe or do not infringe the patents.  Under these circumstances, the defendant can reduce the number of technical experts down to potentially one per side by giving up any invalidity defense, thus forcing the plaintiff to rely solely on its infringement expert to present its technical side of the case.  If the plaintiff had planned to use its invalidity expert to tell the inventive story of the asserted patent’s (and drafted expert reports accordingly), it may unexpectedly find itself with a substantial hole in its trial presentation.  Reducing the plaintiff to a single technical expert is an especially attractive approach if the defendant believes the plaintiff’s infringement expert won’t perform well on the stand or if there is any concern over how the jury may respond to the parties’ respective validity/invalidity experts.  

Finally, having fewer issues to address at trial can facilitate the creation and preservation of a favorable record for any post-trial appeal.  A more robust record can be developed on non-infringement (or other issues) if invalidity is not in play, allowing the defendant to focus on aspects of the plaintiff’s case that may provide a strong basis to overturn any adverse jury verdict.  

At Least Make It Part of the Conversation

As with most trial strategy questions, whether to forego invalidity at trial is a judgment call, and there is no one-size-fits-all answer.  But when formulating a trial presentation, dropping invalidity and focusing on other infringement defenses should, at a minimum, be a part of the conversation.  It may just make all the difference.