Helping Jurors Understand: Tips for Explaining the Unexplainable at the Eighth-Grade Level

used to produce almost limitless amounts of any given dna sample, it could not estimate as we had hoped, there was no objection to its admissibility. however, we did encounter a how to make so-called "monoclonal antibodies," genetically engineered versions of the the background to the dispute is as follows. during the late 1970s and early 1980s, the science: to understand real-time pcr, it was necessary to understand basic pcr, and to trial. our plan was to have the expert explain the animations in live testimony as part of his expert was the leading cancer researcher at a major teaching hospital; he had academic, fdcc quarterly/winter 2009 one of the challenges we faced in the pcr case was the multi-layered nature of the tools to decide complex issues of law and molecular biology; the court issued a preliminary technology and to meld it with the conventional elements of the art of persuasion to suc- genentech) and erbitux (made by imclone). has come to be an important weapon in the arsenal of cancer treatment. two rival groups ferent concepts. because pcr is a multi-step process in which different cycles are carried in the areas of civil litigation, real estate, commercial transac- snag that required a last minute change of plans as to how the animation would be used at address the challenges of communicating facts, theories, and arguments to both the judge the animated images has begun; therefore, we made extensive use of storyboards to ensure that our expert patent and trademark office for some thirteen years and finally issued as a patent in 2001. journal, fortune and the financial times. edged our expert as the source. covering the combination therapy in 1988; the application remained pending in the u.s. this phase of have to a person of skill in the relevant art, that is, a scientist or engineer practicing in the on intellectual property matters; he has been lead counsel fective than would have been predicted from the performance of either component alone. both contexts, trial attorneys have to present evidence in a format that allows the court and helping jurors understand: nicholas groombridge sample rather than rely on a voiceover with still images. making them unduly argumentative. and arguments pertaining to technical issues in patent infringement cases. second, to help focus on pharmaceuticals and biotechnology. he is a frequent in leading business publications, including the wall street as we prepared for the trial, we knew we would have to provide the judge with a primer him to travel without significant advance notice. while we were confident we could work 160 introduction see yeda research & dev. co. v. imclone sys., inc., 443 f. supp. 2d 570 (s.d.n.y. 2006). the jury to fully appreciate what the patented product is and how the patent was infringed. conclusion the technology; therefore, as part of the markman hearing, it is often necessary to provide revolutionized the study of dna and earned a nobel prize for its discoverer. note that, as with any animation, it is much more expensive to make changes after the work of rendering (specifically, a ph.d. in biochemistry) to be primarily responsible for developing materials fdcc quarterly/winter 2009 patent litigation group. his practice is focused exclusively how much dna was present in the original sample. the ability to perform a quantitative to meet this need, we decided to prepare a technology tutorial that our expert could yeda research & dev. co., 443 f. supp. 2d at 577. iii. over time, thus establishing whether the treatment is working. drew extensively on the cd in her description of the technology and specifically acknowl- at the eighth-grade level this synergistic, or more-than-additive, effect was the invention covered by the patent and pcr was a slow and time-consuming process. in addition, although the process could be of scientists claimed to have come up with the idea. one group filed a patent application what the competing claimants did in their scientific research in the mid 1980s; much of the direct examination. however, in the week before trial, the judge made it clear that she would iv. become more refined, successful trial lawyers have come to understand the need to use that we used an initial animation to explain the fundamental pcr process (taking care to of weil, gotshal & manges llp and is co-head of the firm's processes of unrestricted cell growth that result in cancer.5 so that we could make clear how they related to the issues that the court would have to as we hope our article demonstrates, animations can be a highly effective tool to ex- out over time, we decided that animation would be the most effective way to explain the and vocabulary. cause normal cells to become cancerous. after many years of research and clinical testing, how real time pcr differed from the original version of the process. during the argument, patents in a wide variety of technical areas with particular second, a jury must determine whether infringement occurred. in patent ownership follows a chain of title beginning with the inventors, this decision had the cut and western massachusetts. his practice is concentrated were doing what they were doing. clearly, it would be very difficult for the judge to get to court together with his written report. evidently this approach was successful, as the judge because we felt this approach would help convey the logical relationship between the dif- were administered together with a traditional chemotherapy drug, they were far more ef- valuable. 2 mental structure of dnaitself.accordingly, we decided to use a number of discrete modules and arguments to judges and juries. as technology in the legal arena has increased and or a jury, and we specifically address the challenges inherent in litigating patent infringe- well as even the most sophisticated judges.although litigators in a broad variety of contexts 5 product liability defense. mr. o'connell represents numerous following the meeting, we began work with a trial graphics firm to develop the materials. commercial, and bankruptcy litigation, as well as complex 162 and jury, we discuss two actual presentations that were made in the context of patent in- with him remotely, we felt it was critical to make sure we earned his confidence and respect michael d. o'connell the challenge of communicating facts, theories, and arguments is even greater when these technical issues typically need to be addressed in two separate contexts in patent including, for example, forensic identification. pcr was a breakthrough technology that 164 compare different samples taken from a patient being treated for a particular disease to rience includes significant construction and bonding, zoning, 1 165 michael o'connell is the senior partner in the firm of fight off infections. in the 1980s, cancer researchers discovered that certain types of mono- several of these antibodies eventually came to market, including herceptin (made by helping jurors understand see markman v. westview instruments, inc., 517 u.s. 370 (1996). antibodies worked, it was hypothesized that they interfered with the biological events that the basic science and avoided any mention of the contested issues. of dna. using this method, a lab can take a minute sample, perhaps even as small as a few area of technology at issue. judges do not have the requisite scientific expertise to evaluate fringement litigation. hopefully these will offer not only some help and guidance but also fortune 500 and other national manufacturing companies, in for the tutorial. that lawyer, together with the lead trial counsel, arranged a personal meet- fdcc quarterly/winter 2009 ruling from the bench finding in our client's favor on all disputed terms and subsequently early in the process. to accomplish this, we picked one attorney with scientific training issues to a judge or a jury was comfortable with the proposed graphics before we prepared the final product. molecules, and produce essentially limitless amounts of identical dna. the dna result- "real time pcr."2 to reduce the chance that our o'connell, flaherty &attmore, llc, with offices in connecti- 3 approximately two months after the case went to trial, the trial court issued a decision tips for explaining the unexplainable understand basic pcr, it was necessary to understand at least something about the funda- adversaries would object to the graphics, we purposefully restricted the subject matter to effect of transferring ownership of the patent, which by that point had become extremely in this article we address the challenges in presenting highly technical issues to a judge trial lawyers constantly face the challenge of communicating complex facts, theories, cessfully convey their clients'position to the fact-finder. visual presentations have become 166 see applera corp. v. strategene corp., 2007 wl 776329 (d. conn. 2007). in numerous patent infringement actions in federal district the first example we will discuss is a series of animations used at a markman hearing in plain complex technical subject matter. however, it is imperative to work closely with the of delaware, and we drew on our experience in those courts. scientific, and clinical duties that not only limited his availability but made it difficult for process. through animation, we could dramatically illustrate successive changes in the test speaker on current developments in patent law and currently 163 that is no small challenge. generate some on-going dialogue and discussion about other successful strategies. the same colors and iconography, we then used a second group of animations to explain an improved version of the process, known as real-time pcr. in its original configuration, peals for the federal circuit. mr. groombridge has litigated some form of explanation or primer on the technology at issue. trial on inventorship of a patent on a new method of treating cancer helping jurors understand sponsoring expert when preparing animations and to resist the temptation to overreach by addition to connecticut-oriented businesses. he has served as from out of town the evening before he was to go on the stand, and without him, we could face this challenge, nowhere is it more dramatic than in the context of patent infringement helping jurors understand group filed suit in 2003 seeking a judgment correcting the inventorship. tions, environmental law and employment law. his trial expe- confirmed the ruling in a written opinion. a national coordinator for a manufacturer with major asbestos venues with a large patent docket, such as the northern district of california or the district common-place tools for communicating to judges and juries in the modern courtroom. his commercial practice includes intellectual property and franchising. nicholas groombridge is a partner in the new york office litigation. often, the issues that the fact-finder in a patent infringement case must decide take), and we burned the resulting sound and graphics on a cd that was submitted to the cancer.4 grips with these issues unless she was familiar with the fundamental scientific principles we immediately had to face the challenge of working with a very busy expert. our e-commerce section. 4 apolymerase chain reaction ("pcr") is a method for amplifying quantities fdcc quarterly/winter 2009 submitted by the authors on behalf of the fdcc intellectual property section and the technology and shortly afterwards, the second group of scientists learned of the patent and asserted that they were the true inventors. following a period of negotiations, the assignee of the second exception, resolution of the claim construction disputes leads to resolution of the entire the trial attorney must address issues that are well beyond the ken of the average juror, as i. conducted live in the courtroom. this decision left us in a quandary: our expert was arriving do not understand or fully appreciate. ing from this amplification can in turn be subjected to a host of other analytical techniques, not write out his direct testimony with any confidence that he would approve it. in the end, litigation exposure and has served as a national coordinator field of biotechnology experienced dramatic growth. during this period, scientists learned to explain the processes, we used animations at a markman hearing.3 case. thus, prevailing at the markman hearing is a matter of great strategic importance. on monoclonal antibody technology. the key issues would involve detailed analysis of the case is also known as claim construction. in many patent cases, and this case was no we planned to use custom animations prepared in powerpoint to explain what antibodies measure whether the amount of dna from the disease-causing bacteria is rising or falling ing with the expert at his office to explain the process. clonal antibodies could be used to combat tumors. while no one knew exactly how these the patent being asserted.1 ii. around 1988, scientists discovered that when certain types of monoclonal antibodies antibodies that the immune systems of humans and other mammals produce naturally to who invented the subject matter of a patent covering a method for treating certain forms of because our expert solved the problem for us. we arranged the use of recording studio facilities, and 161 analysis of this type is very useful in many applications. for example, it allows labs to the challenges of presenting highly technical 159 claim construction of a patent involving real time pcr helping jurors understand ment cases. first, we discuss why it is so challenging to communicate the facts, theories, ing, in which the court determines, as a legal matter, the nature and extent of the claims of when he arrived from the airport, he recorded a voiceover for animation (in only a single when the meaning is in dispute. courts, and has successfully argued cases in the court of ap- 6 the markman hearing is the procedural part of a patent case where the judge interprets terms of a patent the second presentation we will cover was used during a bench trial in a dispute about strongly prefer to hear direct testimony in the form of affidavits with only cross examination we prepared the animation and provided a copy to opposing counsel in advance of trial. finding that the individuals in the second group were indeed the true inventors.6 we folded these animations into a set of powerpoint slides on the key disputed claim terms the patent was not directed to pcr itself but rather to an instrument for performing decide. this multi-layered approach was highly effective in giving the judge the necessary involve scientific and engineering considerations that even technically inclined individuals litigation. first, courts must wrestle with scientific challenges in a so-called markman hear- walk through as part of his direct examination. the use of such tutorials is fairly common in v. explain at the hearing that this process was not the invention covered by the patent). using the law provides that patent terms must be interpreted in light of the meaning they would co-teaches a course on patent litigation at columbia law evidence and arguments would make sense only if the judge understood why these scientists for product liability litigation for a major tire manufacturer. school. he has frequently been quoted on patent law issues are, how monoclonal antibodies are made, and how certain types of antibodies inhibit the an action for infringement of a patent on an instrument for performing a process known as