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IP: 2 key points to guide claim constructions for lay juries

The ever-eloquent Judge Posner demands “ordinary English”

To paraphrase Gilbert and Sullivan, Richard Posner is the “very model of a legal intellectual”: first in his class at Harvard Law School, clerk for Justice Brennan, a judge on the 7th Circuit for more than 30 years, senior lecturer in law at the University of Chicago Law School, and prolific author and blogger on all manner of legal and economic issues.

Indeed, a 2000 study in the Journal of Legal Studies found that Judge Posner was the most cited legal scholar of all time. Faced with his monumental body of work, it is only natural to doubt one’s ability to read as fast as Judge Posner can write, but be of good cheer. Luckily, you need not dig deep into weighty tomes to find the judge’s wisdom: If you have time to read a single paragraph from his March 10 Order in Apple, Inc. v. Motorola, Inc. you will find a glittering gem or two about drafting claim constructions a lay jury can understand.

By way of background, the Apple v. Motorola lawsuit in question is but one front in a world-wide battle between the companies over technologies in the lucrative mobile phone market; an overview of some details of the struggle can be found here. This particular suit, which began in the Western District of Wisconsin in the fall of 2010, was transferred to the Northern District of Illinois on Dec.1, 2011 and assigned to Judge Posner, sitting by designation.

A glance at the hundreds of docket entries so far in the case demonstrates the titanic efforts expended by the dozens of top-flight litigators, and, at the time of this writing, the case is on pace to go to trial soon. Despite their heroic efforts, however, Judge Posner found that the parties’ claim constructions briefs missed the mark because:

“Many of the proposed claims constructions are not in language intelligible to jurors. . . . There is no point in giving jurors stuff they won’t understand. The jury (actually juries) will not consist of patent lawyers and computer scientists or engineers unless the parties stipulate to a “blue ribbon” jury; I would welcome their doing so but am not optimistic. No doubt the court-appointed experts could explain opaque claims constructions to the jurors, but that would waste a lot of trial time. I want the constructions themselves to be in ordinary English intelligible to persons having no scientific or technical background.”

Honestly, I should probably stop here, but permit me a couple of paragraphs to restate two universal principles that Judge Posner so ably stated in just one.

1. Remember your audience. Lest there be any misconception, Judge Posner’s demand for claim constructions “in ordinary English intelligible to persons having no scientific or technical background,” if properly understood, is not in tension with the settled legal principle that claims are to be given the meaning that the terms would have to a person of ordinary skill in the art in question at the time of the invention. Undoubtedly, Judge Posner knows and follows this rule.

Instead, I believe the judge is not making a legal point about claim construction per se, but rather a pragmatic point about the reality of a patent trial by jury: Ultimately, if correct verdicts on infringement and validity require the jury to understand the claim constructions, advocates must give the jury a fighting chance to understand them.

A very successful litigator I know has a similar saying: “If you cannot explain your case to your grandmother, you do not know it well enough.” And he’s right. If an advocate wishes to educate and persuade a jury of ordinary people (i.e., non-experts), he must first communicate with them in language they can understand.

2. Simplify, simplify, simplify. Judge Posner’s second point is likewise pragmatic: make the most of limited trial time. Offering a dense claim construction and hoping that the jury can follow an expert through a long-winded explanation is a waste of time.

As Judge Posner said: “There is no point in giving jurors stuff they won’t understand.” Instead, try to develop a simpler, more lucid claim construction, and spend time at trial repeating it, instead of explaining an overly-complicated construction and hoping the jury “gets it.”

To close in the spirit, if not the wit, of Gilbert and Sullivan (whose second collaboration, Trial by Jury, incidentally, features the character “The Learned Judge”), can we agree that:

Although by his critics, in matters legal and economical,

Posner’s been blasted as both prolix and controversial,

And few possess the stamina to read his works seriatim,

Still for these tips alone, he deserves this brief encomium?

Disclaimer: The views in this article are those of the author, and not of Marshall, Gerstein & Borun LLP or its clients. The contents of this article are not intended as, and should not be taken as, legal advice, legal opinion, or any other advice. Please contact an attorney for advice on specific legal problems.

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Cullen Pendleton

Cullen Pendleton, Ph.D., is a litigation partner at Marshall, Gerstein & Borun LLP. He is an alumnus of the University of Houston, the University...

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