Start Your Defense With Your Weakest Argument

Wednesday, June 2, 2010 - 01:00

Editor: How does your background in criminal law help you when developing IP litigation strategy?

Brooks: A lot of the criminal defense cases, including white collar defense, I have tried involved technology and cross-examining multiple expert witnesses. One of my first cases as a young federal defender was representing a federal protective officer who was charged with the murder of a young woman in a U.S. Customs facility. There were no eye witnesses and the only evidence was forensic. I had to cross-examine six experts from the FBI, including experts in fibers, tool marks, adhesives, paint chips and hair. I learned very quickly not to take on the experts in their area of expertise because they'll eat you alive. Instead, I now try to find other areas of vulnerability. For example, have they previously testified inconsistently with what they are now saying? Do they have any published works that actually support our experts' presentations? Is their testing methodology up to date, or are they still using leeches? And the list goes on from there. In patent litigation, I work the experts up in the very same way.

Editor: Why did you make the switch from white collar criminal defense to patent litigation?

Brooks: I was looking for a new challenge. I had been very fortunate to have tried some high-profile white collar cases, like John DeLorean's racketeering defense, and I felt that there wasn't much more to do in the white collar world. The appeal of patent litigation for me was that the cases still involved complex technology, but patent law itself added a whole other level of complexity that wasn't present in criminal law.

Editor: When you are working with new associates what is the first rule of IP strategy that you teach them?

Brooks : I try to encourage them to get out of the weeds. Many young associates can only see the minutia and have trouble seeing the big picture. Many associates in the IP world have technical degrees, and they're still thinking like engineers rather than like trial lawyers. If they can take their technical background and use it to help them understand a case, that's great. But then they have to be able to translate that knowledge into something that someone who doesn't have a technical degree can understand.

Editor: What techniques do you use to take complex inventions and break them down for juries and the court to understand?

Brooks: Since I think in pictures, the first thing I do is start by drawing a picture of what I think the technology is really all about. With the help of experts, fact witnesses, graphics and animations that picture will eventually evolve into the centerpiece of the story that we will tell to the trier of fact. I've always felt that if you can talk about your case in pictures, you can make it comprehensible and persuasive.

Editor: Connecting with juries is an important aspect of strategy. What are the basics of doing so?

Brooks: Fundamental to connecting with a jury is being able not only to talk like them but to think like them. For instance, most jurors believe that the Patent Office knows what it is doing, and if it issues a patent, it must be valid. So they say to themselves, "Who am I to second-guess the Patent Office?" However, if we're putting on an invalidity defense, I'll find a juror who has worked for a government agency and ask her if she thinks government agencies ever make mistakes. Almost everyone says "yes," and then I ask them to give me the reasons why mistakes sometimes happen. The juror ends up laying out our whole defense for us. They will share with the other jurors how government agencies are overworked, underfunded, aren't given all the information and sometimes even lied to - which is exactly what an invalidity defense is all about.

Editor: Is there a part of your litigation strategy that applies in every case you try?

Brooks: Yes. If you can take the worst facts of your case, embrace them and make them your best facts, it leaves the other side with no ammunition. When your opponents go into a trial thinking that they are going to rely on certain documents and testimony to make their case and you actually use those same documents and testimony to make yours, they find themselves floundering. For example, as long ago as the DeLorean trial, I've been using this technique. John DeLorean was on trial because $17,000,000 had gone from the DeLorean Motor Company into John's personal bank account. Our defense was that the money was a loan from Colin Chapman of Lotus Motor Cars, who was doing the research and development on the DeLorean. The problem was that Chapman was dead, and there were no loan documents. We turned the fact that there were no loan documents into our strongest point. If John were making up the fact that it was a loan, then he would have also made up phony loan documents. The fact that there weren't any phony loan documents proved it was really a loan. It also didn't hurt our case that the television shows "Dynasty" and "Dallas" were very popular back then, and J.R. Ewing or Blake Carrington would have easily loaned $17,000,000 based on nothing more than a handshake.

Editor: You recently tried two patent pharmaceutical cases. Do they differ from other patent litigation?

Brooks: The answer is "yes" and "no." The law in the area of pharmaceutical litigation is even more complex than in non-pharmaceutical patent litigation. Also, because the generic is not yet on the market at the time of trial there are no damages. Because there are no damages, the trials are always bench trials rather than jury. So those are the differences.

On the other hand, even though you are trying the case to the court rather than a jury, your strategy stays similar. You still need to be able to tell a story, make the technology understandable and give the trier of fact a reason to want to find for your client rather than the other side.

For example, in the case we tried last year for Allergan, the drug at issue was Alphagan® P, a glaucoma medication. The defendants argued that there was nothing new or novel about the drug because it was merely a combination of the earlier Alphagan, just at a lower dose, plus a preservative called Purite that the company used in eye drops. While it's true that is the formulation, it actually took the formulators years to be able to find the right combination. At trial, we needed to get that story across to the judge. We were able to do that successfully by combining the invention story with graphics which we created for trial based on lab notebooks and records written at the time the formulators were working on the combination.

Editor: What are the components of a successful working relationship between outside counsel and corporate counsel, especially when crafting complex patent trial strategy?

Brooks: Communication is key. You need to find out upfront what your clients' expectations are, how involved they want to be in the day-to-day decision-making and how they want information communicated to them. For example, do they want to have weekly conference calls or are they so busy that they only want to be consulted if a game-changing decision has to be made? Some clients have already been involved in prior litigations, and you can learn from them what has worked or not worked in the past. Some clients like to micromanage, others don't. You just need to figure out what's the best fit for each client's needs.

Editor: What's it like to be one of a handful of women who are lead trial counsel in bet-the-company patent cases?

Brooks: It's a privilege. I feel a real debt of gratitude to the in-house counsel who are willing to put their company's future in my hands. One of the first clients who interviewed me about being lead counsel in a patent case told me at the end of the interview that he was concerned that I would have no credibility with the jury because "girls don't do science." In the past 10 years that I've been doing patent litigation, I've gone from having to deal with someone of that mindset to being named one of the top 14 law firm rainmakers by the Minority Corporate Counsel Association.

Editor: What is your most memorable patent trial strategy moment?

Brooks: I was preparing an opening statement in a case where there were four patents and 24 claims asserted against my client. Because the judge had granted summary judgment of infringement, our only defense was invalidity. The technology was extremely complex and I was stumped as to how to persuasively cover all of that in the opening. As I was sitting at my computer looking at my client's website, it struck me that while we were sitting in court the next day over 100,000 people would be receiving life-saving hemodialysis treatments, thanks to my client. That became the first line of my opening and everything just flowed from there.

Editor: After trying cases for 33 years and specifically patent cases for the last decade, do you still find trial work challenging?

Brooks: Absolutely. Even though I've already tried several patent cases as lead counsel and will probably try six more this year, I learn something new every time. Each case presents new challenges, and technology and patent law are constantly evolving. However, the fundamentals don't change. You still have to tell a story that will connect with the trier of fact logically, emotionally and morally in order to prevail.

Please email the interviewee at brooks@fr.com with questions about this interview.