It takes skill to win a patent case. You must marshal the evidence so judge and jury will follow you to the right conclusion. See Abraham Lincoln School of Patent Litigation. Lincoln, born in Kentucky and called to the bar in Springfield, Illinois, knew how to try a case quickly. Juries could relate to him. He was real. Abraham Lincoln’s wisdom applies with equal force in East Texas, as the reader will see from my interview of modern day Texas jury trial lawyer Michael C. Smith.

How to win patent cases in East Texas

The State Bar of Texas asked me to write this patent litigation series after I attended and wrote a brief summary of a recent Eastern District of Texas Bench and Bar Conference.

This 3-part series on East Texas patent litigation is based on my exclusive interview with noted blogger and Texas lawyer Michael C. Smith.

In Part 1, Why Patent Defendants Hate East Texas, I contrasted the “speed trap” reputation of the Eastern District of Texas with the reality that defendants win most cases. When plaintiffs win, damages are usually smaller than they hoped, proving the truth that “pigs get fat, but hogs get slaughtered.”

Here, in Part 2, I’ll share Michael C. Smith’s advice on how to win patent cases in East Texas and elsewhere. Here’s what you need to know in a nutshell: (1) It’s a fast ride, (2) talk to your jury, (3) be a good Yankee, (4) practice real diversity, and (5) don’t fake it.

Now, let’s unpack these truths of East Texas patent litigation.

It’s a fast ride!

Most East Texas patent cases go to trial on a fairly predictable and relatively fast schedule, according to East Texas lawyer Michael C. Smith. In large part this is because there are few criminal cases to derail the scheduling of civil cases in the patent-heavy divisions of the District.

Michael C. Smith cites Parkinson’s law—the idea that the work expands to fill the time available—in observing that shorter schedules save parties money in preparing cases for trial. “If the lawyers have four years to prepare for trial, they’ll bill for four; if they have two years, they’ll only bill for two. Clients like that,” said Smith.

So why do some defendants try to avoid East Texas? Smith does not believe defendants are seeking a “better product” elsewhere. Rather, Smith believes they simply, in some cases, have “a tactical preference for delay,” either in the form of longer waits for trial or stays pending resolution of initial motions or proceedings at the Patent Office.

In contrast, Smith noted a “huge benefit for a plaintiff to simply get to trial on a reliable schedule.”

Talk to your jury

I asked Michael C. Smith about jury selection. “Voir dire is very important in the Eastern District,” he said. “Jury selection by lawyers is a tradition in federal court here. [Judges] view it as the lawyers’ case.” Voir dire gives the lawyers the opportunity to find out what the jury knows, what jurors think, and their backgrounds. “We don’t get much time,” he conceded, “but we generally have enough time to identify jurors who maybe shouldn’t sit on this particular jury, and to decide how to use our peremptory strikes.”

It’s better to be a Yankee than a jerk

I cross-examined Michael C. Smith, “Is it safe to be a Yankee in the Eastern District?”

The local attitude is not one of “knee jerk reaction” against Yankees or other big city lawyers, Smith said quickly. “It’s okay to have a funny accent.”

“The deadly mistake,” said Smith, “is to be discourteous. Don’t be a jerk to support staff or other lawyers. Just pretend your mother is sitting next to you. What would she think of your behavior?”

Smith also added that, given the size of the docket, it’s very helpful to have someone local. “We handle so many of these cases. We know the judge has seen a particular issue hundreds of times, and we can warn: Don’t file this or that motion. File this other motion instead. This is the way to make that issue or fact a winner for you.”

In addition, what local counsel in East Texas can provide is trial experience. “I had a case a while back with six lawyers on one side, and four or five on the other side. But I was the only one who had ever been to trial. I knew what was going to happen and when, what the court and the jury were expecting and would think, and I realized that there just wasn’t the knowledge of common mistakes that there was ten or twenty years ago. I felt like I was able to help my client get that win because of that.”

Practice real diversity

Sometimes trial teams “hire a woman or other member of a minority to sit there and do nothing. That’s very offensive to jurors,” Michael C. Smith says. “They have to play a role.”

But that’s an opportunity, he says. Smith recalled a trial team bringing in a minority lawyer shortly before trial, and he was concerned about what might happen. The lawyer wasn’t a placeholder and quickly showed a rapport with the jury that other members of the trial team couldn’t match. The trial team switched assignments during the trial and let the lawyer present closing, which jurors later confirmed was a key tactical decision.

“If that trial team had treated that lawyer as window dressing, they’d have lost that case,” Smith observed.

“If they’re at the table, the jury has to see them contribute to the team. And that doesn’t mean taking notes and handing up documents.”

Don’t be a fake

Sometimes parties pretend to be local. They put up a front in Tyler or Marshall. Nothing is surer to generate contempt.

“It’s okay to say ‘we’re a holding company,’” Michael C. Smith says. “Say ‘we own a patent and we’re here to enforce our property rights.’ But don’t pretend to be something you’re not. It’s the worst thing you can do.”

Smith recalled a trial early in his career when an expert for his client unintentionally testified to something that simply wasn’t true. “He had just gotten mixed up on some facts, and admitted as much later, but by then he was a dead man walking. The other side told the jury repeatedly that ‘if he’ll lie to you about that, he’ll lie to you about anything,’ and the jury apparently agreed. They had seen him appear just as sincere and truthful about something he later admitted was false as he was about his opinions in the case, and you just can’t survive that.”

In another case, a company president was on the stand. The company had rented office space in Marshall that looked like a research facility on their website. The company even had furniture delivered in boxes and crates. But on cross the president admitted that, not only had the company never unpacked the furniture, he’d never even been in the office. “The look on the jurors’ faces was something

I’ll never forget,” Smith said. “The case settled during trial.”

In yet another case, a plaintiff that shared a local address with a number of other entities and had been trying to portray itself as a local company put up a company logo during jury selection that Smith had never seen before. On cross, the plaintiff’s president cheerfully confirmed the first time he’d seen the logo was two days earlier and that it was prepared for trial. Smith was only halfway through his cross, but he closed his notes, told the judge he had no more questions, and sat down.

“I’d always wanted to do that,” Michel C. Smith confessed, “and this looked like the best opportunity I’d ever get.”

Three days later the Marshall jury found for Smith’s client, the defendant.


In the third and final part of this series on East Texas patent litigation, I’ll cover essentials for victory. (Subscribe to Beem on Patents so you don’t miss any of our practical patent blog posts.)