Q&A With Cooley's Jim Brogan (Law360)
Law360, New York (April 16, 2013, 1:55 PM ET) — Jim Brogan is a partner in Cooley LLP's Colorado and Palo Alto, Calif., offices. He chairs the firm's national intellectual property practice. Throughout his 22-year legal career, Brogan has served as trial counsel in complex patent litigations for a diverse collection of technology and life sciences companies such as Chimei Innolux, Qualcomm, Gevo, Hon Hai and Monolithic Power Systems. He is also an adjunct professor at the University of Denver, Sturm College of Law.
Q: What is the most challenging case you have worked on and what made it challenging?
A: O2 Micro v. Monolithic Power Systems. O2 Micro had asserted infringement claims against several parties in the LCD backlight controller space. It had tried two of those cases to jury verdict in Marshall, Texas, before Judge T. John Ward, and achieved substantial success in both instances. Specifically, in each case, the jury found the asserted patent claims to be literally infringed and not invalid. The juries also concluded in each case that the infringement was willful.
Due to the nature of the asserted claims and our client's accused products, our noninfringement arguments were limited and similar in many respects to arguments that has been raised with, and apparently rejected by, juries in the initial cases. Complicating things further, some of our client's own prior art had been used in at least one of the prior trials.
Third parties in the market gave us little to no chance of success given the prior results.
Thanks to a strategic error on the part of our opponent (adding the founder of our client as a named defendant in the action to, we suspect, make things personal), we achieved something that had been done in only the rarest of instances — we successfully moved Judge Ward, who presided over the court in Marshall, to transfer our case back to the Northern District of California, where based on proper venue, it belonged.
Following transfer, the Northern District court (Judge Claudia Wilken) expressed concern about the complicated nature of the claimed technology and accused products. The court inquired whether we would object to use of a court-appointed expert to help simplify issues for the court and jury. Recognizing this was a gamble, but betting that the independent expert would react well to our positions, we strongly urged the court to appoint its own independent expert. In the process, we rebutted claims from our adversary that appointing such an expert would interfere with its proper right to a jury trial. Though, the court-appointed expert did not agree with us on all issues, we prevailed before the jury.
The jury found no literal infringement, and that all asserted claims were not valid.
As part of the process, we developed a prior invention and on-sale bar defense that had not been asserted in the prior trials. Those defenses were critical to our success.
Q: What aspects of your practice area are in need of reform and why?
A: Document/discovery management. We have entered a period where clients are seeking lower and lower budgets for all phases of litigation. One phase that has been particularly problematic for clients over time has been discovery, and much of that expense can be attributed to document review. Put bluntly, it can be very expensive to review documents for relevance and privilege prior to production, and it can be equally expensive to review documents for relevance and completeness following production by an adversary.
With an ever-increasing need to be more efficient when managing discovery, firms are being challenged to rethink traditional procedures for handling document review in litigation. In many cases, necessary funds simply are not available for core litigation team members to perform document review (particularly, to place eyes on each and every document that will be produced in a litigation).
As a substitute for detailed review, firms are often forced to rely upon bulk production with electronic screening for privilege and relevance. Alternatively, firms have considered outsourcing the review process to firms employing contract attorneys. Both options offer certain advantages, and production tools certainly are improving, but the production process needs to be tailored to the needs of a specific litigation. Bottom line, it is now very important to work with clients to set expectations concerning the discovery management process, and to involve clients in the risk/benefit line-drawing that must be done when crafting a discovery plan for a given matter.
Q: What is an important issue or case relevant to your practice area and why?
A: LaserDynamics Inc. v. Quanta Computer Inc.This case will have a profound impact upon the damages that may be recovered for patent infringement. To take advantage of the entire market value rule, patentees now must show that the subject matter claimed is, itself, responsible for market demand for the accused product, as opposed to one contributor or a major contributor. This will make it much harder to obtain substantial recoveries under reasonable royalty analyses. It also means that parties will have to invest more heavily at the outset and over the course of a case in damages analysis.
Q: Outside your own firm, name an attorney in your field who has impressed you and explain why.
A: Henry Bunsow of Bunsow De Mory Smith & Allison LLP. He has a terrific presence before a jury. Watching him early on in my career, I learned that every time you stand up in a courtroom, you need to own it, and while doing so, to not take creditability hits.
Q: What is a mistake you made early in your career and what did you learn from it?
A: I thought, like many of our clients, that patent cases were really about the technology, and that, if you were right about the technology, you would prevail. While that matters, having a compelling story that a jury can understand is equally, if not more, important. Sadly, at the end of the day, most jurors cannot really explain why a claim is infringed or not infringed, valid or not valid, but by the end of trial they have a firm belief (well-founded or not) on the issues.
The opinions expressed are those of the author and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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