Rocky Mountain Intellectual Property & Technology Institute

Last year, Uniloc USA lost a multiyear battle against Microsoft to preserve a $388 million jury award against the software giant, and will now be retrying the patent infringement case on damages alone.  One thing Uniloc has in its corner for retrial is a compelling invention story:  a plucky Australian inventor working since the early 90′s to figure out how to prevent the ubiquitous practice of copying software to multiple machines, only to see his novel solution incorporated without compensation into Windows XP and Office programs, according to Uniloc.

Invention stories won’t always have legal relevance.  Microsoft’s software either infringes or it doesn’t, and the story might only legally bear on the less frequently argued element of wilfullness.  However, from the perspective of persuasiveness, the story matters in nearly all patent disputes, as arbitrators, judges, juries, and even examiners look to the story in order to determine what is original and novel about the invention.  This post takes a look at why you should tell an invention story, when you should tell it, and how you should put that story together.

First, a little more detail on Uniloc v. Microsoft.  It is a classic story of the pirate hunter becoming the pirate.  According to Uniloc, its inventor, Ric Richardson, was able to slay the dragon that had bedeviled every software manufacturer — the ability to copy the same software to multiple machines, a convenience that at one time had made pirates of a strikingly high proportion of PC users.  Using something called “device fingerprinting,” Richardson’s invention allowed software makers to register their product to only one machine, while also allowing software manufacturers to market the now common “try before you buy” versions of the software.  But according to Uniloc’s story, Microsoft chose not to build or buy its own system, but instead copied a version of Uniloc’s system.

Why Do You Tell Your Invention Story? 

Patent cases based on allegations of outright copying tend to be rare.  According to one study (Cotropia & Lemley, 2009), “a surprisingly small percentage of patent cases involve even allegations of copying, much less proof of copying.  Copying in patent law seems to be the exception, not the rule.”  The authors analysis of cases found only 1 in 10 patent cases include an allegation of copying, and most of those are pharmaceutical cases.  Despite the relative infrequency of copying claims, patent juries nonetheless tend to equate the issue to simple cheating, like stealing the answers from your neighbor at school.

This is why the patent invention story plays a critical role.  As Chuck Kauffman, a consultant at CapAnalysis Group, put it, jurors tend to have a “romantic” view of invention, drawing from the classic examples of Thomas Edison and Alexander Graham Bell.  In that mindset, an item proves its uniqueness, shows non-obviousness, and highlights the egregiousness of infringement through a compelling story.  Looking at the patent issues themselves, it is a definitional jumble until it gets down to the point of someone cheating or stealing something.  Relevant or not, that is the filter jurors tend to use.

When Do You Tell Your Invention Story?

Many litigators most naturally feel it is the time in front of the juries that is most suited for “story time,”  and that is obviously a good time to either have a story, or lose your listeners.  It is equally critical for you to provide other audiences, examiners, arbitrators, and judges, with a narrative sense as well.  For example, we recently surveyed a cross-section of federal judges and arbitrators, and found that in both pools, 76 percent responded that the attorneys they hear should be forming the evidence into cohesive stories more often.

Another commentator, Eric Guttag in IP Watchdog, has argued the patent application itself should include a strong invention narrative, particularly after the recent U.S. Supreme Court ruling in KSR International v. Teleflex finding the claimed invention has to result from an inspiration that is better than “common sense” in response to prior art.  Showing why it wasn’t common sense requires a story of an inventor overcoming obstacles in some unexpected ways.

How Do You Tell Your Invention Story?

As we’ve written previously, the common advice to “tell a story,” can fall short without the strategic question of how stories should be set up.  Every story will differ, but I feel that there are five common elements to the patent invention story.

Character. Fundamentally, your invention story should first be an inventor story.  We like to believe that there is something different about inventors.  That doesn’t mean your inventor needs to be the stereotypical wild-haired genius in the laboratory, but jurors and other fact-finders should be able to see your inventor as someone who is uncommonly intelligent and able to look at things differently.  For example, it definitely helps the story when fact-finders know Uniloc’s inventor, Ric Richardson, also invented the “shade saver” elastic cords used to keep sunglasses attached to the wearer’s neck, and used the funds from that idea to pursue a software technology concept he developed while working as a sound equipment programmer for bands like INXS and John Denver.  It is a personal story, which leads to the invention.

Obstacle.  At the heart of any story is a conflict or a problem to be solved.  After all, “Sisyphus” wouldn’t be much of a story without the rock.  In patent litigation, the obstacle overcome by the invention is especially important because it defeats the impression of obvious steps of incremental improvement.  In Uniloc’s narrative, the obstacle was the easy digital copying we remember from the computer’s earliest days.  Without solving that problem, manufacturers were doomed to capture only part of their potential sales, creating higher prices (for honest consumers) and less variety on the market.

Inspiration.  Every invention story needs its “Eureka!” moment.  Even when your invention is more accurately a product of a number of baby steps, juries and judges will still want to understand the one big leap that moved the idea from the realm of the obvious to the realm of the novel.  To Ric Richardson, that insight was gained while working as a sound engineer in the music business, and realizing that without the ability to try new software with unique equipment configurations before they bought it, even wealthy musicians were forced to become pirates just to see what worked.  Combined with his computer ability, that led to the idea.

Toil.  Thomas Edison said that “genius is 1 percent inspiration and 99 percent perspiration,” and that highlights an important element of patent narratives.  If all the invention took was one brilliant idea, and then it was immediately put into effect, it can seem obvious.  If, on the other hand, the inventor had to work long and hard to make this new idea a reality, then it will seem like more of an innovation, and inventor will appear more entitled to the fruits of his labor.  In Ric Richardson’s case, if his solution for Uniloc was more than a decade in the making, with starts, stops, and detours along the way, then Uniloc’s claim on the invention is that much stronger.

Reward.  Apart from the material reward to the inventor, jurors and judges will be most interested in the reward to consumers and to society as a whole.  An innovative idea is one that creates a clear benefit over its predecessors.  And again, it helps if the benefit differs from the steady, gradual pace of improvement that we expect as a background condition, and instead creates a clear break with past solutions.  In Uniloc’s narrative, software manufacturers were not able to effectively prevent copying to multiple machines, and not able to offer “try before you buy” software before their solution.  By getting past that barrier, the invention story goes, Uniloc offered manufacturers the ability to protect their products from theft, potentially reducing costs for honest consumers and allowing more niche software applications.

While we’re apt to think of this kind of story as one told by the patent holder bringing a claim of infringement, the same imperatives apply to the stories of prior art inventors, and to accused infringers.  In each of these cases, it is not just a definitional test of whether the invention contains the elements of the patent, but a narrative test of whether an idea seems like it is worth protecting or not.

This post is from the Persuasive Litigator blog, and was written by Dr. Ken Broda-Bahm. Reposted by permission. Two Ph.D. litigation consultants from Persuasive Litigator will be faculty members at the 2012 IP Institute:

Dr. Karen Lisko has more than 24 years of experience in hundreds of civil cases across the country.  She utilizes her training to strategize with clients on persuasive themes and arguments in arbitrations, bench and jury trials. She holds a doctorate in legal communication, a specialized degree held by only a few consultants in the nation, and is Past President of the American Society of Trial Consultants.  She recently published a book entitled Proven Jury Arguments & Evidence and is currently writing a book for the American Bar Association, entitled Patently Persuasive. Dr. Lisko is a nationally recognized speaker on topics related to jury persuasion and effective communication in and out of the courtroom.

Dr. Kevin Boully has been active in litigation consulting since 2001.  His doctorate in legal communication focuses on persuasion, small group influence, and jury decision making.  Dr. Boully has conducted and analyzed research and advised on a full range of plaintiff and defense cases.  Dr. Boully has been Associate Editor and advisor to the American Society of Trial Consultants’ jury research and courtroom communication publication, The Jury Expert.  Dr. Boully is also currently co-authoring (with Dr. Lisko) a book for the American Bar Association Section of Intellectual Property, entitled Patently Persuasive.

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