motions2018-09-20T14:54:50+00:00


5.  Pre-Trial Motions


Motions


A motion is a request for the court to issue an order. So any time that somebody wants the court to order something they “make a motion”. Many people who watch television have seen shows where a lawyer stands up in court and says “Your Honor I move to strike what the witness just said.”, or something like that. However, while verbal motions such as this made on the record during trial are usually acceptable, the general rule, especially before trial, is that motions must be made in writing to the court.


So, for example, if one party to a patent infringement lawsuit has refused to produce documents that were requested during discovery, then the requesting party can file a written motion with the court asking that the court order the documents to be produced. Other motions may be more serious. For example, a party may file a motion asking the court to dismiss the lawsuit against it. There are many, different types of motions that frequently arise during patent litigation.


A written motion to the court consists of a set of papers. These papers contain a request for an order, the evidence that the moving party is relying upon, and a detailed discussion of why the moving party is legally entitled to the order it asking for. These papers must be served on the other side, who is given an opportunity to prepare and file its own set of “opposition” papers. The opposition papers contain the evidence, and a discussion of the law, that the non-moving side is relying upon to argue that the request for an order should be denied. The moving party receives a copy of the opposition papers, and is given an opportunity to file a reply. The court will then consider the papers. There may be a hearing where the attorneys appear in court before the judge to argue their positions. The judge will then decide the issue and either grant or deny the motion.


Motions are often a large portion of the expense of a patent infringement lawsuit. They can consume a lot of attorney time to prepare and argue. It is not uncommon for significant motions that could make or break a case to cost many tens of thousands of dollars. It is also not uncommon in patent litigation for there to be several such motions filed by each side. Discovery motions, where one side tries to get the court to order the other side to produce information, are also a frequent occurrence and expense in patent litigation.


Final Pre-Trial Preparations


Good lawyers know that trial preparation often begins before a case is even filed, and continues throughout the entire case. However, the intensity of trial preparation increases dramatically during the period just before the trial is scheduled to begin.


The main event just before the trial begins is called the “final pre-trial conference”. This is a conference with the judge to discuss the particulars of the trial and how it is going to proceed. There are a number of different things that must often be finished by the time of the final pre-trial conference, such as proposed jury instructions, memorandums of fact and law, witness lists, exhibit lists, the lodging of deposition transcripts, proposed jury selection questions, etc. . . .


The litigation team frequently spends an enormous amount of time preparing the case for trial in the weeks leading up to the final pre-trial conference. The team must choose the documentary evidence it plans on using at trial. It must review the deposition transcripts from possibly many hours of deposition testimony to identify those portions which may be used at trial. Demonstrative exhibits that will be shown to the jury, such as models or computer animations, need to be prepared. Each witness who will testify at trial needs to be prepared so that they will know what to expect, and be familiar with the subject of their testimony. Motions “in limine” that ask the court to issue an order preventing the other side from introducing specific evidence that is believed to be harmful and inadmissible (e.g. the inventor had a conviction for drunk driving) are frequently prepared and filed by each side. Opening statements, witness direct examinations and cross-examinations, and closing arguments need to be prepared. This is just some of what must be done.


As should be apparent, the expenses start to increase dramatically in the period just before trial as both sides scramble to get ready. It is not unheard of to incur expenses well in excess of many tens of thousands of dollars (sometimes much more) per month in the period just before trial in a significant patent infringement lawsuit.


The Litigation Team


Intellectual property infringement lawsuits often require the involvement of quite a few people. For example, in a patent infringement case on the patent owner’s side will be the inventor(s), any employees of the patent owner who have information related to the lawsuit, the attorneys, litigation support staff, and expert witnesses and consultants. An accused infringer will have a similar team minus the inventors.


Assembling and deploying a litigation team in an intellectual property infringement lawsuit is often no easy task. It takes a lot of time, effort, and money. The people on the team will likely have a huge impact on the outcome of the case. The team “owner” who makes all of the big decisions is of course the patent owner, or accused competitor. The team “captain” is the lawyer in charge of taking the case to trial. In some cases, the captain may be the only lawyer working on the case. However, in most large and complex patent infringement lawsuits there will be at least several lawyers working on each side. This is because the large amount of legal work that must go into such cases cannot be done by just one lawyer. That legal work includes all of the work involved in performing the pre-filing investigation, drafting and responding to pleadings, conducting discovery, motion practice, preparing the case for trial, counselling the client, participating in settlement negotiations, conducting a trial etc . . . It is not unusual for large and complex patent cases to consume hundreds of legal hours per month, depending upon what phase the case is in.


In addition to the large amount of legal work done by the lawyers on an intellectual property infringement lawsuit, there is often a large amount of work needed from expert witnesses. The expert witnesses in an intellectual property infringement case may play a critical role, and must often spend large amounts of time studying the case and the evidence obtained through discovery in order to arrive at opinions on things such as infringement, validity, enforceability, and damages. Those opinions, and the bases for them, must then be set forth in written expert reports that are exchanged between the sides. Each side will then frequently have its experts provide reports rebutting the opinions of the other side’s experts. The experts must then prepare for and attend depositions and trial, where they will testify as to their opinions and defend them during cross-examination.


Collectively, the litigation team can spend thousands of hours over the course of a case that proceeds all the way through trial.

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5.  Pre-Trial Motions


Motions


A motion is a request for the court to issue an order. So any time that somebody wants the court to order something they “make a motion”. Many people who watch television have seen shows where a lawyer stands up in court and says “Your Honor I move to strike what the witness just said.”, or something like that. However, while verbal motions such as this made on the record during trial are usually acceptable, the general rule, especially before trial, is that motions must be made in writing to the court.


So, for example, if one party to a patent infringement lawsuit has refused to produce documents that were requested during discovery, then the requesting party can file a written motion with the court asking that the court order the documents to be produced. Other motions may be more serious. For example, a party may file a motion asking the court to dismiss the lawsuit against it. There are many, different types of motions that frequently arise during patent litigation.


A written motion to the court consists of a set of papers. These papers contain a request for an order, the evidence that the moving party is relying upon, and a detailed discussion of why the moving party is legally entitled to the order it asking for. These papers must be served on the other side, who is given an opportunity to prepare and file its own set of “opposition” papers. The opposition papers contain the evidence, and a discussion of the law, that the non-moving side is relying upon to argue that the request for an order should be denied. The moving party receives a copy of the opposition papers, and is given an opportunity to file a reply. The court will then consider the papers. There may be a hearing where the attorneys appear in court before the judge to argue their positions. The judge will then decide the issue and either grant or deny the motion.


Motions are often a large portion of the expense of a patent infringement lawsuit. They can consume a lot of attorney time to prepare and argue. It is not uncommon for significant motions that could make or break a case to cost many tens of thousands of dollars. It is also not uncommon in patent litigation for there to be several such motions filed by each side. Discovery motions, where one side tries to get the court to order the other side to produce information, are also a frequent occurrence and expense in patent litigation.


Final Pre-Trial Preparations


Good lawyers know that trial preparation often begins before a case is even filed, and continues throughout the entire case. However, the intensity of trial preparation increases dramatically during the period just before the trial is scheduled to begin.


The main event just before the trial begins is called the “final pre-trial conference”. This is a conference with the judge to discuss the particulars of the trial and how it is going to proceed. There are a number of different things that must often be finished by the time of the final pre-trial conference, such as proposed jury instructions, memorandums of fact and law, witness lists, exhibit lists, the lodging of deposition transcripts, proposed jury selection questions, etc. . . .


The litigation team frequently spends an enormous amount of time preparing the case for trial in the weeks leading up to the final pre-trial conference. The team must choose the documentary evidence it plans on using at trial. It must review the deposition transcripts from possibly many hours of deposition testimony to identify those portions which may be used at trial. Demonstrative exhibits that will be shown to the jury, such as models or computer animations, need to be prepared. Each witness who will testify at trial needs to be prepared so that they will know what to expect, and be familiar with the subject of their testimony. Motions “in limine” that ask the court to issue an order preventing the other side from introducing specific evidence that is believed to be harmful and inadmissible (e.g. the inventor had a conviction for drunk driving) are frequently prepared and filed by each side. Opening statements, witness direct examinations and cross-examinations, and closing arguments need to be prepared. This is just some of what must be done.


As should be apparent, the expenses start to increase dramatically in the period just before trial as both sides scramble to get ready. It is not unheard of to incur expenses well in excess of many tens of thousands of dollars (sometimes much more) per month in the period just before trial in a significant patent infringement lawsuit.


The Litigation Team


Intellectual property infringement lawsuits often require the involvement of quite a few people. For example, in a patent infringement case on the patent owner’s side will be the inventor(s), any employees of the patent owner who have information related to the lawsuit, the attorneys, litigation support staff, and expert witnesses and consultants. An accused infringer will have a similar team minus the inventors.


Assembling and deploying a litigation team in an intellectual property infringement lawsuit is often no easy task. It takes a lot of time, effort, and money. The people on the team will likely have a huge impact on the outcome of the case. The team “owner” who makes all of the big decisions is of course the patent owner, or accused competitor. The team “captain” is the lawyer in charge of taking the case to trial. In some cases, the captain may be the only lawyer working on the case. However, in most large and complex patent infringement lawsuits there will be at least several lawyers working on each side. This is because the large amount of legal work that must go into such cases cannot be done by just one lawyer. That legal work includes all of the work involved in performing the pre-filing investigation, drafting and responding to pleadings, conducting discovery, motion practice, preparing the case for trial, counselling the client, participating in settlement negotiations, conducting a trial etc . . . It is not unusual for large and complex patent cases to consume hundreds of legal hours per month, depending upon what phase the case is in.


In addition to the large amount of legal work done by the lawyers on an intellectual property infringement lawsuit, there is often a large amount of work needed from expert witnesses. The expert witnesses in an intellectual property infringement case may play a critical role, and must often spend large amounts of time studying the case and the evidence obtained through discovery in order to arrive at opinions on things such as infringement, validity, enforceability, and damages. Those opinions, and the bases for them, must then be set forth in written expert reports that are exchanged between the sides. Each side will then frequently have its experts provide reports rebutting the opinions of the other side’s experts. The experts must then prepare for and attend depositions and trial, where they will testify as to their opinions and defend them during cross-examination.


Collectively, the litigation team can spend thousands of hours over the course of a case that proceeds all the way through trial.

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