We have previously had a look at many aspects of arbitrating patent cases, beginning with the type of cases likely to be arbitrated, arbitration clauses, and the arbitration process up to the hearing. We then began looking at the hearing itself, beginning with sequestration issues that can arise, opening statements, and case organization. We will now continue on to presenting documents at the hearing. This may seem a little mundane, but it is not. It can have a significant effect on the efficiency and effectiveness of the hearing.
Patent arbitration tends to be document heavy, and the current technology available to present documents leads to many possibilities. Here are a few thoughts on that from one arbitrator’s point of view. Not all arbitrators will necessarily agree with me on all this, but this reflects what I have found over the years.
Presenting written documents
With the advent of Trial Director and other systems to present documents electronically, it can be tempting to default to that system for everything. I’m not sure it is worth the expense in many cases. I am sure that, if done improperly, use of these systems can be a detriment rather than a benefit.
But first let’s consider the benefits of trial presentation systems. These systems allow you to focus the witnesses’ and arbitrator’s attention to specific documents and passages in the way you choose. You can project the page of the document, blow up or highlight a particular passage of interest, and otherwise direct everyone’s attention to the particular part of the document you are working on. If done correctly, there is no need to fumble around through a book of exhibits and then call out page numbers and paragraphs so everyone can get to the right place. Nor is the witness or arbitrator as likely to get distracted by other document content you aren’t dealing with at the time. You may be able to avoid dragging pounds of paper copies around the country if everything is on your computer.
On the other hand, this way of presenting documents doesn’t take into consideration the way many people process and use information from documents in an arbitration. I, and most arbitrators I have worked with, tend to take notes on exhibits, and underline or highlight key parts of the documents. This is very useful when it comes to analyzing the case and writing an award. No one I know can memorize all the pertinent language in a document for later recall. Thus, for matters where the information in the document is critical, you will often see arbitrators reaching for their copy of the document if it is available or asking for a copy if it is not. Be aware that a transitory projection doesn’t usually get the job done. You need a way to put important evidence you want the arbitrator to rely on into the arbitrator’s hands.
Use of a document projection system can sometimes be annoying. Have you ever been at a hearing where a vendor was hired to do the document retrieval and the presentation went something like this?
Lawyer: [To vendor running system]. Put up bates number 14578. [Pause and wait for projection]. Oh, wait sorry, go to 14587.
Arbitrator: Can I have the Exhibit number please?
Lawyer: Just a minute. [Pause.] I’ll have to get that to you at the break. OK, please blow up paragraph 2 – or I mean 3. [Long pause.] Can you highlight the second sentence? Okay, blow it up, please. Oh, before we do that, can we go to bates number 14586 for a little context? [Pause]. Now, Ms. Witness, see that date? Ok. Now back to 14587. [Pause.] I’ve blown up paragraph 2 . . . See where it says . . .
Witness: Excuse me. It is hard for me to get the context of this without reviewing the whole document. May I see it instead of just the parts you are projecting?
You get the idea. The whole process of explaining how to project the right part of the document can get lengthy and tedious. And it may well appear unfair to the witness to pick out a sentence or two from a document he or she hasn’t seen in three years and start asking about it.
The answer, of course, is to have things better organized. But in some cases, it is just easier and less time consuming to have a notebook with the exhibit tabbed and refer to it. This goes more like:
Lawyer: Let me direct you to Exhibit 27. You will find it tabbed in the notebook you have in front of you. Is this an email you sent to Joe Dokes on March 12, 2013?
Witness: It appears so.
Lawyer: Please turn to page two, the second paragraph. Here you say, “I agree that we should be paying license fees on this product . . .” [Etc.]
If the arbitrator is going to turn to the tabbed exhibit to highlight it or make notes on the document anyway, it might be better to just get everyone to that document.
You may want to do a combination of the two, projecting the document to lead the witness through it, but giving the arbitrator a chance to pull it up in the exhibit book. But if you want to forego some expense, use tabbed exhibits in three-ringed notebooks − one for you, one for the witness and one for the arbitrator − and skip the presentation system for written documents. Or, if the technology is too challenging for you, but there is an advantage to having a particular document projected, just use a document camera to project it.
You can be sure of this: You won’t lose your arbitration because you didn’t project exhibits. But tabbed exhibits are almost always necessary and generally are effective enough in the context of your patent arbitration.
Two more thoughts on notebooks. First, giant notebooks with 5 inch spines are heavy and awkward, particularly if there is more than one of them everyone has to retrieve and you are moving between them. Use more, smaller notebooks, clearly labeled so it is easy to find the one that has the right exhibit in it.
Second, it may seem like a good idea to simply have a book for each witness with the exhibits you will use for that witness. This works well during testimony. But it can get confusing in a long arbitration. The arbitrator ends up with a jumble of notebooks, many with the same exhibits, so it is difficult to locate an exhibit and may be nearly impossible to locate the copy with the arbitrator’s notes. Exhibit books with exhibits tabbed in order are usually best. Make a list of exhibits organized by date, too, to allow easier retrieval and review.
For drawings, photos, or other highly visual documents critical to patent cases, projection will often be the way to go, so everyone can follow along. Thus, if you are trying to show where each element of a claim is in an accused product, or that an element is missing, a large visual you or the witness can point to is a must. But remember to have a smaller version available in permanent form so that arbitrator can easily locate and study it as part of the decision or award writing process.
Sometimes you are better off with a large chart or two so you can easily write on it, draw arrows, or the like. It depends on your case and what you are presenting with a given witness. But the arbitrator won’t be hauling charts around, so remember to provide a small version of it for later reference. A smaller version of the drawing and a document camera may be all you need.
You can spend a small fortune on computer animations and the like, but this is rarely necessary. Most patent arbitrators can visualize what is necessary from drawings or photos without the expense of animations that may or may not be completely accurate.
Of course, you can simply bring smaller devices to the hearing or take a field trip to observe large devices or systems in operation.
It has become more and more common for counsel to provide arbitrators with documents electronically, either on a USB drive or by emailing pdfs. Patent arbitrations tend to involve traveling to the hearing, so this is a good way to allow everyone having a computer or tablet to easily retrieve exhibits at the hearing and for review afterwards. One typically can’t take notes on the documents (absent some extra software and practice using it), but having them easily accessible anywhere is a real plus. Talk this over with the arbitrator early on to see whether he or she uses a computer or tablet and in what format to provide the documents.
Parties usually provide exhibits in books or electronically that they don’t end up using and that never make it into the record. You may be worried that the arbitrator will go off on his or her own quest and review unused exhibits and use them to come to conclusions. The arbitrators I know are very unlikely to do that. There is always plenty to consider without looking for more outside the record, and it is thought to be unfair to consider documents that are not part of the record. In fact, many arbitrators tell the parties that if an exhibit is in the record, but hasn’t been discussed with a witness, you shouldn’t expect them to consider it.
But if you are worried about having exhibits available to the arbitrator that aren’t in the record, the arbitrator will certainly let you remove them from the notebooks. You will have to keep track of what exhibits are in the record and agree with opposing counsel on that. If you provided pdfs of exhibits, you’ll have to ask the arbitrator to delete the old set and substitute a new set you’ll provide with only the exhibits of record.
Next up. Presenting testimony.