The most important things to begin winning is a high tech patent infringement case are the following: a well written patent; a well selected defendant; and litigation counsel that understands well the technology involved, probably did well in a reputable law school, has a reasonable amount of experience in litigation of patent matters, can analyze the situation correctly (that means they know the law well so as to be able to recognize all the issues and all the defenses) and write a cogent, well drafted argumentative brief. Finally, it takes a lot of money and a toughness to hang in as long as it takes to bring the other side to their knees. Lets examine these things one at a time.

It is crucial that a well written patent is obtained. A well written patent has the following characteristics:

• It does a thorough job of explaining the problem the invention overcomes;
  
  
• It gives a thorough disclosure of all the hardware, structure and software needed to solve the problem;
  
  
• It recognizes and describes the defining characteristics of the genus in which the species of the invention resides (this requirement is crucial for broad enablement and broad claim coverage);
  
  
• It recognizes where the "rubber meets the road" and identifies the key functional aspects in the structure or software that give the invention the key attribute and identifies as many as possible alternative structures or methods to achieve this same advantage;
  
  
• It has well drafted claims which cover the entire genus, all disclosed alternative embodiments and the preferred embodiment in broad terms; and
  
  
• It has as many different claims types as are warranted (e.g., apparatus claims that define the invention purely by what its structure is and apparatus claims that define the invention by what it does, rather than what it is, apparatus claims stated in means plus function format, method claims, product by process claims, etc.)

Of course, the first thing needed to get a good patent is a creative patent attorney well schooled in the technology involved, did well in law school, has many years of experience, has litigation experience, and understands all of the above defined characteristics of a good patent. This type of attorney is rare. Corporate lawyers lack the necessary litigation experience and generally make errors. The second thing the client needs is from about $5,000 to $25,000 or more (1998 dollars) depending upon the complexity, with an average cost of $8,000 to $12,000 or more (1998 dollars) for an average high tech patent. Large firms are not always the best place to find such an attorney. A large firm sometimes will present some experienced partner to interface with the client, and give the job to an inexperienced associate fresh out of law school.

There is no substitute for many years of combined experience of litigation, licensing and prosecution in patent law. The increase in expense to get a patent by using an experienced patent attorney will be paid back many times over. How? First, in the value that a good patent adds to company valuation and second, the money that is saved in litigation expenses, by not having to defend merit-less defenses raised on account of the patent being weak, narrow, indefinite or otherwise poorly written. Patents that are well written by an experienced patent attorney are stronger and have the best success rate in the courtroom.

What about a well selected defendant? It is important that a thorough pre-filing investigation be done to make sure that each element of the claims is present in the accused device either literally or by some functional equivalent. Many lawsuits are launched inprovidently with an inadequate pre-filing investigation or worse, no investigation at all. A good investigation of all the issues of the "patent's filing history", and the client's documents takes time and money. Then, from $1,000,000 to $15,000,000 is spent on the litigation (more on that later), only to lose on non-infringement grounds. This happens all to frequently. In fact, about 70% of patent infringement lawsuits have statistically resulted in verdicts of non-infringement. This fact stems from several things:

• Patent litigation counsel that tries to stretch the claims too far to cover accused devices that do not really have every element present;
  
  
• Bad claims that are written too narrowly;
  
  
• A poorly selected defendant as a result of an inadequate pre-filing investigation;
  
  
• A poorly presented case; and / or
  
  
• A Federal Circuit that is beginning to recognize the social costs of patenting the prior art; and which has created a body of patent law that is very narrow on the doctrine of equivalents but very lenient on the validity requirements resulting in many verdicts of valid but not infringed.

How should litigation (trial) counsel be picked? First, consider the reputation of the firm. Second, find a firm that has a technical degree in the area of the technology and preferably one that has work experience in the area as well. Next, make sure he or she went to a first tier law school and did well. Night school lawyers and lawyers from second tier schools are generally not a good bet when this kind of money is going to be spent. Read the opinions from other cases the client's candidate lawyer has appeared in, if there are any, or ask to read his briefs from previous cases. If he does not have any, or the client's get them and they do not present a clear, cogent picture of the case, do not hire him or her. These cases are usually won on the briefs, so a poor writer is a poor choice. If any arguments in the briefs simply do not ring true, do not hire the lawyer. A litigator's most precious asset is credibility. As soon as a position or an argument is presented which is not well founded in the law or worse, contradicted by indisputable facts, credibility hits the slippery slope and the case lost. The winning argument is well founded in fact and laws, and will not contradict anybody's sense of the probable.

What about cost? Patent litigation is extremely expensive, and there is no denying it. However, certain things can be done to keep costs down. First, and foremost, we recommend not hireing a big general firm with something that they claim is a patent department to do patent litigation, this will cost substantially more it really should. A general firm may assign a general business litigator, which has a political science or geology major, to lead counsel. General firm will not have the understanding of the technologies involved, like a pure patent firm. Pure patent litigators have been reading patent cases throughout their entire careers, not so with a general litigator. The lead counsel appointed by a general firm will often staff the case with to many associates (big partners get paid partially on the basis of how many overpaid associates they keep busy) who also do not understand the technologies involved and know very little if anything about the patent law. In rare cases, there may be one patent attorney on the team, but it is highly unlikely that they will respect his input. Hundreds of hours will be spent struggling to understand the documents and defenses missed because of unappreciated subtleties in the description requirement, the enablement requirement, the best mode requirement, the definiteness requirement and the many other statutory and judge made law defenses. Expert witnesses will be hired that do understand the technologies involved (assuming they hire the expert properly which can also be a problem). Experts often will charge as much as many of the lawyers on the team. These experts will spend a great deal of time teaching the necessary technologies to the lawyers on the team, and after all of that time is spent, the lawyers still will not understand it thoroughly enough to do an effective job in representing the clients interests. Often, a large general firm will almost bankrupted the client and still lost. Often, hiring a large general firm to handle patent law issues is not the way to go.

In short, the best way to save money on patent litigation is by hiring a intellectual property law firm whose specialty is patent law, unlike the big general firms. Second, do not file unnecessary motions. Each motion costs a lot of money, and many are wasted time and effort. The motion costs are a big part of every patent litigation budget. Third, take an active role in reviewing what is being done, why it is being done, and who is involved. Most cases need only one experienced attorney, one or two less experienced attorneys, and some paralegal time. Forth, pay the attorney's invoices on time, so as to keep moral high. Patent litigation has many out of pocket costs to the law firm, typically between 25% - 30% of the total invoice. Finally, if money is really tight, adopt a "rifle shot" strategy instead of the normal "shotgun blast" approach. We recommend picking only two or three theories that work the best and pursue only those. Courts hate "shotgun blast" defenses. Drop any theory that offers a small chance at success. For example, if a defendant is accused of infringement, consider only defending on the grounds of non-infringement, and forget taking discovery or presenting evidence on validity or unenforceability or patent misuse.

High tech cases demand lawyers that understand and speak the language of specialized, highly skilled people that populate high tech companies. Doctors and engineers often do not understand the law and invariably are blind to the broader significance of their contributions and/or alternative ways of solving the same problem or achieving the same advantage. Experience has shown that very few engineers can write a clear, concise document that explains what is actually going on to an audience that knows nothing about the technologies involved. Engineers often assume that their audience understand more than they actually do, and start the story somewhere in the middle as opposed to right at it beginning. Reading a document like this is very similar to walking into a murder mystery movie without seeing the crime committed at the beginning. In order to understand what is going on in the movie, the plot must be pieced together from circumstantial evidence gathered throughout the remainder of the story.

The ability to communicate complex facts, difficult technology and a moderately confusing body of patent law to a jury or the judge clearly, so that what is going on is understand, is the paramount attribute to look for in a patent law firm. When talking to a firm about a case, what is being said should be easy to understand, and if it is not, find another firm. Good high tech intellectual property law firms understand technology and patent law very well and should be able communicate thoughts and ideas on any level, be it Ph.D., or layman.

It is often preferable to use a firm who has some experience in the specialized area of technology involved. This means a firm that has thought about the issues and probably appreciate things like how the degree of integration reduces the cost, how extremely complex systems do not work, how large die sizes reduce yield, how de-coupling of different software processes can result in protection of software investments in the ever changing network environment etc. There are many issues like this in every area of technology. Engineering tradeoffs: it is important to find a firm who understands tradeoffs, alternative ways of doing things, and where the "rubber meets the road" in an invention, i.e., what elements of an invention combine to give an advantage over the competition or over prior art.