The “Black Box” Analysis: The Inventor Story

Jurors enjoy a good inventor story—they like to hear about the oddball who sketches his ideas on a restaurant menu or the scientists who fight their way to a unique solution. Told well, these stories put a human face on what can be cold technical cases. But inventor stories do more than just make the case relatable; jurors also see these stories as valuable sources of information about validity and infringement. A solid inventor story makes jurors more likely to see a patent as both valid and infringed; a weak or nonexistent inventor story can do the opposite. Simply put, the strength of the inventor story can tell you a lot about the strength of your overall case, regardless of the technology at issue.

Examining the inventor story and how well the inventors can tell it is, thus, a valuable part of doing what we call a “black box analysis.” Doing a black box analysis of your case means setting aside the patented technology (in effect, considering it a black box) and taking a hard look at some of the evidence that falls outside the technology (e.g., the public reputation of the parties, the conduct of the defendants, the timeline, the market’s reaction to the patented invention, and in this post, the inventor story).

Why examine your case in this way? Because much of the evidence jurors use to orient themselves in patent cases—information they scrutinize to decide whether a patent is valid or whether infringement occurred—actually falls outside the technology, outside the bounds of the patent. All too often, in evaluating the strength of a patent case, trial counsel and experts get wrapped up in a single issue: how well they can simplify and teach the technology to jurors. Certainly, this issue is important, but it’s not the whole picture. Ironically, getting an accurate read on the strength of your patent case sometimes requires setting aside the patent and looking at everything else.

Below, we list a few questions to help you evaluate the effectiveness of your inventor story, one of the most important pieces of “outside the patent” evidence.

Do the original inventors have a stake in the trial?

Even a small stake matters; jurors are often more willing to award damages if they believe the original inventors will benefit. Patent “trolls” become more appealing to jurors if the original inventor is involved.

Does the inventor have experience in the industry?

The story of an outside genius solving an intractable industry problem may make for good fiction, but jurors are often more realistic. They can quickly become suspicious, for example, of a non-engineer with no previous medical products experience suddenly claiming to have invented or improved a medical device. Jurors understand that most industries have become highly specialized and that it is difficult for an outsider to understand the problems an industry faces, much less make a valuable and innovative contribution.

Did someone (the inventors or investors) try to promote the patented invention?

Promoting or developing an invention can also help alleviate jurors’ concerns that a patent is just being used to hobble competitors without offering real benefit to consumers. An effort to promote the invention is a commonsense indicator to jurors that the inventor believed he or she had come up with something new to offer the market.

Did the alleged infringer develop its product independently?

If the alleged infringer can tell its own inventor story (and bring its own inventor witnesses), jurors are more likely to conclude there was no infringement. They become less concerned about “copying” and more likely to seize on slight differences in the technology as evidence of non-infringement.

How did the market react to the invention?

It is helpful to the patent holder at trial if the market has embraced his or her invention. However, it can also be helpful if the market has strongly resisted a new invention, particularly if the market resistance can be portrayed as the “old guard” opposing a legitimate new threat. Jurors can see strong market resistance as a sign that an invention is truly something new and unexpected.

How effective is my inventor as a witness?

A complete evaluation of witness effectiveness is beyond the scope of this post, but effective inventor witnesses need to clearly describe the industry problem they faced and the process they used to try to reach a solution. Interestingly, effective inventor witnesses don’t have to have a “eureka” moment; many jurors today understand that inventions come about by slower and more iterative processes.

In our next post, we will consider another important piece of “outside the patent” evidence: the case timeline. Be sure to subscribe to OnEDGE to make sure you are notified about these posts.