This past May, Intellectual Ventures told a Texas jurythat FedEx1 should pay nearly $100 million for infringing four patents that it alleged covered “the technology that FedEx uses to deliver . . . packages securely and safely on time.” The patents described various subject matter from barcodes, to inventory tracking, to handheld devices.2 FedEx denied infringement and alleged that the patents were invalid. After a five-day trial, the jury largely agreed with FedEx, finding no infringement and three of the four patents invalid.
The parties each came to the trial armed with their own stories and themes. Intellectual Ventures told the jury that “the FedEx Defendants used the technology in four United States patents, but they refuse to take responsibility for that infringement, and they refuse to pay their fair share for the use of that technology.” It introduced inventors from two of the asserted patents, whom they said “can’t compete with FedEx.” Mr. Barbosa is the inventor of the asserted ’581 patent, which describes managing field workers using handheld devices. Mr. Barbosa owns a Dallas-based plumbing and air conditioning business, and he testified that he came up with this idea to manage his younger, less experienced service technicians when they were out on service calls. He applied for a patent, but he did not have the time or money to commercialize his idea because he was too busy with his own business. So, he sold his patent rights to Intellectual Ventures. At closing argument, Intellectual Ventures argued that “FedEx . . . didn’t think of Mr. Barbosa’s patent before he did.” Intellectual Ventures reminded the jury that they were there because FedEx “refuses to take responsibility” for its infringement. Also, Intellectual Ventures asked the jury to “make FedEx finally take responsibility . . . [to] send a message to FedEx that doing this is not right. That they have to follow the rules. That’s your job as jurors.”
FedEx countered with its own history of homegrown innovation. FedEx told the jurors about the “American success story” that is FedEx. In the 1970s, Fred Smith, a former Marine having just returned from Vietnam, gave birth to the idea of overnight package delivery. Many doubted Mr. Smith’s idea, including his college professor for whom he had written a paper describing his vision. “Ladies and gentlemen,” FedEx told the jury, “imagine where we would be today if Mr. Smith had taken that as the final answer. Thankfully he did not.” Instead, he founded FedEx Corporation. FedEx explained that from those humble beginnings, FedEx has become the pioneer in overnight and on-time delivery. To do so, it relied on “homegrown technology” by “continuing to innovate in each of the spaces it operates in.” In fact, FedEx explained, “FedEx has 40 years of success, persistence, and innovation, well before any of the earl[iest] dates shown on the IV patents.”
It is difficult to predict precisely what impact a party’s history has on the ultimate outcome of any jury trial. We, however, know that stories help people learn and retain information. Rudyard Kipling famously wrote that “[i]f history were taught in the form of stories, it would never be forgotten.” The point being, if you want the jurors to remember your evidence, wrap it up in a story. The remainder of this article includes some best practices learned from this case and describes how FedEx wove its theme into each aspect of trial and tied it to the evidence.
Tell Your Story Early and Often
In Texas, like many other jurisdictions, there are two openings—a short statement during voir dire and the opening statement. This gives counsel two opportunities to tell the jurors their story and tell them how that story will be supported by the evidence they will hear at trial.
FedEx previewed its story and theme to the venire during voir dire. FedEx introduced the “amazing and fantastic American success story” of Fred Smith and FedEx. It explained that “from those beginnings back in the ’70s, FedEx has grown into a worldwide package and delivery service.” Also because of its homegrown innovation, FedEx promised that it would prove that it did not infringe the asserted patents: “We do it a different way. We do it the FedEx way, not the Intellectual Ventures way . . . . We do it our way, and I think the evidence will prove that to you.” FedEx also told the venire that it would show that the patents were invalid, in some instances in view of FedEx’s own prior art.
FedEx carried this story through to its opening statement, reminding the jury of FedEx’s “proud story of homegrown technology beginning back in 1971 . . . [to] the company that  stands at the forefront of overnight delivery of packages and freight . . . .” FedEx responded to Intellectual Ventures’ infringement claims by remarking that you would think “FedEx never shipped a package until sometime after 2000 by the way they describe the technologies that they’re now claiming FedEx uses . . . to do what it’s been doing for the last 40 years.” FedEx walked the jurors through a 40-year graphical timeline discussing FedEx’s advancements, much of which would serve as prior art during the trial. It discussed patents that had been awarded for those advancements, including a patent to a FedEx employee named Tracy Bailey. Mr. Bailey’s patent showed handheld devices developed and used by FedEx in the 1980s–1990s and would be a cornerstone of FedEx’s prior art defense against Mr. Barbosa’s ’581 patent. FedEx concluded by promising that it would walk the jurors through the evidence to show that FedEx does not infringe and that the patents are invalid.
Before the case started, the jurors had heard twice about the FedEx innovative spirit. Also, it heard that FedEx had been developing its technology since long before the Intellectual Ventures patents. Also, FedEx promised the jurors that it would provide evidence that the patents were not infringed and invalid.
Support Your Story with Evidence
A great story is meaningless if you don’t provide the jury with evidence to back it up. Thus, not only must the story be memorable and compelling, it must be supported by the evidence. Moreover, having likeable and credible witnesses walk the jurors through that evidence goes a long way toward making your case. FedEx used documents and witnesses to reiterate its theme of homegrown innovation from the opening statements and explain why this translated to a finding of noninfringement and invalidity.
Sticking with the example of Mr. Barbosa’s ’581 patent, Intellectual Ventures argued infringement based on the handheld devices that FedEx couriers carry with them on their routes. Almost all of us have seen these devices when signing for a package from FedEx. One of them, the FedEx Express PowerPad, is shown below on the left. FedEx, however, had been developing predecessors to the PowerPad device since the 1980s, beginning with a device called the SuperTracker. It continued developing other devices over the years, introducing another device called the DADS Handheld, shown below on the right, in the 1990s.
Mr. Bailey, who has lived in Memphis his whole life, has been married for 29 years, and has worked for FedEx for over 30 years, walked the jurors through the evidence describing these prior art handheld devices. He explained that he had helped design them, including the SuperTracker and the DADS Handheld. He explained to the jury that the FedEx patent he was awarded (the one discussed in the opening statement) described many of these handheld devices. The patent itself reiterated FedEx’s theme of homegrown innovation, explaining the need to “continually innovate” to meet the growing needs and expectations of customers. Mr. Bailey also walked the jury through a user manual for the DADS Handheld that described its functionality. Relying on the evidence and factual testimony, FedEx’s technical expert later mapped these functionalities to the claims.
FedEx then introduced another long-time FedEx employee, Mr. David Smith, to explain why the present day system does not infringe IV’s patents. Much of the infringement dispute centered around how the accused devices interact with other systems, and Mr. Smith was the most credible witness about how these systems worked because he designed and maintained them. In laying the evidentiary groundwork to demonstrate noninfringement, Mr. Smith also reiterated FedEx’s theme, stressing FedEx’s mission of being “completely, absolutely, positively delivery overnight” and explaining that FedEx designed the systems at issue. Relying on the evidence and factual testimony, FedEx’s technical expert then testified that the current systems, which because of technological developments at FedEx were much different than the FedEx prior art systems, did not infringe the patent.
Mr. Bailey and Mr. Smith shared common traits. They were both likeable and personable, and they shared personal details about themselves at the beginning of their testimony. Most importantly, as FedEx employees and fact witnesses, they were both the true “experts” in terms of the systems about which they were testifying. Finally, they both introduced the evidence necessary to prove the case, but also reiterated FedEx’s themes and carried them through trial.
Close the Deal
The summation is a chance to remind the jurors that you kept your promises about what you were going to show them. It is also your last chance to reiterate your theme before they deliberate.
During its closing argument, FedEx stated that “summations are really about promises made and promises kept. And we’re going to talk about how FedEx has kept its promises to you and how IV has not.” It reminded the jurors of “Mr. Tracy Bailey who took the stand and talked to you about his development of this technology, in-house, homegrown at FedEx.” FedEx also reminded the jurors of Mr. Bailey’s prior art patent, which describes “the devices Mr. Bailey actually built at FedEx.” Also, FedEx walked the juror’s through Mr. Smith’s testimony that supported its noninfringement positions. FedEx concluded with its theme—it did it the FedEx way, not the Intellectual Ventures way: “A lot of the [technology] didn’t exist, and so we made it ourselves. We have never taken anything from anyone. We never needed anything, and we still don’t need anything from the IV patents.”
In each case, it is important to have a compelling story that captures the jurors’ attention and makes them want to side with your client. That story, however, must be supported by equally compelling evidence that supports the jury’s verdict. Finally, reiterating your story at every opportunity helps to engrain your story and your theme in the jurors’ minds.