|Oregon State Bar Bulletin — FEBRUARY/MARCH 2009|
So You Thought Patent-Law Trials Would be Boring?
By Janine Robben
When Portland lawyer Brenna Legaard agreed to serve as the plaintiffs’ local counsel on a patent-infringement case, she may have anticipated some difficulty explaining their highly technical claim to a lay jury. She may even have anticipated some difficulty with the defendant’s out-of-state lead litigator, given the conversations the judge had had with him in the first trial of the case, which ended in a hung jury.
But she scarcely could have anticipated that the second trial would result in revocation — for repeated misconduct — of Chicago-area attorney Rodger Young’s pro hac vice authorization to appear in an Oregon case.
"He was a very aggressive trial lawyer," Legaard says diplomatically. "I don’t think he appreciated the nuances of being a trial lawyer in Oregon."
One of the jurors was less diplomatic, breaking into laughter at merely being asked, by the Bulletin, "What did you think of the lawyers?"
"(The defense team’s) lead counsel put a (three- by four-foot, easel-mounted exhibit) board right in front of us, blocking our view," said the juror, who asked not to be named for publication. "We thought it was deliberate."
The case, Smith & Nephew et al vs. Arthrex, which was tried in U.S. District Court in Portland, involved a Wilsonville inventor-physician and his licensee-manufacturer who had sued another company for infringing on the physician’s patent for a surgical device. The jury awarded the plaintiffs $14.7 million in royalty and lost-profit damages. The judge, Michael Mosman, added a permanent injunction, along with approximately $5.5 million in supplemental damages and prejudgment interest.
"We’re disappointed in the jury’s verdict and look forward to the appeal," Young told the Bulletin, adding that he had tried cases nationwide for over 40 years and never "had had a problem with a judge."
Mosman and Young’s local counsel did not respond to requests for comment.
It’s Your Turn: Play Nice!
Pro hac vice (literally, "for this turn") admission is what allows a lawyer licensed in another state to handle a case in Oregon and vice versa.
Application for such admission to U.S. District Court in Oregon requires the attorney to be an active member in good standing of a federal or state bar; associate with an Oregon attorney "who will meaningfully participate in the preparation and trial of the case;" file an application in every case in which he seeks to be admitted and obtain an order granting special admission from the assigned judge. Local Rule 83.3.
Pro hac vice admission in Oregon state courts requires the attorney to obtain a temporary "license" from the Oregon State Bar (which requires his association with local counsel who "must participate meaningfully" in the matter involved) and present his temporary license to the court in which he seeks to appear. ORS 9.241 and UTCR 3.170.
"The (state) court then makes its own determination about whether the lawyer has met the criteria and whether he or she should be admitted," Portland lawyer Mark Fucile wrote in "Welcome to Oregon: A Roadmap to Pro Hac Vice Admission," which appeared in Multnomah Lawyer in April 2007.
"Although many such motions are granted routinely," Fucile said, "courts can and do hold hearings on the adequacy of the application — especially when the OSB has highlighted apparent deficiencies, such as the lack of malpractice insurance. Other parties to the proceeding must be served with the motion and have standing to object. The court can also revoke a pro hac vice admission previously granted if the lawyer’s status changes (for example, the lawyer loses the required malpractice insurance coverage), the court discovers that the information originally submitted was not correct or as a sanction for improper conduct."
Multnomah County Circuit Court Judge Pro Tem Steven Todd says that when he clerked for a federal court judge in the 1980s, he "noticed a big difference in the professionalism — i.e., trustworthiness — of out-of-state lawyers, particularly those from the East Coast."
"I think the main reason was that they often do things differently in other jurisdictions, and the rules of engagement were looser for them," says Todd. "The other factor, which I think is harder to evaluate, is this: why behave yourself if you know you will probably never appear before the same judge, or even deal with opposing counsel, again? I got the impression that most out-of-state lawyers felt they could just swoop in and get what they wanted without fear of future repercussions: a legal ‘commando raid.’ The best out-of-state lawyers were the ones who could adapt to the local culture and never forgot they were guests. I suppose they were also the ones who were the most professional on their home turf."
Multnomah County Circuit Court Judge Janice Wilson says that when out-of-state lawyers are admitted pro hac vice in her court, she gives them "…a little speech that goes something like this: ‘While the Oregon Supreme Court and the Oregon State Bar deal with the criteria and process for pro hac vice admission, in my court there are three additional requirements: 1) you must be able to pronounce the name of this state; 2) you must be able to pronounce the name of that river (I point to the east); and 3) you must take seriously the requirement that local counsel meaningfully participate in this litigation. We are very proud of the professionalism and collegiality of our bar and Mr./Ms. [local counsel] can help you to understand our culture and the unwritten rules that make practicing law here a pleasure.’"
Wilson says that "People usually laugh at the first two requirements, as I intend, but they also get the point of my message. On a few (rare) occasions later in the litigation, I have had to give a little ‘That’s not the way we practice law here’ talk and a reminder to consult with local counsel."
Like Watching a Train Wreck...
Although Wilson says that she rarely has to expand on her introductory cautions to pro hac vice counsel, Mosman’s revocation of Young’s admission was not the first time such a sanction was imposed on an out-of-state lawyer in Oregon.
Last year, the Oregon Court of Appeals1 affirmed a Multnomah County Circuit Court judge’s revocation of a California attorney’s pro hac vice admission for what the judge called "…a serial display of refusing to comply with unambiguously clear orders."
In Legaard’s patent-infringement case, the juror who spoke with the Bulletin noted that "None of us had any knowledge of these kinds of (surgical) devices. Both teams really relied on experts, (but) there was some inconsistency in the defense team’s. They told us later that some (of their) exhibits were composite exhibits. That didn’t sit well with us: we’d been looking at them (the exhibits) for a week. (Young’s behavior) wasn’t an aspect of our deliberations, but…he didn’t sit well with some of us, either. It didn’t seem like he respected us as a jury. A seasoned attorney should have been able to grasp that we weren’t buying it and been able to tweak it."
In fact, Young is a seasoned attorney: according to his firm’s website, "It is common for clients and law firms around the country to retain Mr. Young as trial counsel in large and high-profile commercial cases. …Mr. Young has won 42 of 46 jury trials in federal and state courts. One of these losses was reversed and another was a $30,000 verdict where Mr. Young’s opponent had demanded $300,000. He also has a distinguished record of public service."
But that didn’t keep Mosman from revoking Young’s pro hac vice status at the end of the seven-day trial.
The evolution of Young’s problems with the court can be traced from the trial transcript:
From conference prior to the first trial, May 21, 2007: Mosman: "You’re good lawyers and the briefing in this case has been impressive. I have no reason to suspect that you’ll abuse the privilege of being out-of-state lawyers (the other members of Legaard’s trial team were from Boston), possibly never to see me again, so not caring much what I think of you."
From first trial, June 6, 2007 (Mosman asks Young if he wants to explain having asked a witness a question about a subject that had been excluded as a result of a pre-trial ruling):
Young: "…I take my ethical obligations very seriously. … And this was just a slip. …I find myself in the odd position of saying, ‘I don’t think anybody could be that stupid, and I hope I’m not…’"
Mosman (referring to a CEO who said that — when federal investigators had to decide whether he had been venal or stupid — "…he prayed every day that they decided he was stupid"): "the problem with you, Mr. Young, is it’s very difficult to believe that someone as smart as you could ask this question by mistake."
From second trial, June 9, 2008: Mosman: "…I’ve seen repeated instances of unprofessional conduct requiring my intervention, specifically from you, Mr. Young. It starts in the first trial with the blatant misuse of (a) model. Eventually I had to take that model from you, despite repeated instructions not to make misuse of it. It has in this trial involved the rather constant low-level…bush-league gamesmanship, playing around with witness lists and that sort of things, things like taking pieces of paper on which you hadn’t written anything, crumpling them in the microphone while your opponent is speaking and throwing them in the trash. It’s involved the deliberate misuse of large demonstrative exhibits. On at least one occasion when it was blocking your opponent’s view and she asked you to remove it, you said you still needed it. You never came back to use it again. When I asked you about that, you gave a patently phony explanation, so lacking in credibility that several jurors laughed at you. It has involved unprofessional cross-examination. … You interrupted a witness…and told her you weren’t trying to be rude, and the entire jury broke into laughter. And at the end of the day Friday, it involved the squeaky toy — really just beyond the pale — where…you took out one of the large models of an anchor, and…you played with it to make a squeaking sound repeatedly. …I had to ask you in front of the jury to put it away. At that point I noticed that a juror had a question, and her question was whether I would please get you to quit making that squeaky sound."
At that point, Mosman directed that Young could not be in the room for direct examination of his co-counsel’s witnesses or for cross-examination of his own witnesses.
From second trial, June 10, 2008: Mosman to Young’s co-counsel: "Yesterday Mr. Young asked (a witness) a question… that was clearly designed to elicit an answer in violation of a motion in limine. …I want you to communicate to him that I will disqualify him midstream, in the middle of closing, if he steps out of line, and you should be prepared to finish closing if necessary."
From second trial, June 11, 2008, while the jury was deliberating:
Mosman to Young’s co-counsel: "Mr. Young showed something on the screen… the whole question and answer put on the screen…was ruled as hearsay, stricken from trial, but placed on the screen at an important point in closing argument, and one that, if you’re reading a trial transcript, the very next line…is a hearsay objection that’s sustained."
Young’s co-counsel: "I…would never and did not knowingly put on testimony that had been objected to."
Mosman: "…you didn’t use that answer, Mr. Young did. … I’m left with a mere formality, but I’ll do it anyway. I hereby revoke Mr. Young’s pro hac vice status with the Court. He’s no longer welcome in my court for any further proceedings in this case…"
1. Tahvili et al vs. Washington Mutual Bank et al, Nov. 26, 2008.
ABOUT THE AUTHOR
Janine Robben has been a member of the Oregon State Bar since 1980. She is a frequent contributor to the Bulletin.
© 2009 Janine Robben