Joseph Re is a litigation partner in the Orange County, Calif., office of Knobbe Martens Olson & Bear LLP. Since becoming a partner at Knobbe Martens in 1990, Re has been handling primarily patent cases, both at trial and on appeal. Upon graduating from law school, he served as a law clerk to the Honorable Howard T. Markey, Chief Judge of the United States Court of Appeals for the Federal Circuit.
A past president of the Federal Circuit Bar Association and board member of the AIPLA, Re currently serves on the Federal Circuit’s Advisory Council. For winning large patent cases, the National Law Journal named him one of the 100 Most Influential Lawyers in America.
Q: What is the most challenging lawsuit you have worked on and why?
A: Without a doubt, the most challenging lawsuit I ever handled was for a small privately held company, Masimo Corp, located right here in Orange County, Calif. In 1998, Masimo sued industry-giant Nellcor Puritan Bennet for infringing various patents on pulse oximeters. These are medical devices which measure the oxygen saturation of the blood.
Nellcor counterclaimed on seven patents, the case lasted eight years, and my client, with modest means, was fighting for survival to break into the Nellcor-dominated market for pulse oximeters. By the time the case was presented to the jury, we succeeded in having the case limited to five patents, and four of them were Masimo’s.
Because the patented technology concerned complicated signal processing, the first challenge at trial was to make the subject understandable and real for the jury. Because the stakes were high, the pressure was high, and the work was never-ending.
The work all became ever so satisfying when the jury, the district court and the Federal Circuit on appeal saw the case the way Masimo and I did – Nellcor infringed the Masimo patents, Masimo did not infringe any Nellcor patent, and the jury awarded Masimo $134 million. In 2006, the case officially settled for really big bucks; in 2007, Masimo had a hugely successful public offering; and today Masimo has at least half of the pulse oximetry market with its superior technology.
Q: Describe your trial preparation routine.
A: First, I try to fully understand my clients’ view of the case. Then I try to put together my opponent’s best view of the case. With the two stories assembled side-by-side, I conduct jury focus group (in the locale of the trial, of course) to determine which story seems more plausible, which facts are retained, and which facts are discussed most during deliberations to persuade fellow jurors. From this information, the themes for the case become apparent and I can begin preparing my opening statement and an outline of a potential closing argument. Hopefully, the focus group will also reveal helpful hints for jury selection.
I’m a firm believer in testing jury cases; I always learn something about a case and how it’s viewed by lay people. We lawyers are often hampered in presenting our cases because we spend too much time speaking about our cases with other lawyers, but those are the very people who are never on juries!
To keep the trial team loose, I always make sure we have a copy of “My Cousin Vinny.” I love that movie and I always use lines from it when I need a quick joke to tell the team. Then, on Friday night, when the team is staying at a hotel somewhere, I like having a movie night, and that movie is always shown at least once.
Q: Name a judge who keeps you on your toes and explain how.
A: Before my father passed away, I would have named him. He was a federal judge for 22 years in New York and he kept me on my toes since I was nine. But I know the question is asking for a judge who presently sits on the bench before whom I have appeared. Therefore, I name District Judge James V. Selna in the Central District of California.
I named him because I honestly believe he stays on top of his cases as well as any judge I have ever appeared before. Bring motions and he decides them, one after another, and in the order you filed them. He issues tentative rulings before every oral argument and thus knows the issues before argument starts. Thus, you better be ready to get very specific in your criticisms of any tentative ruling he issues. No fluff in his courtroom. And when trial starts, you better keep it moving!
Q: Name a litigator you fear going up against in court and explain why.
A: Give me a good case and I could care less who the opposing lawyer is. I fear bad facts, not great lawyers. Indeed, going up against a fine lawyer can be an absolute pleasure. They don’t squabble over the small stuff and they tend to treat people nicely. Recently, I did fear a lawyer, not because of his courtroom skills, but because I knew he had a close relationship with the district court in San Antonio, and in particular with Judge Royal Furgeson. The lawyer is Larry Macon.
I knew he was a very competitive guy because he is a prolific runner of marathons, often running two on a single weekend! My fear was compounded because he would constantly write emails directly to the court over every issue, even signing the emails “Larry.” (He did, of course, always copy my team and me, so it was not as if he was having ex parte communications with the court.)
But what shocked me is how the court would always promptly respond. But I later learned, that is just Judge Furgeson, one of the nicest judges I have ever met. Sometimes I wish I could send a quick email to a judge on one of my cases in the California federal courts. They’d lock you up before reading your emails, let alone responding to them. But, hey, when in Rome …
When Larry’s client was seeking a preliminary injunction for patent infringement against my client, my team and I feared that close relationship. We knew he and the judge were friends for so many years and I kept hearing from the judge how he and his wife were such close friends with Larry’s wife. I was thinking, “How is this going to be fair?” Well, we all quickly realized that we greatly underestimated Judge Furgeson.
He was as fair as the day is long. He put Larry through his paces, and regardless of how he ultimately decided the case, I wouldn’t ever question the objectivity and care of that San Antonio jurist. He was one of the most open-minded judges I have ever appeared before.
Q: Tell us about a mistake you made early in your career and what you learned from it.
A: An early mistake of mine stemmed from thinking I could do it all during trial and forgetting how to delegate and trust other people. I will never forget this mistake when I was first-chairing one of my first jury trials. The adrenaline was racing through my body. I had trouble sleeping because I was so excited, thinking this trial was so important to mankind.
As a result, I delivered the opening statement, started examining witnesses, and I was thinking everything was going so well. Unfortunately, by the fourth day, I realized I hadn’t slept for days and soon I was unable to think straight. I crashed in the middle of a cross-examination and realized just how badly I needed my fellow trial team members to present any trial, particularly a trial that may last a few weeks like this one.
So I learned the importance of taking care of my body during trial and trusting my outstanding trial team members. Without a well-rested body, the brain will let you down, no matter how much adrenaline is racing through your veins.
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