ILNews

Call IP attorney Donald Knebel the ‘master of the facts’

Back to TopCommentsE-mailPrintBookmark and Share
Indiana Lawyer Focus

Ironically, the eight years that veteran attorney Donald Knebel spent avoiding intellectual property law gave him the experience he needed when he finally turned his attention to patent litigation.

Knebel started practicing law in the mid-1970s, just about the time that infringement disputes were beginning to shift from bench trials to jury trials. Most patent lawyers were engineers who preferred to present their cases to a judge because the jury process came with too many uncertainties.

However, Knebel was the opposite. He joined Barnes Hickam Pantzer & Boyd right out of Harvard Law School and told his new employers he had no interest in patent law. His studies at Purdue University and short career as an electrical engineer left him with the impression that the profession was technical and routine.
 

knebel-001-1col.jpg Colleagues say Donald Knebel, of counsel at Barnes & Thornburg, always seems to genuinely enjoy his work. (IL Photo/ Marilyn Odendahl)

Knebel practiced first in antitrust litigation where he encountered juries. When a 1982 merger converted the firm to Barnes & Thornburg LLP, the Star City native switched to doing intellectual property and antitrust work.

He brought his skills as a litigator to patent law and crafted his practice around explaining in everyday terms the item at the center of the litigation, whether it was the intricate workings of a technical device or a theory that the average high-school educated person sitting on a jury would likely not comprehend. Knebel, who devoted time to studying juries and the techniques of other lawyers, used simple themes in his trials, made sure he had heroes and villains, and incorporated colors and sounds as well as exhibits to sway the laypeople in the jury box.

“He’s the master of the facts in any case that he tries,” said Mark Janis, director of the Center for Intellectual Property Research at Indiana University Maurer School of Law and Knebel’s former Barnes & Thornburg colleague.

Retiring at the end of 2013, Knebel built a 30-plus year career in patent litigation that included handling cases in 23 states and conducting trials to verdict in 10 states. His work earned him the honor of being named Best Lawyers in America’s Indianapolis Intellectual Property Litigation Lawyer of the Year for three straight years starting in 2011.

He has litigated cases involving fuel caps on automobiles, glucose monitors, newspapers, pharmaceuticals, pesticides and sand and gravel mining. For a dispute over recombinant DNA, he started by reading about DNA in a book from the “for Dummies” series and eventually was able to depose Harvard- and Stanford-educated researchers using their own medical terminology.

Yellow and blue make green

“The (cases) I remember are the ones where I thought that a win was unlikely,” Knebel said. “For me, the most fun cases were those where people, going in, thought you shouldn’t win the case and then we did win the case.”

One such case was tried in 1992 in Alexandria, Va. The patent infringement suit involved admittance responsive networks and the complex mathematical concept of imaginary numbers. It was filed without warning in a District Court nicknamed the “rocket docket” because of how quickly the judicial process moved there.

Janis was a young attorney with an office down the hall from Knebel. Typically patent litigation cases are settled before trial, but for a short period the Barnes & Thornburg team had a string of IP disputes that went to a jury and Janis often got pulled in to help.

“It was just a blast,” the IU Maurer professor remembered.

Knebel was the lead defense attorney on the Alexandria case. Most patent cases take years, but here the team had to scramble to get prepared for trial in only eight months. The biggest hurdle was finding a way to explain to a jury the abstract notion of imaginary numbers, a concept that electrical engineers can have difficulty grasping.

Knebel took the first step over the hurdle by giving the defense’s expert witness from Purdue University, Leroy Silva, one simple instruction.


knebel-dscn0059-15col.jpg Donald Knebel shares many stories from his 39-year career with his students at Indiana University Maurer School of Law. He started teaching in 2011 at the invitation of his former colleague, Mark Janis (far right), director of the Center for Intellectual Property Research at IU Maurer. (IL Photo/ Marilyn Odendahl)

“I said, ‘Dr. Silva, if I hear the term “imaginary number” once in the course of this case, I’m going to go get another expert.’”

The confusing term was banished, but the defense still had to explain the concept. Knebel believes he hit upon the answer by looking at a Ziploc bag where the yellow strip and blue strip across the top turn green when they come together to form a seal.

The Barnes & Thornburg attorneys then framed their argument around color, describing the plaintiff’s product as green. While the defendant had the yellow, they asserted he did not have the blue so he could not have infringed because he could not create the green.

Conversely, the plaintiff’s attorneys referred to imaginary numbers and had an exhibit of a circuit with part surrounded by a red box which, Janis said, would only have made sense to an electrical engineer.

The jury returned a verdict for the defense. Opposing counsel filed an unsuccessful appeal, arguing the yellow-and-blue-makes-green exhibit was so effective, it threw the jury off and the court should declare a mistrial.

Knebel considered the appeal a compliment.

“It was a poster,” Knebel said, describing the exhibit. “Just a poster. Wish I still had it, it’s one of the classics of my career.”

Back to school

Since 2011, Knebel has been passing along his knowledge and experience gained from cases like the one in Alexandria to students at IU Maurer School of Law. He is an adjunct professor and senior advisor at Janis’ center, teaching antitrust classes and intellectual property classes.

On a chilly Monday afternoon, a handful of upper-level students in Knebel’s patent trial practice class listened to their teacher give tips and ideas for presenting intellectual patent cases to juries. The students are spending the semester preparing for, and will eventually try in a moot court setting at Purdue, a hypothetical case based on a patent dispute Knebel litigated twice.

“I try to teach them what it takes to be a successful trial lawyer, which is not necessarily what people think it takes,” Knebel said. “I try to accumulate the experience I’ve had for the last 39 years, much of that in intellectual property trial work … and put that experience, as much as I can, into the minds and hands of these students.”

Students said the class is synthesizing what they have learned in other law school classes and emphasizing to them, most significantly, that decisions in trials have consequences. They have come to realize that positions they took early in the preparation process could create obstacles as the trial date comes closer.

During the class, Ian Clouse, a third-year student with an engineering background, took many notes, highlighting ideas from Knebel’s presentation that he could use in his jury arguments. Practitioners like Knebel, Clouse said, are good in the classroom because they point out the practical aspects of lawyering by showing how the attorneys used or didn’t use their skills, where academics can get mired in the technical and theoretical.

Law students from Taiwan’s National Chiao Tung University in Teipei are posing as the clients in the case that Knebel’s Bloomington students are preparing. Knebel presented his lecture on juries to the overseas bunch via video conferencing technology and got a vastly different reaction than from the IU Maurer students. The Taiwanese students had problems believing that U.S. attorneys present complex patent cases to juries and let those juries decide the outcome.

Juries have changed intellectual property practice from less patent-like to more litigation-like, Knebel said, but whether jury trials are better than bench trials is an unanswered question.

“If the judge is against you, it just takes one judge to be against you where if you’re doing a jury trial,” he said, “one person can’t control the jury so you have more chances to win.”•

ADVERTISEMENT

Post a comment to this story

COMMENTS POLICY
We reserve the right to remove any post that we feel is obscene, profane, vulgar, racist, sexually explicit, abusive, or hateful.
 
You are legally responsible for what you post and your anonymity is not guaranteed.
 
Posts that insult, defame, threaten, harass or abuse other readers or people mentioned in Indiana Lawyer editorial content are also subject to removal. Please respect the privacy of individuals and refrain from posting personal information.
 
No solicitations, spamming or advertisements are allowed. Readers may post links to other informational websites that are relevant to the topic at hand, but please do not link to objectionable material.
 
We may remove messages that are unrelated to the topic, encourage illegal activity, use all capital letters or are unreadable.
 

Messages that are flagged by readers as objectionable will be reviewed and may or may not be removed. Please do not flag a post simply because you disagree with it.

Sponsored by
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. State Farm is sad and filled with woe Edward Rust is no longer CEO He had knowledge, but wasn’t in the know The Board said it was time for him to go All American Girl starred Margaret Cho The Miami Heat coach is nicknamed Spo I hate to paddle but don’t like to row Edward Rust is no longer CEO The Board said it was time for him to go The word souffler is French for blow I love the rain but dislike the snow Ten tosses for a nickel or a penny a throw State Farm is sad and filled with woe Edward Rust is no longer CEO Bambi’s mom was a fawn who became a doe You can’t line up if you don’t get in a row My car isn’t running, “Give me a tow” He had knowledge but wasn’t in the know The Board said it was time for him to go Plant a seed and water it to make it grow Phases of the tide are ebb and flow If you head isn’t hairy you don’t have a fro You can buff your bald head to make it glow State Farm is sad and filled with woe Edward Rust is no longer CEO I like Mike Tyson more than Riddick Bowe A mug of coffee is a cup of joe Call me brother, don’t call me bro When I sing scat I sound like Al Jarreau State Farm is sad and filled with woe The Board said it was time for him to go A former Tigers pitcher was Lerrin LaGrow Ursula Andress was a Bond girl in Dr. No Brian Benben is married to Madeline Stowe Betsy Ross couldn’t knit but she sure could sew He had knowledge but wasn’t in the know Edward Rust is no longer CEO Grand Funk toured with David Allan Coe I said to Shoeless Joe, “Say it ain’t so” Brandon Lee died during the filming of The Crow In 1992 I didn’t vote for Ross Perot State Farm is sad and filled with woe The Board said it was time for him to go A hare is fast and a tortoise is slow The overhead compartment is for luggage to stow Beware from above but look out below I’m gaining momentum, I’ve got big mo He had knowledge but wasn’t in the know Edward Rust is no longer CEO I’ve travelled far but have miles to go My insurance company thinks I’m their ho I’m not their friend but I am their foe Robin Hood had arrows, a quiver and a bow State Farm has a lame duck CEO He had knowledge, but wasn’t in the know The Board said it was time for him to go State Farm is sad and filled with woe

  2. The ADA acts as a tax upon all for the benefit of a few. And, most importantly, the many have no individual say in whether they pay the tax. Those with handicaps suffered in military service should get a pass, but those who are handicapped by accident or birth do NOT deserve that pass. The drivel about "equal access" is spurious because the handicapped HAVE equal access, they just can't effectively use it. That is their problem, not society's. The burden to remediate should be that of those who seek the benefit of some social, constructional, or dimensional change, NOT society generally. Everybody wants to socialize the costs and concentrate the benefits of government intrusion so that they benefit and largely avoid the costs. This simply maintains the constant push to the slop trough, and explains, in part, why the nation is 20 trillion dollars in the hole.

  3. Hey 2 psychs is never enough, since it is statistically unlikely that three will ever agree on anything! New study admits this pseudo science is about as scientifically valid as astrology ... done by via fortune cookie ....John Ioannidis, professor of health research and policy at Stanford University, said the study was impressive and that its results had been eagerly awaited by the scientific community. “Sadly, the picture it paints - a 64% failure rate even among papers published in the best journals in the field - is not very nice about the current status of psychological science in general, and for fields like social psychology it is just devastating,” he said. http://www.theguardian.com/science/2015/aug/27/study-delivers-bleak-verdict-on-validity-of-psychology-experiment-results

  4. Indianapolis Bar Association President John Trimble and I are on the same page, but it is a very large page with plenty of room for others to join us. As my final Res Gestae article will express in more detail in a few days, the Great Recession hastened a fundamental and permanent sea change for the global legal service profession. Every state bar is facing the same existential questions that thrust the medical profession into national healthcare reform debates. The bench, bar, and law schools must comprehensively reconsider how we define the practice of law and what it means to access justice. If the three principals of the legal service profession do not recast the vision of their roles and responsibilities soon, the marketplace will dictate those roles and responsibilities without regard for the public interests that the legal profession professes to serve.

  5. I have met some highly placed bureaucrats who vehemently disagree, Mr. Smith. This is not your father's time in America. Some ideas are just too politically incorrect too allow spoken, says those who watch over us for the good of their concept of order.

ADVERTISEMENT