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Katie Prescott
Principal
Silicon Valley
Leeron Kalay
Principal
Silicon Valley
Federal Judicial Center
Patent Mediation Guide
May 22, 2019
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• Published 2019, Federal Judicial Center
• Co-authors
– Peter S. Menell – UC Berkeley, School of Law
– Leeron G. Kalay – Fish & Richardson PC
– Kathi Vidal – Winston & Strawn LLP
– Matthew Powers – Tensegrity Law Group
– Sarita Venkat – ServiceNow
Who Is The Guide For?
• Patent Litigation Neophytes
– Quick Assessment of Resolution Prospects
– Reference Guide for Key Case Drivers
• Patent Litigation Pros
– Education Tool for Management
– Resource for Mediators
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The Dispute Resolution Spectrum
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What’s The Case Worth?
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Why Discussions Fail / Succeed?
• Assessment of Risk by Decision Makers
– Different Assessments of Case’s Strengths and Weaknesses
• Incompatible Goals
• Relative Importance of Technology to Each Party’s Business and
The Market As A Whole
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The Tipping Point For Resolution
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Knowledge
and
Cost
Time
Knowledge about the Case
Costs Incurred by Parties
Opportunity for Mediation
Infringement
Contentions
Invalidity
Contentions
Markman
Briefing
Markman
Hearing
Markman
Order
Expert
Reports
Summary
Judgment
Briefing
Summary
Judgment
Hearing
Trial Prep
Early Resolution
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Knowledge
and
Cost
Time
Knowledge about the Case
Costs Incurred by Parties
Opportunity for Mediation
Infringement
Contentions
Invalidity
Contentions
Markman
Briefing
Markman
Hearing
Markman
Order
Expert
Reports
Summary
Judgment
Briefing
Summary
Judgment
Hearing
Trial Prep
• Large Enterprise vs. Start-Up/New Entrant
• Licensing Company vs. Start-Up Enterprise
• Licensing Company vs. Large Enterprise
Post-Markman Hearing
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Knowledge
and
Cost
Time
Knowledge about the Case
Costs Incurred by Parties
Opportunity for Mediation
Infringement
Contentions
Invalidity
Contentions
Markman
Briefing
Markman
Hearing
Markman
Order
Expert
Reports
Summary
Judgment
Briefing
Summary
Judgment
Hearing
Trial Prep
• Serial Litigant:
Patent Owner v. First Target
Pre-Trial
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Knowledge
and
Time
Knowledge about the Case
Costs Incurred by Parties
Opportunity for Mediation
Infringement
Contentions
Invalidity
Contentions
Markman
Briefing
Markman
Hearing
Markman
Order
Expert
Reports
Summary
Judgment
Briefing
Summary
Judgment
Hearing
Trial Prep
Cost
• Large Enterprise v. Competitor
– Core Technology
– Non-Core Technology
Pre-Mediation Preparation
Party Preparation: Define Your Goals
• Update Your Risk Assessment
• Think Creatively About Possible Resolutions
• Obtain Appropriate Authority
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Pre-Mediation Preparation
The Mediation Statement
• The Parties, Their Business, and Their Dispute History
• Infringement and Invalidity Contentions
• Determinative Claim Constructions
• Financial Considerations
• Non-Parties Influencing Litigation
*Some mediators require disclosure of fees and costs to date
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Pre-Mediation Preparation
Pre-Mediation Call(s)
• Personal Dynamics
• Assessment of Strength and Weaknesses
• Settlement Proposal
• Definition of Success
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Pre-Mediation Preparation
Structuring The Mediation Session
• Attendees
• Structuring Joint Sessions
• Length
• Confidentiality of the proceedings
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The Mediation Session
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Thank You!
Katie Prescott
650-839-5180
prescott@fr.com
Leeron Kalay
650-839-5196
kalay@fr.com
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