1. Hon. Victor B. Kenton (Ret.)
THE BEST DEFENSE CAN BE A GREAT OFFENSE AND SAVE THE EXPENSE OF TRIAL: Develop your game plan now for early disposition as a result of pre-trial motions and mediation during litigation, or patent aggregation and licensing prior to litigation
2016 Patent Disputes Forum October 18, 2016
Jeff Joyner
Shareholder, Greenberg Traurig, LLP
Moderator
Jeff Kichaven
Jeff Kichaven Commercial Mediation
Panelists
Hon. William V. Gallo
Magistrate Judge, Southern District of California 
Hon. Victor B. Kenton (Ret.)
Judicate West
Meg Kammerud
Steptoe & Johnson LLP

2. Agenda
Ways in which parties can avoid and resolve patent disputes without resorting to litigation or early during litigation
Pre-trial Motions
Mediation
Patent Aggregation and Licensing

3. PRE-TRIAL MOTIONS 12(b)(6) Motion to Dismiss IPR Motion to Transfer
Benefits - Early Disclosure of Parties’ Positions (e.g., Claim Construction), Invalidate patent(s)
Disadvantages - Credibility with Court, Court’s Delayed Decision
IPR
Benefits - Likelihood of Success, Staying District Court Case, PTAB Decides Invalidity (e.g. Anticipation, Obviousness)
Disadvantages - Estoppel Effect, Expense
Motion to Transfer
Benefits – Early Disposition by Transferee Court
Disadvantages – Expedited/Early Discovery of Corporate Defendant Information

4. MEDIATION TO MEDIATE OR NOT TO MEDIATE?
How well-developed does a case need to be? (e.g., is claim construction necessary?)
Can and should in-house counsel exchange numbers first (e.g. before engaging outside counsel)?
What are other prior indicia of success (e.g., in-house/outside strategy aligned)?
Should you pursue IPR or mediation?
TYPES of MEDIATION/MEDIATORS
Is familiarity with patent law (e.g., claim construction) important?
Is evaluative or facilitative mediation better?
Will parties need multiple days of mediation and follow-up after mediation?
Is there communication between the US Magistrate Judge and US District Judge about the mediation (e.g. ethical wall or not)?

5. MEDIATION HOW BEST TO PREPARE How can you prevent ambush?
What should be exchanged in writing?
What else should you do (e.g., Telephone Calls With the Mediator, "Pre"- Mediation Mini-Caucuses)?
WHAT CAN AND SHOULD HAPPEN ON MEDIATION DAY?
Establishing Rapport
Exchanging Information (e.g., Opening Joint Session, Initial Caucus)
Bargaining

6. PATENT AGGREGATION AND LICENSING
Is it ever too late to acquire patents or transact your way out of a dispute?
Is transacting a less expensive and faster way to dispute resolution than litigation?
Do transaction and litigation strategies work hand in hand?
Several examples:
Membership Model
Crowd Sourcing
Licensing/Indemnification/Partnerships

7. PATENT AGGREGATION AND LICENSING (cont.)
Membership Model (e.g., RPX)
Benefits – resolves certain types of disputes
Disadvantages – cases might have been resolved without membership
Crowd Sourcing (e.g., Unified Patents)
Benefits – reduce potential risk without estoppel risk
Disadvantages – choosing the correct patents, conflicts
Licensing/Indemnification/Partnerships
Benefits – pre-litigation license, patent pools, customer agreement (e.g., IP indemnification)
Disadvantages – standards “essential” patents