1. 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 April 14, 2016
Jeff Joyner
Shareholder, Greenberg Traurig, LLP
Moderator
Stephen McGrath
Senior Corporate Counsel, Patent & Intellectual Property Litigation, T-Mobile
Jeff Kichaven
Jeff Kichaven Commercial Mediation
Panelists
Lisa Buccino
Director, Global Litigation, SAP SE
Craig Davis  
Senior Litigation Counsel, Global Legal Affairs, HP Inc.  
Meg Kammerud
Of Counsel, 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?
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)?
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

5. 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

6. 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