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
2017 Patent Disputes Forum April18, 2017
Jeff Joyner
Shareholder, Greenberg Traurig, LLP
Moderator
Mark LeHocky
Judicate West
Panelists
Cynthia Bright
HP, Inc.
Jeff Kichaven
Jeff Kichaven Commercial Mediation
Dwayne L. Mason
Greenberg Traurig 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. Motion to Dismiss – Failure to State a Claim (FRCP 12(b)(6)), OR Motion for Judgment on the Pleadings (FRCP 12(c))

5. Motion to Dismiss - Failure to State a Claim (FRCP 12(b)(6)), OR Motion for Judgment on the Pleadings (FRCP 12(c)) Legal Issue: Unpatentable Subject Matter (35 USC § 101) (and all subcategories)

6. IPR Motion to Stay Pending

7. Motion re First-to-File Rule, OR Motion to Transfer Venue -- Convenience

8. 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)?

9. 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

10. 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

11. 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