Katie Prescott

Principal

Silicon Valley

Leeron Kalay

Principal

Silicon Valley

Federal Judicial Center

Patent Mediation Guide

May 22, 2019

fr.com | 2

• 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

fr.com | 3

The Dispute Resolution Spectrum

fr.com | 4

What’s The Case Worth?

fr.com | 5

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

fr.com | 6

The Tipping Point For Resolution

fr.com | 7

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

fr.com | 8

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

fr.com | 9

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

fr.com | 10

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

fr.com | 11

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

fr.com | 12

Pre-Mediation Preparation

Pre-Mediation Call(s)

• Personal Dynamics

• Assessment of Strength and Weaknesses

• Settlement Proposal

• Definition of Success

fr.com | 13

Pre-Mediation Preparation

Structuring The Mediation Session

• Attendees

• Structuring Joint Sessions

• Length

• Confidentiality of the proceedings

fr.com | 14

The Mediation Session

fr.com | 15

fr.com | 16

Thank You!

Katie Prescott

650-839-5180

prescott@fr.com

Leeron Kalay

650-839-5196

kalay@fr.com

fr.com | 17

© Copyright 2019 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of

professional conduct of the jurisdictions in which we practice. The material contained in this presentation has been gathered by the lawyers at

Fish & Richardson P.C. for informational purposes only, is not intended to be legal advice and does not establish an attorney-client relationship.

Legal advice of any nature should be sought from legal counsel. Unsolicited e-mails and information sent to Fish & Richardson P.C. will not be

considered confidential and do not create an attorney-client relationship with Fish & Richardson P.C. or any of our attorneys. Furthermore,

these communications and materials may be disclosed to others and may not receive a response. If you are not already a client of Fish &

Richardson P.C., do not include any confidential information in this message. For more information about Fish & Richardson P.C. and our

practices, please visit www.fr.com.