TBA Law Blog

Posted by: Jack Waddey on Jul 1, 2014

Journal Issue Date: Jul 2014

Journal Name: July 2014 - Vol. 50, No. 7

Edited by Harrie Samaras | American Bar Association | $139.95 | 402 pages | 2013

The ABA’s ADR Advocacy, Strategies and Practice for Intellectual Property Cases is a valuable collection of articles edited (and some authored) by Harrie Samaras. Samaras assembled a prominent group of ADR professionals to write articles helpful to both mediators and litigants in IP cases.

The book could very easily serve as a textbook for teaching an advanced mediation course on resolving IP cases. Its contents run the gamut from a relatively simple overview of various ADR formats to in-depth guides for preparing for and conducting ADR proceedings. For experienced mediators or litigators representing clients in ADR, the book is worth every penny if one only reads chapter 4, written by Chief Magistrate Judge Mary Pat Thynge and titled “The Mediation: One Judge’s Perspective (or Infusing Sanity into Intellectual Property Litigation).” WOW!

Judge Thynge is experienced in IP mediation and full of advice, comments and suggestions for effective mediation of complicated cases, particularly patent cases. Judge Thynge starts with the very cogent observation that mediation is “a non-binding negotiation process in which a neutral helps the litigants resolve the dispute.” Simple, elegant and accurate. She goes on to say that “the mediator establishes the atmosphere in which the parties work and settle the dispute themselves.” Again, a fundamental concept on which mediation is based, and a basic tenet for settling patent disputes because, in most cases, the patents are at the heart of the litigants’ businesses. Her emphasis on these points is a good reminder to all mediators that our role is to help parties use the negotiation process to settle their disputes. This does not mean, as Judge Thynge makes very clear, that the mediator has to be passive. To the contrary, the mediator has to remain in control of the process and be proactive in helping direct the parties toward settlement.

A sampling of Judge Thynge’s comments illustrate why this article is so valuable:

  • The process “should be” directed to those business factors that help fashion a resolution.
  • The process requires … the mediator, counsel and the business representatives to focus on the three P’s: preparation, patience and persistence.
  • An incalculable but invaluable asset of mediation is often ignored by outside counsel. IP cases usually require substantial time from the CEO, CFO and other business people, technical and IT personnel, and in-house counsel at various levels within the organization. This is something I refer to in my mediations as “emotional capital.” Emotional capital is valuable and needs to be preserved by resolving the case so that business people can get on with their primary role, making money for their company.

Judge Thynge makes a compelling argument for early mediation. She also addresses the initial conference, including what lawyers should expect to share prior to convening the mediation. Every litigant in a serious IP matter should consider adopting her advice for the early phases of mediation. Likewise, she addresses who to include (or exclude), offering valuable insights:

  • Select client representatives based on individual ability to make a meaningful contribution to the process and not just on his or her title.
  • When possible, the client representatives should not consist solely of company’s in-house counsel, or company’s in-house legal department.
  • The inventor and patent prosecution counsel are usually counterproductive to mediation.
  • Bringing experts — particularly damage experts — to mediation is generally not helpful.

In commenting on preparation for the actual mediation session, and making the most of it, Judge Thynge observes:

  • Preparing a list of the opponent’s principal contentions/defenses in order of importance, along with your rebuttal, is helpful to educate the mediator on the main issues separating the parties.
  • Having a checklist of important terms for settlement is essential. (As an experienced full-time mediator, I insist that prior to mediation, counsel for opposing sides create a settlement agreement that covers expected terms, such as release language, forum for determining disputes under the settlement agreement, controlling law, etc., so that at the end of the day, when a settlement is reached, we only have to insert the pertinent deal points.)

Other well-written articles in the book contain useful information on a multitude of forums and processes in the IP/ADR world. While this review is mostly focused on the mediation process, many practitioners will find the sophisticated article by Kevin Casey, “Tools Useful to Persuade, Evaluate and Communicate in ADR Proceedings” to be a wonderful resource. Casey gives detailed formula and advantages and limitations of decision-tree analysis, provides an entire section on algorithms for fair division of property, and provides some eye-opening comments on the use of technological tools. Appendices to his article will be particularly valuable to many practitioners by providing tools that help when mediating complicated IP cases.

For counsel representing a party in mediation, chapters 3 and 5 are a good resource. In chapter 3, Harrie Samaras and Cynthia Raposo provide an outstanding framework for performing an early case assessment. Likewise, Hildy Bowbeer contributes a rigorous outline on preparing to successfully mediate an IP dispute.

Another section of the book is written by two obviously skilled and experienced lawyers, David Hill and Ronald Bleeker, addressing ADR clauses in transactional documents and why those clauses deserve more attention than they usually get. For practitioners on the transactional side of IP matters, this chapter will be a worthwhile read.

Finally, chapter 6, written by Don Martens, addresses a subject not often analyzed, “Mastering the Use of a Special Master in Intellectual Property Litigation.” Don has significant experience both as a special master in IP cases and using special masters, and the chapter provides, in succinct form, a comprehensive and pragmatic overview.

I expect to go back to the articles in this book often. There is great value in having one resource that gathers many of the practices and tools that experienced neutrals use regularly. It is reinforcing to see them on paper, summarized in a clear and easy-to-follow format, which makes this book one that you should have on your desk if you mediate IP disputes.

Jack Waddey practices law with Waddey & Patterson PC in Nashville.