Oct. 28, 2024
American Intellectual Property Law Association
Mediation can play a critical role in resolving intellectual property cases. Arming the mediator with key pieces of information in advance of the mediation enhances the likelihood of a successful outcome. As described below, the combination of a mediation statement and one or more pre-mediation conferences provides the perfect platform for advocacy and beginning with the end that your client wants in mind.
Know Your Audience: Frequently, scheduling orders set mediation deadlines at times of maximum distraction for the lawyers involved. Resist the urge to phone in the mediation statement or mediation strategies. While you may have begun to test legal theories with the Court, the mediator provides another source for critical feedback and fine-tuning. To take full advantage of this resource, it is important to appreciate the mediator’s experience with the type of intellectual property case you are litigating. Understand the mediator’s background as an attorney and a mediator. For mediators who are not familiar with intellectual property law, use the mediation statement to provide a clear summary of the relevant concepts and flag helpful caselaw that supports your positions. Identifying the most pertinent legal issues and how the law applies to the disputes at issue will animate the picture for all mediators. Find out if the mediator has a preferred format for mediation statements. If you believe a deviation would make sense, discuss this with the mediator in advance of submitting the mediation statement.
Share Your Story: While this might be surprising, some people find intellectual property cases complicated and dry! Defy that perception in your communications with the mediator and in your mediation statement. Refine the story and themes that you have been developing during discovery and use them to set the stage through your discussions with the mediator and in the written mediation statement. This will give you a chance to see how they are received by someone who has not been living and breathing your case, and how they sound on paper.
Remember the Basics: The who, what, when, where, why, and how are important to convey to the mediator. Use the mediation statement to describe concisely who the parties are, what technology/intellectual property is involved, when the relationship began, where things currently stand, why the conflict occurred, and how the conflict can be resolved. Summarize the material facts that have been established and those that remain in dispute. Outline the parties’ different positions regarding damages, even if liability is established. Focus on why your damages theory is more plausible than your opponent’s. Assess documents and testimony that support your position and consider including highlights in the mediation statement or selected materials appended to the mediation statement. Don’t overwhelm the mediator with too many documents. Talk with the mediator about the material that you think would be helpful for the mediator to review and gauge the mediator’s interest. Recognize that it might be more helpful to bring most of the material with you to the mediation, while providing only a few documents to the mediator in advance.
Let’s Make a Deal: Outline the settlement efforts that have taken place, including a clear statement of the most recent offers of each party. If possible, explain why the current settlement proposals have not led to a resolution. Include an analysis of each party’s best alternative to the existing settlement proposals. Candidly discuss the strengths and weaknesses of the case and how those impact each party’s legal positions. Summarize market intelligence that could impact settlement or damages, including competitive positioning, current and anticipated product offerings, overall market strength, and pertinent customer information. Highlight recent outcomes in the district and in other courts concerning similar or related technology/intellectual property.
Providing the mediator with a clear understanding of the parties’ relationship, the market, and the legal challenges will pave the way for an efficient process and the best opportunity to resolve the case at mediation.
These materials have been prepared for informational purposes only and are not legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Internet subscribers and online readers should not act upon this information without seeking professional counsel.