IP ADR Blog

Check out this week's New Yorker article, Swingers here by Ian Parker where you will learn that one set of our ancestors, the Bonobo, lives in a society in which

"female alliances intimidate males, sexual behavior is as rich as ours, different groups do not fight but mingle, mothers take on a central role, and the greatest intellectual achievement is not tool use but sensitivity."

 Why is this an IP ADR item?  Because the collaborative and reciprocal resolution of our intellectual property disputes requires not only our competitive tool (read:  weapon) making ability, but also our sensitivity to the needs and interests of others. 

In a 2003 New York Times article A Course in Evolution, Taught by Chimpanzees, author Nicholas Wade compared the aggressive, violent, male-dominated, territory defending style of the chimpanzees with the gentler ways of the bonobos as follows:

Male[] and female[] [chimpanzees] do not associate in families but in separate hierarchies. Males make females defer to them, with violence whenever necessary, and every female is subordinate to every male.

A female chimp advertises her fertile period with a visible swelling and is then so pestered by males that she may get to eat only at night. . . . 

Though bonobos are almost as aggressive as chimps, they have developed a potent reconciliation technique -- the use of sex on any and all occasions, between all ages and sexes, to abate tension and make nice.

Assuming the common ancestor of people and chimps had social behavior that was essentially chimplike, how much of that behavior has been inherited by people? The unusual behavioral suite of male kin bonding and lethal territorial aggression may look as if it has been inherited with little change. Among the Yanomamo, a South American tribe, the number of males who die from aggression is about 30 percent, the identical rate found among Gombe chimps.

Dr. Wrangham said the consistent pattern of aggression seen at all the chimp sites suggests that male chimps have ''a strong emotional disposition'' to be aroused by the sight of strange males, to form coalitions against enemies, to be sensitive to balances of power and to be attracted to hunting. The same disposition could have been inherited down the human lineage.

Why do we care?  It's not just because we share a single ancestor with both chimps and bonobos and therefore possess the innate characteristics of each, it's also because bonobo behavior can give us hope that we can create a society that isn't focused quite so much on territoriality, aggression, and zero-sum outcomes.

As Ian Parker notes in the New Yorker article, the study of bonobo and chimp behavior 

has a place in the long-running debate about the fundamentals of human nature -- a debate, in short, about whether people were nasty or nice.  Were humans savage but for the constructs of civil society (Thomas Hobbes)?  Or were they civil but for the corruptions of society (Jean-Jacques Rousseau)?

Defining and re-defining achievement -- success -- is a new task for every new generation.  Are we going to continue playing King of the Hill or can we inspire ourselves to reach down into our bonobo nature and solve some of our power problems with fellow feeling?

Of course the real reason for this post is the chance to reprint the photo above -- the female chimp looking so peaceful, even blissful (see the larger photo in the New Yorker) -- in a familiar posture that wouldn't be right to re-print in a blog rated "G" unless the subjects were Bonobos.

And, hey! did you guys have a Bonobo release for that photo?

• Print
• Comments
• Trackbacks (1)

Distributive Bargaining (d-stryby-tv bärgn-ng) aka "cutting the baby in half"

(right: King Solomon. Although we use the term "cutting the baby in half" to signify compromise, the phrase refers to Solomon's "reality test" for two women, each claiming to be an infant's mother. When the King suggested cutting the baby in half, the woman who gave up the infant was declared its mother. The term should be more readily associated with integrative or interest-based negotiation because the ploy revealed the parties' true interests, reunited mother with child and saved the child's life.  Not bad for a day's work -- hence the equation of Solomonic with wisdom).

1.  the process by which the parties distribute the substance over which they are negotiating

7.  when mediating, the parties often use the mediator as a “conduit” for the series of concessions

• Print
• Comments
• Trackbacks

(photo by Eole)

The fact of settlement by way of license agreements between BIG PATENT is no surprise, but rarely does a suit filed in March of year One (3M Sues Sony on March 8) get settled by July of Year One (3M Settles with Sony on July 30). 

That's four months, folks -- barely enough time for the junior associates to pull the canned patent infringement interrogatories out of the computer and begin tinkering with the details, let alone to negotiate a deal whereby "Sony Corporation and Sony Electronics [become] 'licensed sources of batteries containing 3M's cathode technology.'"  

We don't know how they did it, but we LIKE IT, WE LIKE IT.

• Print
• Comments
• Trackbacks

TechnoLawyer has released TWO-TWO-TWO-EBOOKS IN ONE! (above).

The first EBook, BlawgWorld 2007, contains the best posts chosen by some of the world's top legal bloggers.  Though I won't include my Settle It Now Negotiation Blog as one of the "World's Best," I am honored to appear among such Blawg heavyweights as Gerry Riskin's Amazing Firms Amazing Practices, Laura C. Woods Phosita, Justin Patten's Human Law, Evan Schaeffer's Legal Underground, J. Matthew Buchanan's Promote the Progress, Stephen Albainy-Jenei's Patent Baristas, Arnie Herz's Legal Sanity, J. Craig Williams' May It Please the Court, and John Wallbillich's Wired GC

The second EBook, TechnoLawyer's Problem Solution Guide, is a compendium of common questions and innovative answers to your most daunting legal-technical questions.  

Though I contributed to both E-Books, I'm giving you here one of my favorite negotiation posts, "Rationalizing Numbers," which also appears there.    

I urge you to download this free E-Book and puruse it at your leisure over the course of the following year before all of today's technology gets replaced by tomorrow's . . . at which point another TechnoLawyer/Blawg World EBook will appear on the web.  Isn't that GREAT?

That said, here's one of my favorite negotiation posts.

Rationalizing Numbers

I won $200 at Morongo recently, accompanying my husband to one of his law fi rm’s business development events. I always think gambling (excuse me, gaming) outings are good for lawyers and business people—the litigation risk-taking analogies being so plentiful.

The lesson from this trip, however, was not about sunk costs or risk aversion. It was about my own subjective experience of money.

“Don’t worry,” I was saying to Mr. Thrifty, as I pulled three twenties from my wallet to pay for an afternoon gourmet picnic in Griffi th Park. “I’m paying for it with the casino’s money.”

Thrifty gently reminded me that this was the third time I’d spent my winnings—the fi rst on that spa visit before I hit the gaming fl oor; the second on a few Crate and Barrel essentials we picked up at the outlet stores so conveniently located next to the hotel; and, the third for our picnic in the park.

Actually, by the time we were collecting our food tickets, I’d also “spent” my unexpected windfall on the gift I’d planned to buy for my father’s birthday the following week.

Spending Your Negotiation Dollar Ten Ways from Sunday

The lesson of my little gaming foray? In negotiations, two and two is rarely if ever four. You can place your two dollar bets on winning; fairness; future opportunities; or, investment return. You can lay your chips down on need or equity or equality. You can wager your money (or more importantly, your negotiating partner’s money) on common sense or risk aversion.

You can spend it on respect or conserve it with empathy and understanding. The brilliant part of all of this is that you can spend the same two dollars on each of these things during any negotiation session, doubling your two with every move so that by day’s end it has become six, eight, ten or even one hundred.

When your mediator is engaged in shuttle diplomacy, she is consciously doing that which we all unconsciously do everyday—rationalizing numbers and creating subjective monetary “accounts.” How important are these subjective “accounts” and how infl uential our monetary rationalizations?

Leigh Thompson of the Kellogg School of Management at Northwestern University tells us in the Mind and Heart of the Negotiator, that monetary accounts are important enough to strongly influence the outcome of a negotiation even if they are meaningless.

• Print
• Comments
• Trackbacks

Here's a must read article for anyone involved in or representing a client prosecuting or defending an intellectual property action -- Developing a Coherent Strategy for Managing Intellectual Property Disputes  by Milbank, Tweed, Hadley & McCloy LLP located at Point of Law.  In addition to the links (above) I'm providing you with Milbanks Ten Strategic Points and excerpts of the article on those matters critical to the the negotiation of a winning settlement.  

First the points:

1. Develop A Business Strategy 
2. Choose The Right Location For The Dispute 
3. Carefully Manage The Issues 
4. Pursue "Early Exit" Strategies When Appropriate 
5. Don't Underestimate Your Opponent 
6. Recognize and Understand Weaknesses In Your Case 
7. Fully Utilize Internal Resources 
8. Take Control Of Disbursements 
9. Carefully Review Billing Statements From Outside Counsel 
10. Choose The Right Litigation Team

Business Tactics and Early Exit Strategies

As Milbank stresses, 

too often companies get caught up in "winning" the litigation and don"t explore business solutions to the dispute. You should have definite business goals established as early as possible and should revisit those goals often as the case progresses, looking for opportunities to resolve the dispute in a way that achieves the business objectives.

These business considerations should be front and center at all times so that you're able to derive the maximum benefit from the timing of settlement negotiations.  Milbank counsels that 

your legal team should also be looking for opportunities to bring the case to an early favorable conclusion . . . [T]here may be business opportunities to settle a case. For example, the defendant may have IP that could be cross-licensed to the plaintiff or a supplier relationship could be established that benefits both companies. Often IP disputes can be resolved such that both companies benefit, but such opportunities must be uncovered and pursued.

These may seem like obvious points, but we do tend to lose sight of these business concerns as we fight to win the litigation with strategic discovery battles, early summary judgment motions, and the like.

Settlement Team Anyone?

For any litigation with an amount in controversy exceeding five million dollars, we recommend the creation of a settlement team within the firm that is litigating the case.  The settlement team can and should place its entire focus on potential business opportunities that could be synergized with the ebb and flow of litigation sucesses and reverses.

This team should also keep close track of all corporate and/or commercial/financial market events that might weaken one's adversary's appetite for continued pursuit of the dispute.  This enables the client to make strategic timing decisions -- convening a mediation or settlement conference, for example, just after one's opponent has experienced a shake-up in top management or prior to a merger or major acquisition.  Transactional counsel within the firm in which the trial team is working may be best positioned to serve as "settlement" counsel throughout the litigation.

• Print
• Comments
• Trackbacks

TRIZ is a Russian acronym for Theory of Inventive Problem Solving that requires innovators to understand the problem they are seeking to resolve as a system; to imagine the ideal solution; and, solve the contradictions.   See The Essence of TRIZ in 50 Words.

As reported in WIPO Magazine in 2005 (Patent Information: Buried Treasure - page 8):

The TRIZ methodology was developed specifically on the basis of patent information. TRIZ began with the hypothesis that there are universal principles of invention, which are the basis for creative innovations that advance technology, and that if these principles could be identified and codified, they could be taught to people to create or enhance their inventive capabilities.

Large and small companies are using TRIZ to create or improve  products and to elaborate R&D strategies for new technology. TRIZ is just one illustration of how patent information has been exploited as a tool for developing problem solving and innovation strategies.

There are forty inventive TRIZ principles that could arguably be used to resolve social problems, including the resolution of disputes.

I have to admit, however, that I find this problem solving method more complex and impenetrable than any business or legal problem I've ever been asked to solve.  Maybe this is a difference in the way technical and non-technical people think.

What do YOU think about TRIZ?

• Print
• Comments
• Trackbacks

Did you hear that America wants to put up a 10-foot-high brick wall like 5 feet deep so no Mexican can get in?  (beat)  Now, who do you think is going to build that wall?  -- Ari Shaffir, Comedian, from today's Los Angeles Times article Funny, that was my joke by Times Staff writer Robert W. Welkos.

It appears that the perfect storm of an expanded comedy circuit, the ready availability of comic routines on the internet and blogger analysis of the same material in different comedians' hands has resulted in an outbreak of comic outlawry that used to be controlled by folkways, custom, convention and peer pressure. 

(below:  sample of YouTube video comparing Mencia and Cosby routines referenced in the L.A. Times article)

Though most comics declined the Times' requests for comment, Bobby Kelton, "a veteran of stand-up" recalled the "old days" in which

no one dared use another's material . . . If they did, the word would get out and you'd be ostracized . . . Then, as the comedy boom hit and tens of thousands of people got into comedy, that all kind of went out the window.

To understand the issue, the Times sought legal advice from local entertainment heavy-weight Pierce O'Donnell and Seattle copyright expert Robert Cumbow of Graham & Dunn.

O'Donnell cautioned that "[h]umor is kind of universal and copyright laws want to promote creativity," suggesting that a comic offended by another's use of his material was not likely to win money damages or injunctive relief if moved to bring suit.  Cumbow, however, was  willing to opine that one comic would "probably" have a claim against another for using a different version of an original joke "unless your telling of the joke is dramatically different."

What Does this Have to Do with IP ADR? 

A lot!

Let us remember that culture precedes the law. Folkways, custom, peer-pressure, taboos, and ostracism were the ways in which comic Bobby Kelton remembers the comic-subculture used to govern itself.  Take the stage, tell another comic's joke and you were voted off the island.   

But what island does one get voted off of these days?  Increasingly, it's the virtual atoll of the internet where so much mischief (like YouTube video above) hatches.     

Governing Internet Behavior -- the Numbers

First, let's talk about Bobby Kelton's "old days" when the scene must have numbered in the hundreds rather than the tens of thousands.  At those numbers, as Malcolm Gladwell instructed us in  his best-selling book The Tipping Point, we are capable of self-governance.   

As Gladwell explains (quoting British anthropologist Robin Dunbar), 

[t]he figure of 150 seems to represent the maximum number of individuals with whom we can have a genuinely social relationship, the kind of relationship that goes with knowing who they are and how they relate to us . . . At this size, [rules] can be implemented and unruly behavior controlled on the basis of personal loyalties and direct man-to-man contacts.  With larger groups, this becomes impossible.

Why only 150?  Because our brains are simply not big enough to "handle the complexities of larger social groups."  Gladwell, citing Dunbar again:

If you belong to a group of five people . . you have to keep track of ten separate relationships:  your relationships with the four others in your circle and the six other two-way relationships between the others.  That's what it means to know everyone in the circle.  You have to understand the personal dynamics of the group, juggle different personalities, keep people happy, manage the demands on your own time and attention and so on.

If you belong to a group of twenty people . . . there are . . . 190 two-way relationships to keep track of:  19 involving yourself and 171 involving the rest of the group.  That's a fivefold increase in the size of the group, but a twentyfold increase in the amount of information processing needed to "know" the other members of the group.  

Internet Island's Population and Hang-Outs

Gladwell's and Dunbar's insights make me suspect that we react to the number of people on the internet -- one billion one hundred and seventy three million one hundred and nine hundred thousand nine hundred and twenty five (1,173,109,925) -- either with denial or mental melt-down. 

And though we don't know where these billion-plus visitors "reside," we do know that 58.7 million of them visit blogs like this one every year.  And on most of those blogs, the visitors have free reign to mark on the walls, defame their competitors, steal "content" (art, literature, photographs, music, videos), anonymously manipulate the stock market or, in Second Life, commit all manner of torts and crimes, some of which have found their way into "brick and mortar" courtrooms, i.e., "real" life.

What About Etiquette; What About the Law?

Just yesterday we blogged about the principles that govern content on Wikipedia.  Some of those were formal rules of the road and others simply folkways.  One suspects that the unruly mob of Wikipedia makes of itself a ruly collaborative group because it shares a single higher purpose and product.  Cooperate with other contributors or the Wikipedia Ship sinks into chaos and oblivion.

This is not, of course, true of the rest of the internet. 

The Law

"Law," say the academics, is not just a set of rules, but a life condition "in which [people] are carriers of rights and duties, privileges and immunities."

No formal structure supporting the system of law need be visible. . . Law can be found any place and any time that a group gathers together to pursue an objective. The rules, open or covert, by which they govern themselves, and the methods and techniques by which these rules are enforced is the law of the group. Judged by this broad standard, most law-making is too ephemeral to be even noticed. /*

In other words, we govern ourselves more or less naturally, until a conflict within the group arises.  When that happens, the group is "forced to decide between conflicting claims [and the] law arises in an overt and relatively conspicuous fashion. The challenge forces decision, and decisions make law." /*

To date, Wikipedia aside, there is no group norm, no custom, no etiquette, and no taboo, let alone methods of enforcement, to guide the internet's governance.  No higher authority to create law out of conflicting claims.  So we muster on with the unimaginably large number of people on the Internet, a "place" we "visit" alone in our rooms, at our desks, clicking away at the old QWERTY keyboard.

A Conflict Resolution Process for the Future

Can we bring collaborative, value-creating dispute resolution norms and processes to this new culture?  In other words, given the opportunity to create an entirely new way of resolving conflict in an entirely new culture, could we devise a system that is more self-determined, faster, cheaper, easier and softer on the people but just as hard on the problem as the old system was? 

Could we abandon the adversarial paradigm because it's too expensive and cumbersome for the size and type of disputes that arise on the internet? 

Could we build into that system the principles of accountability, forgiveness and reconciliation that are lacking in the present system -- a system that too often leaves people feeling so unresolved, so angry or bitter or frustrated?   

I have no idea.

It feels good, though, to have finally formulated something of a question out of the chaos.

Please come on by and scrawl grafitti on our wall.

______________________________________

*/  See, Weyrauch and Bell, Autonomous Lawmaking:  The Case of the "Gypsies" (1993) 103 Yale L.J. 323 (1993) quoting Thomas A. Cowan & Donald A. Strickland, The Legal Structure of a Confined Microsociety (University of California, Berkeley Working Paper No. 34, 1965).  See the Weyrauch book on Gypsy Law here.

• Print
• Comments
• Trackbacks (3)

previously posted on June 27, 2007 

(photo:  fractal232 by Lynn M)

 I was having lunch with a mediator friend today, talking about litigation's inability to keep up with the speed of technology.

Though we're both mediation converts, we're also both lawyers who worry about the continued public development of the law.

We're not quite ready to toss out the adversarial system bag and baggage.

While we were talking I was recalling that Todd Lewis Mayover in the IP Counsel Blog once compared the law to a kaleidoscope.

"A kaleidoscope," he wrote,

is a tube through which a viewer can see beautiful colors, shapes and patterns of small pieces of glass. The pieces of glass move based on the rotation of the tube, gravity and the rotational forces of Earth, thus causing different patterns, shapes and colors with each slight rotation of the kaleidoscope.

Aside from the Courts, those great rotators of the law's narrow tube, changes in economics, technology, science, society and politics will all play a role in shifting our perception and perspective on what activities ought to be allowed and which prohibited, what injustices should be righted and which left to the great adjustor of the marketplace.

In praising the good of change, Mayover concluded that "[w]ithout a slight rotation our view of the law [would] never change."

"We've just got a lot more options now," I said to my friend, "and more ways of looking at a dispute, additional strategies for tackling the thing. It's a good thing. The one commodity that will never be in short supply is human conflict."

And so we turned the kaleidoscope just a notch to the north for the day.

• Print
• Comments
• Trackbacks

(photo:  MorgueFile from PhotomimeFeel) 

Whether they know it or not, litigators are riding the bow wave of the biggest legal paradigm shift since we evolved from trial by ordeal and physical combat to trial by jury and intellectual combat. 

The new paradigm?  It's the same shift that's occuring in business and technology, from competition to collaboration; from rule-bound top-down governance to principled participative and collaborative processes.

Why do we believe that?  Because business has been ahead of the law for quite some time now and Harvard always get there first. 

So we credit this Monday morning insight to the Harvard Business School Working Knowledge Newsletter article "Why Wikipedia Works (or Doesn't)" by Sean Silverthorne about the work of Harvard Professors Andrew McAfee and Karim R. Lakhani.

Why and How Does Wikipedia Work?

According to the work of McAfee and Lakhani, "Wikipedia may look like chaos barely contained," but it's not.

 "When people look at these sorts of phenomenon at Wikipedia, they misread the anarchy," Lakhani says. "All these people, thousands of people, there must be no rules! But there is a very ornate and well-defined structure of participation. One of our big learnings was to actually dive into the structure: What is the structure that enables these guys to produce this great resource?"

One element instilled by founder Wales is an ethic of self-governance and treating others with respect. In many online communities, personal insults fly freely, often fueled by youth and anonymity. Wikipedians, however, do not cotton to personal attacks. "The elbows are sharp on Wikipedia. It's not cuddly. But at the same time, I'm not entitled to call someone a bleep," says McAfee.

Another reason the governance structure works, adds Lakhani, is that it is transparent—everyone's edits can be read and commented upon by anyone else.

But the real basis of Wikipedia governance is a collection of policies and guidelines developed over the years that defines everything from article evaluation standards to the etiquette surrounding debate.

"When I got involved in this Article-for-Deletion process [read more about McAfee's wikipedia experience here] they kept citing chapter and verse the policies and guidelines to me," McAfee says. "It really showed me how much Wikipedians rely on these—they really are the foundations that Wikipedia uses.

"So you've got a very clear set of criteria for telling your fellow Wikipedians, 'Here's my contribution, here's why it's valid and needs to be included,' " McAfee continues. "Now, you can argue about the wordsmithing and the structure of the article, but as far as the core question of what goes into an article, they've got that largely nailed."

The Lesson for IP Litigators?  Collaborative Dispute Resolution Negotiation or Mediation

Web 2.0 continues to pile up the evidence that collaboration beats competition hands down, time after time.  It is anarchy (there's no -- or very little -- hierarchical structure).  But its not unprincipled.

Can we "wikipedia" our way to the resolution of a hotly contested mega-buck patent infringement case? 

Well.  Yes. 

The collaborative structure to do so?

Negotiation and mediation processes, both of which can be played competitively (distributive bargaining) or collaboratively (interest-based or integrative bargaining).  See e.g., the single-issue monetized shuttle no intake lawyer controlled mediation; Legally Astute Negotiating; Negotiating Past Impasse; and, the Tip of the Iceberg. 

More on the application of these principles to the settlement of your IP lawsuit tomorrow.

• Print
• Comments
• Trackbacks

(photo Fountain's Abbey by Jim Moran)

Andrew Sullivan's Quote of the Day

The present day shows with appalling clarity how little able people are to let the other man's argument count, although this capacity is a fundamental and indispensable condition for any human community. Everyone who proposes to come to terms with himself must reckon with this basic problem. For, to the degree that he does not admit the validity of the other person, he denies the ‘other’ within himself the right to exist – and vice verse. The capacity for inner dialogue is a touchstone for outer objectivity.

C.G. Jung, The Transcendent Function.

Dogs Barking, Border Wars and Copyright Infringement

 I was talking politics and the law of copyright in my backyard (really!) with my friend the songwriter and novelist Kathleen Wakefield yesterday. 

At the end of a long discussion about ownership rights and the Internet, I said, "if you're able to see the other side of an issue, it's difficult to be a zealot.  Life would be so much easier if I could see only one side."

Then I saw Jung's quote.  It was sufficiently synchronistic to ponder the core of most disputes -- whether the conflict arises over international borders or the neighbors' barking dogs -- our inability (or unwillingness) to walk a mile in another man's shoes.

Business people who think their disputes are "only about money" haven't seen what I've seen. 

They haven't seen a tough businessman well up in tears at the moment he realizes that the law will not "make him whole" for the loss of an entire shipment of goods by the warehouse retained to house them before re-shipment. 

They haven't seen two warring patent holders sitting down for the first time after years of litigation talking with great animation and sudden fellow feeling about their own bitter historic experiences of others' infringing their patents.  They haven't seen those men pat one another on the back at the end of the day; heard the plaintiff call the defendant "bro"; and, promise to sit down the following week to hammer out the details of their agreement in principle.  

They haven't seen prejudice evaporate at conference tables all over Southern California when gay plaintiff meets with straight defendant, agent with former client, black employee with white employer, and, disabled plaintiff with small businessman. 

They haven't seen entire families torn apart by the suddenly increased value of a small piece of Los Angeles real estate fall weeping into one another's arms after -- once again -- years of litigation and even more years of estrangement.

These are not the exception.  They are the rule.  And they cut across all of the neat categories we like to build to distinguish one set of conflicts from another.  They apply to litigation where the amounts in controversy are in the hundreds of millions of dollars.  They apply to those brave and valiant souls who seek reconciliation with the (imprisoned) men and women who have murdered, raped or disfigured them or their loved ones.

What is it about the processes of international diplomacy, restorative justice, victim-offender  and civil mediation that can accomplish these "impossible" results?

In my experience, it is primarily narrative.  When people have what my international diplomacy professor called "spiritual conversations," they inevitably stumble upon the epistemological truth that we are one; that your interests and mine are essentially the same; that by drilling a hole in your side of the boat, my side sinks as well; that your story is my story -- one of family ties supporting us through times of loss or broken by lies and betrayal; one of love and grief; ill health; good times; triumph,  death, passion, error, accountability, forgiveness, and reconciliation.

It may seem sentimental, but I let myself go there on Sundays, the day "my" people -- Presbyterians -- set aside to attend to the spirit.  A day reserved for "sentiment" before going back into the material world to make the always challenging effort to apply spiritual lessons to the trials of the worldly world. 

So, today, a glorious sunny Sunday in Los Angeles, I wish all my readers a fulfilling, relaxing and meaningful "day of rest" before tackling the great and messy project of moving one's own agenda through the cross-agendas of others.  A week of asking ourselves what the other guy's story might be.  A week of permitting ourselves to set aside our pre-conceptions in favor of encountering the unique but familiar experience of another human being who is, after all, pretty much just like us. 

For marketing solutions that  highlight a product's best features, take a look at the affiliate report.  The affiliate program helps businesses succeed through web marketing plans. Affiliate applications include ppc advertising, adsense and others. Numerous web hosting providers partner with Affiliate to provide domain registration.  Affiliate marketing information is widely available on the internet, including basic affiliate resource tools such as banners, links, and buttons.

• Print
• Comments
• Trackbacks

See today's Cal Law report on the "crippling sanctions" against Toshiba entered by an East Texas federal judge in patent litigation with Juniper Networks, Inc. (sorry; subscription required).

Cal Law reported that:

Judge T. John Ward slammed Toshiba for "willfully and intentionally" violating the court's order to produce evidence during discovery in a patent infringement case involving Juniper Networks Inc., [specifically its] critical computer code known as BIOS . . . "

If you're a seasoned litigator, you've been here at least once yourself.  During the deposition, a witness testified that Toshiba's BIOS code was not "unavailable" as represented to the Court, but was in Toshiba's possession and available for production.  

The sanctions? They include:

cutting by half Toshiba's voir dire time, number of juror strikes and opening statement time — as well as limiting by two-thirds the company's closing statement time at trial . . . [and] prohibiting Toshiba from using any expert witnesses who could speak about non-infringement at trial. . . .

The Judge also indicated that he "plans to instruct the jury that the company intentionally withheld evidence."

Extraordinary writ of mandate anyone? 

• Print
• Comments
• Trackbacks

We received the below announcement yesterday from Les Weinstein's and my good friend Martin J. Trupiano, with whom we both worked.  I worked briefly with Marty at the (now departed) Los Angeles office of Pepper, Hamilton & Scheetz, and Les worked with him for a much longer time at, successively, Pepper; Graham & James and, finally, Squire, Sanders & Dempsey.

Here's the thing about Marty.  He's not simply a sophisticated, creative, careful and dogged advocate for his IP clients, he's truly one of the nicest people I've ever known.  (Is that libel per se when applied to a litigator?)  Marty's no push-over.  But he is one of the last of a breed -- the gentleman lawyer who relies on depth of knowledge, skill and, yes, cunning, rather than threats and obstruction.

If I needed an IP lawyer, Marty would be the first attorney I would call.  He's particularly dear to my ADR heart because he knows the difference between a legal position and a business opportunity and is always ready to craft a deal rather than to endlessly pursue litigation.

An example of Marty's generosity:  when I asked Marty if he'd co-teach a session of my ADR class at Pepperdine Law School on the resolution of religious issues on the job, he did as much or more work than I do in preparing for the class; met with me for two hours to discuss the issues in detail (an experience that deepened my own understanding immeasurably) and taught the class to rave reviews from my students.  Gratis.  For the love of the subject.

He's one of the good ones.  If anyone's looking for representation, you couldn't do better at any "big firm" than to take advantage of Marty's "big firm" expertise in his new boutique practice.

All of that said, here's Marty's announcement:

MARTIN J. TRUPIANO

is pleased to announce the opening of the

LAW OFFICES OF MARTIN J. TRUPIANO

The firm will represent companies and individuals in business litigation relating to patent, trademark and, copyright infringement, theft of trade secrets, unfair competition, antitrust violations, licensing disputes, breach of contract, and other commercial claims in federal, state and arbitral forums in California and throughout the United States.

Referrals welcome.

16000 Ventura Blvd.
Suite 1000
Encino, CA 91436
Telephone: 818-783-5151
Facsimile: 818-783-8585
Email: mailto:MTRUPIANAOLAW.COM

• Print
• Comments
• Trackbacks

(click on image to order text)

I recently surveyed some of my "linked in" contacts to determine the critical "deal points" IP attorneys should come prepared to a mediation to resolve. 

The few points I mentioned off the top of my head were:  licenses & royalty rates, including fields of use/territorial restrictions and beneficiaries (e.g., current and future affiliates, downstream customers, distributors and sales representatives); potential business synergies; indemnities; identification of IP to be transferred/licensed (e.g., patent applications, know-how, trademarks, copyrights); approvals by affiliates and third parties; assignability and succession; waivers and, dispute resolution regarding performance of the agreement.

Here are the extremely useful responses generously provided by IP attorneys Timothy Fearnside, Paul Jorgensen and Todd Sullivan.

Timothy Fearnside  (Associate General Counsel at Boise State University) suggests the following (after noting that his list comes "from the perspective of University counsel, which is often within the context of sponsored research -- an animal unto itself.")

1. Perhaps most important, make sure you define both the IP and the ownership issues carefully, i.e., does it include prior research; future or related inventions; any differences between IP developed solely by one party, or jointly?, etc.
2. When dealing with Universities, publication rights will often prove sticky, i.e, while Universities may be willing to license IP to third parties, they are typically reluctant to surrender publication rights, and/or, the right to use research results for University purposes. You may need to address these types of issues in your agreement.
3. Exclusivity.
4. Termination/renewal/revocation, i.e., is there a time frame under which the licensee must patent and/or commercialize the invention? If so (and if the licensee fails to do so within the allowed time), does the license revert back to the licensor? May the licensee extend the license? 
5. Confidentiality/non-disclosure issues. 
6. Use of copyrights, trademarks (also IP, of course, but often a separate issue) 
7. Miscellaneous- warranties (if any), liquidated damages, limitations on damages, jurisdiction, venue, attorney fees.

Thanks Tim!

Paul Jorgensen, owner of the Jorgensen Law Firm PLLC was also generous with his response:

Don't forget term, termination and post-termination obligations. These seem self-evident, but I have seen many agreements fall apart because they forget them. I would also suggest that the parties agree on the level of confidentiality they want about the agreement, the relationship going forward, and materials they may exchange during that relationship. Although not clear from your question, you need quality control provisions if you are licensing.

Paul wisely suggested omitting "potential" business synergies from an agreement as "imprecise" and "prospective."  Wise counsel.  I was, however, suggesting that the parties discuss potential business synergies on their way to a negotiated resolution -- synergies that could be precisely defined after an agreement in principle is reached. 

Thanks Paul!

Finally, Todd Sullivan, Managing Attorney at Hayes Soloway PC, weighed in with the following: 

I am not sure this business deal would be substantially different from any other IP business deal, so I would take a look at all the 'deal points' of a standard IP agreement.

I would add choice of law and forum. If the license is exclusive, will the licensee have the right to pursue future infringement cases against third parties?

Minimum royalties (which may be required both to continue the license and to satisfy past transgressions).

Other hurdles to reach a deal may include compensation for past acts (and release thereof), willingness to license, and publication of the settlement (IP owners like to show others they successfully enforce their rights).

Finally Paul recommended a book on Patent License Agreements by Brian Brunsvold that I will definitely pick up before my next patent infringement mediation.  

Thanks Paul! and to you all!

• Print
• Comments
• Trackbacks

From IP Frontline.com we are given yet another reason why it makes sense to take your IP back into your own hands by negotiating a business deal with your legal adversary.

Patent Rendered Invalid through Grammatical Error by Harold Wegner

In Microstrategy, a panel affirmed a summary judgment of invalidity under 35 USC § 112, ¶ 1, keyed to poor English usage. The Court’s conclusion rendered fatal the patentee’s grammatical mistake.

He should have claimed ““the client system transmitting the retrieved information to the at least one web server”, but he instead claimed “the client system using and transmitting the retrieved information to the at least one web server[.]”

As a matter of English grammar, the clause rendered the claim indefinite because it “lacked an object, and there was more than one plausible way to correct the error (i.e., by adding an object or deleting the phrase ‘using and’). [The patentee] contend[ed] this was error, and that the district court should have instead construed ‘the retrieved information’ to be the object of both ‘using’ and ‘transmitting.’”

For the complete article, click here.

• Print
• Comments
• Trackbacks

Why is this man smiling?

Because he's CyberSettle's mascot.  What's CyberSettle?   A patented "online, double-blind bid system . . .  followed by . . . telephone facilitation . . . allow[ing[ parties to resolve [disputes] quickly and confidentially."

At least that's what CyberSettle's year old press release -- Cybersettle Wins Major Patent Infringement Suit -- says.  

I'd never heard of either CyberSettle or of any other online settlement "system" until I stumbled upon the smiling man and read the press release (extremely reduced) below::

Cybersettle [which] was awarded United States Patent No. 6,330,551 for the Computerized Dispute Resolution System and Method . . . [brought suit against the] National Arbitration Forum (NAF) [for infringement, after which] the New Jersey Federal District Court ruled that two versions of NAF’s online dispute resolution system in New Jersey were in direct violation of Cybersettle’s patent . . . that covers, among other things, an automated, online, double blind, dispute resolution system capable of multiple rounds of bidding. 

If any of our readers have ever used CyberSettle's system (or the NAF infringing system) we'd love to hear about your experience.

• Print
• Comments
• Trackbacks (1)

I was at a garden party yesterday, talking to "Fred," the CEO of a fiber-optics company, about patent litigation.  I was opining that litigation often didn't make economic sense, particularly in high tech fields where everyone pretty much has to cross-license everyone else. 

He disagreed and we had a lively debate until some kind soul (my husband) reminded us it was a wedding reception for goodness sake and to try to think about something other than business for a minute.

Good advice. 

But before going to bed, I picked up the Sunday Times to find Michael Fitzgerald's article, "A Patent is Worth Having, Right?  Well, Maybe Not" questioning not just bare-knuckle litigation, but asking why businesses should bother to patent their technology in the first place.

Here's the gist, two researchers have analyzed patent acquisition, commerce, and litigation data gathered for the period 1976 through 1999. What did they find?  Pretty much the same thing I was (anecdotally) telling "Fred." 

[S]tarting in the late 1990s, publicly traded companies saw patent litigation costs outstrip patent profits. . . . [A]bout $8.4 billion in global profits came directly from patents held by publicly traded United States companies in 1997, rising to about $9.3 billion in 1999, with two-thirds of the profits going to chemical and pharmaceutical companies. Domestic litigation costs alone, meanwhile, soared to $16 billion in 1999 from $8 billion in 1997.

Things have probably become worse since then . . . there were 2,318 patent-related suits in 1999, and 2,830 in fiscal 2006 . . . Worse. . . companies doing the most research and development are sued the most.

All of this research and more will be available next year when B.U. Law School Professor James Bessen and his colleague, Mciahel J. Meurer publish their book "Do Patents Work?" (synopsis and working chapters here). 

Apparently, Bessen and Meurer's work doesn't go as far as does the thinking of others such as economists Michele Boldrin and David K. Levine "who argue that the patent system should be abolished." (their work can be found here)

Though others have pointed out flaws in Bessen's work, they admit the numbers are "provocative."

The article is well worth a read and the entire matter serious thought.

• Print
• Comments (1)
• Trackbacks

We'd like to introduce you to our absolutely favorite legal cartoonist, the brilliant and prolific Charles Fincher of LawComix.com.

If your IP lawyer has done some really really terrific work for you lately (or your IP associate) you might buy one of Fincher's "off the rack" cartoons or, for that really special lawyer, commission Charles to draw an original.

Happy Friday the 13th and a big IPADRBLOG thank you to Dennis Crouch at Patently O for mentioning our new IP ADR blog and driving to our site a lot more people than we would otherwise have seen at this stage in our development.

A big pink peony of thanks to you Dennis!  If there's ever anything we can do to repay the favor just let us know and it will be done.

• Print
• Comments
• Trackbacks

This is the third part of a three-part interview with Jay Taylor, a partner with the Indianapolis, Indiana law firm of Ice Miller. Mr. Taylor's primary practice area is intellectual property law with a focus on patent, trademark, copyright, and trade secret litigation and mediation. He also concentrates in business aspects of intellectual property law such as acquisition, sale and licensing of intellectual property assets, and computer hardware and software sale and licensing.

MS. PYNCHON: Do you believe that the speed at which technology is changing these days should make mediation even more attractive to attorneys handling IP disputes?

MR. TAYLOR: I can tell you that the technology most effecting litigation practice today is electronic discovery. The new rules and case law on that topic are going to make discovery even more burdensome than it already is. And I’ve no doubt it will be abused by some attorneys for the sole purpose of forcing the opposition to capitulate.

Moreover, as technology advances, the costs required for experts to explain the technology in terms the court and jury can understand increases exponentially.

However, it is true that advances in the client’s patented technology often has an impact on the parties’ desire to settle a lengthy case. Many years ago, I was involved in a case involving a patent on controlling pattern stitching on sewing machines. While the case was pending, the technology advanced to the point where the patented technology was obsolete. The new technology was vastly superior and the old patent was worthless. The case settled quickly and reasonably because the whole market changed. This is going to be even more evident in the future as old technology is replaced more rapidly with new technology.

We will always, however, have the trolls with us, who attempt to reinterpret old patents to cover the new technology. Still, in many fields, the valuable life a patent is more limited today than it used to be by virtue of technology’s volatility.

MS. PYNCHON: Do IP disputes have other characteristics that make them uniquely appropriate for mediation?

MR. TAYLOR: I think the primary reasons IP cases and particularly patent cases are particularly good candidates for mediation is the cost of the litigation and the unpredictability of the results. The law itself is always in a constant state of flux. But with the Supreme Court overruling the Court of Appeals for the Federal Circuit on a regular basis in several very significant areas, that flux has increased to the point that very little is certain.

A patent case that may have looked very good several years ago, may now look less appealing because the standards for obviousness have been lowered, or the likelihood of an injunction reduced, or the likelihood of a willful infringement determination due to the failure to product an attorney opinion undermined.

Trademark disputes raise a whole set of other issues. Most often, the goal is an injunction to prohibit continued use of the infringing mark. Damages are usually less of a concern, so money alone is not going to get the matter resolved. Here, creative settlements are a premium and often the only way a trademark dispute can be resolved.

I once had a trademark case where the two clients reached a business settlement in the courthouse hallway as I was picking a jury. That is a case where mediation would probably have produced a comparable settlement much earlier and at much less expense to both sides, but neither the court nor the parties pursued mediation. At that time, mediation was not as widely recognized and practiced as it is today. Today, knowing what I now know, I would push such cases harder toward mediation.

MS. PYNCHON: Are you seeing a marked increase in mediation in your practice.

MR. TAYLOR: Oh, yes. Quite a bit. I am seeing more and more attorneys recognizing the benefits of mediation and counseling their clients to agree to it. Some courts are also beginning to recognize the benefits of mediation and pushing for and implementing rules for court ordered mediation. The Court of Appeals for the Federal Circuit has implemented a mediation program for all cases appealed to that court. Personally, I think that by the time a case gets to appeal, it is too late to mediate. Only time will tell if the program works.

MS PYNCHON: Thank you so much for sharing your experience and insights with us. It’s been very illuminating and education for me. Do you have any parting thoughts?

MR. TAYLOR: Yes, the mantra for the modern businessman should be "mediate, don't litigate." Litigation is costly, time consuming and disruptive for a business. Businessmen want as few uncertainties in their business as possible, and the result of litigation, by its very nature, is totally uncertain. Mediation, on the other hand, provides both sides with an opportunity to resolve a dispute on terms that are mutually acceptable at a cost far less than litigation. If the dispute is one that can possibly be settled, every attempt should be made to do so as early as possible through negotiation, and if that fails, through mediation.

• Print
• Comments
• Trackbacks

Julie Turner of the Turner Law Firm has platinum educational and law firm IP experience.  In the LinkedIn Q & A section, she responds to Supriya Sun's  inquiry about the available "techniques and approaches for assessing (and extracting maximum value from) an owned patent portfolio" as follows:  

 

There are a number of ways to value IP, from the "Monte Carlo Method" (really a combination of other ways), to assessing the prices and availabilities of alternatives, to looking at royalty rates in an industry and for what type of IP, to determining whether to license separately or as a portfolio.

There is an outstanding article on this topic at WIPO: Really goes through it very nicely and it's freely available.

One of the best IP valuators and writers on this subject is Richard Razgaitis. His qualifications are unparalleled for this kind of thing. He wrote a book called "Valuation and Pricing of Technology-Based Intellectual Property" that I highly recommend.

Another source if you are near a good library is the journal, Les Nouvelles. This is the journal of the Licensing Executives Society, a fabulous journal all about licensing and IP valuation.

• Print
• Comments
• Trackbacks

(PHOTO BY Jason Matthews)

I am slowly coming to understand the power of LinkedIn, recommended to me by my favorite marketing guru (not just my web log guru) Kevin O'Keefe at LexBlog.

LinkedIn not only connects you with your market's markets, it also provides some pretty high level advice.  Here, I reprint an answer to the question:  What's the Best Way to Handle Licensing.  The question was asked by a "third degree" contact of mine -- systems architect Paul Robichaux.  

The question was answered by several LinkedIn experts.  This answer in the international marketplace was provided by Legal & IPR Counsel at TNO ICT Folkert J.M. Teernstra:

The aim of any licensing model is to extract the added value created during research and development. In an ideal world, you would aim for the maximum value. However, this is not always possible. In case of ongoing development you might have a need for instant cash. This can be accomplished by either licensing against a lumpsum or by an arrangement that allows for advance payments of future revenues. This is often called "frontloading". It goes without saying that this is usually not the best way to maximize returns.

If you have no "frontloading" requirements, a better way to maximise returns would be to charge for a combination of a one-off fee for access to background knowledge and turnover-dependent per item payments (royalties). In this arrangement, the licensee is usually free (within certain limits !) to set their own selling price. This is a preferred model where the licensee has better insight in a specific market than the licensor. However, make sure you ask for minimum annual license fees !

As to technology valuation, there are three classic approaches: cost based, market based and income based. The overall license fee paid by the licensee should be a reasonable percentage of the true market value. If you overcharge, the market will probably not buy your licensees product..There is a rule of thumb called the "25% rule".

As an alternative you could also consider a distribution or OEM or white label agreement with a reseller. In this case an IPR license would not be required.

Once you have determined the value of your technology and the appropriate licensing model, have a license contract drafted by an experienced licensing professional or a lawyer with experience in this field. Especially in case of cross border licenses there are numerous possible complications, eg in some jurisdictions you are not allowed to charge for expired patents, in others your licensee might be required to pay a witholding tax (to be deducted from YOUR license fee..) or you license arrangement might be held to be anti-competitive.

Be also VERY aware of the risks involved in granting a patent indemnification to your licensee. This is best avoided altogether.

There are many pitfalls in technology licensing. If substantial amounts of money are involved in your technology product, hire a professional !

Mr. Ternstra cautions, of course, that

THIS IS NOT A PROFESSIONAL LEGAL ADVISE AND MAY NOT BE CONSTRUED AS SUCH. I TAKE NO LIABILITY FOR ANY ACTS OR OMISSIONS THAT MIGHT RESULT FROM THE TEXT ABOVE.

• Print
• Comments
• Trackbacks

Someone on a local IP Bar Association listserv has been looking for a reliable, affordable trademark search service.

So far the following have been identified:  www.markmonitor.com and www.trademarkinfo.com.

Do our readers know of any others?

Thanks.

• Print
• Comments
• Trackbacks

Entrepreneurship:  the process of identifying, developing, and bringing a vision to life. That vision may be an innovative idea, an opportunity, or simply a better way of doing something.  The end result of this process is the creation of a new venture, formed under conditions of risk and considerable uncertainty.  See also the Adeologue Blog on Entreprenerial Negotiation.

Interest-based or Integrative Bargaining:   (a) bargaining strategy that focuses on satisfying as many interests or needs as possible for all negotiators; (b) a problem-solving process used to reach a solution that addresses the parties' needs and desires; (c) the alternative to distributive bargaining which focuses on distributing rewards from a single fixed item of value, such as real or intellectual property; a business opportunity; or a fixed sum of money or number or type of goods; (d) an approach to negotiation in which the resources at issue are believed to be unlimited; the parties' creative negotiation strategies able to increase available resources; and, multiple satisfactory resolutions exist.  See Engineering Management Blog on Value Based Negotiation.

Intellectual Property Entrepreneurial Negotiation:  Strategic alignment, as described in Building a Strategy Pyramid at Entrepreneur.com,  is just one of the ways to use interest-based or "integrative" negotiaiton techniques to make your intellectual property more valuable by aligning your needs and interests with those of a strategic partner.  Also see Austin Software Council Start-Up Tips.

And dispute resolution?  Because litigation is just one of the many bargaining chips available to parties in negotiating future business opportunities, all of the above resources can improve your ability to maximize the monetary and future potential value of any IP litigation you have commenced or to which you have been made an unwillingly party.  

• Print
• Comments
• Trackbacks

In a recent post, the Creative Generalist Blog interviewed inventor Adrian Chernoff.  The interview is primarily about creativity (and well worth reading for that reason).  We reprint here, however, that part of the interview concerning Chernoff's view of how the patent process is driving more and more conflict today than ever before.       

Adrian Chernoff, (left) is the Chief Creative Officer of Ideation Genesis, an innovation company based in Boulder, Colorado. He creates and develops a wide array of novel consumer goods – everything from story-telling products to technology products.  

By his thirty-fifth birthday he received his 50th U.S. patent in addition to the dozen international patents he already held.  At General Motors he was awarded the title of Master Inventor and the Chairman’s Honor Award for leading GM’s pioneering efforts in developing the AUTOnomy, Hy-Wire, CARousel, and Sequel technology vehicles. At Walt Disney Imagineering he worked on creating theme park rides, and at NASA, he developed new concepts and hardware for their space programs.

Q:  Your site www.adrianchernoff.com proudly touts that you have 60 patents (from 112 applications). What is your view of the patent process and the changing nature of intellectual property?

A:  The patent process is relatively new the United States, but it is accelerating. In 1836 the first patent was issued and it took 75 years until the first millionth patent was issued in 1911.

The seventh millionth patent took 10% of the time than the first million at 74 months. I have done some basic calculations and I estimate the eight millionth patent will be issued on April 20, 2010, just 49 months later.

It is evident that more and more patents are being issued every day even thought the backlog is increasing with an average award time of 2.5 to 4 years.

The patent process is starting to yield patents that are both more valuable and quantifiable. Patents are fueling new business start-ups with equity financing and are becoming viable means for proving the inventor(s) on record.

In today’s age more and more lawsuits are being awarded for patent infringement and that’s a good sign. It means that patents are becoming a commodity. As patents become more important so does the role of the inventor and the need for inventors.

The patent process is expensive and is time consuming, but it can be rewarding. This is the only process that can give an organization or an individual a legal monopoly for a short period of time.

And because of this monopoly there are organizations that have cropped up that are patenting things to own them like real estate holdings. These organizations have no intent on turning the patents into products and services, but rather to cash in them at a later date.

This new business model may cause more conflict than growth in the future.

• Print
• Comments
• Trackbacks

(photo:  Surfer Girl by Chris)

Why an IP ADR Blog?

We litigators are trained to organize party interests around legal theories. Our clients, however, organize their thinking around their business interests, which often involve potential synergies with the competition.

Whether you're negotiating the settlement of your IP case or striving to obtain a more efficient arbitral resolution, it's helpful to have a "coach" or neutral who is as attuned to potential business solutions to legal problems and s/he is to the legal strategies already being pursued.

That's why we're joining the high-level conversation about IP commercial, regulatory, legal and technical issues already underway in the IP blogs we've listed in our sidebar.

Collaboration and reciprocity are the by-words of the blogosphere and the key to the settlement -- or the effective management -- of complex IP litigation.

We're looking forward to learning from those already at the table and hopeful that we'll be able to add value for everyone who preceded us here, be they transactional or trial attorneys, General Counsel or the executives they serve.

 We're here to listen and to connect. 

 Whether you were first introduced to us by our (old) blogger site or are finding us for the first time here, please pause to leave us a comment, letting us know who you are and how we might best serve you.

• Print
• Comments (1)
• Trackbacks

Mr. Taylor is a partner with the Indianapolis, Indiana law firm of Ice Miller. His primary practice area is intellectual property law with a focus on patent, trademark, copyright, and trade secret litigation and mediation. He also concentrates in business aspects of intellectual property law such as acquisition, sale and licensing of intellectual property assets, and computer hardware and software sale and licensing.