federal judicial center

One Columbus Circle N.E.

Washington, D.C. 20002

fjc.dcn

www.fjc.gov 
Patent Mediation Guide

KATHI VIDAL

Winston & Strawn LLP

LEERON G. KALAY

Fish & Richardson PC

PETER S. MENELL

University of California, Berkeley, School of Law

MATTHEW POWERS

Tensegrity Law Group

SARITA VENKAT

Federal Judicial Center

2019

This Federal Judicial Center publication was undertaken in furtherance of the 

Center’s statutory mission to develop educational materials for the judicial 

branch. While the Center regards the content as responsible and valuable, it does 

not reflect policy or recommendations of the Board of the Federal Judicial Center.
first printing

© 2019 Peter S. Menell, Kathi Vidal, Leeron G. Kalay, Matthew Powers, Sarita 

Venkat
iii

Contents

I. The Dispute Resolution Spectrum ....................................................1

II. Benefits of Mediation ..........................................................................3

A. Control Over the Process ................................................................4

B. Ability to Reach Business-Driven Solutions ................................6

C. Cost Savings ......................................................................................6

D. Confidentiality ..................................................................................7

1. State Confidentiality Provisions ............................................ 10

E. Non-Binding Facilitator ............................................................... 10

III. Negotiation Paradigms and Their Determinants ....................... 11

A. Understanding the Technology and Value of the Case ........... 12

B. Understanding the Procedural Posture of the Case ................. 22

IV. Strategically Crafting a Mediation for Success ........................... 28

A. Matching a Mediator to the Business Issues of the Case ......... 29

B. Attendees ........................................................................................ 32

1. Client Representatives ............................................................. 32

2. Litigation Counsel .................................................................. 33

3. Experts ...................................................................................... 33

C. Timing ............................................................................................ 34

1. Conducting Mediation at the Onset of a Case ..................... 36

2. Conducting Mediation After Initial Infringement and 

Invalidity Contentions ............................................................ 37

3. Conducting Mediation After Claim Construction Hearing .. 38

4. Conducting Mediation After Claim Construction Order .... 39

5. Conducting Mediation After an Inter Partes Review Filing .. 40

6. Conducting Mediation After the Close of Discovery and/or 

After the Court Rules on Summary Judgment Motions .... 41

7. Conducting Mediation After an Inter Partes Review

Determination ......................................................................... 42

D. Premediation Submissions .......................................................... 42
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E. Sessions and Duration .................................................................. 43

1. Presession Conferences ........................................................... 43

2. Opening Session ....................................................................... 43

3. Mediation Sessions .................................................................. 44

F. Location .......................................................................................... 44

V. Preparing for Mediation—For Mediators ..................................... 46

A. Mediation Statement—An Opportunity for Early Case 

Assessment ..................................................................................... 46

1. The Parties, Their Businesses, and Their Dispute History .. 47

2. Infringement Contentions ...................................................... 47

3. Invalidity Contentions ............................................................ 48

4. Claim Constructions ............................................................... 48

5. Financial Information ............................................................. 49

6. Other Information to Be Exchanged .................................... 49

7. Addressing Concerns Regarding “Early Discovery” ........... 49

8. Information That Should Only be Provided to The 

Mediator ................................................................................... 50

B. Defining the Format and Structure of the Mediation .............. 52

VI. Preparing for Mediation—For Parties and Counsel .................... 54

A. Obtaining the Necessary Information ........................................ 54

B. Analyzing the Necessary Information ........................................ 57

C. Preparing and Educating the Participants in the Mediation ..... 59

D. The Mediation Statement ............................................................ 60

Appendix A: Table of Mediation Rules by Jurisdiction ..................... 63

Appendix B: Exemplary Mediation Confidentiality State Provisions... 85
v

Preface

Mediation can be an effective tool in resolving simple to complex patent 

litigation. As the volume of patent cases has increased around the country, the number of experienced mediators and parties that have participated in the mediation process has also increased. This guide collects the

knowledge of experienced judges, mediators, counsel, and parties to promote cost-effective, time-effective, and constructive dispute resolution.

Much of the practical information contained within this guide was derived from interviews with federal judges, patent litigators, and in-house 

attorneys familiar with conducting patent mediations. These sources are 

not quoted directly so as to preserve anonymitywith regard to their views 

on particular issues.

1

This stage-by-stage and issue-by-issue guide supplements the Patent 

Case Management Judicial Guide (PCMJG),2 a comprehensive treatise 

developed for the federal judiciary. The PCMJG addresses the mechanics, timing, and considerations for effective mediations when judges are 

managing patent cases. This supplement addresses issues specific to mediators (magistrate judges and private mediators) and in-house and litigation counsel. 

 

1. The authors are deeply grateful to the many colleagues who helped develop this 

guide through their conversations, substantive and editorial suggestions, and research. 

In particular, we thank Judge (and FJC Director) Jeremy Fogel (retired), Judge David 

Folsom (retired), Judge James Rodney Gilstrap, Magistrate Judge Paul Grewal (retired), 

Judge Faith Hochberg (retired), Magistrate Judge Edward Infante (retired), Magistrate 

Judge Elizabeth Laporte, Judge Paul Michel (retired), Judge James Ware (retired), Tony 

Baca, Marta Beckwith, Taj Clayton, Mike Gaddis, Shirish Gupta, Hannah Jiam, Mark Le 

Hocky, Gabriella Libin, Francisco Lozano, Alana Mannigé, Prachi Mehta, Thomas 

Melsheimer, Taufiq Ramji, Michael Rueckheim, Allison Schmitt, Noorossadat Torabi, 

Holly Victorson, and Andrew Xue. We also thank Maria Beltran and Amit Elazari for 

their excellent research assistance.

2. Peter S. Menell et al., Patent Case Management Judicial Guide (3d ed. 2016) (hereinafter cited as PCMJG), available at https://fjc.gov/content/321534/patent-case-managementjudicial-guide-third-edition.

1

I. The Dispute Resolution Spectrum

Methods for dispute resolution without formal adjudication by a judge 

or jury, commonly known as “alternative dispute resolution” (ADR), 

vary in application and effectiveness. Recently, the term “alternative dispute resolution” has lost favor to the terms “appropriate dispute resolution” and “process pluralism,” reflecting both the differences in dispute 

types and the wide range of alternatives to litigation.

3 Each of the three 

most prominent models—negotiation, mediation, and arbitration—offer differences with respect to control, cost, and time to resolution.

Figure 1. Spectrum of Dispute Resolution Options

Table 1 compares the three principal ADR modes.

 

3. Carrie Menkel-Meadow, Mediation, Arbitration, and Alternative Dispute Resolution (ADR) (UC Irvine School of Law Research Paper No. 2015-59), https://papers.ssrn.

com/sol3/papers.cfm?abstract_id=2608140. 
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Table 1. Comparison of ADR Modes

Approach Advantages Disadvantages

Negotiation Allows parties to 

reach a mutually 

beneficial outcome 

through collaborative discourse4

• Greater ability to keep 

proceedings confidential and privileged

• Cheaper and faster than 

litigation

• Improves communication between parties 

and opens a dialogue

• May disadvantage a 

party with less negotiating experience or 

expertise

• Unstructured nature 

may increase tension 

and lead negotiations 

to be more adversarial 

than other forms of 

ADR

Mediation Involves a third 

party to oversee the 

process, assist the 

parties, and facilitate in negotiations 

for settlement5

• Parties have greater 

control over the outcome of the dispute

• Privacy and confidentiality are better preserved through mediation than in litigation

• A skilled mediator can 

improve the likelihood 

of resolution

• Cheaper and faster 

than litigation

• Mediator cannot decide the case and cannot force agreement 

between the parties

• Typically requires a 

skilled mediator who 

has had experience as 

a judge, patent litigator, or senior in-house 

counsel

• No formal process for 

discovery

Arbitration May be binding, 

with limited review 

and appeal rights, 

depending on the 

arbitration agreement.6 Enforcement relies on judicial remedies, by 

pursuing an action 

to “confirm” an 

award

• Can be cheaper and 

fasterthan litigation

• Privacy and confidentiality are better preserved than in litigation

• Parties may choose an 

arbiter with specific expertise in the subject 

area of the case

• More expensive than 

other ADR options

• Discovery is more 

limited than in litigation, but significantly 

more expensive than

in other ADR options

• Fewer options for appeal than in litigation

 

4. Roger Fisher, William Ury & Bruce Patton, Getting to Yes (2011). 

5. William E. Simkin, Mediation and the Dynamics of Collective Bargaining 23–25 

(1971).

6. David Horton, Federal Arbitration Act Preemption, Purposivism, and State Public Policy, 101 Geo. L.J. 1217 (2013).
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II. Benefits of Mediation

Mediation has grown as a means of resolving complex patent disputes.7

While detailed empirical research on the effectiveness of ADR options in 

patent disputes is limited,

8 in-house counsel have been embracing mediation over other forms of ADR in growing numbers.9 Many organizations, including the International Institute for Conflict Prevention & 

Resolution’s Patent Mediation Task Force and the Sedona Conference 

Working Group on Patent Litigation Best Practices, have encouraged 

mediation in a wide variety of patent cases.10 In 2005, the Federal Circuit 

created a mediation program that has achieved some success in encouraging settlements at the appellate level.11 Much of the growing popularity 

 

7. See Laura Fishwick, Mediating with Non-Practicing Entities, 27 Harvard J.L. & 

Tech. 331, 333 (2013).

8. See Eugene R. Quinn, Jr., Using Alternative Dispute Resolution to Resolve Patent 

Litigation: A Survey of Patent Litigators, 3 Marq. Intell. Prop. L. Rev. 77, 79 (1999) (concluding, based on settlement data and anecdotal survey evidence, that increased “reliance 

on various forms of ADR is responsible for both the dramatic increase in number of cases 

terminating during the pretrial process and the constant number of patent trials”).

9. See Tom Stipanowich, What Does the Fortune 1,000 Survey on Mediation, Arbitration and Conflict Management Portend for International Arbitration?, Kluwer Arbitration Blog (Mar. 2013), http://arbitrationblog.kluwerarbitration.com/2013/03/14/what

-does-the-fortune-1000-survey-on-mediation-arbitration-and-conflict-managementportend-for-international-arbitration/.

10. See Int’l Inst. for Conflict Prevention & Resolution, Report of the CPR Patent 

Mediation Task Force: Effective Practices Protocol (2013), https://www.cpradr.org/newspublications/articles/2013-01-28-report-of-the-cpr-patent-mediation-task-forceeffective-practices-protocol; The Sedona Conference, Working Group on Patent Litigation Best Practices (WG10), Commentary on Patent Litigation Best Practices: Patent Mediation Chapter (Apr. 2017), https://thesedonaconference.org/system/files/sites/sedona.

civicactions.net/files/private/drupal/filesys/publications/Sedona%20WG10%20Patent%

20Lit%20Best%20Practices-Mediation%20Ch.%20%28Apr.%202017%20ed%29_04-06-

17.pdf [hereinafter The Sedona Conference, Commentary on Patent Litigation Best Practices].

11. See U.S. Ct. App. Fed. Cir., Appellate Mediation Program Guidelines (Dec. 6, 

2013), http://www.cafc.uscourts.gov/sites/default/files/Dec-2013-Revision/mediation%

20guidelines_effective_12-6-2013.pdf.
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of mediation is the result of the control it affords the parties, while also 

providing structure for advancing the discussions. 

A. Control Over the Process

Mediation is a “non-binding negotiation process in which a neutral helps

the litigants resolve a dispute.”12 Rather than focusing on a victor, mediation provides the parties with control over the process, allowing for 

non-binary resolutions beyond the findings and remedies available in the 

courts. If the parties in a patent dispute proceed with the litigation and 

eventually take their case to trial, a large body of rules, statutes, and case 

law govern the proceedings, and the parties typically have little to no 

freedom to tailor the proceedings.

13 In contrast, the mediation process is 

subject to significantly fewer rules and formalities, and the parties have 

much more power to tailor the proceedings to their needs.14 For instance, 

parties in a mediation proceeding usually have control over the following 

aspects of the proceeding:

• The mediator. Assuming they can reach an agreement, the 

parties can choose a mediator to host the proceedings.15

When choosing an appropriate mediator, the parties can 

weigh considerations such as the mediator’s technical 

knowledge, patent law knowledge, temperament, and communication skills.16

• The interactions between the mediator and each of the 

parties. The parties have a significant amount of flexibility 

to structure how a mediator will interact with each party and 

 

12. See Mary Pat Thynge, Mediation: One Judge’s Perspective (Or Infusing Sanity into 

Intellectual Property Litigation), in ADR Advocacy, Strategies, and Practice for Intellectual Property Cases 133, 138 (Harrie Samaras ed., 2011).

13. See Wayne D. Brazil, Effective Approaches to Settlement: A Handbook for Lawyers and Judges 4 (1988).

14. Id.; Craig Metcalf, How Mediation of Patent Disputes Differs from Litigation

(Aug. 20, 2014), https://www.kmclaw.com/newsroom-articles-298.html.

15. See Brazil, supra note 13, at 5.

16. See id.
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how the parties will interact with each other. In some cases, 

the mediator might speak to each party separately; in other 

cases, the mediator might have all the parties in the room 

together and moderate a discussion between the parties.17

• Timing. The parties to a mediation decide when to hold the 

mediation proceedings. This can be particularly helpful as 

events, such as the institution of an inter partes review at the 

Patent Office or exchange of contentions, may drive the parties to a resolution. The optimal timing for any particular 

mediation may be guided by the industry and relative positions of the parties, as discussed in Section IV below.

• The number of sessions. The parties to a mediation can tailor the number of sessions and the duration of each session 

to suit their needs. For example, the parties might wish to 

have a single day-long session, multiple shorter sessions, or 

a single main session with optional follow-up sessions to discuss ancillary details. This may be useful, for example, if any 

of the parties need to use the time between sessions to gather 

additional documents or other information.18

• Location. While a plaintiff in litigation may make decisions 

about forum based on how favorable a particular district is 

toward plaintiffs, that location might not be the most convenient mediation location for either party.

• Participants. Business people have more strategic options 

available with respect to who is involved in the mediation. 

By contrast, the day-to-day decisions of litigation are necessarily driven by lawyers. However, during mediation, business decision makers can have substantially more involvement in all aspects of the proceedings.

 

17. See Metcalf, supra note 14.

18. See id.
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B. Ability to Reach Business-Driven Solutions

The remedies that can result from an adjudication in court are subject to 

several drawbacks. First, the judge and the jury are generally limited to a 

narrow range of remedies prescribed by law, such as monetary damages 

and injunctive relief.19 In addition, judicial proceedings are typically perceived as a zero-sum game that produces a clear winner and loser,20 and 

some parties may be unwilling to risk the possibility of being perceived 

as the loser in the case.

Mediation allows for a much wider variety of outcomes and remedies than litigation. Although the parties in a mediation can still agree to 

solutions that are analogous to damages and injunctive relief that a court 

may award (e.g., private contractual agreements to pay the other party or 

to stop engaging in certain conduct), they also have the ability to consider 

broader, business-driven solutions, such as licensing agreements, supply 

contracts, mergers, and assignments of technology. The ability to choose 

from a broader range of options increases the likelihood that mediation 

will produce a solution that can be integrated into the respective business 

strategies of both parties and does not simply produce a winner and a 

loser.

C. Cost Savings

One of the most obvious benefits of mediation is that it can lead to a 

settlement agreement and allow the parties to avoid paying the costs of 

continued litigation. In 2015, the median litigation cost, through discovery, for patent infringement suits worth $10–$25 million was $2.1 million; adding costs through trial brings the median cost up to $3.5 million.

21 By contrast, the median cost for mediation in such cases, in 2015, 

was $250,000.22 Even where the plaintiff is a non-practicing entity, and 

 

19. See 35 U.S.C. §§ 283–284.

20. See Brazil, supra note 13, at 11.

21. See American Intellectual Property Law Association (AIPLA), 2015 Report of 

the Economic Survey 37–38 (2015).

22. See id.
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discovery costs are presumably lower, the median cost for litigation, 

where $10–$25 million was at stake, was $2 million.

23 Mediation costs for 

the same matters were one-tenth of that cost.24 Apart from the direct 

costs associated with patent litigation, such as attorneys’ fees and expert 

witness fees, early resolution also relieves the parties of the numerous 

indirect costs that drain corporate resources, including engineers’ time 

directed to discovery-related investigation and the distraction of corporate decision makers.

25

D. Confidentiality

Unlike judicial proceedings, which are usually on the public record and 

may attract significant media attention, the proceedings and result of 

mediation can often be kept confidential. If confidentiality is desired, 

participants should, at the outset of a mediation, enter a written agreement providing for strict confidentiality, nondisclosure, and inadmissibility of all mediation communications, including protections for mediation confidentiality and privilege.26

“Mediation confidentiality” has been defined by experienced practitioners as “the obligation of mediation participants to refrain from disclosing and/or using statements and information communicated in a 

mediation outside of the mediation.”27 Such confidentiality has been recognized as “essential to the integrity and success of the Court’s mediation 

program, in that confidentiality encourages candor between the parties 

and on the part of the mediator” 28 and has been recognized in the Alternative Dispute Resolution Act of 1998 (ADRA).

Relatedly, the “Mediation Privilege” has been recognized by courts

as a privilege similar to Federal Rule of Evidence 408, which generally 

 

23. See id.

24. See id.

25. See id. at 2–3.

26. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 17.

27. See id.

28. See In re Anonymous, 283 F.3d 627, 636 (4th Cir. 2002).
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prohibits the discoverability or admissibility of evidence relating to 

“compromise negotiations.”29 Absent express agreement by the parties, 

it is generally accepted that reports to the trial judge of anything other 

than procedural details about the mediation should be precluded.30

The mediation privilege, however, is not universally recognized. 

While several districts have conclusively recognized a federal mediation 

privilege—including the Northern District of California, the Central District of California, the Eastern District of Pennsylvania, and the Western 

District of Pennsylvania31—other districts (notably the Northern District 

of Texas and the District of Minnesota) have disavowed a mediation privilege.32 The appellate courts have not resolved these inconsistencies.33 Even 

in jurisdictions that have recognized a mediation privilege, its scope is not 

 

29. Fed. R. Evid. 408; The Sedona Conference, Commentary on Patent Litigation 

Best Practices, supra note 10, at 16.

30. See PCMJG, supra note 2, at § 2.7.5 (“This same concern for confidentiality usually precludes reports to the trial judge of anything other than procedural details about 

the mediation, such as the dates of mediation sessions, or a party’s violation of court rules 

or orders requiring participation.”); see also Civil Trial Practice Standards § 23(e) (Am. 

Bar Ass’n 2007); Robert J. Niemic, Donna Stienstra & Randall E. Ravitz, Guide to Judicial 

Management of Cases in ADR 111–14, 163–64 (Federal Judicial Center 2001) (“An attorney-neutral should protect the integrity of both the trial and ADR processes by refraining from communicating with the assigned trial judge concerning the substance of 

negotiations or any other confidential information learned or obtained by virtue of the 

ADR process, unless all of the participants agree and jointly ask the attorney-neutral to 

communicate in a specified way with the assigned trial judge.”).

31. See, e.g., Microsoft Corp. v. Suncrest Enter., No. C03-05424 JF, 2006 WL 929257, 

*2 (N.D. Cal. Jan. 6, 2006); Folb v. Motion Picture Indus. Pension & Health Plans, 16 F. 

Supp. 2d 1164, 1175 (C.D. Cal. 1998), aff’d, 216 F.3d 1082 (9th Cir. 2000); Sampson v. 

Sch. Dist. of Lancaster, 262 F.R.D. 469, 476 (E.D. Pa. 2008); Sheldone v. Pennsylvania

Tpk. Comm’n, 104 F. Supp. 2d 511, 513–18 (W.D. Pa. 2000).

32. See, e.g., F.D.I.C. v. White, 76 F. Supp. 2d 736, 738 (N.D. Tex. 1999); E.E.O.C. v. 

Hibbing Taconite Co., 266 F.R.D. 260, 271 (D. Minn. 2009).

33. See Facebook, Inc. v. Pacific NW Software, Inc., 640 F.3d 1034, 1040–41 (9th Cir. 

2011) (“A local rule, like any court order, can impose a duty of confidentiality as to any 

aspect of litigation, including mediation. But privileges are created by federal common 

law.”) (citations omitted); see also Wilcox v. Arpaio, 753 F.3d 872, 877 (9th Cir. 2014); In 

re MSTG, Inc., 675 F.3d 1337, 1343 (Fed. Cir. 2012).
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absolute.34 While disclosure of settlement discussions is generally proscribed by the courts,35 settlement agreements may be used to establish a 

reasonable royalty for damages.36 Likewise, attorneys cannot use the mediation privilege as a shield against allegations of malpractice or other malfeasance.37 With the uncertainty regarding the scope of privilege covering 

mediation discussions and disclosures, the parties should expressly proscribe any use of settlement information by written agreement.38

 

34. See Facebook, Inc., 640 F.3d at 1040–41 (district court held that local rules had 

created a “privilege” for “the parties’ negotiations in their mediation”; appellate court 

rules that “[a] local rule, like any court order, can impose a duty of confidentiality as to 

any aspect of litigation, including mediation. But privileges are created by federal common law”) (citations omitted).

35. ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 870–72 (Fed. Cir. 2010) (permitting reliance on settlement agreements to establish reasonable royalty damages because 

the settlement license was “the most reliable license in [the] record,” but constraining its 

use to the proper context within the hypothetical negotiation framework); but see LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 77 (Fed. Cir. 2012).

36. See LaserDynamics, Inc., 694 F.3d at 77 (“Despite the longstanding disapproval 

of relying on settlement agreements to establish reasonable royalty damages, we recently 

permitted such reliance under certain limited circumstances.”) (citing ResQNet.com, Inc., 

594 F.3d at 870–72). 

37. See, for example, Uniform Mediation Act § 6 (Nat’l Conf. of Comm’rs on Unif. 

State Laws 2003), codifying generally recognized exceptions to the mediation privilege, 

including for a mediation communication that is (1) in an agreement evidenced by a 

record signed by all parties to the agreement; (2) available to the public or made during 

a session of a mediation that is open, or is required by law to be open, to the public; (3) a 

threat or statement of a plan to inflict bodily injury or commit a crime of violence; (4) intentionally used to plan a crime, to attempt to commit or to commit a crime, or to conceal 

an ongoing crime or ongoing criminal activity; (5) sought or offered to prove or disprove 

a claim or complaint of professional misconduct or malpractice filed against a mediator; 

(6) except as otherwise provided in § 6(c) of the Act, sought or offered to prove or disprove a claim or complaint of professional misconduct or malpractice filed against a mediation party, nonparty participant, or representative of a party based on conduct occurring during a mediation; or (7) sought or offered to prove or disprove abuse, neglect, 

abandonment, or exploitation in a proceeding in which a child or adult protective services agency is a party, unless the case is referred by a court to mediation and a public 

agency participates.

38. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 17 (“Best Practice 5 – At the outset of the mediation, all participants in 
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1. State Confidentiality Provisions

Although patent mediation is grounded in federal question jurisdiction, 

participants should be familiar with state laws of the jurisdiction concerning the treatment of mediation confidentiality and privilege as they 

govern future claims, such as enforcement of terms under a settlement 

agreement or malpractice claims. As of June 2017, the Uniform Mediation Act (UMA), which includes confidentiality and privilege provisions, 

has been enacted in the District of Columbia, Hawaii, Idaho, Illinois, 

Iowa, Nebraska, New Jersey, Ohio, South Dakota, Utah, Vermont, and 

Washington.39 Delaware, Florida, Maine, Montana, Nevada, Oregon, 

Virginia, and Wyoming have adopted similar bills.40

E. Non-Binding Facilitator

Unlike in an arbitration, the parties to a mediation are not bound by a 

decision maker’s conclusion. The mediator cannot render a decision on 

the merits of the case or force the parties to reach an agreement. Nonetheless, the mediator can facilitate and advance discussions between the 

parties. As an independent, neutral participant, the mediator’s loyalty is 

to the process, which ultimately benefits the parties. 

 

the mediation should enter into a written agreement providing for strict confidentiality, 

nondisclosure, and inadmissibility of all mediation communications, and, where appropriate, the parties should provide in their stipulated protective order for protection of 

mediation confidentiality.”).

39. See infra Appendix B; see also Unif. Law Comm’n, Legislative Fact Sheet—Mediation Act, http://uniformlaws.org/LegislativeFactSheet.aspx?title=Mediation%20Act. 

Legislation for the adoption of the UMA has been introduced in Massachusetts and New 

York.

40. See infra Appendix B.
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III. Negotiation Paradigms and Their 

Determinants

The success of a mediation is often determined before the process even 

begins. The respective postures of the parties—specifically their ability to 

compromise—may be the single most important factor in reaching a mutually agreeable resolution. 

Attitudes toward alternative dispute resolution generally fit into one 

of two paradigms: the adversarial and the problem-solving.41 The adversarial paradigm views dispute resolution as a zero-sum game. Adversarial parties perceive a narrow range of possible resolutions and behave 

strategically and competitively to achieve the best possible outcome 

within this range.42 In effect, an adversarial party views mediation primarily as just an alternate forum for asserting and enforcing its rights 

and consequently behaves in the same manner as in court. 

By contrast, the problem-solving paradigm aims to obtain value 

through the resolution process.43 Problem-solving parties view the mediation as a collaborative mechanism by which both parties can advance 

their interests.44 Therefore, in contrast to adversarial parties, problemsolving parties tend to be pragmatic and receptive to a broad spectrum 

of possible solutions.45

Parties should be wary of the adversarial paradigm. The adversarial

mediator, or “forceful mediator,” may pose the danger of causing “arguments to ensue, conversations to deteriorate and settlements to be 

lost.”46

 

41. See generally Carrie Menkel-Meadow, Toward Another View of Legal Negotiation: The Structure of Problem Solving, 31 UCLA L. Rev. 754 (1984). 

42. See id. at 819.

43. See id. at 801.

44. See id. at 794.

45. See id. at 819.

46. See Jeff Kichaven, The Myth of the Forceful Mediator, Law360 (Feb. 1, 2017, 12:56 

PM), https://www.law360.com/articles/886357.
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In practice, parties do not choose one paradigm or the other—individual personalities and preferences may influence each party’s approach; business considerations may force a quick resolution or justify 

prolonging a losing battle; changing prognostications of the ultimate 

disposition of the case can induce a change in strategy. Negotiating 

strategies may be influenced by any number of external factors. Mediators should be attentive both to changes in strategy and to the underlying rationales for such changes. They should aim to structure the mediation to accommodate the parties’ approaches and lead parties to an 

agreeable resolution.

A. Understanding the Technology and Value of the Case

Traditionally, experts have identified three primary reasons why settlement efforts fail: (1) different assessments by the parties of the strengths 

and weaknesses of their case; (2) failure of decision makers to properly 

assess risk if there is no settlement; and (3) different goals.47 Sophisticated 

companies, particularly ones frequently involved in patent disputes, are 

able to overcome at least the first two of these obstacles as part of their 

internal early case assessments. 

Many, if not most, positions taken by the parties will be motivated 

by the business implications of the legal issues to be decided rather than 

by the issues themselves. Consequently, mediators must understand not 

just what the accused technology is, but also the relative importance of 

the technology to each party’s business and to the market as a whole. 

Parties may be more inclined to take an “all-or-nothing” approach if 

they sense that they are likely to prevail on the merits, but might also 

adopt this approach if any compromise would threaten the continued 

sustainability of the business. Similarly, parties may be more receptive to 

mediation in order to avoid intrusive discovery and litigation costs over 

what may be only a minor component of the business.

A premediation statement from the parties can be a useful tool in 

understanding the business dynamics. In order to better evaluate the case 

 

47. James F. Davis, Putting ADR to Work in IP Disputes: When and How to Do It, in

ADR Advocacy, Strategies, and Practice for Intellectual Property Cases 11–14 (Harrie 

Samaras ed., 2011).
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and determine whether a particular mediation plan may be more or less 

appropriate, mediators should require the parties to address at least the 

following questions as a starting point: 

• Is the plaintiff accusing a component of a product manufactured, used, or sold by the defendant?

o Can that component be easily replaced by a licensed 

or non-infringing alternative?

• Has the patent been licensed by other parties?

• What is the relative size of each party?

• What is the relative market share of the parties?

• What is the profitability of the product embodying the patent?

• How many other inventions go into the product embodying 

the patent?

• What is the relative importance of the accused product to 

the defendant’s business?

• What is the procedural posture of the case?48

o Has a complaint been filed? Have counterclaims 

been filed?

o Have the patent claims ever been construed by any 

tribunal?

o Are any of the patents in the case currently subject 

to an inter partes review (IPR) or other review at the 

PTO?

o Have the patent claims been construed?

o Have any motions been filed? Ruled upon?

• What is the business impact of the case?

 

48. For a more detailed discussion of these considerations, see Section V(B), infra.
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• If the plaintiff is a non-practicing entity (NPE), where does 

this case fit into its assertion campaign? The NPE’s approach, propensity to settle, and strategy will vary depending on whether this is the first case or a later case.

• Similarly, if the plaintiff is the licensing arm of an otherwise 

practicing company, where does this case fit into its assertion campaign?

• What, if any, comparable licenses exist?

• Has either party established a reserve for the case, and if so, 

how much is that reserve?

• Is the accused product standards-compliant?

o Is the patent required to practice the standard?

o Was the patent disclosed during the standard adoption process?

Once these basic questions are addressed, a mediator should be able 

to place the case into one or more categories, which will inform the issues 

and mediation strategy most likely to generate an eventual settlement between the parties. Ideally, as reflected in Figure 2, the case should be valued somewhere near an amount where the accused product value is 

modulated, based on the patent claims at issue and their relative importance to the product, in light of the licenses that exist in the technology field.
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Figure 2. Scoping the Value of the Case

While each case will have its unique factors and considerations, litigants often face common issues in certain business and competitive environments. Table 2 summarizes the common types of patent disputes 

and the settlement issues that are often faced in these categories.49

 

49. See PCMJG, supra note 2, at § 2.7.8.
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Table 2. Common Settlement Issues

Case Category Settlement Issues

Large Enterprise 

vs. Start-Up/New

Entrant

Settlement in such cases is often driven by the start-up’s 

ability to accept the costs of litigation and by whether 

the patent-holding enterprise is aware of, or willing to 

accept, other competitors using the patented technology. 

The lawsuit may be timed to a critical event for the

start-up (e.g., new product offering, additional investment, public stock offering, or merger), in which case 

potential windows for settlement are very early in the 

litigation or just after the event.

Information that may drive resolution:

• Are there third parties in the industry using 

the patented technology or an equivalent?

• Has the patent holder formally requested an 

injunction or is the patent holder seeking 

damages to force the alleged infringer out of 

the industry?

• What is the remaining term on the patent?

• What is the ability of alleged infringer to afford payment at early stage?

Licensing 

Company vs. 

Large

Enterprise

The likelihood and timing of settlement often depends 

on factors such as (1) the amount demanded; (2) the 

size of the licensing company’s portfolio; (3) reputational effects (some companies, as a matter of policy, 

believe that settling such suits encourages additional licensing company litigation); (4) strategic alliances 

(against defendant’s competitors).

Information that may drive resolution:
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Case Category Settlement Issues

• Early exchange of financial information to establish licensing rate

• Exposure of the alleged infringer to other patents in the licensing company’s portfolio

• Licensing history of the alleged infringer—including evidence that establishes the company’s policy regarding settlement agreements

• Whether the patent-holder has targeted or 

otherwise approached competitors of the alleged infringer

Licensing 

Company vs. 

Start-Up

Enterprise

Such suits often are timed to critical events for the startup. Obtaining participation from senior start-up company officers while the critical event is pending can be 

difficult and may justify telephone or other non-traditional participation in the mediation.

Mediations should be scheduled early to allow for resolution before critical events for the start-up.

Information that may drive resolution:

• Early exchange of financial information to establish potential damages

Serial Litigant: 

Patent Owner

vs. First Alleged 

Infringer

Such patent owners face the collateral risk of inter 

partes review challenges; an adverse Markman order or 

other substantive ruling dooms not just the case, but the 

entire flotilla behind it. On the other hand, while a win 

cannot be used as collateral estoppel in subsequent 

suits, it can be persuasive in them, especially if they are 

brought in the same court. This may create settlement 

opportunities while important substantive rulings are 

pending.
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Case Category Settlement Issues

One challenge to settlement is discoverability and relevance to establishing a royalty rate in future cases. See

ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872 

(Fed. Cir. 2010). This makes it difficult for the patentholder to offer a significant “discount” to the first alleged infringer. 

Information that may drive resolution:

• Early exchange of financial information to establish potential damages

• Whether the patent-holder is accusing a 

standard-compliant technology

• Whether the patent is encumbered by an obligation to offer licenses at a reasonable nondiscriminatory rate

• Prior art or other challenges to the validity of 

the patent

Large Enterprise 

vs. Competitor —

Core Technology

Such suits are difficult to settle absent a significant risk 

to the patent owner (such as a counterclaim) or a strategic opportunity through a business agreement. Meaningful mediation is likely to require participation from 

senior officers of the parties. Agreement may present 

antitrust issues if the parties have large cumulative market share. In-house counsel and former federal judges 

have disagreed on the likelihood of settlement in competitor cases. However, generally parties that have unequal resources are more likely to settle rather than risk 

an extended legal war.

The type of patented technology can also impact the 

likelihood of settlement. For example, a standards-essential patent case may be more difficult to settle if the 

parties have different views of what a “reasonable royalty” is or whether the patent truly is “essential.” Furthermore, there are different considerations between 
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Case Category Settlement Issues

industries. Pharmaceutical competitors may have different approaches than high-tech focused competitors. 

Information that may drive resolution:

• Whether the respective parties’ objectives are 

to extract damages or drive a competitor out 

of a particular technology

• Whether the patent-holder is accusing a 

standard-compliant technology

• Whether the patent is encumbered by an obligation to offer licenses at a reasonable nondiscriminatory rate

Large Enterprise 

vs. Competitor —

Non-Core 

Technology

Such suits are likely to settle through mediation, potentially at an early stage of the litigation. Litigation may be 

the result of a failed effort to negotiate a license prior to 

litigation, with litigation intended to add additional negotiating leverage. Meaningful mediation is likely to require participation from senior officers of the parties. If 

the patent-holder is seeking only to monetize patents, 

then management needs to include the risk of a potential counterclaim.

Information that may drive resolution:

• Whether the respective parties’ objectives are 

to extract damages or drive a competitor out 

of a particular technology

• Early exchange of financial information to establish potential damages

• Whether alleged infringer has asserted or will 

assert counterclaims

Pharmaceutical 

vs. Generic

These suits are often based on Hatch-Waxman Act 

provisions, which grant the generic a 180-day period 

of exclusivity after it enters the market. 21 U.S.C. 
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Case Category Settlement Issues

§ 355(j)(5)(B)(iv). These disputes are open to a range 

of creative settlement solutions. Because delaying actual 

market entry by the generic delays entry by all generics 

and because the economic loss to the pharmaceutical 

company after entry usually far exceeds the profit to the 

generic, some of these cases have been settled by “reverse payments,” payments by the pharmaceutical company to the generic to remain off the market for a period 

of time. In FTC v. Actavis, 133 S. Ct. 2223 (2013), the 

Supreme Court held that under some circumstances, 

such settlements may violate antitrust law. The Court 

has held that settlement payments in consideration for 

avoided litigation costs or fair value for services reduces 

anticompetitive concerns. Accordingly, generic manufacturers often prefer to pursue early mediation and 

may suggest mediation at the Rule 16 scheduling conference.

Since the Actavis decision, settlement agreements containing reverse payment provisions “decreased significantly.”50 But in such situations, there are a variety of 

resolutions that are amenable to both the patent-holder

and the producer of the generic. One example is a negotiated entry date for the generics. In the year following Actavis, the vast majority of such patent disputes 

were resolved without compensation to the generic 

manufacturer and/or without restrictions on generic 

competition. 

Information that may drive resolution:

• Expected legal fees and time to resolution of 

the dispute

 

50. See Fed. Trade Comm’n, Agreements Filed with the Federal Trade Commission 

under the Medicare Prescription Drug, Improvement, and Modernization Act of 2003, 

Overview of Agreements Filed in FY 2014 (2016), https://www.ftc.gov/system/files/

documents/reports/agreements-filled-federal-trade-commission-under-medicareprescription-drug-improvement/160113mmafy14rpt.pdf.
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Case Category Settlement Issues

• Acceptable period of delay for the entry of generics 

Pharmaceutical 

vs. 

Pharmaceutical 

Such suits are difficult and often impossible to settle, as 

industry economics are based on an exclusive position 

in marketing patent-protected drugs. In pharmaceutical cases, more business people tend to be involved, 

making the business aspect especially important. In addition, pharmaceutical cases tend to have high damage 

awards,51 which may make a case less amenable to mediation.

Medical Device 

Industry

Historically the medical device industry had a large 

amount of patent litigation, so it is likely the litigants 

have a history of litigation against each other. As such, 

the parties may have other related or unrelated litigation in other courts, and they may have patent portfolios that threaten future litigation. Early settlement of 

the litigation is unlikely. Otherwise, like other “competitor vs. competitor” litigation (above), settlement will 

depend on whether the technology is “core” to a significant product. Disputes involving medical devices are 

increasing in frequency at the ITC,

52 and therefore mediation may need to occur without claim construction. 

In addition, medical device cases tend to have high 

damage awards,

53 which may make a case less amenable 

to mediation. 

 

51. See Chris Barry et al., 2015 Patent Litigation Study: A Change in Patentee Fortunes (2015), http://www.pwc.com/en_US/us/forensic-services/publications/assets/2015

-pwc-patent-litigation-study.pdf.

52. See Shara Aranoff, Recent Trends in Medical Device Patent Litigation at the 

ITC—Part 1, Inside Medical Devices (Oct. 29, 2014), http://www.insidemedicaldevices.

com/2014/10/29/recent-trends-in-medical-device-patent-litigation-at-the-itc-part-1/.

53. See Barry et al., supra note 51, at 11.
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B. Understanding the Procedural Posture of the Case

As a corollary to timing the mediation correctly, mediators should also 

be aware of the impact the procedural posture of the case can have on the 

strategies employed by the parties. In particular, mediators need to pay 

attention to the effects of arguments already raised or potentially to be 

raised in future proceedings, subsequently issued precedents, interlocutory decisions and appeals, and attendant circumstances, especially with 

respect to injunctive relief, scope of discovery, and availability of remedies. Such arguments can limit the issues to be addressed by the parties 

and can orient settlement discussions around particular precedent. 

• Inter Partes Review. The IPR procedure allows a party to 

petition the patent office, specifically the Patent Trial and 

Appeal Board (PTAB), to review the patentability of one or 

more claims in a patent on a ground that could be raised under 35 U.S.C. § 102 or 103, on the basis of prior art consisting of patents or printed publications.

54 It has become a key 

strategic resource leveraged by potential or actual litigants. 

District Courts have shown increasing willingness to stay 

pending litigation if the case is in its early stages and the 

PTAB has instituted proceedings.

55 An institution decision 

 

54. 35 U.S.C. § 311 (2012).

55. See, e.g., Security People, Inc. v. Ojmar US, LLC, No. 14-CV-04968-HSG, 2015 

WL 3453780 (N.D. Cal. May 29, 2015) (Gilliam, J.); Hewlett-Packard Co. v. ServiceNow, 

Inc., No. 14-CV-00570-BLF, 2015 WL 1737920 (N.D. Cal. Apr. 9, 2015) (Freeman, J.); 

Unisone Strategic IP, Inc. v. Tracelink, Inc., No.3:13-CV-1743-GPC-JMA, 2015 WL 

1606484 (S.D. Cal. Apr. 8, 2015) (Curiel, J.); Xilidev, Inc. v. Boku, Inc., No. 13CV2793 

DMS (NLS), 2014 WL 3353256 (S.D. Cal. July 1, 2014) (Sabraw, J.); Universal Elecs., Inc. 

v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028, 1031 (C.D. Cal. 2013); In Wonderland Nursery Goods Co. v. Baby Trend, Inc., No. EDCV14-01153-VAP, 2015 WL 

1809309 (C.D. Cal. Apr. 20, 2015) (Phillips, J.); Oil-Dri Corp. of Am. Nestle Purina Petcare Co., No.15-CV-1067, 2015 WL 13650951 (N.D. Ill. May 5, 2015) (Darrah, J.); Va. 

Innovation Scis., Inc. v. Samsung Elecs. Co., No. 14cv00217 (E.D. Va. Nov. 18, 2014) 

(Davis, J.); but see Trover Grp., Inc. v. Dedicated Micros USA, No. 2:13-CV-1047-WCB, 

2015 WL 1069179 (E.D. Tex. Mar. 11, 2015) (Bryson, J.); Straight Path IP Group, Inc. v. 

Vonage Holdings Corp., No. CIV. A. 14-502JLL, 2014 WL 4271633 (D.N.J. Aug. 28, 
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alone can significantly affect the settlement dynamic. Between September 2012 and March 2017, over 6,000 IPR petitions were filed.56 Of the 70,060 claims that were challenged, IPRs were instituted on more than 30,000 claims.57

Approximately 17% of claims survived the IPR process following institution.58 Recent trends, however, show a higher 

claim survival rate.

59 Notably, the rate for institution of review proceedings by the PTAB has gradually dropped from 

87% of petitions in 2013 to 63% in 2017.

60

Since the timeline for an IPR is statutorily limited to one 

year from institution61 and the proceeding could render key 

claims or the entire patent invalid, the IPR could have an 

impact on the best time to conduct a mediation. Moreover, 

if the patent survives IPR, the IPR petitioner will be estopped 

from later raising any ground of invalidity that it “raised or 

reasonably could have raised” during the IPR.62 Therefore, 

the disputed issues between the parties are likely to narrow 

 

2014) (Linares, J.); NuVasive, Inc. v. Neurovision Med. Prods., Inc., No. CV 15-286-LPSCJB, 2015 WL 3918866 (D. Del. June 23, 2015) (Burke, J.); Pragmatus Mobile, LLC v. 

Amazon.com, Inc., No. CV 14-436-LPS, 2015 WL 3799433 (D. Del. June 17, 2015) (Stark, 

C.J.); Copy Prot. LLC v. Netflix, Inc., No. CV 14-365-LPS, 2015 WL 3799363 (D. Del. 

June 17, 2015) (Stark, C.J.); Intellectual Ventures I LLC v. Toshiba Corp., No. CIV. 13-

453-SLR/SRF, 2015 WL 3773779 (D. Del. May 15, 2015) (Robinson, J.).

56. See United States Patent and Trademark Office, Patent Trial and Appeal Board 

Statistics (Mar. 31, 2017) [hereinafter U.S.P.T.O. Statistics 2017], https://www.uspto.

gov/sites/default/files/documents/AIA%20Statistics_March2017.pdf.

57. See id. The Supreme Court’s decision in SAS Institute, Inc. v. Iancu, Director, 

USPTO, ___ S. Ct. ___ (2018), holds that the PTO must decide the patentability of all of 

the claims the petitioner has challenged if it institutes review.

58. See U.S.P.T.O. Statistics 2017, supra note 56.

59. See id.

60. See United States Patent and Trademark Office, Patent Trial and Appeal Board 

Statistics (Feb. 28, 2018), https://www.uspto.gov/sites/default/files/documents/trial_

statistics_20180228.pdf.

61. 37 C.F.R. § 42.100(c) (2016).

62. 35 U.S.C. § 315(e) (2012).
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after an IPR, whether or not the asserted claims survive the 

review.

• Section 101 Motions. After the Supreme Court’s Alice decision,63 litigants have increasingly filed motions challenging 

a patent’s validity under 35 U.S.C. § 101, and many of those 

motions have been granted and affirmed.64 While an accused 

infringer may pursue a § 101 invalidity motion at various

points in the litigation, it will be helpful for the mediator to 

understand if such a motion has been filed or might be pursued. If no such motion has been filed but the patent-holder 

is concerned about eligibility of the subject matter of at least 

some claims, the patent-holder may be motivated to settle 

with the accused infringer early in the case. In some instances, if the defendant has invested resources in developing a § 101 motion, they may be unlikely to pursue a settlement until the motion is adjudicated. In other instances, uncertainty as to the outcome of a § 101 motion and its impact 

on a patent holder may motivate the parties to settle before 

the tribunal decides the motion. Several recent Federal Circuit decisions indicate that § 101 invalidity motions, especially early in the case, will be less likely to succeed.65

 

63. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

64. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs., 811 F.3d 1314 (Fed. Cir. 

2016); Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914 

(Fed. Cir. 2015); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 

1365 (Fed. Cir. 2015) (all affirming the district courts’ determinations that claims at issue 

are drawn to patent-ineligible subject matter).

65. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (holding “[t]he question of whether a claim element or combination of elements is well-understood, routine 

and conventional to a skilled artisan in the relevant field is a question of fact” and that 

disclosure of technology in a piece of prior art “does not mean it was well-understood, 

routine, and conventional”); Aatrix Software, Inc. v. Green Shades Software, Inc., 882 

F.3d 1121 (Fed. Cir. 2018) (noting that claim construction might be necessary before a 

court can address some § 101 motions).
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• Decisions in the Technology Space. Other decisions in the 

same technology space may narrow the band of potential 

settlement between the parties. In particular, because decisions determining a reasonable royalty for a portfolio of 

standard-essential patents must necessarily consider the patents within the context of the technical standard, such decisions may help the parties reasonably scope a license for 

other patents essential to the same technical standard.66

• Jurisdiction, Venue, and Timing of the Litigation. In considering the timing of the proposed mediation, mediators 

should pay particular attention to the forum in which the 

case is proceeding. For example, a plaintiff in an ITC proceeding may be more open to reaching a settlement during 

the window that opens after the closing of the ITC case record.

67 Moreover, the plaintiff’s choice of venue may give the 

mediator insight into the ultimate goals of that party. 

• Phase of the Litigation. As discussed in more depth in Section IV, as the litigation proceeds, the issues to be decided 

are necessarily limited. For example, a claim construction 

ruling by the court may lead to a narrower or broader scope 

of discovery than the parties can tolerate, or evidence excluded by the court may make proving damages impossible.

Further, the tenor of a mediation can be affected by pending 

motions or a stay of proceeding. 

• Market for the Accused Product. The actual market conditions at the time the mediation is planned may impact the 

likelihood of a successful mediation. For example, a changed 

 

66. See, e.g., In re Innovatio IP Ventures, LLC, 2013 U.S. Dist. LEXIS 144061, at 

*183–86 (N.D. Ill. Sep. 27, 2013) (comparing the royalty determination for a portfolio of 

WiFi standard-essential patents to other courts’ determinations of royalties for the same 

or similar technical standards).

67. ITC Investigations are often viewed as too fast for effective mediation. The average time to trial from institution is 8–10 months. However, after the evidentiary hearing, there is an opportunity for mediation prior to the administrative law judge’s initial 

determination.
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marketplace may change the calculus on the equitability of 

an injunction, taking such a remedy off the table for the parties.

• ANDA Proceedings. Between October 2013 and September 

2014, pharmaceutical companies filed 160 agreements with 

the Federal Trade Commission constituting final resolution 

of patent disputes between brand and generic pharmaceutical manufacturers.68 Of those agreements, 21 final settlements potentially involved pay for delay because they contained both explicit compensation from a brand manufacturer to a generic manufacturer and a restriction on the generic manufacturer’s ability to market its product in competition with the branded product.69 Two-thirds of the final 

settlements restricted the generic manufacturer’s ability to 

market its product, but contained no explicit or possible 

compensation.

70

• Multidefendant or Multiplaintiff Cases. Patent infringement suits may involve multiple defendants or multiple 

plaintiffs. In these cases, it is essential that there be full transparency regarding the authority of one plaintiff or defendant 

to bind the others.

71 It is also important to promptly express 

any concerns over negotiations.72 If a party is comfortable 

offloading settlement negotiations to a coplaintiff or codefendant, that party should also be comfortable with knowing 

that misleading action or inaction on its part could prevent 

it from later arguing that the settlement agreement reached 

is unacceptable.73 Otherwise, the parties must be prepared to 

 

68. See Fed. Trade Comm’n, supra note 50.

69. See id.

70. See id.

71. See Gaston Kroub, Apparent Settlement Authority in a Paragraph IV Dispute, 

Law360 (Jan. 10, 2017, 12:47 PM), https://www.law360.com/articles/877284.

72. See id. 

73. See id. 
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participate in the negotiations, or raise immediate and vociferous objection if they ever encounter an unauthorized 

party negotiating on their behalf.74

For example, in Horizon Pharma Inc. v. Actavis Laboratories Florida Inc.,

75 the court analyzed two critical issues in 

deciding whether the settlement agreement between the defendant, Actavis, and the coplaintiff Horizon binds Pozen, 

the other coplaintiff.

76 First, the court concluded that Horizon had the apparent authority to bind Pozen.77 Second, the 

court looked at whether an enforceable settlement agreement was reached between Horizon and Actavis, in view of 

the strong public policy in favor of settlements, and concluded that since the parties had agreed “to not only all the 

essential terms of the settlement, but to the finer details as 

well,” the agreement was enforceable—even without all signatories having signed the agreement.78 Ultimately, because 

Actavis reasonably believed Horizon had the authority to 

bind Pozen, and would have been prejudiced if forced to 

prepare for an imminent trial in a case it thought it had settled, the court granted Actavis’s motion to enforce the settlement.79

 

74. See id. 

75. See Horizon Pharma Inc. v. Actavis Lab. Fl. Inc., Civ. Action Nos. 13-3038; 15-

3322; 15-8523; 15-8524; 16-4916; 16-426 (D.N.J. Dec. 22, 2016) (MLC).

76. See Kroub, supra note 71. 

77. See id.

78. See id. 

79. See id.
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IV. Strategically Crafting a Mediation for 

Success 

Mediation should be viewed as a process, not a single event.80 Mediators 

should be flexible in their approaches to resolution to accommodate the 

myriad positions that may be taken by the parties. As discussed above, 

mediators may find it useful in some cases where the parties are congenial to simply facilitate a discussion between the parties directly. In other 

cases, the mediator may choose to be more active and direct all negotiation through him or herself. There are, however, some strategies about 

which there is broad consensus among experienced mediators. 

First and most importantly, the parties should have someone with 

the authority to approve a resolution present during the negotiation. 

Where a party’s representative lacks such decision-making authority, the 

other parties will be far less likely to view the negotiations seriously and 

will be reluctant to fully engage, leading to circuitous and inefficient discussions. Having decision makers present is therefore important not 

only to achieve a quicker resolution, but also to encourage opposing parties to adopt a more Problem-Solving approach. 

Second, reaching an agreement on a smaller issue can lead to more 

productive discussions on larger issues. Especially in cases where mediation is involuntary, i.e., ordered by the court, reaching some consensus 

can demonstrate to the parties the value of the mediation process and 

encourage further efforts in subsequent talks. The particular approach 

taken can be adapted to the situation. For example, some mediators recommend only using joint sessions when both parties seem amenable to 

a solution, i.e., are in the Problem-Solving mode. When parties are Adversarial, however, the mediator might prefer shuttle diplomacy—meeting with the parties individually and acting as a go-between. This allows 

the parties to discuss their positions with the mediator openly, without 

the animosity that can result from being in the room with the opposing 

party. Flexibility, however, is often key to a successful mediation. With 

 

80. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10.
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the input and assistance of a solution-oriented mediator, the parties can 

usefully shift from the Adversarial to the Problem-Solving mode, which 

in turn justifies a return to holding joint sessions.

More controversial is the question of whether the mediator should 

address the merits of the case. Many mediators are former judges and 

some even have extensive experience with patent cases. Some of these 

mediators have opined that, whereas having the parties discuss the merits of the case can be at best ineffectual and at worst counterproductive, 

having the mediator express his or her opinion can be constructive in 

modulating the parties’ expectations. Others, however, believe that mediation is best done by the parties, not the mediator, and that the role of 

the mediator should be limited to helping each party understand the perspective of the other. Mediators should adapt to the particular needs of 

the situation, but should keep in mind that neither style is necessarily 

superior. Consistency from mediation to mediation may be a more desirable quality, especially for private mediators who may be sought by 

parties based on their reputation for using a particular approach.

A. Matching a Mediator to the Business Issues of the Case 

In general, the mediator’s role is to organize and shape the mediation 

process, facilitate communication between the participants, explore the 

underlying interests of the parties, and generate potential solutions that 

could result in settlement. There are conflicting views on the best style 

and approach for mediation in patent cases. In a facilitative mediation, a 

mediator should not articulate judgments about the merits of the case of

each party’s respective position.81 A mediator should be “an independent, non-judgmental neutral whose loyalty is to the process, and who, 

through interactions with the parties, serves them jointly and each party 

separately.”82 This style assumes the parties are intelligent, able to work 

with their counterparts, and capable of understanding their situations 

better than either their lawyers or the mediator. “For these reasons, the 

 

81. See Brazil, supra note 13, at 18.

82. See Thynge, supra note 12, at 148.
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facilitative mediator assumes that his principal mission is to enhance and 

clarify communications between the parties in order to help them decide 

what to do.”83

In other cases, a mediator may find that the situation demands a 

more judgmental opinion on where each party stands. If a mediator 

wants to take an evaluative approach, he or she assumes that the participants want and need the mediator to provide some direction as to the 

appropriate grounds for settlement—based on law, industry practice, or 

technology. The participants also assume that the mediator is qualified 

to give such direction by virtue of his or her experience, training, and 

objectivity.84

In the private sessions, a mediator’s initial objective is to help each 

party identify his or her situation in the dispute.85 Mediators then help 

parties consider their goals or objectives for the mediation.86 After each 

party has thought about his or her objectives and various ways to achieve 

them, mediators must facilitate and clarify communication between the 

parties.87 A mediator should take care to clarify the positions of each 

party and explain the rationale that supports a particular position.88 By 

identifying common elements between the parties’ respective positions, 

a mediator can help the parties move toward common ground.89

When selecting a mediator, parties consider a number of factors that 

emphasize the objectivity and expertise of the candidate. Experience in 

mediation or adjudication of patent cases, knowledge of patent law, and 

the ability to find out what the parties really want are all qualities of good 

mediators. Parties should also consider whether the mediator has good 

communication skills, a reputation for preparation, business acumen 

and familiarity with organizational dynamics, patience and persistence, 

 

83. See Leonard L. Riskin, Mediator Orientations, Strategies and Techniques, 12 Alternatives to High Cost Litig. 111, 111–14 (1994).

84. See id.

85. See id.

86. See id.

87. See id.

88. See id. at 112.

89. See id.
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ability to dissect the issues, and a familiarity with the subject matter.90

Most mediators in patent cases are chosen by reputation or prior working experience.

The type of mediator can also have a strong effect on the process. If 

a sitting judge serves as the mediator, the “power of the robe” increases 

the likelihood that parties will be more accommodating in the exchange 

of premediation information and ensuring that the appropriate client 

representatives participate.91 There is a concern that a sitting judge may 

not be able to conform his or her behavior to the wholly nonjudgmental 

ideal.92 However, if parties want their mediator to articulate judgments 

about the strengths and weaknesses of their respective positions, a sitting 

judge may be an ideal neutral for the mediation.93 Private mediators can 

be influential during the process because they bring prestige and deference to the mediation.94 Furthermore, parties have more choice in a private mediation because the parties usually have mutually decided that a 

resolution is desired and mediation is the preferred format.95 The costs 

associated with hiring a private mediator as opposed to a “free” judicial 

mediator encourage the parties to work towards resolution.96

Different jurisdictions also have varying requirements as to the qualifications of a mediator.97 For example, the Northern District of California requires that mediators have been admitted to practice law for seven 

years and be knowledgeable about civil litigation in federal court.98 Other 

districts, like the Eastern District of Texas, have fewer requirements.99

 

90. See Thynge, supra note 12, at 148.

91. See id.

92. See Brazil, supra note 13, at 22.

93. See id.

94. See Thynge, supra note 12, at 149.

95. See id.

96. See id.

97. See infra Appendix A.

98. N.D. Cal. Loc. ADR R. 2-5(b)(2).

99. E.D. Tex. Civ. R. App’x H § III (“Any person may serve as a mediator who has 

been ordered by the court to serve as a mediator or is approved by the parties.”).
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B. Attendees

Successful mediation requires certain participants. Local ADR Rules and 

mediation orders list required mediation participants.100 While such 

rules set forth the minimum requirements, they do not address the dynamics of the mediation session. 

1. Client Representatives

It is common for mediators to require the attendance of a “person (other 

than outside counsel) who has final authority to settle and who is knowledgeable about the facts of the case.”101 Where required participants are 

not available in person, participation by phone or availability on “standby” is often required.102 Notably, the Mediation Plan of the Eastern District of Texas provides the mediator with the discretion, if he or she does 

not believe that a case is being reasonably evaluated by the client representative, to “request the analysis that has gone into the evaluation of the 

case, including the names and authority of the individual involved in the 

analysis.”103

The active participation of a business representative is often helpful 

to the discussion. Sophisticated in-house counsel can serve an important 

role in mediation. In some companies, these individuals are very knowledgeable about the relative strengths of a case as well as the broader business goals of the client. Mediators should be mindful about the costs imposed upon the parties and their respective employees. They should 

avoid imposing too many requirements regarding the position or seniority of a required business representative. While some in-house counsel 

may be perceived as being “too close” to the dispute, or lacking sufficient 

 

100. See, e.g., N.D. Cal. Loc. ADR R. 6-10; E.D. Tex. Court-Annexed Mediation Plan 

R. VII(B).

101. N.D. Cal. Loc. ADR R. 6-10(a)(1); see also E.D. Tex. Court-Annexed Mediation 

Plan R. VII(B) (“a person or persons, other than outside or local counsel, with authority 

to enter into stipulations, with reasonable settlement authority, and with sufficient stature in the organization to have direct access to those who make the ultimate decision 

about settlement”).

102. N.D. Cal. Loc. ADR R. 6-10.

103. E.D. Tex. Court-Annexed Mediation Plan R. VII(B).
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settlement authority, rigid requirements regarding attendance may not 

result in the most productive mix of participants. Rather, emphasis 

should be placed on representatives being open to creative resolution, 

while having a realistic understanding of the merits of the underlying 

dispute.

This presents a challenge when an inventor, with an emotional attachment to his or her claimed invention, is also serving as a business 

representative. Inventors are often counterproductive to the mediation 

process.104 In some circumstances, the inventors, not the lawyers, need to 

be convinced of the limitations of their claims. In other circumstances, 

an inventor’s participation may result in truly “outside the box” resolutions, such as a commitment to support a particular technology or charity.105 The parties and the mediator should carefully consider whether 

participation of an inventor would be an impediment or an aid to resolution. Therefore, it may be appropriate to hold a teleconference with 

parties prior to the mediation itself.

2. Litigation Counsel

Litigation counsel offer a breadth of knowledge and experience to the 

process. Some mediators, however, have promoted the use of at least 

some sessions that include only the mediator and party principals. Outside counsel typically oppose such sessions.

3. Experts

Participation of experts in the mediation process is usually unhelpful. 

While experts may be useful in providing counterpoising damage valuations, the presence of experts during the mediation may lead to less productive arguments focusing on technical details rather than on the optimal business outcome.

 

104. See Thynge, supra note 12, at 154.

105. See id. at 154–55.
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Certain jurisdictions prescribe requirements for meditation participants.106 Parties should always bring the client to a conference when the 

mediator and parties expect the client to appear.107 If a party fails to bring 

an expected client, it creates the impression that the party is not willing 

to negotiate in good faith.108 The client or the representative of the client 

should be someone who has “full authority to resolve the litigation and 

to make any kind of commitment that might become part of a settlement 

package.”109

C. Timing

Like other aspects of patent litigation, the ideal time to conduct a mediation typically varies with the nature of the parties and the dispute. As 

recognized in the Patent Case Management Judicial Guide (Table 2.10: 

Settlement Considerations), while every case presents its own unique issues, patent cases often fall into similar patterns that present analogous 

issues affecting the timing of mediation. 

Two factors determine the ideal date to plan for and conduct a mediation: litigation costs and knowledge about the case. There is no question that companies would prefer to avoid the high cost of a protracted 

litigation. The desire to save on litigation costs gives the parties an incentive to settle as early as possible in the process.110 However, as a case proceeds—through initial infringement and invalidity contentions, claim 

construction, potential inter partes review, fact and expert discovery, and 

summary judgment on select issues—the parties collect more detailed 

knowledge about the facts of the case and the particular issues and facts 

in dispute. Mediation is more likely to succeed in the later stages of a case 

 

106. See Brazil, supra note 13, at 212.

107. See id. at 213.

108. See id.

109. See id. at 236.

110. See Jeff Kaplan, IP: Four Tips for the Successful Mediation of Patent Cases, Inside 

Counsel (Mar. 19, 2013), https://www.jamsadr.com/files/uploads/documents/articles/ 

kaplan-patent-cases-2013-03-19.pdf; see alsoThe Sedona Conference, Commentary on Patent Litigation Best Practices, supra note 10.
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because each party is better able to discern the relative strength of its position as the case proceeds through these stages.111 Figure 3 summarizes 

the relative knowledge of the parties and cost of the litigation during the 

basic stages of patent litigation. Good opportunities for mediation occur 

where the parties have a relatively high level of knowledge about the case 

and have incurred relatively little cost. The risks and benefits to conducting mediation at each stage are discussed below.

Figure 3. Knowledge of Case and Cost to Parties During Phases 

of Patent Litigation

 

111. See Hildy Bowbeer, Preparing to Successfully Mediate an Intellectual Property 

Dispute, in ADR Advocacy, Strategies, and Practice for Intellectual Property Cases 165, 

168–75 (Harrie Samaras ed., 2011); Thynge, supra note 12, at 142–46; Kaplan, supra note 

110.
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36

The following subsections provide more detail of the benefits and 

drawbacks of conducting mediation at various stages of the litigation 

process.

1. Conducting Mediation at the Onset of a Case

Experienced mediators have suggested that “earlier is better.”112 While 

the optimal time for mediation varies from case to case, early mediation 

reduces entrenchment and encourages parties to discuss creative settlement options before incurring major financial costs. While some attorneys oppose early mediation as providing “free discovery,” information 

that would be exchanged between the parties would be discoverable in 

any event.113 Also, the early exchange of key information can eliminate 

factual misunderstandings that otherwise paint an unrealistic picture of 

the likely outcome of the litigation absent a settlement. 

Moreover, there is growing pressure on parties to provide more detail concerning infringement and invalidity theories in their initial pleadings.114 Notably, some industries prefer early mediation. It is common 

for generic pharmaceutical companies to seek mediation shortly after the 

Rule 16 scheduling conference. Other industries are more resistant to 

mediation until certain events, such as claim construction, better define 

the scope of the dispute. This is because there is a risk of a party shifting 

allegations in response to information learned during mediation.115

 

112. See Thynge, supra note 12, at 142; The Sedona Conference, Commentary on 

Patent Litigation Best Practices, supra note 10, at 4.

113. See Thynge, supra note 12, at 145.

114. See Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007); Ashcroft v. Iqbal, 556 U.S. 

662 (2009); RainDance Techs. Inc. v. 10x Genomics, Inc., 2016 WL 927143 (D. Del. Mar. 

4, 2016).

115. See Integrated Circuit Sys., Inc. v. Realtek Semiconductor Co., 308 F. Supp. 2d 

1106, 1107 (N.D. Cal. 2004) (quoting Atmel Corp. v. Info. Storage Devices, Inc., 1998 WL 

775115 at *2–3 (N.D. Cal. Nov. 5, 1998) (“The [Patent Local] rules are designed to require 

parties to crystallize their theories of the case early in the litigation and to adhere to those 

theories once they have been disclosed.”)).
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2. Conducting Mediation After Initial Infringement and 

Invalidity Contentions

The parties can initiate mediation as soon as they exchange preliminary 

infringement and invalidity contentions, because these documents usually provide sufficient information for the parties to evaluate each other’s 

cases.116 While holding a mediation at this early stage has the benefit of 

providing significant cost savings to the parties, the financial savings 

come at the risk of not taking much (if any) discovery, resulting in uncertainty about how the dispute might ultimately resolve. Also, if the parties come to the table at such an early stage, mediation is more likely to 

succeed because the parties’ views of the case have yet to be “hardened 

by the emotion and . . . hostility [of] litigation.”117

Conducting mediation at an early point in the case is most likely 

ideal in the situations described in Table 3.

Table 3. Cases Ideal for Early Mediation

Case Category Notes on Mediation

Competitor vs. 

Competitor—Non-Core 

Technology

Such suits are likely to settle through mediation 

at some point in the case. It is in the parties’ best 

interest to come to a business agreement 

through mediation early to avoid the expense of 

litigation.

Large Enterprise vs. 

Start-Up/New Entrant

Such suits are likely to settle at some point if 

other competitors exist (other than the two 

competitors in the dispute). Early mediation 

may be necessary to keep the new entrant alive 

 

116. See Kaplan, supra note 110; The Sedona Conference, Commentary on Patent 

Litigation Best Practices, supra note 10.

117. See Int’l Inst. for Conflict Prevention & Resolution, Report of the CPR Patent 

Mediation Task Force: Effective Practices Protocol (2013), https://www.cpradr.org/news

-publications/articles/2013-01-28-report-of-the-cpr-patent-mediation-task-forceeffective-practices-protocol, supra note 10.
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until some critical event (e.g., new product offering, public stock offering, merger) occurs.

Licensing Company vs. 

Large Enterprise

While the particular circumstances surrounding the parties’ dispute may vary greatly, early 

mediation may be ideal in the following circumstances:

1. The amount demanded by the licensing company is small;

2. The large enterprise anticipates this 

suit is just the beginning of a series of 

suits as part of the licensing company 

enforcing its large portfolio of patents 

relevant to the large enterprise’s business; and

3. The licensing company and the large 

enterprise may be able to join forces 

against the large enterprise’s competitors.

Licensing Company vs. 

Start-Up Enterprise

Early mediation may be ideal in this case, especially where neither party desires to see the litigation to completion.

3. Conducting Mediation After Claim Construction Hearing

Postponing mediation until after the parties research and submit Markman118 briefs has the benefit of forcing the parties to truly consider the 

benefits and drawbacks of their proposed constructions. After the Markman hearing, the parties will be well-versed in the law and facts supporting the proposed construction on either side. Therefore, the parties have 

the ability to rationally address the weaknesses in their respective posi-

 

118. The Supreme Court held, in Markman v. Westview Instruments, 517 U.S. 370 

(1996), that the construction of patent claim terms is a question of law for the court to 

determine. Generally, the parties brief their proposed constructions to the court, and the 

court holds a Markman hearing for the parties to present their construction arguments 

before making a claim construction order. See PCMJG, supra note 2, at §§ 5-5 to 5-6.
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tions, making it possible to come to a settlement at this point. Additionally, if the court, during the hearing, indicates an inclination to issue the 

claim construction order in favor of one party or the other, the parties 

may prefer to conduct mediation before the order is issued. In particular, 

if the patent holder anticipates that an impending Markman order will 

be favorable to the defendant, it might be highly motivated to settle the 

case after the hearing, in order to avoid the issuance of an adverse construction order. While such an order cannot be used as collateral estoppel in subsequent suits, it can be persuasive in them, especially if subsequent suits are brought in the same court.

Conducting mediation after the Markman hearing is most likely 

ideal in the situation described in Table 4.

Table 4. Cases Ideal for Mediation After Claim Construction 

Hearing

Case Category Notes on Mediation

Serial Litigant: Patent 

Owner vs. First Alleged 

Infringer

Such patent owners face the collateral risk that 

an adverse Markman or other substantive ruling 

dooms not just this case, but the entire flotilla 

behind it. On the other hand, while a win cannot 

be used as collateral estoppel in subsequent 

suits, it can be persuasive in them, especially if 

they are brought in the same court. This may 

create settlement opportunities while important 

substantive rulings are pending.

4. Conducting Mediation After Claim Construction Order

Because Markman rulings are usually issued before discovery begins in 

earnest, mediation after claim construction also comes with the potential 

for significant cost savings to the parties. The parties’ knowledge about 

the case increases a great deal, without incurring most of the cost of discovery. In addition to the knowledge-related benefits gained by the parties during claim construction briefing, postponing mediation until after 
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40

the court issues its Markman order has the additional benefit of significantly narrowing the disputed issues between the parties during mediation. The increased certainty of the parties’ positions allows them to 

more accurately assess the strengths and weaknesses of their infringement arguments.119 Accordingly, parties should address the timing of 

Markman hearings, and their impact on mediation during the Rule 16 

scheduling conference.

Conducting mediation after the Markman ruling is most likely ideal 

in the situation described in Table 5.

Table 5. Cases Ideal for Mediation After Claim Construction 

Order

Case Category Notes on Mediation

Large Enterprise vs. 

Competitor— Non-Core 

Technology

If a dispute between competitors over a noncore technology advances to claim construction, the parties should attempt to mediate after a Markman order, when the positions of 

the litigants will be somewhat more settled. 

Representatives from the company with negotiation and settlement authority must be present in the mediation.

5. Conducting Mediation After an Inter Partes Review Filing

If the defendant files an inter partes review (IPR) to challenge the validity 

of the patent being asserted, the patent-holder may be especially motivated to mediate the case so as to avoid the risk of an invalidity ruling.120

An IPR filing can be an especially powerful form of leverage in mediation 

proceedings against patent owners who assert the same patent (or portfolio of patents) in different lawsuits.

 

119. See Kaplan, supra note 110.

120. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10.
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6. Conducting Mediation After the Close of Discovery and/or 

After the Court Rules on Summary Judgment Motions

Any mediation that occurs after the court rules on summary judgment 

motions has the benefit of taking place when the parties’ positions are 

relatively well-defined as a result of claim construction, discovery, and 

summary judgment, which allows the parties to make informed decisions.121 The parties may be hesitant to reach a settlement at this stage 

because they will have already spent a large amount of money. Nevertheless, mediation is worth considering even in this late stage of the litigation, for example, to avoid further burdening management with trial, to 

avoid public events at trial that might result in bad public relations for 

one or both of the litigants, or simply to avoid the cost and burden of a 

trial that may have a foregone result as a consequence of summary judgment orders or evidence that comes to light during discovery.

The likelihood of a successful mediation at this stage is highly dependent on what business and technological issues the litigants care most 

about. In this situation, the litigants must decide whether they want to 

incur the additional cost of trial in order to achieve some certainty. If the 

parties are willing to live with the uncertainty of whether the accused 

products infringe the asserted patents at this stage in the litigation, mediation may still be a possibility.

Conducting mediation after the close of discovery or after summary 

judgment orders from the court is most likely ideal in the situations described in Table 6.

 

121. See Kaplan, supra note 110.
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Table 6. Cases Ideal for Mediation After Summary Judgment or 

Close of Discovery

Case Category Notes on Mediation

Large Enterprise vs. 

Competitor—Core 

Technology

Meaningful mediation requires participation from senior officers of the parties. 

While, generally, agreement may not be 

likely in such a scenario, the nature of the 

dispute may be resolved after the close of 

discovery of a summary judgment order 

from the court on a disputed issue. For 

example, a standards-essential patent case 

may be easily resolved if the court issues 

an order determining whether the patent 

is truly “essential.”

Large enterprises may also be particularly 

sensitive to the perception that may result 

from a contentious public trial that is covered by the media.

7. Conducting Mediation After an Inter Partes Review

Determination

Mediation that occurs after a determination by the PTAB on a petition 

for inter partes review has benefits similar to a partial summary judgment ruling. An initial institution decision introduces some uncertainty 

regarding the validity of the claims subject to review. A decision not to 

institute also provides some non-dispositive guidance concerning invalidity.
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D. Premediation Submissions 

As discussed more fully in Section V below, it is advisable for the parties 

to submit a premediation statement. As an initial matter, the mediator 

should inform the parties of when the mediation statement is due (usually one to three weeks before mediation) and the page limit for the statement (typically ten to fifteen pages). Common topics include122

• the parties

• representatives for mediations

• factual background of the dispute

• key liability issues, evidence, and damages

• issues whose early resolution would reduce significantly the 

scope of the dispute

• discovery necessary for meaningful settlement negotiations

• prior settlement efforts

• settlement proposal

The mediator should also inform the parties about whether the mediation statement will be read by the mediator only, shared with the other 

parties, or both (e.g., one statement shared by the parties with a supplemental briefing submitted only to the mediator).

E. Sessions and Duration

1. Presession Conferences

Following the formal written submissions, mediators should hold at least 

one premediation conference. In addition to helping set the parties’ expectations in advance of the mediation session, presession conferences 

provide the mediator with an early assessment opportunity. Presession 

conferences can provide the mediator with a better understanding of the 

 

122. N.D. Cal. ADR Local R. 5-8 (Written ENE Statements); U.S. Dist. Ct. Del., 

Form Order Governing Mediation Conferences and Mediation Statements, http://www.

ded.uscourts.gov/sites/default/files/Chambers/LPS/Forms/Form_Order_Governing_

Mediation_Conferences_And_Mediation_Statements.pdf.
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party dynamics. Such conferences also afford the mediator an opportunity to seek additional detail that may not have been provided in the 

mediation statements.

2. Opening Session

There is a recent trend to avoid opening statements in patent mediations.123 In particular, if the parties are uncooperative, then opening 

statements should not be used, or if they are used, then the mediator 

should instruct the parties ahead of time to refrain from posturing and 

to focus on resolving the issues.124 Nonetheless, some mediators consider 

such opening statements as an opportunity to vent, which, if ultimately 

focused on resolution, may facilitate settlement.125

3. Mediation Sessions

If both parties are willing and able to settle when they enter the mediation, an agreement can usually be reached in one day. However, a particularly complicated case with many unresolved issues might benefit from 

a session that spans multiple days. Some mediators suggest that parties 

allow for the mediation to last for two days, to maximize flexibility.126 For 

example, setting aside two days ensures that none of the people involved 

reserves an evening flight, which allows the mediation to continue into 

the evening of the first day.127 Similarly, if the parties make progress on 

the first day, they can use the evening and a portion of the following day 

to gather additional information before reconvening to come to a final 

agreement.128 Among the issues to be addressed in presession discussions, the mediator and parties should decide the duration of the mediation.

 

123. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 28.

124. See id.

125. See id. 

126. See Bowbeer, supra note 111, at 184.

127. See id.

128. See id.
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F. Location

Mediation sessions should be held at the location that is most convenient 

to the participants. Mediation proceedings are typically held at the offices 

of one of the parties’ law firms. However, if the parties or the mediator 

prefer to hold the mediation in a neutral location, several other options 

are available. The International Trade Commission (ITC) and the World 

International Property Organization (WIPO) both provide rooms in 

their headquarters for mediations of patent disputes.129 Private dispute 

resolution services (like JAMS, AAA, or Judicate West) also provide facilities for use in mediation proceedings.

Regardless of where the mediation is held, the parties should reserve 

three rooms: one room for joint sessions with the parties and the mediator and one room for each of the parties.130 If there are additional parties 

whose settlement interests might not be aligned, then the litigating parties might need to reserve additional rooms for those parties.131

 

129. See WIPO, Role of the Center, http://www.wipo.int/amc/en/center/role.html 

(last visited Jan. 12, 2018) (“If the parties wish, [WIPO] arranges for meeting support 

services, including hearing rooms and caucus rooms. Where the procedure is held at 

WIPO in Geneva, the rooms are provided free of charge. A charge is made for any other 

support services that may be required. This charge is separate from the Center’s administrative fee.”).

130. See Bowbeer, supra note 111, at 182.

131. See id.
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V. Preparing for Mediation—For Mediators

A. Mediation Statement—An Opportunity for Early Case Assessment

It is standard practice for mediators to require a written statement by the 

parties in advance of mediation sessions.132 The goal of the mediation 

statement is more than simply conveying the issues of the case—the mediation statement should ideally identify any potential for resolution. 

While the content of the statement may change from case to case, the 

requested information should focus on the merits of the case, often referred to as an “Early Case Assessment,” but should allow for an expression of peripheral information that will help the mediator understand 

the context of the dispute.

As discussed above, effective mediation depends upon confidentiality and candor. The mediator should set forth, either by way of ground 

rules or agreement, that the contents of the mediation statement shall 

remain confidential, shall not be used in the present litigation nor any 

other litigation, and shall not be construed, nor constitute an admission.133 Moreover, the mediation statements should not be provided to 

the trial judge and should not become part of the record in the litigation. 

Absent express agreement to the contrary, the mediation statement 

should not be exchanged among the parties. However, there are certain 

categories of information that drive discussions and may help the parties 

set appropriate expectations for the mediation session to follow. By contrast, a failure to exchange substantive mediation statements may leave 

decision makers in entrenched positions, guided only by their own side 

of the story. Hence, in most instances, a mediator should encourage the 

parties to exchange the following information.

 

132. See, e.g., N.D. Cal. ADR Rule 5-8.

133. See, e.g., Magistrate Judge Thynge, Order Governing Mediation Conferences and 

Mediation Statements (2014), http://www.ded.uscourts.gov/sites/default/files/Chambers/

MPT/Forms/Order_Governing_Mediation_Confs_Statements.pdf [hereinafter Thynge, 

Order Governing Mediation].
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1. The Parties, Their Businesses, and Their Dispute History 

A description of the parties’ businesses can provide a context for the 

scope of the dispute. Is this a bet-the-company case? Does the party need

to maintain a certain revenue stream for future cases? Have the parties 

previously had a business relationship? Have the parties had any prior 

disputes concerning intellectual property, regardless of whether a litigation was formally filed? Does either party have an industry reputation 

relating to settlement that they need to maintain for other matters?

2. Infringement Contentions

To frame the scope of the dispute it is necessary for the patent-holder to 

identify the asserted claims and accused products. These disclosures 

should include, at a minimum

• an identification of each claim of each patent in suit that is 

allegedly infringed by each opposing party134

• an identification of each accused apparatus, product, device, 

process, method, act, or other instrumentality of which the 

party is aware135

• a chart identifying specifically where each limitation of each 

asserted claim is found136

• whether the infringement allegations are premised upon the 

practice of an industry standard, including whether the patent-holder is, or has been, a member of the relevant standard-setting organization

• whether indirect and/or willful infringement is being alleged, and the basis for such claims

• claimed priority date for each of the asserted patents

 

134. See N.D. Cal. Pat. R. 3-1.

135. See id.

136. See id.
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This infringement-based information is the same as the type of information that must be exchanged between the parties either in accordance with local rule requirements or in response to common discovery 

requests. Indeed, such information is often exchanged by the parties during pre-suit discussion. Accordingly, mediators should encourage parties 

to exchange this information with other parties to the mediation. Such 

an exchange would provide an opportunity for the defending party to 

raise significant errors or flawed assumptions that underlie the patentholder’s infringement claims, and to set appropriate expectations for the 

mediation session to follow.

3. Invalidity Contentions

The corollary to the infringement contentions is the defending party’s 

identification of relevant prior art and other bases for alleging invalidity.

These disclosures should include, at a minimum

• the identity of each item of prior art that allegedly anticipates 

each asserted claim or renders it obvious

• whether each item of prior art anticipates each asserted 

claim or renders it obvious

• a chart identifying where specifically in each alleged item of 

prior art each limitation of each asserted claim is found

• any grounds of invalidity based on 35 U.S.C. § 101 or 112

This invalidity-based information is the same as the type of information that must be exchanged between the parties either in accordance 

with local rule requirements or in response to common discovery requests. Mediators should also encourage a discussion of whether the defendant expects to file for IPR or other administrative review by the Patent and Trademark Office.

4. Claim Constructions

To the extent that there are claim constructions that are dispositive to 

the dispute, they should be included in the mediation statement. Again, 
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to the extent that these constructions will facilitate resolution of the dispute, the mediator should encourage their exchange among the parties. 

5. Financial Information

Both parties must have a realistic sense of the remedies at stake in the 

litigation.137 As such, the parties should be prepared to exchange present 

damages contentions that address (i) sales and profitability data, (ii) relevant licenses and agreements (including settlement agreements with 

other parties), (iii) proposed reasonable royalties, (iv) claimed lost profits, and (v) any other considerations affecting possible remedies. 138

6. Other Information to Be Exchanged

• the identities of any non-parties with an interest in or influence on the litigation139

• any ancillary litigation140

• the status of discovery141

7. Addressing Concerns Regarding “Early Disclosure”

Some parties may express concern regarding “early disclosure” of such 

information. Only information that would otherwise be subject to discovery should be exchanged during the course of mediation. As noted 

 

137. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 23–24.

138. See id.; Kaplan, supra note 110.

139. Thynge, supra note 12, at 150.

140. See id.

141. See id.
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above, there is some risk of a party shifting allegations in response to information learned during mediation.

142 However, the growing trend following the Supreme Court decisions in Iqbal and Twombly, the abrogation of Federal Rule of Civil Procedure 84 and elimination of Form 18, 

as well as the adoption of local patent rules, has required parties to commit to positions early in a case.143 Further, the information disclosed during the mediation is subject to the mediation privilege and mediation 

confidentiality protections. Accordingly, the risk of so-called early disclosure is outweighed by the value of such information to successful,

early resolution through mediation.

8. Information that Should Only Be Provided to the Mediator

Certain information should not be exchanged between the parties, but is 

important for the mediator’s ability to cut through any posturing. Examples of this kind of information include

• each party’s analysis of the strong and weak points of the opponent’s argument

• confidential settlement proposal

• fees and costs—some mediators require a confidential submission of “(i) attorneys’ fees and costs incurred to date; (ii) 

other fees and costs incurred to date; (iii) good faith estimate 

of additional attorneys’ fees and costs to be incurred if [the] 

 

142. See Integrated Circuit Sys., Inc. v. Realtek Semiconductor Co., 308 F. Supp. 2d 

1106, 1107 (N.D. Cal. 2004) (quoting Atmel Corp. v. Info. Storage Devices, Inc., 1998 WL 

775115 at *2–*3 (N.D. Cal. Nov. 5, 1998) (“The [Patent Local] rules are designed to require parties to crystallize their theories of the case early in the litigation and to adhere 

to those theories once they have been disclosed.”).

143. See, e.g., Ashcroft v. Iqbal, 556 U.S. 662 (2009); Bell Atl. Corp. v. Twombly, 550 

U.S. 544 (2007); Raindance Techs., Inc. v. 10x Genomics, Inc., No. CV 15-152-RGA, 2016 

WL 927143 (D. Del. Mar. 4, 2016); E.D. Tex. Pat. R. 3-1 & 3-3; N.D. Cal. Pat. R. 3-1 & 

3-3.
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matter is not settled; and (iv) good faith estimate of additional other fees and costs to be incurred if [the] matter is 

not settled”144

• how the parties define “progress”

While all of the above-listed information is important, many inhouse counsel have found that the best mediators in patent disputes are 

those who have a good understanding of the merits of the case, both from 

a technological perspective and from a legal perspective. Many mediators 

at least skim the patent(s) in suit, although the level of attention given to 

the patent(s) varies. Understanding the merits of the case builds trust between the parties and the mediator, and can help the parties believe in 

the mediation process and the possibility of a fair and principled resolution. In addition to understanding the merits of the case, mediators 

should also focus on unearthing business information from the parties, 

as knowledge of the parties’ business motivations is useful for arriving at 

creative solutions.

In addition to reading the mediation statement, the mediator must 

prepare by encouraging the proper exchange of information before the 

mediation begins. If there is no such exchange of information, the mediation frequently becomes focused solely on outlining procedures for the 

proper exchange of information. Some mediators, however, simply ask 

that the parties be prepared with the above information as opposed to 

encouraging that the parties actively exchange the information. These 

mediators prefer that each party identify the information that they need 

from the other party, rather than the mediator identifying that information for the party. The rationale behind this policy is that insisting on 

the exchange of such information may create a dispute where in fact no 

dispute needs to exist. 

Mediators have used serial teleconferences,

145 premediation emails, 

and in-person meetings to both obtain relevant information and encourage the exchange of information before the mediation. These tools allow 

the mediator to follow up with the parties regarding topics discussed in 

the mediation statement and also allow the mediator to ensure that the 

 

144. See Thynge, Order Governing Mediation, supra note 133.

145. See Thynge, supra note 12, at 150.
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52

parties are exchanging information. For example, a premediation email 

may be used to address logistical issues, such as the timing for the exchange of information and whether the parties would like to provide 

opening statements (although, as noted earlier, some mediators have 

found opening statements to be counterproductive, as they may raise 

emotions and encourage posturing). Encouraging the parties to exchange this information in a premediation email can set the stage for cooperation and informed decision making later on in a mediation session.

In-person premediation meetings are another successful technique 

used by mediators to ensure the proper exchange of information and ultimately even shorten the length of the mediation session itself.146 For 

example, simply giving each party four hours to educate the mediator on 

the important issues could help the mediator identify what information 

the parties need to exchange in order to reach a resolution. Premediation 

meetings may benefit from the presence of in-house counsel or the client, 

since those individuals may be able to identify internal client obstacles to 

settlement and non-monetary terms that are important to the client.147

Another benefit of in-person premediation meetings is that they are especially helpful for ensuring that the mediator is a good fit for the case.

B. Defining the Format and Structure of the Mediation

Section IV addresses the mechanics of structuring the mediation. In the 

context of preparation, defining the format and structure of the mediation starts with premediation communications. Premediation conferences (either in person, by email, or via phone) are a good opportunity 

for the mediator to explain the mediation process to the parties and to 

set ground rules.148 The length of the mediation itself may depend in large 

part on successful premediation communications, which can be used to 

“front load” much of the work by encouraging exchange of information 

and adequate preparation.149 The mediator should have a flexible plan for 

 

146. See Int’l Inst. for Conflict Prevention & Resolution, supra note 10, at 16. 

147. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 24.

148. See id.

149. See id.
Patent Mediation Guide

53

the format and structure of the mediation, based on premediation interactions. 

As noted above, the premediation interactions should give the mediator an understanding of the dynamics between the parties and the 

level of emotions involved in the case, and this may affect whether most 

of the mediation occurs in private caucuses or joint sessions, and whether 

opening statements would be useful. When the parties appear to be diametrically opposed and inflexible, allocating most of the time to private 

caucuses may be appropriate. When the parties appear open to mediation and have a desire to settle, allocating most of the time to joint sessions may be more fruitful. Further, premediation discussions provide 

the mediator with an opportunity to get additional details that were not 

included in the premediation statements.

Moreover, mediators should consider how their own introductory 

remarks can affect the tenor of the mediation. On one end of the spectrum, the mediator can provide a short introductory session introducing 

the participants, reiterating the confidential nature of the proceedings, 

and explaining the procedural framework for the days’ sessions. Alternatively, a mediator can present a neutral description of the parties’ positions. Carefully presented, this approach can reaffirm the mediator’s 

neutrality, establish knowledge of the dispute, and provide the parties 

with a feeling that their issues have been acknowledged.
Patent Mediation Guide

54

VI. Preparing for Mediation—For Parties 

and Counsel

A. Obtaining the Necessary Information

While the mediator must prepare for mediation in a way that ensures the 

proper exchange of information, the parties and counsel must prepare 

by actually collecting that information such that it can be shared with the 

mediator and/or the other parties. Obtaining this information allows the 

parties to consider how much money they would be willing to put on the 

table in order to avoid litigation. Making this determination requires collecting and analyzing information such that the client and counsel know 

what the client wants to achieve through mediation. The following types 

of information should be obtained by counsel:

150

• The client’s overall business objectives, including:

o if the client is the patentee, whether the goal is exclusivity for the patented technology, a license 

agreement, or some other business relationship151

o how relevant the patent at issue is to the business 

objectives

o what the impact of litigation could be on the business objectives

o whether discovery would be disruptive to the client 

and its employees

o whether the client has any hidden agendas

o the client’s perception of the relevant industry and 

its future

o the feasibility of a design-around and how that 

would affect customers and supply chains

• The objectives of the other party

 

150. See Thynge, supra note 12, at 158–59.

151. See Bowbeer, supra note 111, at 167–68. 
Patent Mediation Guide

55

• The history between the parties, including:

o how the parties have negotiated previously

o prior and present business relationships

o prior and present dealings, contracts, and licenses

• The risk of future litigation with the opposing party

• Each party’s smallest sellable unit152

In addition, in-house counsel must identify what information they 

need from the other parties (e.g., financial information). Creating a discrete list of necessary information is often preferable to hurtling headlong into full discovery. Once a discrete list of the necessary information 

is created, the parties should turn to alternatives to litigation discovery 

in order to exchange information.153 The following techniques have been 

identified as ways to encourage less formal exchanges of information: 

• Clients should understand the substantial cost of full litigation discovery, compared to the more modest cost of disclosing information solely for mediation.

• Counsel should try to persuade their adversary to provide 

necessary information voluntarily and, if necessary, seek the 

assistance of the mediator in this effort.

• Counsel should execute a bullet-proof confidentiality agreement that limits the use of the information exchanged solely 

for the mediation.

• Counsel should determine what information is publicly 

available and use that fact as leverage to request additional 

information from their adversary.

 

152. See LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67 (Fed. Cir. 

2012) (quoting Cornell Univ. v. Hewlett-Packard Co., 609 F. Supp. 2d 279, 283, 287–88 

(N.D.N.Y. 2009) (“Thus, it is generally required that royalties be based not on the entire 

product, but instead on the ‘smallest salable patent-practicing unit.’”)). 

153. The Sedona Conference, Commentary on Patent Litigation Best Practices, supra

note 10, at 5–6.
Patent Mediation Guide

56

• Counsel should consider providing information, such as financial data, in summary form (i.e., not all of the information that would be disclosed in discovery), with the agreement that any settlement agreement would include a representation as to the accuracy of the financial data.

• Counsel should consider having the mediator review confidential financial information (e.g., marginal costs, profits) in 

camera.

• If confidential information is required to perform an infringement or invalidity analysis, counsel should consider 

having the confidential information disclosed to a neutral 

third party (other than the mediator), such as a technical advisor, who can then render an evaluation without disclosing 

the information (this approach is particularly helpful if the 

confidential information is computer source code).

• Counsel should consider only allowing outside counsel to 

see confidential information.

154

• Counsel could suggest limiting the disclosure of confidential 

information to one key person at the mediation and to the 

mediator.

• If a premediation exchange is not possible and the dispute is 

the subject of active litigation, counsel should consider pursuing focused discovery rather than the broad discovery 

common in patent cases and should consider mediating after documents are exchanged or after the taking of limited 

depositions.155

 

154. It is often helpful, however, to allow outside counsel to communicate on any 

prior licenses or settlements that might be used as benchmarks for settlement in the case 

being mediated.

155. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 5–6.
Patent Mediation Guide

57

The techniques described above allow for less costly and more informal exchanges of information, either through the mediator or between 

the parties themselves. The reliability of informal discovery responses 

can be buttressed by including in the settlement agreement a guarantee 

of the accuracy and completeness of the information exchanged.156 A 

carefully prepared confidentiality agreement will also encourage the informal exchange of information.157

B. Analyzing the Necessary Information

Once counsel has collected the relevant facts, counsel should consult 

with the client in order to reaffirm the goal of mediation. For example, 

the goal could be settlement, positioning for the case, or simply delivering a message to the other side. Mediators have found that parties are less 

likely to benefit from mediation when those parties have not clearly defined their goals. Once the goals are defined, the parties should be prepared with a checklist containing the important terms for settlement.158

For example, Judge Thynge has recommended that the checklist include

the following: 

• the scope of any license

• payment amounts and the terms (e.g., whether the payments 

are “up-front or in installments with or without interest, 

running royalty percentage and the base to which it applies, 

and any minimum payments or caps”)

• the terms of any future business relationship

• tax issues (“who pays and whether settlement is net of foreign taxes”)

• admissions (e.g., admissions of validity, infringement, or enforceability)

 

156. See Bowbeer, supra note 111, at 170.

157. See The Sedona Conference, Commentary on Patent Litigation Best Practices, 

supra note 10, at 6.

158. See Thynge, supra note 12, at 159.
Patent Mediation Guide

58

• any most favored nation (MFN) clause

• how future disputes will be handled

• confidentiality

• marking of patented products159

Even after a party has all the necessary information for creating the

aforementioned settlement terms checklist, there is still the hurdle of analyzing that information in a meaningful way in order to arrive at specific 

settlement terms. This requires discussions between counsel and the client’s decision makers, such that a range of possible acceptable business 

outcomes can be identified, and counsel can seek authorization for those 

outcomes before mediation. The team participating in the mediation 

should be made aware of the stage of the litigation, the costs incurred 

thus far, and projected future costs (including outside vendor costs, such 

as e-discovery and experts).160 Other information to be shared with the 

team may include what has been learned in discovery, how the party’s 

witnesses performed during deposition, and the strengths and weaknesses of each party’s case.161 Based on this discussion with the team, 

counsel should have prepared a “Best Alternative to a Negotiated Agreement” (BATNA) and a “Worst Alternative to a Negotiated Agreement” 

(WATNA) (both for the client and the opposing party).162 Counsel 

should also analyze the “return on litigation investment.”163

For evaluating business options, both Early Case Assessment (ECA) 

and Decision Tree Analysis (DTA) can be helpful because they provide 

decision makers “[o]bjective criteria for evaluating the settlement proposals offered by the other side.”164 ECA consists of a cost-versus-risk 

analysis that provides parties with information to help them reach a settlement decision, and it is most commonly used to determine how the 

 

159. Important terms for settlement may also include whether claims are to be dismissed with or without prejudice. 

160. See Bowbeer, supra note 111, at 193.

161. See id.

162. See id. at 194.

163. See id.

164. See Int’l Inst. for Conflict Prevention & Resolution, supra note 10, at 10.
Patent Mediation Guide

59

costs and burdens of discovery compare to the cost and burdens of settlement.165 DTA focuses on identifying the costs of various litigation outcomes and the likelihood of those outcomes actually occurring.166 One 

way to encourage settlement is to have a third-party neutral provide the 

probabilities of various outcomes occurring in the DTA.167 Ultimately, 

these preparation efforts should result in the identification of a range of 

acceptable outcomes for the client, along with in-house counsel’s clear 

authority to advance those outcomes.168

C. Preparing and Educating the Participants in the Mediation

Counsel will need to explain the mediation process to the team participating in the mediation, and counsel should ideally have taken a course 

in negotiation. At the most basic level, the client should understand the 

mediation process and how it is different from litigation. Research has 

indicated that clients who receive more preparation for mediation are 

more likely to settle and feel that the process was fair, compared to clients 

who receive less preparation.169

For example, the team should be informed that a mediator is not the 

same as a judge or arbitrator, and that mediation is a process in which 

parties mold a solution different than they would have achieved in litigation, in order to avoid risks of the litigation process. Therefore, the team 

165. See id. at 9–10.

166. See, e.g., David P. Hoffer, Decision Analysis as a Mediator’s Tool, 1 Harv. Negot.

L. Rev. 113, 115 (1996).

167. See, e.g., Marc B. Victor, Resolving A Dispute by Getting a Neutral to Provide 

Probability Assessments, 31 Alternatives to High Cost Litig. 36, 36–38 (2013).

168. See Thynge, supra note 12, at 196.

169. See Sarah R. Cole & Craig A. McEwen, Mediation: Law, Policy and Practice 

§ 3:5 (1994), “Practices in Mediation and Their Potential to Overcome Barriers to Effective Negotiation.” As one scholar has noted: “[a]n unprepared client may feel exposed 

and vulnerable when questioned by the mediator and may distrust the mediator and the

process as a result. A well-prepared client will understand the process and view the mediator's questions as a natural part of the process of building trust and developing creative 

solutions.” Karen K. Klein, Representing Clients in Mediation: A Twenty-Question Preparation Guide for Lawyers, 84 N.D. L. Rev. 877, 880–81 (2008).
Patent Mediation Guide

60

should be informed that counsel will not be playing an “attack dog” role 

and that the mediator will not be attacking the other side.170 The team 

should also be informed that the mediation may progress slowly and that 

there may be downtime while the mediator spends time alone with the 

other party.171

Counsel should speak with the team about any strong emotions concerning the case and what realistic expectations are for the mediation, as 

many mediators have noted that when emotions or expectations run 

high mediation is less likely to be successful. The American Bar Association recommends identifying what the other party might say or do to 

make the client upset and what the client may say or do to make the other 

party upset, as well as avoiding causing any unnecessary distress.

172 For 

example, if one side feels betrayed because a key employee left the company for the opponent’s company, those emotions should be addressed 

before the mediation.173 The individual personalities of those on the team 

may also be discussed—for example, if the business decision maker is 

volatile, then careful preparation regarding that person’s speaking role 

may be required.174 Regarding expectations, one study has suggested that 

when negotiators have higher aspirations there is a higher risk for impasse.175

D. The Mediation Statement

The mediation statement is another important tool that encourages the 

proper exchange of information and can be used to educate not only the 

170. See Bowbeer, supra note 111, at 192.

171. See id.

172. See American Bar Association, Section on Dispute Resolution, Preparing for 

Mediation 5 (2012), http://www.americanbar.org/content/dam/aba/images/dispute_

resolution/Mediation_Guide_general.pdf.

173. See Thynge, supra note 12, at 195–96.

174. See id.

175. See Russell Korobkin, Aspirations and Settlement, 88 Cornell L. Rev. 1, 57–58 

(2002) (“While high aspirations provide negotiators with the benefit of an improved 

chance of obtaining a more favorable settlement, they carry with them a significant cost 

for litigants, as they make it more likely that settlement negotiations will fail when the 

potential for a mutually beneficial accord exists.”).
Patent Mediation Guide

61

mediator, but also the other party. As explained in Sections IV and V, the 

contents of the mediation statement are usually dictated by the mediator.

However, counsel should always give thought to additional information 

that may aid the process, and those suggestions are typically welcomed 

by experienced mediators. The mediation statement should inform the 

mediator of where the case is procedurally and should identify overriding legal issues, damage models, and the strong and weak points of each 

side. Additionally, any case law that is particularly on point should be 

discussed in the mediation statement. In addition to relevant business 

information, the mediation statement should include a history of the 

parties and previous settlement efforts.176 In order to encourage a cooperative attitude, some mediators ask each party to include in the mediation statement a presentation of the case from the other party’s perspective, identifying the issues where the other side may have a stronger position. The statement may be accompanied by presentations, models, 

videos, and expert testimony, but these supplements should only be used 

if the settlement process would benefit from them.177 Importantly, parties 

frequently devote too much attention to the legal issues and neglect detailing the party’s business interests.

178 One major purpose of the mediation statement is to suggest possible resolutions of the dispute, which requires more than simply outlining one’s own legal argument.179

Finally, even when mediation statements are exchanged in advance—via court requirements or the request of the neutral—experienced mediators often allow for supplemental statements “for the mediator’s eyes only.” These separate statements may contain additional insights, concerns, or suggestions that counsel deem too sensitive or potentially incendiary to put into a shared statement, but may give the mediator additional perspective to help prepare for the session. Assuming 

176. See Thynge, supra note 12, at 156.

177. See The Sedona Conference, Commentary on Patent Litigation Best Practices,

supra note 10, at 26–27.

178. See Thynge, supra note 12, at 156 (noting that the “mediation statement is not

intended to be a blueprint for case-dispositive motions”).

179. See The Sedona Conference, Commentary on Patent Litigation Best Practices,

supra note 10, at 27.
Patent Mediation Guide

62

such separate statements are allowed, the bulk of each party’s presentation should be included in the shared statement, so asto help the decision

makers on the other side set appropriate expectations prior to the commencement of the mediation session.
Appendix A: Tables of Mediation Rules b

Central District of California (C.D. Cal) 

ADR Requirements for 

Civil Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

ADR proceedings are mandatory. L.R. 16-15.1. Some cases 

are also assigned to judges who 

participate in the Court-Directed 

ADR Program. Civil L.R. 26-1(c).

The parties have a duty to 

consider ADR, confer, and report. General Order No. 11-10, 

§ 5.2.

Offers three ADR options: 1) a 

settlement conference with the 

district judge or magistrate judge 

assigned to the case; 2) a mediation with a neutral selected 

from the court mediation panel; 

or 3) private mediation. Civil 

L.R. 16-15.4; General Order 11-

10. Parties must advise the court 

which ADR procedure is best 

suited to their case and when 

the ADR session should occur. 

Civil L.R. 26-1(c). Cases in the 

Court-Directed ADR Program 

are presumptively referred to 

mediation (either the court’s mediation panel or private mediation). Civil L.R. 26-1(c).

A neutral may be on the mediation panel if he or she was previously a judge or is in good 

standing with the C.D. Cal. 

Bar with at least 10 years of legal practice, significant experience with civil litigation in 

federal court, and significant 

experience in at least one of 

the specific areas (patent is 

one of them). General Order 

No. 11-10, § 3.

All documents r

diation and an

pens during th

be treated as 

formation and 

to the judge(s

No. 11-10, § 9

ited exceptions 

disclosures may 

the parties or 

court if violation

Id. at § 9.2.

63
Patent Mediation Guide

Eastern District of California (E.D. Cal.) 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

In every action, the parties 

must meet and confer to consider participating in the Voluntary Dispute Resolution 

Program (VDRP). L.R. 

240(a)(17); L.R. 271(d)(1). 

The VDRP is governed by L.R. 

271. May include mediation, 

negotiation, early neutral evaluation, and settlement facilitation, determined by the neutral. 

L.R. 271(a)(1). Parties retain the 

power to seek private ADR services. L.R. 271(a)(3).

The court keeps a list of neutrals 

who are “trained and otherwise 

qualified to serve” and “whose 

background, training, and skills 

satisfy the requirements that the 

Court establishes for VDRP.” 

L.R. 271(e)(1). Other neutrals 

may be nominated by the parties, and as long as they are not 

disqualified by 28 U.S.C. § 455 

or other professional conduct 

standards, they can generally 

serve. L.R. 271(e)(2), 271(f)(1).

Unless stipulate

the court “afte

pertinent legal t

propriately sens

ests underlying 

tiality,” “all c

made in conn

VDRP proceed

privileged and 

the fullest exten

plicable law.” L

neutral’s VDRP 

port reports “o

which the partie

VDRP process.

64
Patent Mediation Guide

Northern District of California 

ADR Requirements for 

Civil Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

“At any time after an action has 

been filed, the Court on its own 

initiative or at the request of one 

or more parties may refer the 

case to one of the Court’s ADR 

Programs, or to a judicially 

hosted settlement conference.” 

L.R. 16-8(a). Joint case-management statements must include “[p]rospects for settlement, ADR efforts to date,

and a specific ADR plan for

the case, including compliance

with ADR L.R. 3-5 and a description of key discovery or

motions necessary to position

the parties to negotiate a resolution.” General Order 64, Attachment C: Contents of Joint

Case Management Statement.

There may be automatic assignment of “appropriate” cases to ADR by the clerk, or if the

judge decides to refer the case

to the program on his or her

own initiative. ADR L.R. 3-3.

Litigants in “appropriate” civil 

cases may be assigned to the 

ADR Multi-Option Program by 

the clerk when the complaint is 

filed. ADR L.R. 3-3(a). Cases 

can also be assigned to the 

ADR Multi-Option Program by 

stipulation of all parties, on motion by a party under Civil L.R. 

7, or on the judge’s initiative. 

ADR L.R. 3-3(b)-(c). The ADR 

processes offered by the court 

are settlement conference, mediation, and early neutral evaluation (ENE). ADR L.R. 3-4(a). A 

private ADR procedure can also 

be substituted if the parties 

stipulate. ADR L.R. 3-4(b). Settlement conferences are ordinarily conducted by magistrate 

judges.

Generally, the neutral must be a 

member of the N.D. Cal. bar or 

a member of an accredited law 

school and complete initial and 

periodic training. ADR L.R. 2-

5(b). There are additional requirements for ENE evaluators 

(admitted to practice for at least 

15 years and have considerable 

experience with civil litigation in 

federal court), and mediators 

(admitted to practice for at least 

7 years and knowledgeable 

about civil litigation in federal 

court). Id.

Early neutral e

less one of the 

out in the ADR 

plies or all part

closure, comm

in connection w

not be disclose

judge, to other 

outside the AD

anyone else no

litigation.” May 2

book at 6.

Mediation: “U

exceptions set 

Local Rules ap

agree to disclo

cations made in 

a mediation m

closed to the a

other court pe

the ADR progra

else not involve

Id. at 9.

Settlement Co

munications ma

with a settleme

dinarily may no

the assigned ju

else not involve

65
Patent Mediation Guide

unless otherwis

10.

Northern District of California (cont’d.)

66
Patent Mediation Guide

Southern District of California 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

The parties must conduct an 

Early neutral evaluation (ENE) 

Conference with a judicial officer. Civ. L.R. 16.1.c; Patent 

L.R. 2.1.a.

If the parties cannot reach a 

settlement at the ENE conference, the judicial officer may 

discuss the parties’ willingness 

to agree to non-binding arbitration or mediation (governed by 

General Order #387) where the 

judicial officer thinks it might resolve the lawsuit, or where the 

parties have indicated interest 

in arbitration or mediation. Civ. 

L.R. 16.1.c.2. If the parties continue to go forward with the 

case, the judicial officer will discuss ADR alternatives at the 

case-management conference, 

held within 30 days after the ENE 

conference. Civ. L.R. 16.1.d.1, 

16.1.c.2.

The court maintains a list of 

qualified attorneys who agree 

to serve as arbitrators or mediators, or the parties can select 

their own. General Order #387 

R. 600-2(a); 600-3(a). Any person may be approved to serve

as an arbitrator or mediator if

the person 1) has been for at

least 5 years a member of the

bar of the highest court of any

state or D.C.; and 2) is a member of the S.D. Cal. bar. Id. R.

600-3(b).

ENE: “The ENE 

be informal, off 

ileged, and co

L.R. 16.1c1b. 

mediation: “Th

diator, all coun

and any other 

pating in the m

shall treat as 

written and o

tions made in 

or during any 

sion.” General 

600-8(c).

67
Patent Mediation Guide

District of Delaware 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

During initial Rule 16(b) scheduling conference ADR options 

are discussed, and the district 

judge may refer case to magistrate judge in case management order. “All civil cases, except prisoner petitions and habeas proceedings, may elect to 

use ADR.” Parties may opt out 

of ADR process participation 

only by consent of court. Overview of Mediation/ADR Processes.

Magistrate judges run judgehosted settlement conferences, 

mediation, arbitration, early 

neutral evaluation, and summary trials (jury and non-jury). 

Rule 72.1(a)(1). If district court 

judge refers case to magistrate 

for ADR, parties have a teleconference to determine form of 

ADR to be used, procedures, 

and timing.

Magistrate judges conduct various 

ADR processes. Rule 72.1(a)(1).

“Information d

magistrate judg

tion, including 

any written s

confidential and 

closed to anoth

consent of the 

ty/side. Furthe

tion may not be 

sent litigation n

gation, absent 

olation of con

subject the v

tions.” D. Del. W

http://www.de

judge/chief-mag

mary-pat-thynge 

68
Patent Mediation Guide

Southern District of Florida 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

Some types of civil cases do 

not require mediation. See L.R. 

16.2c. In all civil cases except 

for those listed in L.R. 16.2c, 

Court shall enter order of referral. L.R. 16.2d.

Mediation: Also, “A Magistrate 

Judge may be designated by a 

District Judge to serve as a 

special master in appropriate 

civil cases in accordance with 

28 U.S.C. § 636(b)(2) and Federal Rules of Civil Procedure 

53.”

To be certified as a mediator, 

the individual must 1) be an attorney who has been admitted 

for at least 10 consecutive 

years to one or more state bars 

or the bar of the district of Columbia, 2) currently be a member in good standing of the 

Florida Bar, 3) have substantial 

experience either as a lawyer or 

mediator in matters brought in 

any U.S. district court or bankruptcy court, 4) have been certified and remain in good standing as a circuit court mediator 

under the rules adopted by the 

Supreme Court of Florida, and 

5) have substantial experience

as a mediator. L.R. 16.2(b)(3).

“All proceeding

tion shall be 

are privileged i

provided unde

Florida Statute

proceedings m

ported, record

evidence, mad

court or jury, 

any purpose a

against interest

69
Patent Mediation Guide

Northern District of Illinois 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

Voluntary Mediation Program 

(VMP) for Lanham Act cases. 

L.R. 16.3

VMP for Lanham Act cases 

(only, apparently). L.R. 16.3. 

Parties assigned to VMP are 

not required to participate in the 

program but are strongly encouraged to do so. L.R. 16.3 

App’x B, V.

For VMP for Lanham Act cases, 

individual neutrals need 5 or 

more years of experience in the 

practice of Lanham Act law or 3 

or more years of experience as 

a neutral (in any field); organizations need at least 3 years 

providing ADR training and involvement, and affiliation with at 

least two individuals who meet 

the individual neutral criteria. 

L.R. 16.3 App’x B, III.B.

VMP: “All med

ings, including 

made by any p

other participan

spects, be pri

reported, reco

evidence, mad

trial court or ju

for any purpos

sion. No party 

by anything do

conference unl

is reached, in 

settlement sha

writing and s

upon all partie

ADR Proceed

“Pursuant to 28 

all non-binding 

pute resolution 

ings referred or 

judicial officer o

case pending b

cial officer, incl

statement mad

attorney or o

shall, in all res

leged and no

orded, placed in 

70
Patent Mediation Guide

known to the t

(without consen

construed for a

admission in the 

in any case or 

participant in th

ings shall be bo

done or said at 

ence unless 

reached, in whi

tlement shall be 

ing or otherwi

and shall be 

parties to the 

83.5.

Northern District of Illinois (cont’d.) 

71
Patent Mediation Guide

District of Massachusetts 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

The parties must consider ADR 

options and are encouraged to 

participate in at least one of the 

ADR alternatives available. L.R. 

16.4(a)–(b).

Offers the following court-sponsored ADR options: 1) early neutral evaluation, 2) mediation, 3) 

mini-trial, 4) summary jury/bench 

trial, 5) consent to jury trial or 

court trial before a magistrate 

judge, 6) settlement conferences 

conducted by district judge or 

magistrate judge, 7) special 

masters, 8) private ADR, and 9) 

state court multi-door courthouse. Alternative Dispute Resolution Plan (June 1, 2000), Section II.

The court maintains a list of 

neutrals that includes judicial 

officers and ADR “Panel Members.” To be on the ADR panel, 

a neutral must have at least 10 

years of experience, including 

litigation or dispute resolution 

experience. A neutral need not 

be an attorney, but must possess specialized knowledge, 

skill, education, or training relevant to the subject matter. ADR 

providers must have completed 

a court-approved ADR training 

program or demonstrate equivalent training or ability. Alternative Dispute Resolution Plan 

(June 1, 2000), Section III.B.1.

Mini-trial: “Ne

opinion of an im

nor the present

ties shall be a

dence in any 

ceeding, unless 

sible under the 

Also, the occur

trial shall not be 

16.2(c)(2). Sum

“Neither the 

opinion nor its 

presentations o

be admissible a

subsequent pr

otherwise adm

rules of evidenc

rence of the s

shall not be 

16.2(c)(3)(d). M

communication 

subject matte

made during t

any participant

other person p

diation shall b

communication 

contemplated 

72
Patent Mediation Guide

408. No admis

tion, statemen

dential commu

setting up or co

ceedings not o

erable or obtai

missible as ev

to discovery.” L

District of Massachusetts (cont’d.)

73
Patent Mediation Guide

Southern District of New York

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

Governed by “Procedures of the 

Mediation Program for the 

Southern District of New York.” 

In all civil cases other than Social 

Security, habeas corpus, and 

tax, mediation may be used. In 

all eligible cases, “each party 

shall consider the use of mediation and shall report to the assigned Judge at the initial Rule 

16(b) case management conference, or subsequently, whether 

the party believes mediation may 

facilitate the resolution of the 

lawsuit. Judges are encouraged 

to note the availability of the mediation program before, at, or after the initial Rule 16(b) case 

management conference.” “The 

Board of Judges may, by Administrative Order, direct that 

certain specified categories of 

cases shall automatically be 

submitted to the mediation program.” Certain cases may be exempted with or without the request of the parties. L.R. 

83.9(d)(2). In all other cases, assigned judge/magistrate judge 

Mediation (listed under Local 

Civil Rule 83.9—Alternative Dispute Resolution).

Individuals can serve as mediators once they have been certified by the Chief Judge or designee to “be competent to perform the duties of a mediator for 

this Court.” In the first year of 

service, mediators participate in 

apprenticeships and observe 

mediations, co-mediate with 

other panel members, and undergo supervision/assessment

before independent mediation 

is permitted; mediators must 

attend one CLE program on 

mediation per year, participate 

in ongoing assessment, and 

mediate at least two cases per 

year. Procedures of the Mediation Program, § 12.

Under “Proced

ation Program” 

communication

are confidential 

agree to disclo

required by law

tions are releva

against mediato

gram. Parties m

close informati

while in further 

tiations with d

judge. Parties 

terms of settlem

seeks to enforc

74
Patent Mediation Guide

“may determine that a case is 

appropriate for mediation and 

may order that case to mediation, with or without the consent 

of the parties, before, at, or after 

the initial Rule 16(b) case management conference.” L.R. 

83.9(d)(3). Parties can inform 

judge of their desire to mediate 

at any time. L.R. 83.9(d)(3).

Southern District of New York (cont’d.)

75
Patent Mediation Guide

Southern District of Texas 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

“Before the initial conference in 

a case, counsel are required to 

discuss with their clients and 

with opposing counsel the appropriateness of ADR in the 

case.” L.R. 16.4.B.

“The Court approves the use of 

the following ADR methods in 

civil cases pending before district, magistrate, and bankruptcy judges: mediation, early 

neutral evaluation, mini-trial, 

summary jury trial, and, if the 

parties consent, non-binding 

arbitration pursuant to 28 

U.S.C. § 654 (1998) (collectively, ‘ADR’). A judge may approve any other ADR method 

the parties suggest and the 

judge finds appropriate for a 

case.” L.R. 16.4.A.

“To be eligible for initial listing as 

an ADR provider, the applicant 

must meet the following minimum qualifications: (i) membership in the bar of the United 

States District Court for the 

Southern District of Texas; (ii) licensed to practice law for at 

least ten years; and (iii) completion of at least forty hours training in dispute resolution techniques in an alternative dispute 

resolution course approved by 

the State Bar of Texas Minimum 

Continuing Legal Education department.” L.R. 16.4.E(3)(b). Neutrals must complete five hours of 

ADR training per calendar year to 

maintain a listing as an ADR provider. L.R. 16.4.E(3)(d).

“All communica

ADR proceeding

munications co

ing, a final ag

provider fees) 

are protected 

and may not be 

yone, including 

provider or the 

nications made 

ceedings do 

waiver of any 

and immunitie

vider may not t

ments made b

negotiations th

ing the ADR p

provision does 

quirements of 

(1998) applicab

arbitrations.” L

76
Patent Mediation Guide

Eastern District of Texas 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

“Any civil suit may be referred to 

mediation through the agreement of the parties and or by 

order of court.” Court-Annexed 

Mediation Plan § VI.

Mediation: “private process in 

which an impartial third party, the 

mediator, facilitates communication and negotiation and promotes voluntary decision making 

by the parties to the dispute.” 

Court-Annexed Mediation Plan 

§ II.

“Any person may serve as a mediator who has been ordered by 

the court to serve as a mediator 

or is approved by the parties. 

Any person selected as a mediator may be disqualified by the 

court.” Court-Annexed Mediation Plan § III.

“All proceedings 

including statem

party, attorney, 

pant, are privileg

tial in all respec

process is to re

Mediation proc

be reported, rec

evidence, mad

trial court or ju

for any purpos

sion against int

not bound by 

done at a medi

unless a settlem

A mediator sh

dential informa

virtue of the m

and shall not d

formation to an

withstanding t

mediator may 

mation (1) that 

disclosed by o

(2) that he or s

by the parties t

that is related t

intended crime 

fidential informa

77
Patent Mediation Guide

the mediator 

parties that d

quired and will b

Annexed Media

Eastern District of Texas (cont’d.)

78
Patent Mediation Guide

Eastern District of Virginia 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

“The Court encourages the parties to meet and consult with 

each other to achieve settlement. 

Pursuant to 28 U.S.C. §§ 651, 

652, and 653, as amended by 

the Alternative Dispute Resolution 

Act of 1998, the use of mediation 

as an alternative dispute resolution process in all civil actions, including adversary proceedings in 

bankruptcy, is authorized. Before 

the initial pretrial conference or in 

the scheduling order, litigants in 

all civil cases shall be advised of 

the availability of mediation and 

may request it. The continued utilization of settlement conferences 

as a form of mediation is also authorized.” Local Civil Rule 83.6.

Defined as “settlement and alternative dispute resolution” in 

rule; referred to as mediation 

throughout rule. Local Civil Rule 

83.6.

All district judges, magistrate 

judges, and bankruptcy judges 

are authorized to act as mediators/neutrals, and to appoint 

mediators/neutrals who may be 

any “appropriately trained nonjudicial person” (appointing order sets compensation). Local 

Civil Rule 83.6.

“The substanc

tion in the medi

not be disclos

other than parti

diation process

ever, that not

modify the app

Rule of Eviden

use in the med

an otherwise 

ment, object, o

clude its use a

Rule 83.6(E).

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Patent Mediation Guide

District of New Jersey 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

“Each Judge and Magistrate 

Judge may, without the consent of the parties, refer any civil 

action to mediation. The parties 

in any civil action may, with 

consent of a Judge or Magistrate Judge, agree to mediation 

and, if such consent is given, 

select a mediator. Notwithstanding the above, no civil action described in L. Civ. R. 

72.1(a)(3)(C), may be referred to 

mediation.” Civ. Rule 301.1(d).

Mediation: neutral evaluation 

by mediator may be done. Civ. 

Rule 301.1, 301.1(e)(4).

The chief judge may designate 

as many mediators as are necessary under the Civil Rules. 

Mediators have terms up to 3 

years, and terms can be extended. Mediators must have 

been members of the bar in the 

highest court in a state or in 

D.C. for 5 years before appointment, must be admitted to

practice before this court, must

be competent to be mediators

in the view of the chief judge,

and must participate in a training program. Civ. Rule 301.1(a).

“All informatio

the mediator s

confidential un

otherwise and 

closed by anyo

mediator, witho

cept as necess

Court of an ap

participate. Th

not be subject 

any party. No s

or documents p

diation shall be 

subsequent pro

strued as an 

Rule 301.1(e)(5

80
Patent Mediation Guide

Federal Circuit 

ADR Requirements for Civil 

Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

“Participation in the court’s mediation program is mandatory for 

all cases selected for participation 

in the program. The Circuit Executive, through the Office of General Counsel, contacts principal 

counsel in cases selected for mediation to determine whether the 

case is a good candidate for mediation and seeks the opinion of 

counsel regarding participation in 

the program. If at the outset it appears to the designated court officials that mediation will not be 

fruitful, then court mediation efforts cease. Additionally, counsel 

may jointly request that a case be 

included in the mediation program.” Appellate Mediation Program Guidelines (Dec. 6, 2013).

Mediation: “The mediation program provides a confidential, riskfree opportunity for parties to resolve their dispute with the help of 

an experienced volunteer neutral, 

third-party mediator, or a magistrate judge. Mediation, unlike arbitration where a decision that may 

be binding is issued, will result in 

a settlement only if all parties 

agree on that resolution.” Appellate Mediation Program Guidelines § 1.

“The court has selected a roster 

of outside mediators, including 

magistrate judges and volunteer mediators.” Interested parties may apply to be volunteer 

mediators but cannot be in active practice. Appellate Mediation Program Guidelines § 4.

“Confidentiality i

out the mediatio

as noted in thes

mediators must 

dentiality of the 

proceedings a

from complying 

or other reques

about mediate

response to a f

quiring such di

munication with 

mediation matte

mediator and t

tive or membe

General Couns

stance of med

tial and may no

any participant

duty of non-dis

cover disclosu

course of litigat

forceability of 

reached throug

may be separa

agreement or 

legal standard

here. The fact 

mediation is no

81
Patent Mediation Guide

example, any m

sions of time 

cause the parti

mediation are 

file. Section 7 s

cedures for se

of time.” App

Program Guide

Federal Circuit (cont’d.)

82
Patent Mediation Guide

International Trade Commission180

ADR Requirements for

Civil Cases

Type of ADR Program Requirements for 

Neutrals

ADR Reportin

Disclosure/C

All § 337 investigations are eligible for participation in the 

mediation program. An administrative law judge may nominate a particular § 337 investigation for inclusion in the program or the litigating parties 

may individually or jointly request to participate.

Further, certain administrative 

law judges include required mediation in their ground rules.181

Mediation: “The Mediation 

Program offers a risk-free, inexpensive, confidential and 

quick mechanism to evaluate 

whether settlement can be 

achieved in these cases. Even 

if settlement of all claims and 

issues is not possible, mediation may help narrow issues

and claims in the investigation.”182

The mediators are outside experts and 

consultants experienced in both patent 

litigation and mediation. The Commission maintains a roster of mediators 

who have agreed to serve in a pro-bono 

capacity for Commission investigations 

and who have been pre-screened by 

the Commission. Most of these mediators have served in a similar capacity for 

the U.S. Court of Appeals for the Federal Circuit. The Commission also maintains an open list of private mediators. 

Mediators and applicants to be mediators must not be in active practice. For 

purposes of these guidelines, “not be in 

active practice” means that the applicant or mediator is not appearing, and 

will not appear while a member of the 

Commission’s mediation roster, as a 

counsel for a party or amicus in any 

matter before the Commission or from 

the Commission.

Mediation co

confidential a

by non-discl

by the Stan

Protective O

tion, by the p

the administ

and by prog

ther the Co

gative attorn

trative law ju

of the Com

member of th

eral Counsel 

ticipate in, or 

the mediation 

than the fact 

tion is in med

180. Int’l Trade Comm’n, Section 337 Mediation Program, Second Update, Pub. No. 4275 (Nov. 2011), https://w

Mediation_ Brochure_FINAL_Pub4275.pdf.

181. See, e.g., Int’l Trade Comm’n, Ground Rules for Section 337 Investigation, Rule 7.

182. See Int’l Trade Comm’n, supra note 180, at 3.

83

85

Appendix B: Exemplary Mediation 

Confidentiality State Provisions*

State Statutes

California Cal. Evid. Code §§ 703.5, 1115, 1119–1128

Connecticut Conn. Gen. Stat. § 52-235d (West. Supp. 2001)

Delaware Del. Ch. Ct. R. 174

District of 

Columbia

D.C. Code §§ 16-4201 to 16-4207 (UMA)

Florida Fla. Stat. §§ 44.401–44.406 (2012)

Hawaii HRS § 658H–5(b) (UMA)

Idaho Idaho R. Evid. § 507; Idaho Code Ann. §§ 9-801 to 

9-808 (2011) (UMA)

Illinois Ill. Comp. Stat. Ann. 35/8 (UMA)

Iowa Iowa Code Ann. § 679C.2 (UMA)

Louisiana La. Rev. Stat. Ann. § 9:4112

Massachusetts Mass. Gen. Laws Ann. Ch. 233 § 23C

Maine Me. R. Evid. § 514

Missouri Mo. Ann. Stat. § 435.014 (West 1992)

Montana Mont. Code Ann. § 26-1-813 (1999)

Nebraska Neb. Rev. Stat. § 25-2930 (2003) (UMA)

Nevada Nev. Rev. Stat. Ann. § 48.109 (1996)

New Jersey N.J. Stat. tit. 2A Ch. 23C § 4 (2004) (UMA)

Ohio Ohio Rev. Code §§ 2710.01–2710.07 (2005) 

(UMA)

Oregon Or. Rev. Stat. §§ 36.220–36.238 (2015)

* UMA = Uniform Mediation Act.
Patent Mediation Guide

86

Pennsylvania Pa. Cons. Stat. Ann. § 5949 (1996)

Rhode Island R.I. Gen. Laws § 9-19-44 (2012)

South Dakota S.D. Codified Laws §§ 19-13A-1 to 19-13A-8

(UMA), 25-4-59 to 25-4-60 (1996)

Texas Tex. Civ. Prac. & Rem. Code Ann. § 154.073

(Vernon 1997 & Supp. 2000)

Utah Utah Code Ann. § 78B-6-208 (2008) (UMA)

Vermont Vt. Stat. Ann. tit. 12 Ch. 194 (2005) (UMA)

Virginia Va. Code Ann. § 8.01-581.22 (2013)

Washington Wash. Rev. Code § 7.07.030 (2005) (UMA)

Wisconsin Wis. Stat. Ann. § 904.085(4)(e)

Wyoming Wyo. Stat. Ann. § 1-43-103
The Federal Judicial Center

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The Chief Justice of the United States, Chair

Magistrate Judge Tim A. Baker, U.S. District Court for the Southern District of Indiana

Judge Duane Benton, U.S. Court of Appeals for the Eighth Circuit

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James C. Duff, Director of the Administrative Office of the U.S. Courts

Director

John S. Cooke

Deputy Director

Clara Altman

About the Federal Judicial Center

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