Best practices for an IP trial topic of lively panel

"What is the first thing you want to know from your client in an intellectual property dispute?" asked moderator Mark T. Banner of Banner & Witcoff. Panelist Robert G. Krupka, Kirkland & Ellis, responded, "I want to know, 'what is their objective?'" Even after you talk with your client for hours, said Krupka, you still may not know what it is you're trying to accomplish, because often your client doesn't know. Dale Cendali of O'Melveny & Myers agreed, and also said, "Sometimes I hear, 'I don't want the case to go on very long,'" and you need to let your client know that the whole process may indeed go on for a considerable length of time. U.S. District Court Judge Susan Illston of San Francisco said that these were exactly the kind of things that she wanted to know and would stress that a client be made aware. Sometimes clients "haven't thought it through or don't want you to know" what they want, she said.

This was part of a lively panel discussion held in April during the American Bar Association 21st Annual Intellectual Property Law Conference in Arlington, Va.

Chip Lutton, chief patent counsel for Apple Computer Inc., addressed the question from a client's perspective. "It really is a dialogue," he emphasized. Sometimes the client thinks he or she knows what they want. But sometimes, you as their lawyer need to say, "With this court, these facts, you aren't going to get what you want."

Judge T.S. Ellis, of the U.S. District Court for the Eastern District of Virginia, went one step further to say that even when there's a game plan, the objective needs to be flexible: "During the course of the game, you may need to change the game plan."

Panelists also talked about humanizing the corporate client. Cendali, who represents Fox 21st Century, noted that the "perception the client has of itself may be different than the perception the public has." That needs to be taken into account in a trial. Additional discussion focused on "what makes a good brief?" and whether the size of the client makes a difference in how best to approach the case.

Information on the ABA Section of Intellectual Property Law is available at its Web site.

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