As a trial lawyer who has conducted many complex intellectual property case kickoffs between inside and outside counsel teams, I’ve discovered that covering five key questions during that first meeting provides a dependable format for success. These questions (amplified with good listening skills, experience and good ideas) help everyone get on the same page early in the game. Better, asking these questions and getting them answered upfront results in a shared plan for control of the case, communications, cost and a case-winning strategy.
1. What are the business goals of the case?
Most trial lawyers have a default goal for every case: “Do whatever it takes to win at trial.” Although it’s a fine goal, a single-minded focus on a trial win often fails to identify the issues that are most important to the business. More significantly, it can completely overlook the question, “What do we get if we win?” Discussing how this dispute impacts your business and what your business needs to be able to put the dispute in the rearview mirror on acceptable terms requires a deeper exploration of the businesses goals connected to and impacted by the litigation. Often, fulfilling those goals does not require a litigation strategy based on a philosophy of “win at all costs.”
Alignment of litigation and business goals helps define both tactical and strategic decisions and helps create a framework for case management. Perhaps the team will decide we don’t necessarily need to kill the patent or get clearance for all possible product designs, or that we have a need for some certainty sooner rather than later. Perhaps the team will conclude we have some other, more relevant goal for case management than “take this case to trial and win it.” Of course, in some cases you need a trial win, and then it is critical to know that, too, so we can plan the case to get the win.
2. What are the three best and worst facts for closing?
Facts usually win or lose cases, particularly cases that have any probability of going to trial. If we can identify the best and the worst facts of our case as early as possible, we will make a much better assessment of cost and benefits of various tactics, be able to pick better strategies and have better control of the case. Focus saves money, multiplies force by getting everyone pointed in the same direction and leads to better decisions.
You may learn things as you go, especially when you get some discovery from the other side. That is not a reason to avoid identifying what you believe are the best and worst facts as early as you can. In fact, having a working set of the outcome-determinative facts early gives you traction to test them against what your witnesses and documents say so that you can conduct a more effective investigation and make necessary adjustments as reality collides with what you initially believe.
3. What is the two-page road map to get from here to closing?
Distilling the overall case plan down to a two-page road map helps everyone stay focused on controlling the case so it doesn’t control you. This kind of road map serves as both a planning and, more importantly, as a communication tool. Done right, a road map will provide a concrete and specific focal point to talk about what is worth doing, the best timing for proceeding and the resources required. It also sets identifiable landmarks to measure accomplishments as the case progresses, and allows the team to monitor and effectively manage key issues that may arise.
Can you have a useful, two-page road map in a complex, multimillion-dollar IP case? Of course! In fact, the more complex the case is, the more useful it is to step back and take a 60,000-foot look at it to make sure everyone remains on the same page.
More accurately, perhaps, what are the budget and financial considerations you are dealing with that I need to be aware of as I try to forecast and budget, and as I update you on developments that will impact cost? It may be hard to get confident about what a dispute might cost at the first meeting, but it may not be as hard to be specific about how much the case is worth to the business. Then you can plug that information into “what do we get if we win?” and make some cost-benefit decisions about tactics and strategy for the case, and the range of acceptable outcomes that factor in the cost.
Also, it is helpful for me to understand the specific financial and budget issues you are dealing with so that I can try to plan case activity and communication to manage to your goals and communicate early when there are problems that may be hard to avoid.
5. How are we going to communicate (who, when, how)?
Sounds obvious, but the communication preferences of in-house counsel can vary widely by individual and by matter. What is better for you: texts, email, memos, telephone calls, meetings? Every day, weekly, monthly or only when it matters? Would it be useful to get a one-page, graphic update once a month by email, or is that clutter? What news do you need to hear immediately and without fail? Do you want one point of contact or many (on your side and on our side?)
Be as concrete as possible by specifically discussing: 1) who will originate communication and who should receive it; 2) when (how frequently or upon the happening of what events) do you want communication; and 3) how do you want to receive the communication—what form of transmission is most likely to rise to your attention when you need it and avoid annoying you? My goal is to give you seamless, flawless communication when you want it, how you want it and to make your job easy, so I need to know what that means to you.
The kickoff meeting for complex intellectual property cases is an opportunity to establish a concrete and specific understanding that will focus the partnership among counsel and client on the best process and the right tasks to get to the outcome the business needs. Covering five simple topics is a great tool for making the most of the opportunity. It also provides a framework to revisit these core questions throughout the litigation to assure that the litigation strategy remains consistent with the overall business goals and objectives.