Hon. Victor B. Kenton (Ret.) THE BEST DEFENSE CAN BE A GREAT OFFENSE AND SAVE THE EXPENSE OF TRIAL: Develop your game plan now for early disposition as a result of pre-trial motions and mediation during litigation, or patent aggregation and licensing prior to litigation 2016 Patent Disputes Forum October 18, 2016 Jeff Joyner Shareholder, Greenberg Traurig, LLP joynerj@gtlaw.com Moderator Jeff Kichaven Jeff Kichaven Commercial Mediation jk@jeffkichaven.com Panelists Hon. William V. Gallo Magistrate Judge, Southern District of California  William_V_Gallo@casd.uscourts.gov Hon. Victor B. Kenton (Ret.) Judicate West divervic1@gmail.com Meg Kammerud Steptoe & Johnson LLP Mkammerud@steptoe.com

Agenda Ways in which parties can avoid and resolve patent disputes without resorting to litigation or early during litigation Pre-trial Motions Mediation Patent Aggregation and Licensing

PRE-TRIAL MOTIONS 12(b)(6) Motion to Dismiss IPR Motion to Transfer Benefits - Early Disclosure of Parties’ Positions (e.g., Claim Construction), Invalidate patent(s) Disadvantages - Credibility with Court, Court’s Delayed Decision IPR Benefits - Likelihood of Success, Staying District Court Case, PTAB Decides Invalidity (e.g. Anticipation, Obviousness) Disadvantages - Estoppel Effect, Expense Motion to Transfer Benefits – Early Disposition by Transferee Court Disadvantages – Expedited/Early Discovery of Corporate Defendant Information

MEDIATION TO MEDIATE OR NOT TO MEDIATE? How well-developed does a case need to be? (e.g., is claim construction necessary?) Can and should in-house counsel exchange numbers first (e.g. before engaging outside counsel)? What are other prior indicia of success (e.g., in-house/outside strategy aligned)? Should you pursue IPR or mediation? TYPES of MEDIATION/MEDIATORS Is familiarity with patent law (e.g., claim construction) important? Is evaluative or facilitative mediation better? Will parties need multiple days of mediation and follow-up after mediation? Is there communication between the US Magistrate Judge and US District Judge about the mediation (e.g. ethical wall or not)?

MEDIATION HOW BEST TO PREPARE How can you prevent ambush? What should be exchanged in writing? What else should you do (e.g., Telephone Calls With the Mediator, "Pre"- Mediation Mini-Caucuses)? WHAT CAN AND SHOULD HAPPEN ON MEDIATION DAY? Establishing Rapport Exchanging Information (e.g., Opening Joint Session, Initial Caucus) Bargaining

PATENT AGGREGATION AND LICENSING Is it ever too late to acquire patents or transact your way out of a dispute? Is transacting a less expensive and faster way to dispute resolution than litigation? Do transaction and litigation strategies work hand in hand? Several examples: Membership Model Crowd Sourcing Licensing/Indemnification/Partnerships

PATENT AGGREGATION AND LICENSING (cont.) Membership Model (e.g., RPX) Benefits – resolves certain types of disputes Disadvantages – cases might have been resolved without membership Crowd Sourcing (e.g., Unified Patents) Benefits – reduce potential risk without estoppel risk Disadvantages – choosing the correct patents, conflicts Licensing/Indemnification/Partnerships Benefits – pre-litigation license, patent pools, customer agreement (e.g., IP indemnification) Disadvantages – standards “essential” patents