A former federal judge on testing arguments, assessing risk and making better-informed strategic decisions
Neutral evaluation is an invaluable tool, particularly in patent litigation. I speak with authority, having spent 20 years on the federal bench in Delaware, seven of them as chief judge. Delaware is one of the busiest patent venues in the country. Across those two decades, I handled hundreds of patent matters and a lot of complex civil litigation.
The Limits of Litigation Analytics
Litigators today work with more data than they did in the past. Analytics tools can tell you how a judge has ruled on a certain kind of motion or how long a judge tends to take to make a ruling. That information has value, and in some matters, it may be enough. In a complex, high-stakes patent case, it is only a starting point. The numbers cannot measure the specific facts of your case against the strength of your arguments, as they lack the judgment and perspective of someone who has served on the bench. Neutral evaluation gives you that, providing a decision-maker's reaction to the case you actually have, rather than a prediction drawn from a trend.
Where Evaluation Fits in a Patent Case
Patent litigation is a natural fit for neutral evaluation because so much of it turns on rulings that are hard to walk back. Consider a Markman hearing. When the two sides read a key claim term differently, the judge resolves the disputed meaning, and that single ruling can shape everything that follows.
Testing your Markman arguments in front of a neutral before the actual hearing—preferably with someone who has sat through one—is an ideal use of this tool. Evaluators can be helpful at other points too, such as after discovery, when you weigh whether a dispositive motion is worth drafting; before trial, as you choose which evidence to challenge in limine; and on appeal.
The Cost-Benefit Analysis
Litigation is a costly endeavor. As in most complex proceedings, patent cases are generally time-consuming and resource intensive. While neutral evaluation will add to the overall cost of litigation, the evaluation itself is a relatively modest expense that can help attorneys avoid much greater cost later.
Some examples might be motions that are not going to land well, a trial that should not have started and an appeal that only compounds a loss.
Depending on the stakes (a high-dollar infringement verdict or an invalidity finding), neutral evaluation can be a prudent investment. Consider a case involving a "blockbuster" pharmaceutical (a billion-plus-dollar drug). If losing the exclusive right to make and sell that product could eliminate hundreds of jobs or even put the company out of business, a few hours or even days of a neutral's time may prove to be worthwhile.
The same calculus applies to any complex litigation, such as an antitrust or commercial dispute, a contract fight where the agreement itself is worth millions of dollars or allegations of medical malpractice. Any matter with the potential for high-dollar damages that involves complicated subject matter and litigation strategy could potentially benefit from neutral evaluation.
Best Practices in Evaluation
While a single evaluator is certainly better than none, I believe a panel of two or three neutrals can provide the most effective evaluation format. With a panel, you aren't leaning on one person's assessment, plus the debrief is usually more robust. Panelists tend to challenge one another, often offering contrasting views on the presentation they've just heard.
Whether the analysis is set up by a law firm or consultants hired to pick the neutrals and structure the exercise, the manner in which it’s provided can vary. Necessarily, the process begins with the neutral(s) receiving materials upon which their evaluation will be based (briefs, transcripts of deposition or hearing testimony, court rulings, etc.). Typically, the neutral(s) will be asked to provide an estimate of the time needed for reading the materials as well as responding to written questions provided in advance. The balance of the time allotted for the evaluation will be determined by the organizer.
Formats can vary; there is no one-size-fits-all approach. Counsel may ask the neutral(s) to listen to arguments by counsel without interruption by the neutral(s) for questions. Some prefer a "hot bench." The views of the neutral(s) may be solicited during an in-person debriefing session with the full panel present or in individual interviews. As noted, the structure of the exercise is limited only by the manner that the client believes is the best way to get the feedback it needs from the evaluator(s).
My preference is to have some time allotted to a debriefing session, which will enable the panel to actively engage with counsel and their client, if counsel has elected to have their client attend the exercise, which is something that I strongly encourage. The client(s) are, though perhaps not trained in the law, typically smart, sophisticated individuals. I have frequently seen them ask excellent questions and make meaningful contributions to the strategic thinking of their lawyer(s). It is worth remembering that trials are human dramas, and a live exchange with the people who sat through your presentation will likely capture and preserve more than any document will.
Although the line between the role of a consultant and that of a neutral evaluator is often blurred, I see a distinction. A consultant helps shape your strategy, whereas a neutral gives you honest, unadulterated feedback on what you have already built. Much of a neutral’s value lies in their unbiased approach. A fresh set of eyes, particularly those of a former judge, can help counsel lift the veil of their beliefs, which can allow them to see the true merits of their case.
Finally, it’s always a good idea to bring corporate counsel into the conversation early. Not only do they control the budget, but they can also add real value to the exercise and, consequently, the case.
Picking the Right Evaluator(s)
Some matters, such as patent cases, carry a complexity that rewards an outside perspective at nearly every critical stage. If you are considering bringing in a neutral evaluator or panel of evaluators, look for subject-matter depth and courtroom experience.
Whether they are independent or affiliated with an alternative dispute resolution organization such as JAMS, you should consider the value a knowledgeable and experienced neutral evaluator can bring to your case.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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