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B I G W I G B R I E F S

BIGWIG BRIEFS TEST PREP:THE BAR

Real World Intelligence, Strategies & Experience From Industry Experts to Prepare You for Everything the

Classroom and Textbooks Won't Teach You

Published by Aspatore Books, Inc. For information on bulk orders, sponsorship opportunities or any other questions please email [email protected]. For corrections, company/title up1 dates, comments or any other inquiries please email [email protected].

First Printing, 2002 10 9 8 7 6 5 4 3 2 1

Copyright © 2001 by Aspatore Books, Inc. All rights reserved. Printed in the United States of America. No part of this publication may be reproduced or distributed in any form or by any means, or stored in a database or retrieval system, except as permitted under Sections 107 or 108 of the United States Copyright Act, without prior written permission of the publisher.

ISBN 1-58762-212-2

Edited By Laurie Mingolelli

Cover design by Rachel Kashon, Kara Yates, Ian Mazie

Material in this book is for educational purposes only. This book is sold with the understanding that neither any of the interviewees or the publisher is engaged in rendering legal, accounting, investment, or any other professional service.

This book is printed on acid free paper.

Special thanks also to: Ted Juliano, Tracy Carbone, and Rinad Beidas

The views expressed by the individuals in this book do not necessarily reflect the views shared by the companies they are employed by (or the companies mentioned in this book). The companies referenced may not be the same company that the individual works for since the publishing of this book.

The views expressed by the endorsements on the cover and in this book are from the book the original content appeared in and do not necessarily reflect the views shared by the companies they are employed by.


CONTENTS

Rob Johnson, Sonnenschein Nath & Rosenthal, Chair, Litigation and Business Regulation Practice Group Keys to Success as a Litigator 11 Charles E. Koob, Simpson Thacher & Bartlett, Co-Head of Litigation Department Managing Risks in Successful Litigation 23 John Strauch, Jones Day Reavis & Pogue, Firmwide Chairman, Litigation Department Managing an Avalanche of Information 28 Harvey Kuzweil, Dewey Ballantine, Chair, Litigation Department and Member, Management and Executive CommitteesTop Strategies for Successful Litigation 34 Jeffrey Barist, Milbank Tweed Hadley & McCloy, Chair, National Litigation GroupIt’s a Matter of Facts, Not Just Theories 39 Martin Flumenbaum, Paul Reiss Rifkind Wharton & Garrison, Co-Chair, Litigation Group Weighing the Risks: Negotiation or Litigation 51 Mark J. Macenka, Testa Hurwitz & Thibeault, Partner and Chair, Business Practice Group What Separates Superb Negotiators from the Rest 54 Richard S. Florsheim, Foley & Lardner, Chair, Intellectual Property DepartmentThe Power of Intellectual Property in a World Economy 60 Victor M. Wigman, Blank Rome, Partner, Head of Intellectual Property DepartmentExplosive Changes in Intellectual Property Law 72 Paula J. Krasny, Baker & McKenzie, Partner, Intellectual Practice Group and Group Coordinator-ChicagoCalling in the Trademark Police 76 Brendan Baum, Cooley GodwardIt’s a Matter of Facts, Not Just Theories 86

Cecilia Gonzalez, Howrey Simon Arnold & White, Partner, Intellectual Property and International Commercial Arbitration and Litigation Co-Chair, IP Practice Group Evaluating Two Legal Camps: Litigation vs. Transaction 92 Dean Russell, Kilpatrick Stockton, Chairman, Intellectual Property Group Intellectual Property Law: Ideas in Context, Ideas in Action 96 George D. Dickos, Kirkpatrick & Lockhart, Partner, Coordinator, Intellectual Property Group The 3-Pronged Approach to IP Law: Protect, Enforce, Exploit 101Roger Maxwell, Jekens & Gilchrist, Practice Group Leader, Intellectual Property Law What’s at Stake in Intellectual Property Law 103 William H. Brewster, Kilpatrick Stockton, Managing Partner Achieving Success in Litigation or Negotiation 114 Mary B. Cranston, Pillsbury Winthrop LLP, Chair Advice From the Ages for Today’s Lawyers 119 Bryan L. Goolsby, Locke Lidell & Saap, Managing PartnerProven Tips to Become a Successful Lawyer 121 Robert O. Linx, Jr., Cadwalader Wickerhsam & Taft, ChairmanLawyers as Facilitators of Society: An Integral Identity 126 Keith W. Vaughan, Womble Carylyle Sandridge & Rice, Chair, Firm Management CommitteeFostering Success in a Law Firm 129

How To Use This Book

Bigwig Briefs Test Prep: The Bar Exam features selections

of condensed business intelligence from leading

Chairs/Managing Partners and is the best way for “soon to

be lawyers” to learn to think, analyze, and respond to

situations they will confront in the workplace. The purpose

of this book is not to devise the quickest way to answer a

Bar Exam question. Our strategy is geared towards the

long-term, not the multiple choice quick-fix. We don’t tell

you how to fill in the dots and mark the grids; that you can

find in a classroom or other books. Rather, we try to guide

you towards assuming the mindset of the industry’s most

elite and successful lawyers. If you learn to think like a

successful lawyer and approach decision-making firmly

rooted in this mindset, you greatly increase your chances of

having success on your Bar Exam, especially in answering

the difficult questions that are impossible to study for. The

authors in this book know what it takes to succeed; now

you’ll know their secrets, too. Use this information to get

an edge and enable yourself to think like an experienced

lawyer when taking the Bar Exam.

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Rob Johnson, Sonnenschein Nath & Rosenthal, Chair, Litigation and Business Regulation Practice Group

Keys to Success as a Litigator

Intellect and inquisitiveness are qualities that a litigator must have to be successful. Indeed, they are essential in handling the type of complex commercial litigation in which my law firm concentrates. But I believe the most important quality for success as a litigator—the quality that sets the best trial lawyers apart from the pack—is sound judgment, the ability to make the right calls.

Litigators are faced almost on a daily basis with important and often quite complicated decisions that could affect the outcome of the cases they are handling. A sampling includes: Where should I file the case, in federal or state court, and in what location? Do I want my client’s case tried to a judge or a jury? What causes of action should I allege? In response to a complaint, should I file a motion to dismiss the complaint? If we lose the motion, will it affect how the judge views our case? Which witnesses should I depose and in what order? What theories of liability or

12 BIGWIG BRIEFS TEST PREP

defense should I pursue, and which might distract from an effective presentation of our case? In order to save costs, should I pursue settlement early in the case, or will my opponent view it as a sign of weakness?

The list of judgment calls facing a litigator in a case goes on and on, and, during trial, the calls have to be made quickly and, often, instinctively. Litigators who have the capacity to make the correct decisions are the ones who will succeed. Experience obviously increases one’s ability to make the right calls. But I believe good judgment is, to a large extent, innate, like the ability to hit a curve ball or a high C. One thing is certain: Clients are drawn to those litigators who have the best judgment.

Another essential quality for success as a litigator is the ability to persuade—to be able to convince the trier of fact that your client is right and the other lawyer’s client is wrong. Cases that reach trial—that are not decided on motion or settled along the way—are typically not one-sided. Instead, they present close questions in which it is difficult to predict the outcome. In such cases, it is possible for the lawyer’s ability to persuade to sway the trier of fact and alter the outcome.

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To be persuasive, a litigator must be believable. You want the judge and jury to know that you are being straight with them. To establish that trust, a litigator must guard against overstatement. Like a witness who loses his credibility if he gives testimony that doesn’t ring true, a trial lawyer can lose credibility if he exaggerates the facts or law in his argument. Establishing trust also requires candor, and a lawyer may find it advantageous to acknowledge the weak points in his client’s case. In order to persuade, a litigator must be able to take a complex set of facts and organize and distill them into an understandable, coherent case. It is also critical that a lawyer find a theme in his case—a story to tell—and then present evidence and arguments that support that theme will resonate with the audience.

Finally, successful litigators must have a passion for their work. Being a litigator is hard work and, at times, can become all-consuming. When you’re on trial, 16-hour days are the norm, six or seven days a week. Moreover, trials of complex cases can last weeks, even months. The best litigators don’t eschew these demands, but instead love to roll up their sleeves and get fully enmeshed in the details and complications of their cases.


The First Step in the Litigation Process

Litigation begins with the filing of a complaint. The first thing that a defense lawyer needs to do after reviewing the complaint is to meet with the client to begin investigating the facts in the dispute. We immediately try to partner with our clients who have been sued, so that together we can develop and evaluate the facts, and then together plan the litigation strategy. Over the years I have learned that clients want to be kept fully informed at all stages of a case, and to participate in major strategy decisions. The benefits of this partnering are obvious: The client’s input into the litigation strategy can be invaluable and, with continual communication between lawyer and client, there will be no surprises, in terms of the facts that come out during discovery or trial, or as to the court’s decisions in the case.

For the litigator, obtaining an understanding of the facts at the outset of a case is crucial. The cases my firm handles typically are quite complex, and it is often necessary to review thousands of documents and interview dozens of witnesses before we obtain the complete factual picture. It’s important to do this investigation early on because

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everything flows from the facts; they drive any case. There’s an old saying, “I’ll take the facts, you take the law, and I’ll beat you every time.” I fully agree. Courts sit to do justice and will attempt to come to a result that is just, given the facts presented to them.

After the initial assessment of the facts, the next step in the litigation process for a defense attorney is determining whether to file an answer to the complaint or a motion to dismiss. A motion to dismiss typically challenges the legal sufficiency of the complaint. In effect, it acknowledges, for sake of argument, the truth of the factual allegations in the complaint, but says that, despite those allegations, the defendant should win anyway as a matter of law. Complaints generally present more than one legal theory as a basis for relief. These various theories are set forth in different counts—for example, the first count may be for breach of contract, the second count for fraud, the third for defamation, and so forth. A motion to dismiss can be addressed to the whole complaint, but it can also be limited to attacking the legal sufficiency of individual counts.

While legal grounds may exist on which to base a motion to dismiss, a lawyer may decide that the client’s legal


position may be more persuasively presented in a factual context. If that conclusion is reached, counsel will file an answer to the complaint, instead of a motion, and proceed to discovery in order to develop a factual record on which to present the client’s case.

Step Two in Successful Litigation: The Discovery Phase

Discovery is made up of four components. The first is document discovery. In civil litigation, both sides have to produce to each other all the relevant documents that the other side requests, except for those that are subject to the attorney-client privilege or some other applicable privilege. The second component is interrogatories, which are written questions presented to the other side requiring written, and sworn, answers. The third is requests to admit, which are written statements of fact or conclusions of law that the other side must admit or deny, or explain why it cannot do either. The fourth component of the discovery process is depositions—that is, the taking of the witnesses’ testimony under oath.

Depositions of non-parties are generally taken in order to develop the facts in the case. Depositions of the parties (or

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their employees), however, not only are taken to establish the facts, but also to obtain admissions on the record. These admissions can then be used either at trial or to support a motion for summary judgment. Witnesses who testify in court differently from the way they testified in their depositions can be impeached at trial by having their inconsistent deposition testimony read to them in front of the judge or jury. Effective impeachment is one of the joys of a trial attorney’s life, as long, of course, as it is not his or her client who is being impeached.

During or at the conclusion of the discovery phase but before trial, a litigator may decide to file a motion for summary judgment. In such a motion, a party argues that the material facts in the case are not in dispute and that, based on those facts, it is entitled to judgment as a matter of law. If the facts are undisputed, the court can grant judgment to the moving party, if it is legally entitled to a judgment, without a trial. However, if the record demonstrates a genuine dispute as to the material facts, the motion cannot be granted and the case will have to be tried, so that the trier of fact can weigh the evidence and resolve the factual disputes.


In complex litigation, it is normally beneficial for both sides to try to narrow the case to the essential legal and factual issues. Although a plaintiff’s lawyer may take the approach of throwing as much as he can against the wall to see what sticks, he runs the risk of confusing the trier of fact with too many arguments or, worse, losing credibility by advocating specious claims.

One way of simplifying a case is through the judicious use of summary judgment motions. Indeed, a defense lawyer not only can simplify a case through the filing of a successful motion, but he can also substantially alter a plaintiff’s ardor for its own case by having significant parts of that case thrown out by the judge. For example, a motion that knocks out a fraud claim can change the plaintiff’s view of its case, especially if such a motion removes the possibility of punitive damages being awarded. Without the prospect of a substantial punitive damage award, a plaintiff may be much more likely to settle short of trial on terms the defendant finds reasonable.

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Putting It All Together: Going to Trial

Trials are invariably emotional roller coasters. One day you are up, the next day you take a beating. The key is to not let yourself get carried away with the points you score, and not to panic when adversity strikes. In the end, all the facts can be brought together and explained in the closing argument in order to present a winning picture.

The trial lawyer’s role in all of this is to be the center of attention, the one who appears to the judge and jury to be helping them the most to find the truth. In law school I was fortunate to have had as an evidence professor the late Irving Younger, one of the most renowned lecturers on trial practice this country has ever produced. Professor Younger was a New Yorker and an avid Yankees fan. I’ll never forget his colorful stories about the incomparable Joe DiMaggio, who made everything he did on the baseball field, no matter how spectacular, look easy. His lesson was that a trial lawyer should emulate DiMaggio, and elegantly make everything in the courtroom look easy. Professor Younger’s advice was right on point, and I have tried to follow it every time I set foot in court.


The credibility of the witnesses during a trial is, obviously, a key to the outcome. If an important witness for the other side takes the stand and the jury does not believe his or her testimony, my client’s case is enormously strengthened. Therefore, a trial lawyer invariably will attempt to establish that the other side’s witnesses lack credibility. While that’s not always easy, one of the best ways to do it in the type of commercial cases that my firm handles is through cross-examination based on the relevant documents.

Commercial cases can take years to get to trial and involve events that occurred five, 10 or even 20 or more years before. With the passage of time, memories dim. Moreover, witnesses have a tendency to color their recollection of matters, sometimes unconsciously, so that it favors themselves or their employers. This is one of the reasons why documentary evidence is so critical. A witness may testify that “X” happened, but the examiner can say, “Here is a document that you wrote about the event at the time it happened, and it actually says that ‘Y’ happened.” As they say, “documents don’t lie.” I have often thought that it would be hard to prove almost anything in a commercial case without documentary evidence. Without documents,

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trials in such cases would be reduced to the two sides merely presenting their divergent versions of the “facts.”

In order for one’s witnesses to be credible, they must be sincere and believable. Juries may not always get the amount of damages correct, but they invariably can spot a phony. Therefore, it is important for a trial lawyer to emphasize to his or her witnesses that they be straightforward in their testimony, and that they not dissemble or be evasive. Clients must always be advised to tell the truth when testifying. That is obviously their legal obligation, but they must also be warned that there is nothing that can damage a case more than having a witness caught in an untruth. It can unravel and destroy a case.

What to Do After the Verdict

After a jury verdict, post-trial motions typically are presented to the court. In such a motion, the losing party can request that the judge set aside the verdict and instead enter judgment for the moving party. That can happen, although such relief is granted infrequently. A post-trial motion can also request a new trial or that the damages awarded by the jury be reduced. In cases in which juries


have awarded large punitive damages, post-trial motions are often successful, with the judge reducing the amount of the award and, less frequently, throwing it out entirely.

Under our American system of justice, the losing party always has the right to one appeal. In many states, and in the federal system, a second appeal can be sought as well, although whether a second appeal will be permitted is usually discretionary in the reviewing court. Appellate courts exist to fix errors, both factual and legal, that are made in the trial court and altered the outcome. A significant percentage of cases are reversed on appeal, either in whole or in part, but it can often take two years or more to obtain a final decision on appeal.

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Charles E. Koob, Simpson Thacher & Bartlett, Co-Head of Litigation Department

Managing Risks in Successful Litigation

The issue of managing risk with clients has several dimensions. The most important goal is helping a client, whether plaintiff or defendant, understand how litigation fits into a strategy for dealing with the immediate issue with which he is confronted. Clients do not often come to lawyers with legal issues; they come with problems. They may see litigation as a strategic response, but frequently litigation, if it is an appropriate response at all, is only part of the solution. It is only one piece of a much larger puzzle.

Moreover, clients sometimes use litigation as an excuse for avoiding more important issues. Disputes or crises that generate litigation are often symptoms of a much deeper problem. Perhaps what the client really needs to address is the structure of management, or management itself, or the lines of communication and reporting within the organization, or the composition of the board of directors, or internal compliance procedures. Sometimes the issue involves public perception or public relations. The classic


example that people point to is the way Johnson & Johnson handled the problem with the contamination of Tylenol several years ago. There was a litigation problem to be sure, but what was more important was public confidence not only in the specific product, but in the company itself. The instinctive response may well have been to deny the problem, circle the wagons, and resort only to defending the litigation that eventually came. Instead, the company responded by aggressively addressing the problem, promising a quick and public investigation and keeping consumers informed. Management received high praise for the way it responded to the crises and I cannot help but think it helped them enormously with judges and juries in dealing with the litigation they faced. The bottom line here is to make certain that the client understands the ultimate objective, that he understands the place litigation can play in achieving that objective, that he understands the limitations of litigation, and that he clearly understands what can and cannot be accomplished in the courts. Clients must clearly understand what litigation can achieve and what it cannot.

In representing a plaintiff, you should first go right to that part of the complaint that asks for relief. Ask the client to

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assume that the court is so impressed with your complaint that it grants judgment in its favor on the spot. Now what? Does the client have a clear understanding of what he really wants? What are his real damages? What kind of injunctive relief does he want? Is what he really wants achievable through a court order at all? It is important for lawyers to make certain that clients do not expect more from litigation than is realistically possible. Even when there is compelling evidence on liability, even when a client can make out a convincing case that a wrong has been committed against him, a plaintiff still has to prove damages and a right to effective relief. There are often more effective ways than litigation to achieve a satisfactory result.

Equally critical is for the client to have a clear understanding that litigation is inherently risky. You must be prepared to lose. Every litigator has been asked by clients to handicap the odds, to assess in percentage terms, the chances of winning or losing. It is certainly fair for a client to expect a lawyer to assess the merits of the case; but I have never been comfortable telling a client that he has a 60 percent or 75 percent or 80 percent chance of success. I wouldn’t know how to make that calculation. I can advise a client that he has the better case than his


adversary or even that he has a significantly better case; but there is no mathematical calculation that can capture the dynamics of litigation. Judges and juries are unpredictable and it is much easier to assess a client’s chances once the trial judge has been assigned or the jury picked. But remember that trials are all about presentation and credibility. The reviews don’t come in until after the performance, not before.

It is even more difficult to handicap a case at the outset. No matter how strong your client’s case seems, it will more than likely be won or lost based on what you find in the other side’s documents or how credible the other side’s witnesses will be at trial. You seldom know how the facts will play out or how the witnesses will behave before discovery is virtually complete.

For defendants, the most important part of helping them assess risk is to do a damage analysis at the very outset of the case. Damages in complex cases are almost always the province of experts, and it is never too early to involve experts in your case. Many consulting firms who do this type of work have generally applicable models they can apply to the facts of your case and give you and your

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clients a pretty fair assessment of the likely exposure if you lose. A realistic assessment of damages can influence the way you conduct litigation especially if your view from the outset is that the case must be settled. The way you conduct discovery may be quite different if you are positioning the case for settlement.

One criticism I hear more often than any other from clients is that lawyers are less than candid about the ultimate risk of success or failure. Clients are understandably frustrated when lawyers advise them at the outset of a case that they have a terrific case and that their chances of success are high only to change that advice as trial approaches. Clients need to have a realistic assessment not only about the merits of the case but about the ultimate exposure if they lose.


John Strauch, Jones Day Reavis & Pogue, Firmwide Chairman, Litigation Department

Managing an Avalanche of Information

Obviously, when you have hundreds and hundreds of thousands of pages—in some cases, more than a million pages—of documentation involved in a case, you have to learn to delegate and be willing to delegate, making certain that the people you’re delegating to are able and up to it and will produce a work product upon which you can rely.

I will typically delegate the whole process of information processing and oversight of the analysis of the documents to a team. As with any large task, it is broken up into different components. Then you institute a system—very much helped by modern document scanning equipment, computerized databases, etc.—that allows you to input all your documentation, and then examine it from various points of view, using key words and brief summaries that were input along with the documents. Then, typically, I will have someone prepare a very extensive analysis of every relevant document in the system, and an analysis that will give me pretty good oversight of everything, generally,

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that’s going on. Additionally, I’ll have a folder prepared with the critical documents on each of the issues in the case—documents that are either extremely troublesome from my point of view or really helpful.

Then you have to roll up your sleeves, no matter what level you’re at, and work at a very basic level, at least on the major critical documents of the case, looking at those firsthand, reading them over, immersing yourself in them. The same is true with respect to deposition transcripts of key witnesses.

The course of one of these huge cases moving from discovery to trial, given the tolerance of the system for the time allocated to any single case and the limit of human understanding and retention, is one gigantic narrowing process. You start with a massive collection of potential facts, documentary and otherwise—because you get evidence generated other than through documents, such as testimonial or physical evidence—and as you move toward trial, you’re constantly winnowing out what’s irrelevant. You’re still faced with a broad spectrum of relevant evidence or documents. You can’t use every single piece, so you continue paring down and paring down, and you end


up trying the case on a relatively manageable collection of important, key documents that really tell the story.

A Proven Strategy for Winning

The first step is total and careful preparation. You can be the most intelligent, nimble, quick-witted, persuasive lawyer who ever came down the pike, but if you don’t take time to carefully prepare your case and know it inside and out, you’re not going to be effective.

As part of this you have to spend a lot of time anticipating the opposition’s strategy and their possible responses to what you’ve planned, and develop a mental list of contingencies to deal with, depending on what those responses are. Preparation means you have a good, thoughtful command of the record and of deposition testimony that’s been taken, the documents, what your people are going to say, and how you’re going to cross-examine the opposition’s witnesses.

Going into trial, you should have a good command of the law, the potential evidentiary issues, and the instructions you expect to receive, because you’re both trying to win at

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the trial level and making a record for appeal in the event you lose. And you’re making a record for the purpose of arguing things to the jury, anticipating that certain instructions are going to be given to them, so you need a good sense of what those instructions will be and what you need to prove or defend against.

You also need to prepare your clients carefully, giving them some idea of how the case is going to unfold and what is likely to happen, so that they’re not nervous or wondering what you intend to do. You ought to get a good fix on the judge, if you can, and his or her predilections and style of operating, so you know, going in, if there are any peculiarities in how they try cases and what they expect in your courtroom demeanor.

It’s also very important, going into a case, to know what your themes will be. People have limited capacity for absorbing information, so no matter how complicated the case, you’re going to try to simplify things. I don’t mean that in a derogatory manner. Specialists, as trial lawyers, have a responsibility to lay people to help them understand what’s going on if they’re going to play an effective role. You do that by simplifying and articulating things in an


understandable fashion, no matter how complicated they are. And from the outset of a trial, you establish certain thematic points that you can keep relating this complicated evidence to, that you’re going to make clear, and that you’re going to play off throughout the trial—from your opening statement, through examining and cross-examining witnesses, to your closing argument. These themes, fairly limited in number, can be remembered and absorbed, helping a jury relate evidence they’re hearing to the story of the case, or more precisely your side of the case.

Learn the Golden Rules of Litigation

1. Prepare, prepare, prepare your case. 2. Having prepared, be very, very flexible with respect to how you try your case and how you examine witnesses. Be willing, if the occasion demands it or if opportunities present themselves, to go in a different direction and abandon lines of inquiry and lines of argument that you were going to use. 3. Be constantly aware that you are onstage and being evaluated for trustworthiness, intelligence, and effectiveness by the people who are going to decide your

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case. Have in mind that you’re being evaluated constantly, throughout the trial. 4. Don’t be afraid to abandon available arguments or facts you could present that are among the weaker you have, so that you—and the trier of fact, judge or jury, or the appellate panel—can focus on the stronger facts. Don’t fall into the trap of feeling you have to protect yourself, if you lose, from criticism for not presenting everything that could possibly have been presented. Don't endanger your chances of winning by being afraid to lose. 5. Genuinely radiate confidence, honesty, candor and a sense of fairness.


Harvey Kuzweil, Dewey Ballantine, Chair, Litigation Department and Member, Management and Executive Committees

Top Strategies for Successful Negotiation

When negotiating I never posture, I never overstate my position. But I try to make it clear without posturing and without overstating that there’s only so far I can go, and if I can’t go further, I’ve tried enough big cases in my career that my adversary knows I’m prepared to try this case. In other words, I never allow myself to be intimidated. By the same token, I never act like a bully; I always act in a professional fashion. If somebody postures to me I let him know right away that I do not appreciate it. One of the best pieces of advice I’ve ever received is that a good settlement leaves both sides a little bit unhappy, because that means that nobody has really gotten the better of the other.

In preparing for a trial, it is important to understand how the judge approaches the case, to understand what it is about the case that the judge finds either attractive or unattractive. Put yourself in the shoes of your adversary and ask: If I were on the other side, what would I be doing

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or not doing? Try to take a complicated set of facts and make them understandable, and recognize the principle that the more things that you do in the courtroom, the more things can go wrong. That is to say, never over-try a case. Don’t put on a witness unless you really have to, don’t put on a witness who might have one good point to make for you but who is going to be cross-examined effectively; try to decide upon a simple and compelling overarching theme to the case. Again, don’t over-try the case.

In the courtroom, the first thing I want to do is become familiar with the physical surroundings. If I’m going to try a case in a courtroom that I’ve never been in, before a judge I’ve never been before, then I’ll find out when the judge is sitting on another case before mine, and I’ll spend a day or so soaking in the way the judge reacts, soaking in the atmospherics of the courtroom.

During the case I like to establish a certain sense of informality: I like to establish a conversational tone with the court and with the jury early on. I do whatever I can to not overstate any issue, and try to work on my credibility from the very beginning. I like the jury and the court to feel that when I say something I mean it, that I’m not going to


exaggerate or overstate. I want people to feel that I’m comfortable in my role, that I’m comfortable taking the positions I’m going to take, and that I believe in the case. I also try never to lose my temper. I think the way a lawyer first loses credibility with the jury and with the court is to lose his or her temper. It’s very important to try to keep the judge on your side, or at least neutral. If you have a jury, the jury will trust the judge before the jury will trust either of the lawyers.

One establishes credibility by never overstating, never exaggerating, never being evasive, and being forthright. Make clear in your brief to the judge during the pre-trial stage that you haven’t overstated what the law is, and be candid about the shortcomings in your position. Make clear that what you represent to the judge about your case can be relied upon. That is critically important. In the courtroom, at trial, when you give your opening statement, make sure that you don’t overstate your position; make sure that everything you say you are going to prove that you can prove. Equate credibility with professionalism. In other words, a lawyer who acts in a professional fashion is credible.

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You have to believe in your position. You cannot take a position that you yourself do not regard as credible. If you’re taking a position that you yourself do not regard as credible, you’re not going to be credible. If you have five arguments you can make, and three of them you believe in and two of them are borderline, don’t make the other two. Only make arguments that you think you can believe in. Speak as though you do believe them, and do not overstate them. If you have a shortcoming in your position, be candid about it. Candor and credibility go hand in glove. You cannot be credible unless you’re candid.

During the trial, if I feel the jury looks forward to hearing from me, I feel that I am winning the case. If I sense that I am holding their attention; if I sense that they like listening to me; if I sense that that I am communicating with them, then I generally feel that the case is going well. If I am getting a certain deference from the court because I have established my credibility, then I think the case is going well. And if I can get a few laughs out of the jury, then I think the case is going well.

The most important goal for someone who wants to be a litigator is to do as much as people will let you do. When I


was younger I very much wanted to do courtroom work, I wanted to argue cases and I looked for every opportunity I would have to do courtroom work. My goal was to constantly make myself as good as I was capable of being and the way I was going to do that was to absorb as much knowledge from other people as I could, and to force myself to do as much as people would let me do.

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Jeffrey Barist, Milbank Tweed Hadley & McCloy, Chair, National Litigation Group

It’s a Matter of Facts, Not Just Theories

I have to confess that I generally find the facts of a matter more important than my most ingenious legal theory. The federal judge for whom I clerked my first year out of law school used to say: “Finding the law is easy (with an implication that even I was capable of that); it’s finding the facts that is difficult.” I think he was right.

One must begin with an understanding of the facts, and litigation in the American system is overwhelmingly fact-driven. The development of the facts, often in excruciating detail, is the hallmark of U.S. civil litigation. I am sufficiently experienced and skeptical that I do not profess ever to know with certainty what “the facts” are, as that might be determined by some omniscient objective reality. I must, however, have confidence that the facts being put forward to support my client’s case are eminently supportable and more likely than not true. Most importantly, the litigator must make certain that the facts are true, at the least true in the minds of those who will


testify to them. The vision of reality to be urged by counsel cannot be based on untrue facts. A witness cannot say the light was red, when in fact the witness believed the light was green. Nor is it helpful to a client’s case to put a witness on the stand who now wants to say the light was red if he had told others previously that the light was green, unless he has a very convincing explanation for the change of recollection. I must add that I have never encountered the ethical dilemma beloved by law professors of the party who insists on taking the witness stand to tell a story that his lawyer knows is false.

I am something of an amateur historian and I see the creation of the factual context of a case as similar to what historians do. In both a courtroom and in a good work of history, there has to be a backbone. There must be a point of view, and the relevant facts must be dealt with, as they exist. Obviously facts cannot be fabricated, but must be truthfully told, marshaled, and reordered; that is, putting them in the appropriate order that allows the listener or reader to understand the point being made in an effective way.

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A good trial lawyer, like a good historian, also knows when to discard and what to emphasize. One of the lawyerisms that I continually excise from drafts given to me to review is the insistence on using the most absolute, precise date in a rendition of facts. It rarely makes a difference that the contract was signed on October 15, 1998, instead of October 1998. Mentioning the precise date focuses the reader’s mind on an irrelevant detail and distracts from following the development of the story. It also distracts from when the precise date may be important, for example, that the alleged breach occurred on September 12, 2001.

The historian, however, is not supposed to have a point of view dictated by a client; when that happens the historian is quite rightly accused of special pleading. The litigator, of course, is supposed to be doing exactly that kind of special pleading, the conscious rendition and choosing of facts so as to advance a client’s interests. The facts must be put in order and in an order that allows for the drawing of implications that advance an argument or position that the litigator is espousing on behalf of his client. For the most part, one should only have to read the facts section of a brief to learn everything one should need to be convinced. If after the facts section one has not convinced the reader,


the brief has failed in its purpose of presenting the party’s position effectively.

The litigator’s rendition of the facts has in it the element of art, and an art reflecting the particular vision of the lawyer. Art is creating order out of chaos, and that is very much what a litigator does. A litigator takes a chaotic situation and creates order from it. The created order imposed upon the chaos is the litigator’s vision of the reality that he now has to convince someone to accept as true. The force and persuasiveness of that vision of reality is ultimately what the case depends upon.

In complex litigation, however, the facts come out in excruciating detail. The challenge for the litigator is to take these facts, simplify them, distill them, and have them support an appealing and persuasive vision. Sometimes this has been called the theme of the case. I prefer to think of it as a point of view, a coherent, uncluttered message that compels the conclusion that my client is right. A very long time ago, I adopted the view that in any case, and the more complex the more this rule applied, I had to be able to take the case down to the point where in the course of a 15-minute discussion with an intelligent listener, that listener

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would come away with an understanding of the issues in the case, my client’s position, and at the least, a sense that my client was probably more right than wrong.

Distilling the Theory of the Case

Early in the process of litigation one has to put the law and the facts together, and develop a theory of the case. This cannot wait for discovery to start, no less to be finished. One can get a good handle on a case well before discovery begins. The theory of the case should and can be created even before discovery, gathering the important information as quickly as possible. During the litigation process, one needs to be continually evaluating the case and formulating an effective strategy. The strategy is then executed—documents produced and received, witnesses deposed, witnesses defended at deposition. In many cases that is merely what dots the i’s, and crosses the t’s. In other situations, however, discovery can produce some interesting surprises, not all happy. Each change, however, results in refinement and change in the theory of the case, the basic story you want to tell.


During discovery one has to be prepared for new facts, evidence, and theories that emerge during this process. If this should happen, there must be willingness to acknowledge the change and to be willing to change the evaluation and understanding of the case. Surprises occur when a witness will say something that changes the complexion of the case for good or for bad, or something in the documents will reveal some unknown fact that shifts the balance of the case. One has to be ready to deal with such shifts.

The process of evaluating the case never ends. Understanding the facts and their implications; developing and refining legal theories; and building a theory of the case and analyzing the adversary’s theory all proceed through out the case and each affects the other.

Coming to Fruition: The Evolution of a Trial

If the trial lawyer is lucky, the case will go to trial, because trials are enjoyable, with jury trials being the most enjoyable of all. Like most good things there rarely are enough of them.

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The trial of a complex case is very much like a war in that there are always going to be surprises. It is also like a war in that no one fights one without making a mistake or taking a hit. Particularly in longer complex trials, the lead lawyer has to be able to be in it for the duration, prepared to accept what will be the inevitable ebbs and flows of the proceeding. After all, if the other side had nothing to say for itself, the case should have been ended long before the trial.

The trial is the stage for the unveiling of the lead counsel’s vision of reality, his story as to why the client is right. Everything done in the courtroom should have a meaning and purpose. In the first place the trial lawyer is an actor. Jurors always watch the lawyers; they look for certain types of behavior, such as confidence without being arrogant, and maintaining a sense of humor without being flippant; but mostly they look for an explanation. The trial lawyer knows the case as no one else will ever know the case. Indeed, I have often wished that I could play the witnesses, because I understand the case and their role in it even better than they do.


In the final analysis, however, the lead trial lawyer is a director, not an actor. It is not an accident that so many plays, from Shakespeare to the present, have their central moment in a trial. Trials are dramatic and are dramas. It is the role of the lead trial lawyer to direct the stage play or film that is set in the courtroom—the trial lawyer as auteur. It is his artistic vision as lead counsel that creates the drama and drives the action.

Like in all good drama, there are rules. In convincing people, the conclusion that you want them to reach should flow from the inherent logic of a situation rather than by thunder and lightning. People are persuaded by the logic and the fairness of what they are hearing, not by adjectives or adverbs, and certainly not by a lot of noise.

The Direct Case: Putting the Pieces Together

The presentation of the direct case may be hardest part of the trial lawyer’s role in that it requires him to be self-effacing. The star is the witness and the attention of the judge or jury should be solely on the witness. There is a good deal of mistrust based on what the lawyer says is supposed to have happened; the court or jury wants to hear

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from the witness who was there. I have seen this mistake repeatedly made in arbitrations, where there is usually no rule of evidence against leading questions. Counsel puts in his case with a series of leading questions, the objection to which is quickly overruled, and sits down satisfied. In fact, the examination has been utterly ineffective, because the arbitrator took the evidence and then discounted it all heavily as being lawyer, not witness talk.

Cross-Examination Tips That Work

Cross-examination is much more fun. If it is done properly, the witness does little except agree with the questions posed by the cross-examiner—and if the witness does not he pays a heavy penalty by being confronted with impeaching evidence.

If witness Jones says the light was green and witness Smith says the light was red, and you are defending Smith, what do you do with Jones’ testimony? Sometimes there is nothing to do with it; other times one can present Smith’s case by showing Jones’ testimony was contradicted, whether through the testimony of others, by documents, by common sense or contradicted by what he did not do. There


is a wonderful Sherlock Holmes story where at the end Watson asked Holmes, (I am paraphrasing from memory), “How did you know this?” Holmes responded, “The dog.” Watson then said, “But the dog didn’t do anything, it didn’t bark that night.” Holmes responded, “Exactly.” You must ask yourself, why didn’t the dog bark in the night? If a witness does not do something, one must ask why. The failure to do something that ordinarily would be done can make for devastating cross-examination.

There is often a great temptation for lawyers defending a client on a deposition to prepare—perhaps it is over-prepare—the witness not to recall something unless it is asked with excruciating precision and the witness has the firmest of recollections. This can rebound with a devastating effect on the witness’ credibility. Some years ago I had a major jury trial in which we, representing a trustee in bankruptcy, argued that some $100 million in transfers were fraudulent. Many of the checks had been signed by a director who was essentially the controlling shareholder’s “gofer.” His defense was that he did not recall the business purpose of the checks he signed. My cross-examination consisted of establishing that he was a vice president and director, which to the average juror

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meant he was a big deal, and then very deliberately and slowly showing him each of the checks reflecting the transfers and having him confirm that it was his signature but that he did not know the purpose of the transaction. The jury would not accept the denial of knowledge as a credible defense.

How to Approach Summation

I begin working towards the summation from the moment the case begins, and I continually rework it, at least in my mind. The final act of any trial is of course the lawyers’ summations. It is the last time that lead counsel will have the opportunity to influence the audience, be it judge, jury, or arbitrator. This is where the client’s story must be told, effectively and simply, the force coming from the logic and fairness of the position espoused. I know that there are lawyers who believe that they should sum up without any notes; I do not necessarily agree with that. What I have found effective is very deliberately to read and refer to trial transcripts and exhibits that I have with me. I want to give the jurors the feeling that whatever else, everything I say is solidly rooted in the evidence that they have just heard.


And for what it is worth, I long ago concluded that no adult has the right to bore other adults.

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Martin Flumenbaum, Paul Reiss Rifkind Wharton & Garrison, Co-Chair, Litigation Department

Weighing the Risks: Negotiation or Litigation

If you’re in litigation, I think an aggressive approach to the matter is usually the right way for the client to go, not necessarily because the case is always going to be tried, but because I find that I obtain positive settlements because I am always prepared and unafraid to try the case. If the other side knows you’re prepared to try the case and are not afraid of trying it, that adds to the value you can bring in terms of a settlement.

A lot of what a litigator does is avoid litigation. I spend a great deal of time counseling clients on how to avoid litigation and how to structure corporate transactions to avoid litigation.

The important thing is to make sure your client understands the risks inherent in litigation. The key is making sure the clients understand that if they take this path, these are the potential risks; if they take the other path, we might be able to minimize those risks.


Tough situations come up all the time in the context of deciding whether to let a client testify. For example, in an SEC [Securities and Exchange Commission] investigation, where you may be afraid of a criminal reference, do you take the risk of having the client testify to the SEC, when you’re afraid that testimony might be used in the criminal context by a prosecutor? You have to evaluate that risk openly with the client and let him know what you’re concerned about. That’s what they’re paying you for—they’re paying you for your judgment as to what you would do in their situation, and you have to be honest.

I think those are some of the hardest decisions to make, because most clients, especially in the white-collar area—big corporations and the executive ranks—like to think they can testify all the time, in front of government regulators, no matter what the issue is, whether it’s truly civil or potentially criminal. It’s very hard sometimes to convince high-powered executives that it’s in their best interest not to testify. The only way to talk that through is to assess the risks and explain them.

There’s no one way to approach negotiations; it depends on the case. As a general proposition, I think it’s important to

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realize that when you’re negotiating a settlement, and if you really want to get it done, you don’t want to make it impossible for the other side to settle by overreaching or by leaving them with no dignity whatsoever. You have to try to find a way that deals with whatever problems the other side is facing, especially if they are the ones paying the money. So you have to find a way to be creative that will enable them to pay a large sum of money, yet maintain some sort of dignity in the concept of the payment. You try not to let personalities get in the way of achieving the best result for your client.


Mark J. Macenka, Testa Hurwitz & Thibeault, Partner and Chair of the Business Practice Group

What Separates Superb Negotiators from the Rest

In my mind, the most persuasive negotiators can clearly articulate the reasoning behind the point they are making, as well as acknowledge the concerns the other side has. They are willing to make a decision and concede points, but only after determining why it’s not a big issue in the first place. The most persuasive negotiators hit all the issues – not only their own, but the other side’s, as well – and explain why those concerns pale in comparison or, while acknowledging their importance, demonstrate why those concerns are satisfied through other provisions or protections. By providing a reasoned explanation or rationale for their position, then even if they then discount the concerns of the other side and point out why such concerns aren’t sufficiently compelling, or why those concerns are satisfied through other protections, it tends to be easier to resolve than if they just flatly said no.

When a rationale is clearly articulated and is not dismissive of the other side’s concerns, it becomes easier to arrive at a

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compromise that can satisfy the concerns of both sides. If you are able to identify the other side’s real concern, then it becomes easier to offer another alternative for protection that is tailored to that concern, while still being able to give your client what they need. This skill goes back to having deep and broad experience in the subject matter of the deal and being in command of the various terms and alternatives that can be suggested as compromises, as well as the ability to be able to take a step back to understand what the other side needs.

Legal Advice from the Trenches

You could have the best written contract or merger agreement or legal document, but if you don’t have an effective remedy, the agreement may not be worth much. One of the things I constantly think about – and tell my associates to think about – is what is the remedy? And is it an effective remedy? Every legal document is a binding agreement. The whole reason you’re doing a deal is to get the other side to agree to do something – to affect a merger or a distribution arrangement or to hand over a lot of money. Every deal has immediate and ongoing obligations for both parties. The question is, what is the remedy if the


other person intentionally breaches or simply is unable to perform for reasons entirely outside their control? And by remedies, I don’t mean only lawsuit claims. Very often, litigation is not an effective remedy for the issue at hand because of the timing or the cost, or because the client actually wants to affect conduct, not necessarily receive damages. Effective remedies may include simply getting a seat at the negotiating table or making the situation unfavorable for a third-party interloper.

Another piece of advice is to continually take a step back and listen to what your client or the other side is trying to get at. Think outside the box. Think of different approaches, and suggest alternative ways of looking at or tackling a problem. Often you can find common ground by approaching a problem in a slightly different way.

As I said before, a key piece of deal advice is to fully understand what your client wants out of the deal. Don’t get caught up in a lot of provisions or the wrong deal point. Make sure you explain to the client, if necessary, how the specific provisions of the agreement affect the overall objectives. For example, in a venture capital investment, many of the entrepreneurs and management people are very

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concerned about ownership percentage, without realizing they may be ceding control of the enterprise through other contractual techniques, such as restrictive covenants or voting agreements that make their ownership percentage irrelevant in an analysis of control. You must remind the client that without capital, their idea will never become a reality, or worse, someone else may beat them to the punch. It’s much more important to get the capital and get the deal done in some realm of acceptability, and not hang on to issues that are of less importance. Understand you will have to give in on points, but at the end of the day, what is most important is to get the deal done. If you’re successful in this, then your client is empowered to do what they set out to do: manufacture a product, employ people, build a business, and carry on their dream. To do so, there are certain things on which you and they will have to compromise.

Nothing beats experience, so you always have to keep yourself on the frontline. You can’t be an armchair quarterback. If you turn yourself into an advisor or consultant, so you are available only to answer questions, that’s fine, but you keep your edge by actually being in the deal. I continue to do deals because I enjoy being an active


player in the trenches. Another thing you have to keep up on is general developments in the industry, not just legal changes, but business changes, too. Keeping track of other deals and legal developments is continuing education and is an essential part of the job. Finally, you look for ways to share the experience with other top practitioners. That can be outside of the firm through bar association meetings, but we also do a lot of work internally to make sure we leverage experience across the firm. We have frequent internal seminars and discussion groups with senior associates and partners on sharing deal experience, for example, focusing on mergers and acquisitions, financings, or complex licensing deals. We have brown-bag lunches to share war stories or talk about issues and current developments. It’s a combination of actively doing deals, continuing legal education, and making sure you leverage the experience from across a broad practice of not only business lawyers, but lawyers in other practice groups, as well.

The Golden Rules of Deal-Making

1. Never lose focus on your client’s goals. A better outcome for your client is not only getting an optimal deal

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for the client, but also getting a deal the other side is happy with. 2. Avoid absolutes, and always leave a way out both for yourself and the other side. 3. Never lose your temper unless you’ve planned to lose your temper. 4. Keep the lines of communication open with your client and their other advisors. 5. Always keep your team informed and motivated.


Richard S. Florsheim, Foley & Lardner, Chair, Intellectual Property Department

The Power of Intellectual Property in a World Economy Intellectual property has become a principal driver of the world economy. Those who harness the power of intellectual property will succeed and thrive in that economy; those who don’t will not. Globalization has, to some extent, already eliminated other forms of competitive advantage, such as access to inexpensive labor, access to capital, and tariff barriers. Few companies can afford to differentiate their product or service from their competitors’ solely on the basis of price. Most, if not all, companies who compete on this basis face a future of continuing erosion of profit margins.

The key to maintaining healthy profit margins is to avoid “commoditization” of one’s product or service. Rather, companies must differentiate their products or services in ways that are (a) meaningful and valuable to customers, and (b) sustainable. This invariably involves a commitment to innovation and to building fences around those innovations to prevent others from copying them. Put another way, to be successful in today’s world economy,

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companies must create intellectual assets1 and protect them if they hope to enhance and protect their profit margins.

The shift of economic power from those who control tangible assets to those who control intellectual assets is reflected in the market capitalizations of U.S. companies. Tangible assets – oil wells, cattle, land, railroad tracks, real estate – are no longer the principal drivers of corporate valuations. What the markets now value are intangible assets. A Brookings Institution study shows that over the years 1978-1998, the portion of the market capitalizations of U.S. corporations attributable to intangible assets rose from 20 percent to over 70 percent. Quantifying the percentage of the value of these intangible assets attributable to a given company’s intellectual assets is a difficult task (many highly skilled professionals, such as Baruch Lev at NYU, are working diligently on this), but it’s very clear that a large portion of that 70 percent of

1 The terminology in this field can sometimes be confusing. While the usage is not entirely uniform, the term “intellectual assets” is generally used to refer to innovations and ideas that have the potential to add to a company’s revenues or profits and that have been captured in tangible form. The term “intellectual property” typically refers to the subset of intellectual assets that have achieved legal protection as trade secrets, issued patents, or the like.


corporate America’s value is attributable to intellectual assets.

The significance of all this has not escaped the attention of corporate leaders. Books devoted to the subject of intellectual asset management are beginning to populate the shelves in the “Business” sections of U.S. bookstores.2

Articles about the profit potential of intellectual property abound.3

As a result, boards of directors, CEOs, and CFOs are beginning to ask, “Who is managing all these intellectual assets that the market believes represent the majority of the value of our company?” In many cases, they are beginning to recognize there is a great deal more value to be created, protected, and extracted for the benefit of the corporation. All too frequently in the past, corporations had looked on intellectual property protection as nothing more than a necessary cost of doing business. Companies built

2 Examples of such books include Rembrandts in the Attic by Kevin Rivette and David Kline, The Innovation Premium by Ronald Jonash and Tom Sommerlatte, Profiting from Intellectual Capital by Patrick Sullivan, and Intellectual Capital by Thomas Stewart. 3 See, e.g., “Are You Sitting on a Gold Mine of Untapped Intellectual Assets?” Investors Business Daily, October 24, 2001.

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portfolios of patents because it was “the right thing to do” or as a way of keeping their engineers and scientists happy. Intellectual property was viewed as a cost, not an opportunity.

The Beginnings of an IP Revolution

The seeds of change were sown in the early 1980s. In 1982, the federal government created a new appellate court – the Court of Appeals for the Federal Circuit – to decide all appeals in patent litigations. By the mid-1980s, it became clear that this new court was going to change the intellectual property landscape in the U.S. Before the creation of the Federal Circuit, in some parts of this country it had been several decades since anyone had been held liable for patent infringement. Because a patent is, quite literally, nothing more than a right to prevent others from using your invention, patents had little value if the courts wouldn’t enforce those rights. However, the Federal Circuit served early notice that patent infringers would be held accountable for their misdeeds.

The result of this re-invigoration of the value of U.S. patents was not surprising. Because patents were suddenly


much more valuable and enforceable, innovators saw the economic benefits of obtaining patents. Patent applications soared. More importantly, some of the more perceptive owners of patent portfolios realized they had potential sources of tremendous wealth in their filing cabinets. Some of those who recognized this potential, such as Texas Instruments, embarked on aggressive programs of licensing their intellectual property to others.

In the early days of this revolution, though, most U.S. corporations viewed the increased effectiveness of patent protection as a threat, rather than an opportunity. Unlike Texas Instruments, most companies reacted in a purely defensive way, building their patent portfolios simply to serve as “trading cards,” so that when aggressive licensors such as Texas Instruments or IBM came knocking on their doors, they could use these “trading cards” to reduce the cash cost of obtaining rights to use the aggressors’ patented technology.

The success of the large, aggressive licensors of intellectual property throughout the 1990s has been nothing short of phenomenal. It has been widely reported that IBM’s licensing program has netted that company $1 billion or

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more in revenues in each of the past several years. Texas Instruments and Lucent (the inheritor of Bell Labs’ patent portfolio) have each earned hundreds of millions of dollars annually from their licensing programs. Nationally, patent licensing revenues have grown from only $3 billion in 1980 to more than $100 billion in 1999.4

This has not escaped the attention of other well-managed companies. Today, many companies have begun to look seriously at how they can bring real, tangible benefits to their bottom lines by building and exploiting powerful portfolios of intellectual property.

Companies who want to “join the club” of those reaping the benefits of powerful portfolios of intellectual property face major challenges: efficiently and effectively managing the processes of creating innovations, protecting those innovations as intellectual property, using intellectual property to produce profits through the sale of the company’s products and services, and extracting value directly from the licensing or disposition of the intellectual property itself.

4 Rivette and Kline, Rembrandts in the Attic, p. 6.


Tracking IP Growth from Portfolio to Profit Center

Turning your client company’s IP portfolio into a profit center – through the generation of revenues directly from their company’s IP portfolio – can radically affect the way in which senior management views the entire IP function. Suddenly, rather than having to beg for budget dollars on the ground that having a strong IP program returns some vaguely defined benefits to the company, the executive responsible for the IP function can compete for resources on an equal footing with the heads of the company’s other revenue-generating activities. Developing a revenue stream from direct exploitation of your IP portfolio allows you to demonstrate that a further investment in developing the company’s intellectual property portfolio will generate a “bottom line” return on that investment that will match or exceed the returns from any other available investment.

The idea of creating this sort of radical shift in thinking – coupled with the phenomenal success stories from companies such as IBM – is capturing the attention of corporate IP professionals. But most corporate IP programs lack even the basic information they would need to begin an effective value extraction program. For the most part,

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they don’t even have a good handle on what their IP covers – that is, which of their products or services, if any at all, use the technology covered by their patents. In fact, some companies haven’t even captured the information they would need to group their intellectual property according to the technology it covers.

To start an IP value extraction program, your company must first develop a solid understanding of the IP it owns – grouping your portfolio by subject matter and mapping it against the company’s products.

Next, through the application of specialized database tools and an investment of time and attention of engineers, scientists, patent attorneys, and others, you can begin the process of identifying targets of opportunity – industry segments or even specific target companies that would be likely to need or want to pay for a license to use various bundles of your technology. At this point in the process, your company needs to make some fundamental policy decisions. For example, you must decide whether you want to license your competitors or restrict your licensing program to those outside your core markets who might want to use your patented inventions only for non-


competitive purposes. Obviously, it is a great deal easier to find potential customers for your technology in the very industry your engineers had in mind when they made the inventions. On the other hand, licensing to your competitors for cash can have several drawbacks. It can enable them to compete more effectively with your company’s products or services, driving down your market share or profit margins. It can wake some sleeping dogs – causing your competitors to find their IP that you are using and to demand payments from you. It can deprive you of ammunition you might need later to negotiate cross-license agreements with your competitors that your operating divisions might need to obtain freedom to operate.

Some companies have resolved this policy issue in favor of licensing all comers. Others refuse to license anything to competitors as part of their IP value extraction programs. Still others choose a middle ground – licensing competitors to use certain inventions (say, those more than three years old) but not others. These decisions require careful thought and guidance.

The next steps in an effective licensing program involve developing the evidence you need to support an approach

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to specific target licensees. In the case of a target licensee who is believed to be currently infringing your rights, this might involve looking for publicly available information – from, say, searching the net or visiting trade shows – to obtain details about the target’s product or service. Incidentally, the Internet has made it much easier to find out more about potential infringers. The availability of information on the Net has made it easier for somebody who owns a piece of intellectual property to find out whether somebody else out there might be infringing it. It’s amazing how much information you can now find over the Web that would have been much, much more difficult and time-consuming to find in years past.

In some cases, developing your evidence of infringement might involve actually obtaining a physical sample of the target’s product and reverse-engineering it to the extent necessary to get you the information you are seeking. In the case of technology that is not currently in use by anyone, but which you believe has great potential for your targets’ next-generation products, the program involves developing a sales document that explains to the targets the benefits of your inventions, and how difficult it will be for the targets


to achieve the objectives of your invention without trespassing on your intellectual property rights.

Now, the licensing professionals take over, contacting the prospective licensees and closing the deals. If a target who is believed to be currently infringing refuses to sign a license agreement, you have to be prepared to consider litigation. However, before embarking on the investment of time and expense involved in starting down a litigation course, I strongly recommend you do some further due diligence as to the strength of your position and develop a clear understanding of the costs and risks the litigation would entail.

Finally, a critical component to any successful IP value extraction program is the use of the information developed during the program in a “feedback loop.” Mapping, grouping, and analyzing your IP portfolio will not only identify the pieces that are your “stars,” but it will also identify the “dogs” – those pieces that are doing you little or no good and have little or no potential. You can use this information to prune your portfolio – perhaps saving you substantial maintenance costs. More importantly, you should examine why these dogs are in your portfolio. Is it

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because there was a disconnect between your innovation program and the needs of the marketplace? Is it because the invention was terrific, but the patent was so badly written that it did not provide any meaningful protection? Is it because the invention or the patent claims were too narrowly focused on a specific application; whereas, with a little more thought they could have been expanded to dominate a much broader set of industry segments? The effective use of this feedback can really fine-tune the efficiency of your IP money-making machine.


Victor M. Wigman, Blank Rome, Partner, Head of Intellectual Property Department

Explosive Changes in Intellectual Property Law

The primary functions of an intellectual property lawyer are to define or identify the intellectual property rights of his or her clients, to obtain protection for those ideas and concepts, to leverage, and, when necessary, to enforce those intellectual property rights. That is what intellectual property law is all about.

Identifying or defining intellectual property is the first step, because many times clients do not realize that they actually have intellectual property rights. Sometimes technical people, engineers and scientists, come up with solutions to problems, but they do not realize that those solutions constitute patentable inventions. So we have to work with our clients to identify new developments and solutions to problems, and to institute procedures to help them communicate those solutions to their IP lawyers for assessment for possible protection. The second step is to obtain protection for those intellectual property rights, which involves preparation of patent and trademark

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applications and prosecution of those applications through the Patent and Trademark Office. That is an area of IP law in which many lawyers practice exclusively. The final step is the effective enforcement of those IP rights, through either licensing, assignment, or litigation.

Intellectual property is a valuable asset that needs to be protected, regardless of current market conditions, as it has long-term implications for a company’s growth and competitiveness. Often the return on intellectual property is not realized until many years into the future. Consequently, companies have to take a long-term view of their intellectual property and not be influenced by short-term market swings. I have had a number of cases in the U.S. International Trade Commission under Section 337 of the Tariff Act involving imports into the United States. We have found over the years that during downturns in the economy, companies tend to be more aggressive in trying to preserve their market share by keeping out imports that infringe their intellectual property rights. So we have found that enforcement of intellectual property, particularly involving imports into the United States, becomes even more important during a downturn in the economy.


I have been practicing intellectual property law for 35 years. When I started, patent law was divided into three main categories: mechanical, electrical, and chemical. The practice of trademark law was well defined. Over the past several years, however, there has been an explosion in intellectual property law that encompasses much more than patents and trademarks. We now deal with trade secrets, Internet issues, e-commerce, licensing, and other transactional aspects of intellectual property law that have become extremely important. Since I have been practicing, I have also seen tremendous changes in the ways in which intellectual property rights are enforced. Jury trials are now prevalent. When I started, that was unheard of; virtually all patent cases were tried before the court rather than juries. Also, huge damage awards that are now common in intellectual property cases have elevated the importance of intellectual property.

Intellectual property considerations now extend throughout the entire practice of law – corporate law, bankruptcy, mergers and acquisitions, etc. – as intellectual property rights are often the cardinal assets of companies involved in those kinds of transactions. The importance of intellectual property to business in general, therefore, has increased

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exponentially over the period of time in which I have been practicing. Unquestionably, there will be a continuation of these trends over the next five to ten years.


Paula J. Krasnv, Baker & McKenzie, Partner, Intellectual Property Practice and Group Coordinator-Chicago

Calling in the Trademark Police

Policing is very important. Policing trademarks and brands can take on various forms. For example, companies with prestigious brands, such as Louis Vuitton, that tend to be copied throughout the world regularly employ investigators, conduct raids, and coordinate with customs officials. Some companies encounter different problems, such as when their brand becomes so well known that the brand name can die from “genericide.” When the public’s use of a brand is not policed, and everyone starts using the brand name as a product category, rather than as a descriptor for a product from a particular manufacturer, the brand name is transformed into a generic name. Names like Kleenex and Rollerblade are examples of brand names that the public tends to misuse to describe all tissues and all in-line skates, respectively. To keep their trademarks from becoming common nouns, companies need to make sure the public, media, and publishers use their brand names correctly. This can entail extensive letter-writing and

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advertising campaigns. Through ineffective policing, the names “cellophane,” “aspirin,” and “escalator,” all of which were U.S. registered trademarks at one time, were donated to the public domain.

There are other ways trademark policing can be tailored to a business’s needs. One simple way to police a brand is to subscribe to a trademark watch service. The watch service notifies the trademark owner (or its lawyer) each time someone has filed an application to register a mark that is identical or confusingly similar to the trademark owner’s mark. Watch services also notify trademark owners when a trademark office has approved an application for registration that is identical or confusingly similar to the trademark owner’s mark. The watch notices allow the trademark owner to take appropriate action in a timely manner before the junior mark becomes registered, and sometimes even before it is used.

Some companies will have people out in the field. This can include mystery shoppers or even Web surfers. It is important that companies make sure that they and their employees are using their trademarks correctly. If they are not, a company’s own misuse of its trademark can be used


against it in litigation, especially when another party is trying to invalidate the trademark. In addition to making sure their licensees are using their trademarks correctly, trademark owners need to make sure there is quality control over their licensees’ manufacture of the products sold under the licensed marks. Otherwise, the trademark owner can lose rights in the mark.

Companies also need to think about where to protect their trademarks, especially in a world economy. In some countries, trademark rights flow from the actual use of the trademark. Yet in other countries, trademark rights flow from the trademark registration itself. The U.S. and most other common law jurisdictions, such as the U.K. and Canada, recognize common law (unregistered) trademark rights. Such countries often are referred to as “first-to-use” jurisdictions. While a person technically does not need to have a trademark registration to bring an action in a first-to-use jurisdiction, it is well advised to secure a registration because it makes trademark enforcement easier.

Many civil law jurisdictions tend not to recognize unregistered marks unless they are extremely famous, in which case they are likely to be registered anyway. These

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countries frequently are called “first-to-file” jurisdictions. In a first-to-file jurisdiction, a company can be prevented from using its own trademark if it does not make it to the trademark office first. Otherwise, the company could be forced to license or buy back its own mark for a hefty sum. To prevent this, companies will secure defensive trademark registrations in first-to-file countries where they are not yet doing business or for products they are not yet selling. Building a trademark portfolio, then, is integral to trademark policing because it allows a company to be armed with ammunition when it needs to take action against an infringer.

The Internet: A New Set of Trademark Challenges

The Internet has affected the speed with which everything can be copied, which is good for job security when you are an IP lawyer, but bad when you are the owner of the intellectual property that is being copied. It is virtually an urban myth: If it is on the Internet, you can take it. I have people of all levels of sophistication telling me, “I found it on the Internet so I figured I could use it.”


Recently, I met with an entrepreneur who had a new product idea related to physical fitness. When looking at the mock-up of her product, I noticed the following quotation, “Goals determine what you are going to be.” Julius Irving. Mr. Irving is a well-known basketball player (pre-Michael Jordan) also known as “Dr. J.” I asked her if she obtained Dr. J’s permission to use the quote on her product, and she told me she did not have to because she got the quote off the Internet. In addition to not knowing if Dr. J ever made such a statement, she also was about to illegally use Dr. J’s persona to endorse her product. Not only would this have been a violation of the false advertising provisions of the Trademark Act, but it also would have infringed Dr. J’s right of publicity, which is an intellectual property right that allows a person to market commercially his or her persona. I also have seen large, well-known companies using celebrities’ photographs on their Web sites and product packaging. They are under the mistaken impression that the use of the celebrity’s image is “fair use” because the image was taken from the Internet.

The Internet also has changed how lawyers clear trademarks. Back in the “olden days,” we did not have to worry about what people were doing on the Internet. It is

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now an industry standard when rendering a trademark opinion to comment on domain names similar to the proposed mark and, in many cases, to look at Web site content.

The issue of domain names presents new challenges for trademark owners, especially as the line between trademarks and trade names, on the one hand, and domain names, on the other hand, blurs. Often a domain name and a brand or company name will be the same. The domain name becomes an important and integral part of the company’s trade identity. One well-known example is Amazon.com.

The Internet also has changed how and the speed with which people can build brands. Six years ago, virtually no one had heard of Amazon.com. Today, it is a household name. As new industries emerge, companies need to build brands as quickly as possible to differentiate themselves from the crowd, which can be a costly endeavor.

As a result of the Internet, we are seeing different types of infringements and violations occurring. Privacy issues, fraudulent Internet schemes, and copyright infringement


are major areas of concern. In terms of trademark infringement, a person can put others’ trademarks in the metatags to his site, which can help divert traffic from a competitor’s site and attract people to another site. There also is “typosquatting,” which is a slight misspelling of a domain name that diverts traffic away from one site and directs it to another site. People also use others’ trademarks as keywords in Internet search engines to direct traffic to certain sites. Other types of Internet infringements are likely to occur as Internet technology continues to develop.

Little-Known Laws Every IP Lawyer Should Use

Section 43(a) of the Trademark Act is a great provision. It is one of my favorites because so many types of claims can be brought under it. If a person does not have a registered trademark, he can sue for infringement under Section 43(a). This section also lets people sue for trade dress infringement, i.e., the overall look of a product. If someone does something to create an implied endorsement, affiliation, or connection between his product and another person or company, that is actionable under Section 43(a). This section of the Trademark Act also allows companies to bring actions for false advertising claims.

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The general public may not be that familiar with the Anticybersquatting Consumer Protection Act (ACPA) or how it works. The anticybersquatting provisions of the Trademark Act are designed to prevent third parties from registering as domain names others’ marks and personal names that function as trademarks, e.g., Madonna and Cher. What is so interesting about ACPA is that it provides for statutory damages. In most trademark infringement cases, the plaintiff is awarded compensatory, not punitive, damages. However, if the domain name was registered after ACPA went into effect, November 29, 1999, the plaintiff can elect statutory damages, which range, in the court’s discretion, from $1,000 to $100,000 per domain name. In cases where the evidence shows that the defendant clearly registered the domain name with bad intent, courts tend not to be reluctant to impose damages on the higher end of the spectrum.

ACPA contains a list of factors courts may consider in determining whether a defendant registered a domain name with bad-faith intent. These factors include, but are not limited to:


1. Whether the person has trademark or other intellectual property rights in the domain name. 2. Whether the domain name consists of the legal name of the person or other name that is commonly used to identify the person. 3. The person’s prior use of the domain name in connection with the bona fide offering of goods or services. 4. The person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name. 5. The person’s intent to divert consumers from the mark’s owner’s online location to a site accessible under the domain name 6. The person’s offer to transfer, sell, or otherwise assign the domain name to the mark’s owner or another third party for financial gain, without having used the domain name in the bona fide offering of goods or service, or the person’s prior conduct, indicating a pattern of such conduct 7. The person’s provision of material and misleading false contact information when applying for the domain name registration, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct, indicating a pattern of such conduct 8. The person’s registration or acquisition of multiple domain names that the person knows are identical or

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confusingly similar to third parties’ marks or that dilute third parties’ famous marks 9. The extent to which the mark incorporated into the domain name registration is or is not distinctive and famous within the meaning of the list of factors for determining fame under section 43(c)(1) of the Trademark Act

Yet bad-faith intent is not present if the court determines that the person “believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful.”


Brandon Baum, Cooley Godward, Partner, Intellectual Property Litigation

Understanding Risk and Negotiation

One thing that should never be of concern in evaluating risk is personal risk to the lawyer. I have been involved in cases in which I felt that lawyers folded their cards out of concern for their personal risk – fears they may have had about failure in upcoming trials and the personal risk of losing. That should never factor into a decision. The client’s risk is all-important, and a lawyer’s fears and concerns should never impact the resolution of the case.

As a prosecutor, I was trying a “one-witness” murder case, and I asked the sole identification witness whether he saw the killer in court. He looked right at the defendant and said, “No, and that’s definitely not him!” Once you’ve experienced that and survived, you really don’t fear the uncertainties of a trial.

Assessing the client’s risk is complex. It is often a financial issue, as well as a time expenditure and morale issue. Losing a patent case can be devastating from a company

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morale standpoint; yet many companies fail to consider this in advance. The client needs to understand all the repercussions involved when they say, “We need to take this to the brink.”

I find that ego often interferes with negotiation, and it never should. Once you get past these ego issues, you can start negotiating effectively. Also, your negotiations should always be from a position of strength. You should always be willing to follow through: If you draw a line in the sand, you must be prepared to back that up with action. Bluffing is not a good course to take in patent negotiation. Not only do you become known as a bluffer, but your bluff is often called, undermining everything that follows.

Credibility and Candor: Skills of Persuasion

Persuasion is the logical articulation of your position with sincerity, candor, and a genuine sense of caring. Jurors are very perceptive. They are skeptical about lawyers and often think of lawyers as mouthpieces. There is often some truth to that view, but I think most people, once they encounter lawyers, are impressed with how much the lawyer actually cares about their client’s cause. Preparation and the ability


to back up your sincerity with easily understood reasoning are equally important. Persuasion is not merely the statement of one’s position; rather, it is the articulation of your position in a logical way that leads a reasonable person to adopt your position. There is no fooling in a trial, no putting on your “jury face” or your “court face” and putting one over on the finder of fact. If you do not believe in your client’s cause, then you are not going to be successful. You should live or die with the outcome of the litigation to the same degree as your client.

I have seen numerous lawyers make the mistake of not being candid with the court and jury. If you believe you will be able to mislead people in a case that lasts any longer than a day or two, you are simply wrong. I do not know whether lawyers do it intentionally, or they actually convince themselves they are not being fast and loose with facts. If you lose your credibility, you have lost everything. You cannot fool judges and jurors over the course of a long trial.

One of the problems in maintaining credibility is that people tend to fool themselves. Earlier this year I was trying a case and the plaintiff’s lawyer characterized a key

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document inaccurately in his opening statement. I do not think this was an intentional lie on his part; rather, he must have looked at the document and read only what he wanted to read because he lacked objectivity in his preparation. In response, we were able to quickly revise our opening statement, and his misconstruction of that document went front and center in our own case. To undermine our opponent’s credibility at the early stage, and to show that he had just told the jury something that was not true, was crucial.

Some lawyers think if they simply try not to lie, they will maintain their credibility, but it is much deeper than that. It requires an ability to step outside yourself and your own biases and look at evidence objectively. As a lawyer, you should constantly ask the question, “Is my perception objective?” And if it is not, you can easily catch yourself. When you think a document is great for your case, have someone else look at it and see if they agree. You cannot let yourself be carried away with your own view of the facts, not recognizing that other people may see things differently. That is one of the keys to real credibility – to actually be able to self-criticize and ensure that your words cannot be spun against you.


The Golden Rules of Patent Litigation

First, patent litigation is 10 percent law and 90 percent technology. The patent laws themselves are fairly finite. Although there are a few obscure issues, for the most part one can rather easily learn the body of law. The rest is the technology.

Secondly, if you do not care about learning new things and learning them in incredible detail, patent litigation is not a suitable practice area for you.

Third – and I hate to use the cliché, but it fits here – “Think outside the box.” Many patent litigators rely solely on the classic, standard litigation strategies. You must bring a level of creativity to the profession, and you must look for opportunities to apply that to every case.

Sometimes it is hard to see where your creativity will come into play in a particular case, but whether you begin to question ownership of the patent or begin to look at some unusual area of art, there is always the opportunity to apply your own creativity. For example, I was attending the multi-party deposition of the sole corroborating witness to

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the date of invention. After my co-defendants completed a day-and-a-half of questioning, I finally got my chance at the witness. Honing in on an offhand remark the witness had made in an earlier answer, I was able to make the story unravel. He eventually invoked the Fifth Amendment, eliminating himself as a witness. After the deposition was over, his attorney snarled, “You must have been a prosecutor.”


Cecilia Gonzalez, Howrey Simon Arnold & White, Partner, Intellectual Property and International Commercial Arbitration and Litigation Co-Chair, IP Practice Group

Evaluating Two Legal Camps: Litigation vs. Transaction

I am a trial lawyer; I litigate. The transactional world is different – advice, licensing – all extremely important elements, but not what I’m doing.

Some people combine both and are successful, but for the most part, you do see a division into the two camps. It’s almost like the differences in a corporate lawyer and a trial lawyer. You have people who do prosecution who are very thoughtful and detail-oriented, and they enjoy dealing with the technology on a one-to-one basis, writing claims, dealing with the inventors and the clients and extracting the information needed to build intellectual property that will successfully be taken to fruition – to patent or copyright or trademark.

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In contrast, people come to us, attorneys who do litigation, when they have problems, so there’s a lot more of dealing with people, with entire segments of companies. There is also the confrontational aspect because you’re obviously dealing with lawyers on the other side. The intellectual property transactional lawyers are really not doing this, at least not the ones who are doing prosecution. Negotiation is also different. When you’re negotiating in the context of litigation, it’s a different feel from negotiating a licensing contract, for example.

Policing Your Property: Tips for Success

One of the biggest challenges in intellectual property is education – educating clients on how to build their intellectual property, how to protect it, and how to extract from that intellectual property the value they’re entitled to, since it’s their property.

There are many savvy clients out there who are well-educated, but there are also many clients who, for lack of either understanding or time, haven’t devoted the effort necessary to build a viable portfolio they can use to either


generate income or defend their position in case someone accuses them of infringing their rights.

On the litigation side, clients come to us when someone sues them, files a case against them, or there’s an area of technology they’re interested in entering, but they’re concerned there might be other intellectual property rights that will be asserted against them. There’s a constant concern: They ask us to look at something and tell them whether we think they’re going to infringe that patent or have problems with this company.

If you have intellectual property, you have certain rights. You need to keep an eye on your competitor and understand what they’re doing and where they’re going. Competition is a wonderful thing, but it’s not competition when they’re infringing your rights. So the constant challenge is to police your competitors, understand where they’re going, understand their products, and be prepared to assert your rights if, in fact, they are infringed.

In policing a brand or a patent, for instance, you really are dependent on your market information. Most of my clients have sophisticated marketing organizations that collect

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competitor data and supply it on a regular basis, through channels in the company. And many of the in-house counsel offices monitor that information. If they see anything that looks as though it may be a potential problem, they’ll investigate it. And often, they’ll engage in dialogue with the company they think may be infringing way before we become involved. So by the time we walk in, the issue has been keyed up.

In the future – the next five years or so – I think we’ll be seeing an increase in people’s awareness of intellectual property rights. I think we’ll see a continuing expansion of intellectual property in that I think we’re seeing more and more innovation. When you have innovation, intellectual property follows, and the conflict comes after that in the form of litigation. I think we’re in a period of expansion right now that is just the beginning. I truly believe we’ll see much more activity in the area of intellectual property, and it’s all very, very exciting.


Dean Russell, Kilpatrick Stockton, Chairman, Intellectual Property Group

IP Law: Ideas in Context, Ideas in Action

My succinct description of the art of intellectual property law is that it is largely the development, perfection, and realization of assets that are born of ideas of the mind.

When I think of intellectual property, I think of assets: value added because of someone’s idea. To the extent that there is an art to it, it’s getting the value of that idea realized that forms the art of intellectual property law, and for that matter, intellectual property creation in general. The key is what you do from the genesis of the idea to make it have value, and from there you get into a whole host of issues that have legal implications: How do I use the legal system to make the idea have value? How do I make it have market and commercial applications? How do I make my idea into something salable, and salable at an appropriate margin? There are political issues as well: How do I make my idea salable at an appropriate margin without offending any segment of the market?

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One of the most challenging aspects of IP law, which also provides one of the greatest opportunities, is that even today, the concepts of IP law are not especially well or comprehensively taught in the business schools of the country. So educating executives as to what IP and the legal system can add in terms of value is probably the greatest challenge. Many executives do not have background knowledge or a contextual framework of what IP law is all about. So the steep educational curve presents a number of challenges, particularly with harried executives who don’t have or are unwilling to commit the time to learn about intellectual property. On the other hand, it is quite an opportunity if you can get executives focused on IP and IP law and help them understand at least the rudiments. I think then you have a much greater chance of success in realizing the value of ideas and having the companies that the executives deal with achieve their commercial success.

In intellectual property law, it’s important to remember that where you are at any given point in time is not necessarily where you will be later on – a version of “what goes around comes around.” Always think about what might happen in the future as a consequence of the action that you’re taking today. What one company can do with intellectual property


law, for example, its competitor can do just as easily. Anything that a particular client or I may do needs to be thought about in the context of what it will cause to occur downstream, particularly among competitors. In some situations, new technologies may develop for a period of time with no patents issuing. Simply acting to get the client a patent may cause competitors to spend more time and effort of their own in getting patents and ultimately cause the client difficulties down the road. All of that needs to be borne in context. So the golden rule of intellectual property law is to think of each of these actions in terms of what it may cause for the future.

The Future of Intellectual Property Law

There’s no doubt that the ready access to the Internet has spawned a tremendous new range of opportunities for creating intellectual property that will exist into the future. What I think technology and the Internet have done in my tenure as a professional is both shorten and lengthen decision-making times.

Both the content available on the Internet and the rapidity and ease with which we can communicate via e-mail, for

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instance, allows for instantaneous global communication that, in many respects, has decreased decision-making time immensely. When I’m in France, I can communicate from my hotel room in the middle of the night and get answers by the time I wake up, whether they’re from the United States or Australia or elsewhere. On the other hand, that same technology has also lengthened the decision-making time. It is easier for me to send an e-mail message to ten people than to pick up the phone and call one at a time or send a fax to a few. However, I am now required to consider input from all ten people before making a decision. Perhaps that’s a better-informed decision, but nonetheless, it now requires input from many, where it used to require input from one or a few, and it sometimes takes additional time to receive and consider all that input.

There remain significant patenting issues associated with the human body and manipulation of the human body, as well as ongoing, unsettled issues about the legal protection of things that are done using computers that formerly were done in other ways.

One of the other things I view as likely to present some of the greatest issues going forward for lawyers is the attempt


by well-financed international accountancy and consultancy firms to dominate the provision of legal services. Yet another is the attempt to harmonize legal systems internationally – even excluding the thorny issues as to what public policy suggests for actions on the human body. For example, I think that politically trying to meld our laws with those of the various European states, Japan, Australia, and some of the other heavily industrialized countries is going to present perhaps even bigger issues – particularly if we continue to ascribe to the theory that in the future we all, and not just our clients, are going to be players in one big global universe.

I don’t, however, envision any sea changes in intellectual property law during the next five to 10 years, as long as the U.S. and European court systems continue to value what we call intellectual property – patents, trademarks, and copyrights. We will continue to have a strong and vibrant system.

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George D. Dickos, Kirkpatrick & Lockhart, Partner, Coordinator, Intellectual Property Group

The 3-Pronged Approach to IP: Protect, Enforce, Exploit

I believe the role of an intellectual property lawyer is to help their clients in the protection, enforcement, and exploitation of their intellectual property. The protection aspect involves identifying potentially protectable intellectual property – patents, trademarks, trade secrets, or copyrights – and then working with the client to offer them all the available protection alternatives. Once the type of protection is selected, the lawyer implements that protection by filing and prosecuting applications for patents or trademarks or copyrights, as the case may be.

The enforcement aspect, in my view, involves protecting the client’s rights by stopping others from infringing or exploiting those rights without permission. This can often be accomplished without litigation. But when litigation is warranted, the enforcement component of intellectual property law involves filing and going forward with all


aspects of federal or state court litigation that may be appropriate.

The exploitation aspect of the intellectual property practice implicates the licensing and sale or other transfer of intellectual property assets. The owner of intellectual property endeavors to add to and capitalize on the value to their intellectual property in clear commercial terms by well-crafted agreements.

To achieve these goals, I believe that one should always be mindful of what intellectual property the client has and what their interests are. One endeavors to assist them and add value to their businesses by identifying intellectual property and helping them make decisions as to how best to protect and capitalize on it, within their particular financial constraints.

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Roger Maxwell, Jenkens & Gilchrist, Practice Group Leader, Intellectual Property Group

What’s at Stake in Intellectual Property Law

Drawing on my West Point and military background, I’ve devised a framework, or an approach, I like to prescribe for dealing with patents. My framework is modeled after military operations orders, which have been devised over many years to deal with armed combat where participants’ lives are at stake. It is, therefore, in my view, well suited to deal with aspects of competition among companies, where livelihoods are at stake.

Military operations orders have five parts: situation, mission, execution, service support, and command and signal. Here’s how an operations thought process can be applied to build a valuable patent portfolio.

Situation

The first step in building a valuable patent portfolio is learning key facts about your competition and potential


competition. Who are they? What do they do? What do they need to operate? Where are they likely headed?

It is most prudent to consider competition in its broadest sense as a rival for a resource. The resource may be market share, money, or material – anything necessary or desired. Consider potential patent licensors to be competitors. Employees who may leave and begin offering products similar to products in your most profitable product lines are potential competitors.

You need to understand your competition to be able to determine when and where you should seek patent protection. Ideally, a company should protect subject matter if the value of a protecting the subject matter,5

multiplied by the probability of realizing that value,6

5 Often cited value factors include exclusive rights, enforcement rights, subject matter for assignment or licensing (including cross- and grantback-licenses), improved bargaining posture, deterrence value of a patent pending label, and generation of collateral for secured financing. 6 Factors affecting the probability of realizing value from a patent include customer demand, customer receptiveness, pricing considerations, scope of protection obtainable, and identifiable licensees.

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outweighs the cost of obtaining protection.7 Patents are tools that can be used defensively, offensively, or both. The value of a patent derives from the impact it has on competitors or potential competitors. Value can be measured in dollars, market share, or competitive advantages maintained in aspects of products.

If your competitors have a better patent position than you, you are well advised to strengthen your position for defensive purposes at least. On the other hand, if all your competitors seem to have weak positions, obtaining patents may provide you with a competitive advantage.

The second step in building a valuable patent portfolio is learning what is valuable to your company. What products does it offer? Who are its partners? Who are its customers? Who are its sources of supply?

One reason for this step is that you may be able to protect some of the products – or bind some of the relationships – with patents. As previously mentioned, patents can serve defensive, as well as offensive, functions. The thought

7 Costs include costs to secure, enforce, and maintain the property.


process is: 1) What should I be prepared to attack? And 2) Now here, what should I endeavor to defend? A second reason is so you can be sensitive to – and prepared to take advantage of – opportunities to cost-effectively improve your position. For example, you may be able to obtain royalty-free licenses from partners. A third reason for this step is so you can exercise good business sense; for example, you generally do not want to champion suing customers. A fourth reason is so you can take a company-oriented viewpoint. In many cases, this is a product-oriented, instead of a patent-oriented, viewpoint. This point is worth exploring further. Patent attorneys tend to think in terms of patents, with the natural order of life beginning with an idea, and processing through a disclosure and application, culminating in an issued patent. Most company employees think in terms of products and services. The patent attorney should too.

Mission

Step three in building a valuable patent portfolio is to understand where your company is going. This step may be best understood by considering an example. A public semiconductor company will likely consider such matters

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as sales, net income, earnings per share, return on average equity, gross margin, and operating margin trends, as well as cost balance and inventory balance histories, then set goals based upon those trends and histories. You should know and understand the economics underlying your company. In the sales area, product-family sales data, book-and-bill trends, distributor performance, and strategic opportunities are all likely worthy of careful consideration. With respect to manufacturing, assembly, and test operations, you should consider costs, cycle time, product quality (yield), and production throughput. Again, goals are likely to be set to improve performance. Each division will likely have a long-term strategy and short-term goals. These goals will likely involve development of new products with projected sample dates.

In this third step toward building an international patent portfolio, you need to understand who in the company is doing what, when, where, and why. The answer to the last question, why, is often especially helpful. Is a product being developed to match one already offered by a competitor? If so, aspects of the competitor’s product may be covered by a patent, or there may well be patents pending on aspects of the product being matched. It may be


appropriate to consider commissioning a product clearance study. Is the point to offer a product with a new capability the market will likely want, but does not yet have? If so, you may have a great opportunity to protect the new product.

In steps one and two, you studied the present. Here, the emphasis is on the future. I think operations orders are structured this way to progress from thought to action. The present can – and should – be understood, but not much can be done about it. The future, on the other hand, may be influenced. You should aim for improvement.

Future thinking is ideally suited to patents as tools, because a patent application filed today will not likely issue for two years, and, in many cases, the time period from two to 20 years from now is when you are going to have an enforceable property right. People setting out to build high-quality portfolios need to do their best to predict the future.

Execution

At this point you should understand your situation well, and know where your company is headed. It is time to execute.

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Execution, in an operations order, begins with an understanding of intent.

As previously mentioned, patents can be used offensively or defensively. What is the General Counsel or CEO that you report to looking for? Here are some common goals:

1. To generate revenue by way of royalty payments (e.g., to recoup R&D expenditures). 2. To obtain rights that can enable a cross-licensing exchange of technology. 3. To create a controllable second source. 4. To gain entry into a market otherwise unavailable. 5. To prevent lawsuits. 6. To settle lawsuits. 7. To help establish a standard. 8. To control market share. 9. To extend product life cycles (e.g., by protecting profit margins that can be used to improve the product over time). 10. To create asset value.

Another way to approach the issue is to define what constitutes success. To have license royalties exceed patent procurement and maintenance expenditures? To reduce or


eliminate royalties paid to others? To ensure your company is the only source of particular product? Once you know what constitutes success, you can formulate a detailed plan to obtain it.

At this point, you know what constitutes success. Now you need a plan of action.

The defensive or strength-building goal, in turn, has two major aims. The first aim is to reduce or eliminate weaknesses. That is to say, if you have a major product line that is not protected by patents, you need to immediately address the matter. If you want to enter into a cross-license, or if you need to eliminate royalties to pay to others, you may have to focus on getting patents clearly and immediately infringed by a select target.

The second aim in strength-building is to add better patents. Toward that end, first, consider buying patents, if appropriate. In the process of learning about your competitors, you also should have learned what patents exist in the areas in which your company works. If it makes sense, buy some.

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Alternatively, you can develop your own patents. Such development involves identifying, evaluating, and properly dealing with possibly patentable subject matter.

To identify possibly patentable inventions, begin with a disclosure taking-and-tracking system. There are multitudes of such disclosure forms in circulation. A key goal is to ensure that inventors recognize possibly patentable developments and bring such developments to the attention of the patent portfolio builder and manager. Training programs can help achieve this goal, as can rewarding success, discussed below.

Evaluating the invention to decide whether and where to file patent applications is even more challenging, especially if you are working with a tight budget. One formula that may be used multiplies use (internal and external) times coverage times detectability to arrive at a rating. That is:

[(Internal Use) + (External Use)] X Coverage X Detectability = Rating A high-rated internal use invention would be one definitely planned for several major products and/or one that provides a major selling point. A low-rated internal use invention, on


the other hand, would be one that is merely developable. A high-rated external use invention would be one for which anyone entering the field would definitely need a license. A low-rated external use invention would be not only one in which there is no current activity, but also one with respect to which no activity is ever likely. Coverage of claims can extend from strong and broad to narrow with very close prior art. Detectability can range from easily detectable in any product, to undetectable.

In my mind, a fundamental goal of a patent portfolio manager is to keep competitors uncertain. In general, people like certainty. Uncertainty can drive a person to enter into a license agreement, where certainty is obtained at a price.

A key way to increase your competitor’s level of uncertainty is by keeping cases pending. As long as cases are pending, new claims can be added and can issue periodically, and newly uncovered art can be considered by patent examiners. Having continuations pending during licensing negotiations greatly raises the level of uncertainty of potential licensees and drives them to take a license.

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Another way to increase your competitor’s level of uncertainty is to aggressively put new claims into long pending and continuing applications, where the original specification provides adequate support. Full and complete appreciation of an invention may lag behind disclosure in a patent specification. The earlier the effective dates, the less art available to persons interested in invalidating your patents.

Yet another way to increase your competitor’s level of uncertainty is to make infringement clear, at least based upon the apparent plain language of the claims. This shifts the focus of licensing negotiations to fine details of claim construction and validity, which requires careful consideration of the patent specification, file history, and prior art – that is, a multitude of materials that complicate issues. How complicated issues will be resolved is generally not clear – raising uncertainty.

It can be time consuming and expensive, but consider taking the time to have engineers, marketing people, and attorneys meet and work on claims together. I have seen such processes pay for themselves many times over, when strong, broad claims are obtained.


William H. Brewster, Kilpatrick Stockton, Managing Partner

Achieving Success in Litigation or Negotiation

For any lawyer, the ability to listen is essential to success. Listening is the first step: If you do not hear the information, you cannot do anything with it. The next step is the ability to apply real-world, practical knowledge to the situations you are handling. For example, I deal primarily with trademarks and brands, so understanding the marketplace, how products are sold, and how consumers receive information from advertising or messages in a supermarket provides critical background to the advice I convey to clients. It is extremely important to have a very strong, practical business side to your experience. Later, your ability to identify key facts and issues, and then effectively convey that information to a client, the opposition, a judge, a jury, or whoever your audience is, will benefit from that practical knowledge.

I have done a lot of litigation, but I have also done a great deal of counseling and conflict resolution and negotiation of agreements. If success in litigation means being able to

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prevail in a trial, you need two things: a client who has a stomach for litigation, which requires a large amount of time and money, and stubborn lawyers on the other side. In most cases, you do not get a chance to win at trial, because the matter ought to be settled before that stage. Clearly, if a case does go to trial, having good facts is critical.

In terms of negotiation, I try to put myself in the other side’s shoes. After I have thought through our position and our perspective, I will make that leap and imagine what the other side is seeing and hearing. Whether you are negotiating an agreement or trying to settle a dispute, the biggest problem is not understanding the other side’s concerns. I do the best job I can to figure out what factors are influencing them. If I have a hard time figuring out their motivations, then I will do my best to figure that out over the course of a negotiation.

If you can put yourself in another person’s shoes – whether you are dealing with a witness, a client, or the opposition – you tend to be able to defuse arguments. If you can say to the other side, “I understand what you are saying; now let me get you to put yourself in my client’s shoes,” you will make progress. You don’t have to say to them, “You are


wrong. I am right.” You can just demonstrate to them the difference of opinion or reasoning that needs to be brought to bear.

Being persuasive is about credibility and honesty. If you are in court, trying to persuade a judge, you hope to have a reservoir of goodwill based on being forthright and honest with the judge. If she asks you a question, you answer it not only as an advocate, but as an officer of the court. You explain there are two sides of the argument, and while you argue in favor of one side, you must be honest. The same principle holds for the opposition: If you mislead them during a stage of a negotiation or while in litigation, then your ability to be persuasive later – in settlement discussions or otherwise – will be destroyed. Obviously, your clients need to trust you, and your ability to persuade them to follow one course as opposed to another depends on their trusting you.

The Necessity of Ethics and Service

There is clearly an ethical code among lawyers. Some areas of law, such as the trademark bar, are still relatively small compared to the universe of lawyers. This small world

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means you can generally be sure you will run across another lawyer more than once. If I have a case today against somebody, I will have a case in a couple of years against perhaps the same individual, or someone else from their firm. Certainly, the consequence of that is that you have to live with the decisions you make and your conduct. That’s why it is very important to maintain your credibility with anyone in any situation; its loss will affect you later on. I think most lawyers recognize that – certainly, the good ones do.

Honesty and integrity are essential in gaining the respect of the people you practice with, your opponents, third parties – judges, juries, mediators – and anybody else. If you haven’t been forthright and honest, you are in a very difficult position. Making certain you treat people well and are honest with them, treating them in the way you would expect or want them to deal with you, is probably the most important golden rule.

Lawyers have an important obligation, based on their position, to make sure they do what they can to help people meet the general legal needs of the population. In other words, they must provide pro bono legal support and


advice, participate in organizations designed to ensure the justice system operates effectively, and make sure the things they do that no one else can do – being a member of the bar and a lawyer – are done well.

More broadly, because of their experience, background, education, and skills, lawyers are in a better position than most to help efforts to improve society at large. These improvements come through involvement in government and charitable organizations, serving on boards, and developing initiatives designed to improve the quality of life not only for themselves but for others, as well. Lawyers in particular ought to take advantage of that ability, and most of them do; they are active in their communities and disproportionately active in government and charitable groups. Organizations that depend on a high level of outside support generally include more lawyers than other professionals.

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Mary B. Cranston, Pillsbury Winthrop LLP, Chair

Advice from the Ages for Today’s Lawyers

My grandfather, the CEO of a Fortune 500 company, told me this: “A business that is not recreating itself every day is dying.” That was pretty insightful for someone who was leading companies in the 1960s and 1970s, and I think it is absolutely true.

One quote that has had a strong influence on me is from Winston Churchill: “You make a living by what you get. You make a life by what you give.” That to me is a very powerful statement. Henry Ford said, “Obstacles are the scary things you see when you take your eyes off the goal.” I really grew with that – there are a lot of things out there that feel very risky and scary, but if you are focusing on where you are going and making choices to move yourself toward your goal, much of that fear and many of the obstacles fall away; they never rise to anything you need to worry about.

If you want to be successful as a lawyer, you’ll need to keep a few golden rules in mind. First, be absolutely


straight with everybody in all aspects of your life. Second, remember that the clients are the most important thing, and your job is not just to accept as a passive vehicle your clients’ demands, but to put your heart and soul into figuring out the very best thing for them. Third and finally, be compassionate to everyone.

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Bryan L. Goolsby, Locke Lidell & Saap LLP, Managing Partner

Proven Tips to Become a Successful Lawyer

The best legal advice for new lawyers is that they should develop a relationship with their clients and be viewed as a partner with them on addressing their issues, as opposed to being merely a seller of legal services reacting to their issues. It sounds simple, but it’s not. Developing these types of client relationships will set you apart from your peer group and your legal competition. Developing a loyal and productive client base merely by displaying your superior technical skills as a lawyer or using the institutional branding of your law firm is difficult. It is important to develop a personal relationship with your clients – not so much by being a friend (although that often helps) as by being viewed as invested and aligned with them on their problems and issues. These are the types of client relationships you can build on over the long term.

No client will gladly pay you your billing rate unless you’re delivering perceived value to their business. This requires you to stay as involved as you can in industry conferences,


keep up to date on what your clients are doing in a particular area, stay abreast of current issues, and provide meaningful involvement in your clients’ matters. You also need to be aware of the day-to-day operations of the client and their business. It’s difficult to give quality counsel if you don’t know what your client is doing on a day-to-day basis. The best legal advice is given within the parameters of known business facts and strategy, and it is necessarily a mixture of legal and business advice.

A key ingredient for client satisfaction is to provide clarity of communication regarding the cost and expertise involved for a particular service. For example, in most cases, though I am the point person for the clients I represent, I may also have two or three other lawyers available, as well. Clients typically contact either me or another member of the team, knowing we will get back to them very quickly. We are in a service business; we should return calls and respond to our clients as quickly as possible. Our goal is to make our clients feel we are attuned to their business and their problems. Quick service is an important way to express that alignment, and in the end it leads to a more productive attorney-client relationship.

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Partnership: How to Meet the Challenges of Leadership

For a lawyer fresh out of law school, a law firm is primarily interested in whether you’re doing good work and whether you’re sufficiently productive to the firm. As you move forward and become more established in your career, the challenge is being a top lawyer who can attract new business to the firm. That means either attracting brand new clients to the firm or attracting new lines of business from existing clients. This type of marketing of yourself and the firm is a challenge to all young lawyers. It is apparent that law schools do not teach students to be successful marketers of legal services, although in the real world of selling legal services, it is a necessary talent.

In our firm, we have a seven-and-a-half-year partnership track, which allows qualified candidates to move directly into equity status with the firm. We’re looking for the total package in a partner candidate – one who produces top-quality work and also shows the people skills to develop a quality practice. Our firm is in the business of developing top-quality partners. We don’t really have a quota for the number of attorneys eligible to make partner in a given year. The size of the partnership class is somewhat


irrelevant, as long as we’re bringing in qualified candidates. Our success or failure as a firm will ultimately be based on our ability to develop outstanding partners.

Unlike a corporation, a law firm essentially has a horizontal organizational structure with many partners who are essentially on the same level. The managing partner works with the management committee to determine policy and make certain day-to-day decisions. It’s a very flat organization, requiring more interaction with people on the same level than in a normal corporate environment. Day to day, the difficulty for me as managing partner lies in achieving the right balance between being productive in representing my clients and still attending to firm business. Managing a firm requires the same type of focus and approach that being a successful lawyer requires. The challenge is that to stay effectively productive with the clientele I represent, I must continue to focus on the development of additional business.

The most difficult and thankless part of the job is making the tough calls, such as deciding partner compensation, providing input on who makes partner, and, invariably, dealing with people who are not experiencing success for

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whatever reason. Sometimes you have to make difficult choices that are in the best interest of the law firm franchise to ensure the stability and attractiveness of the firm over the long term.


Robert O. Link, Jr., Cadwalader Wickerhsam & Taft Chairman

Lawyers as Facilitators of Society: An Integral Identity

Lawyers are primarily facilitators. I come from a corporate transactions and securities background, as opposed to a litigation background, and of course it’s important to differentiate between the types of law in practice. There are real dichotomies, especially between the transactional attorneys and litigation attorneys.

At my firm, for example, we have a Litigation Department whose mission is to protect our clients’ interests in the courts and other forums. We have many other departments, however, such as Capital Markets and Tax, whose work is transactional in nature – i.e., structuring deals for the business advantage of our clients. While a litigator will frequently call upon the expertise of a colleague in a transactional department, and vice versa, the nature of their respective practices is fundamentally different.

Nonetheless, at its essence, the art and the science of law is to act as a facilitator. Good negotiating lawyers facilitate

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transactions and the ability to do business in the same way litigators facilitate conflict resolution. If you view the laws as rules that govern the conduct of society, then lawyers are facilitators who help society run properly.

Because of the publicity surrounding the unfortunate actions of a few, lawyers are frequently perceived negatively by society in general, but this perception is most often unwarranted. Many of the stereotypes are unfounded and cannot be generalized. The legal profession is a noble one that plays a vital role in society. It provides a dynamic, exciting, challenging career for people and can be very economically rewarding, as well. It’s an issue that the bar associations have so far failed to successfully address, and I strongly believe the legal profession should make a concerted effort to improve its public image.

There are certainly aspects of the bar that should be addressed. I would love for people to be more accountable for their actions. I think one of the problems with society – and one of the reasons lawyers take so much blame – is that lawyers represent clients and try to fulfill their wishes. We have a very litigious society right now, with too much blame-shifting and people who refuse to take responsibility


and be accountable for their own actions. I am a believer in the Constitution, with its parameters that allow for interpretation, but if there were a way to enact a law that would mandate that all people be accountable and responsible, I would be the first to vote for it.

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Keith W. Vaughan, Womble Carlyle Sandridge & Rice, Chair, Firm Management Committee

Fostering Success in a Law Firm

One need not be a member of a law firm to become a successful lawyer. Most young attorneys, however, do join firms, and many find their way to either a mid-size or a large firm. Frequently, the decision is made on the basis that doing so has become the accepted way to begin a legal career or because of the size of the salaries being offered or in response to the fear of trying to launch a career without any practical experience. A more careful, disciplined approach to choosing a law firm and identifying one’s future role in that firm would increase the likelihood of success for both the individual and the firm.

Law firms provide numerous advantages for their attorneys who are intent on a successful career. Typically, they afford the lawyer greater access to sophisticated legal work than he could attract on his own. They also put at his disposal substantial resources that are helpful in providing the necessary work. These resources include technology, a library, work product from other similar matters, a


reputation and status in the legal community, additional attorneys to share the load, and frequently professional development opportunities. That is, except for the intangible qualities associated with a successful legal career, the firm can provide or at least assist the attorney in acquiring the necessary characteristics. The young lawyer should ascertain at the outset that the firm in question can provide these advantages. If it cannot, he should look elsewhere.

Of equal importance is the need to examine the more intangible qualities of the firm. Specifically, the prospective recruit should ascertain the firm’s core values and determine whether they are consistent with his own. Do they include, for instance, such important qualities as integrity, commitment to client service, respect for other members of the firm and other attorneys outside the firm, and a desire to serve the community and the profession? If these core values are not present, and especially if the culture of the firm runs counter to one or more of these values, the attorney should recognize the limitations that practicing with this particular firm will place on his attempts to secure a successful career. If they are present,

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the path to success has been laid, and association with the firm will maximize his chances to become successful. The ideal firm will also feature strong leadership, a clear vision, a sense of teamwork, and communication. These characteristics ensure that the firm will continue to provide the necessary resources for professional growth and, in turn, a successful career.

It is extremely important that the attorney recognize her own responsibilities in functioning within the law firm while she pursues a successful career. Although many of her early assignments will require only that she perform specific legal research, and a salary bonus program may encourage her spending substantial time on these activities, the attorney must devote a significant amount of her time to acquiring the various skills that are characteristic of successful attorneys. She cannot afford to sacrifice the long term for the short term. The attorney must discipline herself to handle each task she is assigned as well as she possibly can and demonstrate to everyone involved that she will handle all matters with integrity and professionalism. In so doing, she will not only lay the foundation for a solid future with firm, but also develop the self-discipline necessary for a successful legal career.


Human nature is as strong a factor in the operation of a law firm and teams within a law firm as it is in the client matters the attorney will handle. The attorney should be alert for all personal agendas of those with whom she is working, develop plans for dealing with them effectively, and consider the effort required to be time well spent because of the skills she acquires. As a member of the firm, the attorney should work hard to assist the firm in its efforts to accomplish its mission and preserve its core values. For the foreseeable future, the success of the firm and the attorney’s own success are inextricably linked. She helps herself by advancing the interests of the firm.

The attorney must assist the firm in performing those tasks incident to its being a profitable business without allowing the firm’s financial success to define her or her career. The attorney can usually control the pace of her progress in the firm. She does not have to achieve partnership by a certain date unless she imposes that date on herself. She alone is therefore responsible for the time spent on client business, as compared to that which is devoted to family or community and professional service. Obviously, she must perform effectively at certain levels of billable work to

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maintain a relationship with the firm, but she is otherwise free to chart her own course and pursue a successful career. The attorney should identify from among the partnership ranks those attorneys who appear most successful (as measured by the extent to which they possess the characteristics identified above) and seek opportunities to learn from them.

An attorney who examines carefully a prospective firm to be sure it will maximize her chances for success and who assumes her own responsibilities in the relationship will take a giant step along the road to the career she seeks.

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