Arbitrating the Patent Case Part XIX: Closing

shutterstock_68724649In earlier articles in this series, we have gone from considering what types of patent cases are most amenable to arbitration to many specifics of the hearing itself.  We have now arrived at the final article, the closing. I suppose this is fitting as we also close this series with this article.  So, let’s consider final arguments and post-hearing briefing as well as related considerations.

Closing.  In less complex arbitrations, it is common to simply have closing arguments right after the end of the testimony.  This is the most efficient way to approach the matter.  After the arguments, the arbitrator will announce the record is closed and the decision (which in “arbitration-speak” is the “Award”) will be issued, typically, within 30 days.  This saves time and money, but may not be the most effective way to proceed in a patent arbitration.

Waiving a closing.  Occasionally, parties may consider waiving final arguments.  Be careful.  It is the rare case where counsel should forego the opportunity to explain and clarify some factual, technical or legal issue.  And it is almost always helpful to have counsel put the evidence in context.  Closing argument also gives the arbitrator or panel a chance to ask questions and ask for clarification of issues, which in turn gives counsel a chance to determine what particular issues the arbitrator is wrestling with and deal with them.  None of this can happen without final arguments.

Timing.  One of the advantages of arbitration is that the final arguments need not be held immediately after the completion of testimony.  There isn’t a jury waiting impatiently to have the case over and be excused.

A typical patent arbitration hearing is quite fast paced, with evidence coming in quite a bit faster that it would during a trial, often with longer days and fewer breaks.  Counsel is typically working pretty hard getting the testimony in order, so the need to prepare – or at least revise and refine — a closing argument during the hearing is an added burden counsel may prefer to avoid.  Thus, counsel may well agree that a separate session for closing is a sensible way to proceed. Also, the quality of the closings will usually improve with a little more time to prepare.

It is important, however, not to delay the conclusion of the hearing unduly by postponing the closings, particularly when coordinating schedules for the final session may be a problem.  In many patent arbitrations, this does not present a practical problem because the parties will want to prepare post-hearing briefs in any event.  If that is to take place, then it makes sense to have the closing shortly after the final briefs are in.

Alternatives.  Depending on how the hearing went, it may or may not be necessary to have formal arguments during which everyone gathers together again.  Some cases are more efficiently handled by having the briefs filed and then simply having a phone call or video-conference during which counsel can make the summary remarks they think necessary and during which the arbitrator or panel can ask questions.  Larger, more complex matters may justify a fuller presentation.  The exact nature of the presentation that will be the most efficient and effective can be determined at the close of the evidence in conference with counsel and the arbitrator or panel.

Post hearing briefing.  Most patent arbitrations will benefit from some sort of post hearing briefing. This is not always a given, though.  You will always want to consider whether there actually is a need for more briefing.  Typically, the parties have addressed the applicable law in pre-hearing briefs and it may be that none of that has changed. It may be that the issues have developed clearly enough at the hearing that there is no need to rehash them in yet another brief.

But that is often not the case.  In many case the issues evolve and the focus may even shift from what was anticipated by the pre-hearing briefs as the result of the testimony and evidence at the hearing.

If post-hearing briefs are deemed useful, the nature of those briefs will, of course, depend on how the issues have developed.  Generally, the brief provides a good chance to direct the arbitrator to the exhibits and testimony you think most important.  While the arbitrator or panel has heard the evidence and read the exhibits, this is counsel’s chance to put final emphasis on those most important to them and put them in context.  Similarly, counsel will want to provide and explain the law the arbitrator needs to know in light of the evidence that has been presented at the hearing.

Many arbitrators will give you a list of points, often legal or application of law to your facts, they would like you to address in your briefing.  You may even want to ask the arbitrator or panel if there are any points they particularly would like to see covered if they don’t volunteer a list.  You may not be thrilled with the implication of all the question, but you should welcome the insight.  It is a great advantage to understand any areas of concern so you can address them.

Order of briefs.  It is common to have parties provide simultaneous post-hearing briefs.  I no longer routinely embrace this practice.  Too often, it seems as though these briefs are like ships passing in the night.  Since it will typically be the claimant’s burden to prove its case, it often will make more sense for the claimant to go first.  The claimant may have decided to pursue fewer issues in light of what happened at the hearing than you would have supposed from the pre-hearing briefing.  This will help focus and narrow the case and those issues that need to be addressed in the response.  Generally, the claimant should have a chance to file a brief reply to respond to any new matters raised in the response.

If invalidity or another affirmative defense on which the respondent bears the burden of proof is prominent in the case, you may want to have simultaneous briefing, but have the party with burden of proof file the first brief on the issues on which it bears that burden.  The best approach will often be apparent by the time the evidence closes.

Page limits. Short page limits seem to be all the rage these days.  The idea is, I suppose, the less said the less there is to decide and the more efficient things will be.  But it doesn’t always work out that way.

Some legal issues or factual matters don’t lend themselves to summary, superficial treatment.  If the page limits don’t allow full treatment of important issues, the briefs don’t really help very much.  The arbitrator may then find him or herself having to dig through the law to discover the actual nuances and specifics of the law as necessary to decide the issues presented.  It is far better that counsel have a fair chance to explain all that needs explaining.

Generally, I find it adequate to suggest to counsel that they take the pages they need to make their point.  I have yet to have a situation where counsel doesn’t recognize that putting in a brief that is more a filibuster than an explanation is more harmful than helpful.  Counsel voluntarily limit themselves accordingly.  Having said that, if counsels are adamant that they want page limits, I am happy to hear their suggestions and put something reasonable in place – together with margin requirements and typeface and size requirements – if it makes everyone feel more at ease.

Planning ahead.  With the above in mind, you will want to start thinking about how closings and briefing will proceed in your next patent arbitration before you get to the hearing.  If you are going to be expected to do a closing right after the testimony finishes, you will want to know that so you can prepare.  As noted, issues as to briefing will be usually be ironed out before the close of the hearing.  But you will want to have thought through what will be most efficient and effective so you provide your views to the arbitrator.

Next up.

            We will next turn to post-award motions to the arbitrator.