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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 store@aspatore.com. For corrections, company/title up1
dates, comments or any other inquiries please email info@aspatore.com.
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.
THE BAR
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
Committees
Top Strategies for Successful Litigation 34
Jeffrey Barist, Milbank Tweed Hadley & McCloy, Chair,
National Litigation Group
It’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 Department
The Power of Intellectual Property in a World Economy 60
Victor M. Wigman, Blank Rome, Partner, Head of Intellectual
Property Department
Explosive Changes in Intellectual Property Law 72
Paula J. Krasny, Baker & McKenzie, Partner, Intellectual
Practice Group and Group Coordinator-Chicago
Calling in the Trademark Police 76
Brendan Baum, Cooley Godward
It’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 101
Roger 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 Partner
Proven Tips to Become a Successful Lawyer 121
Robert O. Linx, Jr., Cadwalader Wickerhsam & Taft, Chairman
Lawyers as Facilitators of Society: An Integral Identity 126
Keith W. Vaughan, Womble Carylyle Sandridge & Rice, Chair,
Firm Management Committee
Fostering Success in a Law Firm 129
THE BAR
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.
THE BAR 11
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.
THE BAR 13
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
THE BAR 15
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
THE BAR 17
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.
THE BAR 19
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,
THE BAR 21
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.
THE BAR 23
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
THE BAR 25
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
THE BAR 27
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,
THE BAR 29
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
THE BAR 31
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
THE BAR 125
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
THE BAR 127
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.
THE BAR 129
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,
THE BAR 131
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
THE BAR 133
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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Praise for Books, Business Intelligence

Publications & Services

"Tremendous insights...a must read..." - James Quinn, Litigation Chair,

"Unlike any other business book..." - Bruce Keller, IP Litigation Chair,

"Intensely personal, practical advice from seasoned dealmakers." -

"An informative insider's perspective..." - Gary Klotz, Labor Chair,

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"Useful and understandable insight..." - Stuart Lubitz, Partner, Hogan

BIGWIG BRIEFS TEST PREP:

First Printing, 2002

Edited By Laurie Mingolelli

Cover design by Rachel Kashon, Kara Yates, Ian Mazie

This book is printed on acid free paper.

Bigwig Briefs Test Prep: The Bar Exam features selections

Rob Johnson, Sonnenschein Nath & Rosenthal,

Keys to Success as a Litigator

Intellect and inquisitiveness are qualities that a litigator

Litigators are faced almost on a daily basis with important

defense should I pursue, and which might distract from an

The list of judgment calls facing a litigator in a case goes

Another essential quality for success as a litigator is the

To be persuasive, a litigator must be believable. You want

Finally, successful litigators must have a passion for their

The First Step in the Litigation Process

Litigation begins with the filing of a complaint. The first

For the litigator, obtaining an understanding of the facts at

everything flows from the facts; they drive any case.

While legal grounds may exist on which to base a motion

position may be more persuasively presented in a factual

Step Two in Successful Litigation: The Discovery Phase

Discovery is made up of four components. The first is

Depositions of non-parties are generally taken in order to

their employees), however, not only are taken to establish

During or at the conclusion of the discovery phase but

In complex litigation, it is normally beneficial for both

One way of simplifying a case is through the judicious use

Putting It All Together: Going to Trial

Trials are invariably emotional roller coasters. One day you

The trial lawyer’s role in all of this is to be the center of

The credibility of the witnesses during a trial is, obviously,

Commercial cases can take years to get to trial and involve

trials in such cases would be reduced to the two sides

In order for one’s witnesses to be credible, they must be

What to Do After the Verdict

After a jury verdict, post-trial motions typically are

have awarded large punitive damages, post-trial motions

Under our American system of justice, the losing party

Charles E. Koob, Simpson Thacher & Bartlett,

Managing Risks in Successful Litigation

The issue of managing risk with clients has several

Moreover, clients sometimes use litigation as an excuse for

example that people point to is the way Johnson & Johnson

In representing a plaintiff, you should first go right to that

assume that the court is so impressed with your complaint

Equally critical is for the client to have a clear

adversary or even that he has a significantly better case; but

It is even more difficult to handicap a case at the outset. No

For defendants, the most important part of helping them

clients a pretty fair assessment of the likely exposure if you

John Strauch, Jones Day Reavis & Pogue,

Managing an Avalanche of Information

Obviously, when you have hundreds and hundreds of