Gary Hood speaks with Lawyer Monthly this month about how he solves complex cases, especially in relation to IP law. Famously known for masses of documents to sift through, Gary shares a nugget of advice: “Don’t go it alone. IP is complex, so you ought to find an expert you trust and get comprehensive strategic advice early and often, in order to position yourself for maximum strength in any IP dispute.”
He shares more about IP law and working through disputes.
Your clients count on you to determine what is at the heart of the dispute early on; how do you achieve this? Do you have a step by step process?
When a client first asks me to consider a potential new case, my team and I take a very deep dive. We review closely the claims and potential defences that have been or might be brought. We vet theories for likelihood of success. We consider witnesses and experts, and identify and assess potential case theories and themes to determine at that very early stage the best strategy for the case. Over many years, I have refined this approach into a specific step-by-step process for achieving the end goal of scoping out a dispute from the start and developing a plan to win. This approach also enables me to budget a case to reflect that plan and goal. This process is significantly more time consuming and complex than many lawyers use at the outset of a case, but it has served me and my clients well over the years.
Can you expand more on your ‘unique case preparation’ and what this entails? Why do you choose this method?
First and foremost, I prepare every case that I take for trial. Many don’t go that far, but I plan for them all to be tried. This ensures that my client is always in position of maximum strength, to go to trial if we need to, but to obtain a best settlement if it makes sense – without concern that we have to settle because we’re not prepared for the ultimate battle.
My method of preparing a case starts with my early case assessment. From that early assessment and the winning strategy that we identify at the outset, my team executes that strategy, all in constant consultation with our client. In other words, we pursue the case theories and theme that we identified at the start of our engagement. While we continually reassess and refine our approach as evidence and the case generally develops, my strategic plan serves as the “roadmap” for all that we do in a case – from the discovery and evidence we seek, to the motions we bring, to the case we present to judge or jury.
In terms of IP, how have you seen issues in this area progress in Chicago, and further into the other states?
IP has become an increasingly important tool for many companies, not just in Chicago, but across the United States. Encompassing patents, trademarks, copyrights, and trade secrets, IP often becomes not only a major driver of company value, but a primary asset on which a company may trade and succeed. As a result, enforcement of IP rights – and defence against charges of infringement – have become an increasingly important and necessary part of doing business.
To succeed in the modern economy, a business that is based in or operates in the US must develop a comprehensive strategy to acquire and enforce its own IP rights, as well as navigate and defend against the assertion by competitors of their IP. Most IP disputes take place in federal court, and there are certain venues in the US where such disputes are more heavily concentrated. These include the major metropolitan centres of Southern and Northern California, Chicago, New York and New Jersey, and Washington, D.C., as well as other locations such as Wilmington, Delaware and Eastern Texas.
Companies would do well to consider the various factors that go into where a lawsuit for infringement can be brought. Just because a company is located somewhere else does not mean that it might not find itself hauled into court in one of these other popular IP jurisdictions. And detailed advanced planning can ensure that the company is best positioned to assert its own rights, and defend if accused of infringement, in a way that is least disruptive and costly. A company does well, in fact, to consider well in advance of any actual dispute, the types of IP disputes it might encounter, and prepare a strategic plan to address them if and as they arise.
What are supposedly new, but common, challenges that you face during IP litigation? How do you work around these challenges?
IP disputes are complex and often costly. They usually involved thousands if not millions of pages of documents, numerous company personnel as witnesses, and complicated legal issues. For many companies, this increasingly complex environment and the financial costs and business disruption can dictate business decisions. In other words, a company may decide not to assert its IP rights, or defend aggressively against infringement claims, because they assume it would be too disruptive or costly.
The issues involved in such disputes are usually complex, and do require specialised knowledge and understanding to assess properly. To avoid non-substantive factors becoming the primary driver of strategy, rather than the merits of the dispute itself, I apply the early case assessment strategy and determine at the outset the merits of the case. This enables a client to understand the merits and make decisions based on the substance of the dispute, including an efficient way in which to litigate the dispute if it so chooses. In other words, we figure out the case early, to enable a client to get the maximum “bang for the buck.”
Can you think of any important tips for companies to consider, in order to avoid disputes?
Plan well ahead to ensure that you avoid or are in best position for any IP disputes. Incorporate IP assessments and strategy into your business plan. And most importantly, be comprehensive and specific – know your relevant IP landscape(s), and have a plan to maximize the strength of your position.
Gary E. Hood
Division Chair, IP Litigation
150 N. Riverside Plaza, Suite 3000
Chicago, IL 60606
Gary E. Hood is a shareholder in the Chicago office of Polsinelli PC, an AmLaw 100 firm with more than 825 attorneys in 21 offices across the U.S. He is the Chair of the Firm’s Intellectual Property Proceedings and Litigation Division, and also leads the firm’s Hatch-Waxman Pharmaceuticals & Biosimilars Litigation Group. Gary has been practicing for over 22 years, and his experience trying cases involving a range of legal issues have given him perspective and insight on judge and jury persuasion for which clients seek him out. He handles all types of intellectual property (“IP”) disputes, involving patents, trademarks, copyrights, and trade secrets, and has particular extensive experience in the pharmaceutical, consumer electronics, automotive, and food industries. Gary developed and employs a unique case preparation method that identifies strategic direction for an IP dispute early, and in doing so is able to avoid the conventional “no stone unturned” approach that often drives fees higher than they need to be.