Ethics: Pro bono practice for inactive or retired lawyers

By Thomas P. McGarry and Thomas P. Sukowicz
Hinshaw & Culbertson

On March 26, 2008, the Illinois Supreme Court entered an order amending certain Supreme Court rules pertaining to the practice of law in Illinois (M.R. 3140).

The amendments are effective as of July 1, 2008. One of the amendments modified Supreme Court Rule 756, which requires attorneys to register each year with the Attorney Registration and Disciplinary Commission and to pay the appropriate registration fee in order to be eligible to engage in the practice of law in Illinois.

Rule 756 allows attorneys to register as inactive or retired. An attorney who is currently registered as inactive or retired is not entitled to practice law or to hold himself or herself out as authorized to practice law.

The amendment creates an exception to the rule that allows attorneys on inactive or retirement status (as well as attorneys who are registered as house counsel under Rule 716) to provide pro bono legal services if there is no charge and no expectation of a fee by the attorney.

The pro bono services must be rendered to persons of limited means or to certain organizations (which are defined in paragraph (f) of the rule) and must be rendered under the auspices of a sponsoring entity. The sponsoring organization must be a not-for-profit legal services organization, governmental entity, law school clinical program, or bar association providing pro bono legal services. It is required to provide malpractice insurance coverage for any retired or inactive lawyers or house counsel participating in its pro bono program.

The sponsoring organization must submit to the administrator of the ARDC an application identifying the nature of the organization and describing the pro bono program it sponsors and in which retired or inactive lawyers or house counsel may participate. In the application, a responsible attorney is required to verify that the program will provide appropriate training and support and malpractice insurance for volunteers and that the sponsoring entity will notify the administrator as soon as any attorney authorized to provide services under this rule has ended his or her participation in the program.

A sponsoring entity is required to submit an annual statement verifying the continuation of any programs and describing any changes in programs in which retired or inactive lawyers or house counsel may participate. An attorney registered as inactive or retired or admitted as house counsel who seeks to provide pro bono services is required to submit a statement to the administrator indicating a desire to provide pro bono services, along with a verification from a sponsoring organization that the attorney will be participating in a pro bono program under its auspices.

The attorney’s statement is to include an agreement that the attorney will participate in any training required by the sponsoring organization. The attorney must also agree in the statement and that he or she will notify the administrator within 30 days of ending his or her participation in the pro bono program. Upon receiving the attorney’s statement and the sponsoring organization’s verification, the administrator will cause the master roll to reflect that the attorney is authorized to provide pro bono services.

The authorization to provide pro bono services continues until the end of the calendar year in which the statement and verification are submitted, unless the lawyer or the sponsoring organization notifies the administrator that the program or the lawyer’s participation in the program has ended.

An attorney may renew the authorization to provide pro bono services on an annual basis by submitting a statement that he or she continues to participate in a qualifying program, along with verification from the sponsoring organization that the attorney continues to participate a program under the entity’s auspices and that the attorney has taken part in any training required by the program.

Attorneys registered under retirement status who seek to provide pro bono services under the rule must register on an annual basis, but are not required to pay a registration fee. Inactive or retired attorneys are exempt from the mandatory CLE requirements of Rule 791.

Participation in the pro bono program under this rule does not affect this exemption. Such attorneys continue to be exempt, except that such attorneys shall participate in training to the extent required by the sponsoring entity.

Firm Life

Six women have formed the Amal Law Group, the first all-Muslim, all-female law firm in the United States. The general-practice firm opened in March in Palos Heights. The six partners are Nikia Marie Bilal, family law and civil litigation; Janaan Hashim, civil rights and criminal defense; Maryam Khan, family law and real estate; Rima Kapitan, employment law, estate planning, and probate; Majdel Musa, business and commercial real estate; and Heena Musabji, civil rights and immigration. Pattishall, McAuliffe, Newbury, Hilliard & Geraldson is celebrating the 125th anniversary of the founding of the intellectual property firm.

New York-based Proskauer Rose is opening a new office in Chicago with three partners from Mayer Brown: Steven Gilford, Paul Langer, and Marc Rosenthal. All three specialize in insurance coverage litigation.

Duane Morris has relocated its office to 190 S. LaSalle St., Suite 3700.

Travis Richardson and Myron Mackoff have formed Richardson & Mackoff, 407 S. Dearborn St., Suite 1310. The firm specializes in commercial and civil litigation, government representation, personal injury cases, and criminal law.

E. Lynette Denton has opened Denton Law Group, specializing in insurance recovery, personal injury, and real estate closings. Denton was an associate with Meckler Bulger & Tilson.

> Partners

Jenner & Block has named Susan Levy as its new managing partner. Levy is the first woman to be managing partner; she succeeds Gregory Gallapoulos, who will join General Dynamics as corporate vice president and deputy general counsel.

Neal, Gerber & Eisenberg has named Diane J. Romza-Kutz as chair of its newly formed life sciences practice group.Holland & Knight has elected Miami partner Steve Sonberg as managing partner of the firm.

Cozen O’Connor has named Tia C. Ghattas office managing partner of the Chicago office.

BryceDowney has named Carol A. Cesaretti, workers’ compensation defense, a partner in the firm.

Vedder Price has admitted Jordan R. Labkon, equipment finance, as a shareholder.

Katten Muchin Rosenman has elected 15 attorneys to partner, including nine in the firm’s Chicago office: Cathleen A. Booth, corporate; Rachel S. Brown, real estate; Michael W. Jones, corporate; Daniel B. Lange, employee benefits and executive compensation; Jason P. Shaffer, litigation and dispute resolution; Christopher D. Sheaffer, corporate; David S. Slovick, litigation and dispute resolution; Rachel M. Vorbeck, litigation and dispute resolution; and Jennifer I. Wolfe, commercial finance.

Sonnenschein Nath & Rosenthal announced the election of 12 partners and one senior managing director, including four partners in the Chicago office: Thomas J. Burton, patent prosecution and litigation; Wendy N. Enerson, securities litigation and insurance class action; Terance A. Gonsalves, commercial litigation; and Elizabeth Warren-Mikes, commercial leasing and real estate.

Skadden, Arps, Slate, Meagher & Flom has named Patrick J. Nash Jr., corporate restructuring, and David F. Levy, tax, as partners in the firm.

Chapman and Cutler has named nine new partners: Walter L. Draney, David M. Field, Rose E. Gallagher, Thomas F. Howard, Charles J. Kolin, Willie F. Lewis, Jr., Joseph P. Lombardo, Michael D. Robson, and Jennifer L. Tedjeske.

> Moves

To Sidley Austin: partners S. Michael (Sy) Peck, Jeffrey Smith, Roger Wilen, Dirk Andringa, Alexis Cooper, and Nancy Kasko, all in private equity, and all from Schiff Hardin.

To Vedder Price: shareholders Richard Bollow, litigation, from Quinlan and Carroll; and Michael D. Whitty, tax and estate planning, from Winston & Strawn.

To Enterprise Law Group: counsel Tina G. Stavrou, securities, from the Illinois Securities Department.

To Paul, Hastings, Janofsky & Walker: partner Tim Callahan, global projects, from Mayer Brown.

To Schiff Hardin: counsel Amy Cohen Heller, intellectual property, from Johnson Diversey, Inc. in Wisconsin, where she served as senior trademark counsel; and associate Kathryn McCullough Long, environmental, from Balber Pickard Maldonado & Van Der Tuin, in New York City.

To Meltzer, Purtill & Stelle: counsel Donald G. Mulack, commercial litigation, from Holland & Knight; and associates Richard J. Jancasz, litigation, from Wildman Harrold; and David L. Kane, bankruptcy, reorganization, and creditors’ rights, from Freeborn & Peters.

To Katten Muchin Rosenman: partner Robert Breisblatt, intellectual property, from Welsh & Katz.

To Valorem Law Group: partner Nicole Nehama Auerbach, litigation, from Katten Muchin Rosenman.

To Thompson Coburn Fagel Haber: counsel Frederick Richards III, real estate, from Allen A. Lefkovitz & Associates.

To Stahl Cowen Crowley Addis: partner William Holzman, corporate, from Schwartz Cooper.

> Changes

R. Eugene Pincham, a civil-rights advocate, long-time criminal defense attorney, and a trial and appellate judge, died April 3, at age 82.

Edward J. Egan, a retired justice of the Illinois Appellate Court and the special prosecutor of police torture cases in Chicago, died of cancer March 26, at age 84.

James P. O’Malley, a Cook County circuit court judge for nearly 13 years, died April 1, of cancer, at age 53.

Alex Elson, the oldest registered Illinois attorney, died March 11, at age 102.

Fred F. Herzog, a refugee from the Nazis who became the dean of Chicago-Kent College of Law and The John Marshall Law School, died March 21, at age 100.

Frank T. Steponate, an attorney, painter, collector of African sculpture, and owner of The Beaumont, died March 19, at age 72.

Climbing the Ladder: It’s a growing process

By Marina Santini
Reed Smith

During the first years of practice, advice on how to become a successful member of your firm (and of the profession) comes at you fast and furious.

Everyone has a lesson, a tip, a war story. Figuring out how to weed through all that advice to arrive at a formula that works for us individually becomes a challenge in and of itself. As one of the partners at my firm likes to put it, ”You don’t even know what you don’t know.”

I won’t bore you with every detail of every time this has turned out to be true — suffice it to say that, at least at the beginning of your career, it will turn out to be true about practically every assignment.

Halfway into my first week at work, I got my first assignment. At some point during my second or third year of law school, I decided that I wanted to be a securities litigator. When my first assignment was to work on an appellate brief in a 15-year-old securities fraud action, I was thrilled.

I spent most of my first week (and weekend) as a working attorney poring over more than a decade’s worth of pleadings, briefs, and deposition transcripts, and slowly becoming more and more overwhelmed. Here I was, knee-deep in files, only hours into my first case, and I had no idea what I was doing. Seriously, what did I know about securities law? And, for that matter, what did I know about how to be an attorney?

I confessed my concern to the other associate on the case, who assured me that it was hardly unique. Of course, I made it through those first few days and we wound up filing what I thought was an excellent brief. Afterward, I realized that there was so much for me to learn from the experience.

Even though I’ve always considered myself to be fairly self-confident, I had definitively been intimidated by the ”newness” of what I was doing. How to avoid that in the future?

Additionally, what did I know about being an attorney? Of course, there can’t be a single answer that works for everyone. Part of what I realized from that first experience is that I was very uncomfortable with feeling that I ”didn’t know what I didn’t know.”

I knew that part of developing more confidence would have to include some time devoted to building substantive knowledge, in addition to what I would learn through case assignments, in the areas of the law in which I wanted to practice.

Young attorneys rarely read advance sheets or journals. This is a waste of countless opportunities, not only to build your base of knowledge in any number of areas, but also to have important interactions with your colleagues.

For instance, if you read something particularly relevant, you can pass it along to others in your department or bring it up at a meeting. As you work to carve out your particular role within your firm, such interactions can be crucial.

They can turn into opportunities to work with key partners on articles or CLE presentations, which, in turn, will likely turn into opportunities to work on cases with those partners. It’ll take years to truly develop an expertise in any particular area, but you can begin to build it almost immediately.

Another crucial part of developing as a young attorney is identifying where your strengths and weaknesses lie, and then seeking assignments that highlight your assets and help you improve in weaker areas.

There’s no single blueprint for success, and developing a little self-awareness will go a long way toward figuring out what works for you. You can go through this exercise formally or informally.

At my firm, for instance, the annual attorney review process includes a self-evaluation, where we are asked to assess ourselves in a variety of areas, including legal ability, billable and non-billable contributions to the firm, and personal qualities.

Aside from being a great opportunity to toot your own horn, the self-evaluation can be an invaluable career development tool.

But whether you do it as part of a firm evaluation process or on your own, the real trick is being honest enough to identify weaknesses in yourself and then figuring out what to do with what you learn.

If, for example, you think that you are particularly organized or a good manager, look for opportunities to manage cases, or even particular aspects of cases, so that this quality can shine. (I’ve found that electronic discovery can be a particularly good area for young attorneys to gain great experience and exposure.)

If, conversely, you think you need work on your interactions with opposing counsel, seek out assignments that will afford you opportunities to go to court or to otherwise interact, and watch others interact, with opposing counsel. (Again, electronic discovery can give you an in here since many partners will be happy to turn this area of responsibility over to even a very junior associate.)

Above all, the process of growing to be a successful associate and to be sought after within your firm will be ongoing. Take time every few months to take stock of how far you’ve progressed and where you’d like to be in another few months.

Often, setting distant goals can be easier than setting short-term ones, but it is the process of setting, and meeting, those more immediate goals that will help you achieve those long-term ones.

Electronic Discovery Survey of Illinois Attorneys Shows a Few Surprises

by Tom O’Connor

Overview

The Law Bulletin Publishing Company recently conducted a survey of Illinois attorneys regarding their experience with electronic discovery. 240 lawyers responded to the survey that asked 17 questions about their level of exposure to eDiscovery matters, experiences with electronic discovery vendors, and products. The final question asked for their thoughts on the most important issues facing them in this ever-increasing area of practice.

Who’s Who?

The respondents to the survey represented a good cross-section of practitioners, with 35% practicing in firms of between two and twenty attorneys, 25% in firms with over 100 attorneys and 22% being solo practitioners. The remainder was spread between firms of 20-50 (12%) and 50-100 (6%).

The respondents themselves were primarily partners (59%) with 20% being associates, 15% in-house counsel.

Perhaps the biggest surprise occurred almost immediately in the question which asked “Are you familiar with the Federal Rules changes regarding electronic discovery?” 70% answered “Yes” which means that 30% were not familiar with the rule changes. The figure seems almost astonishing given the high degree of coverage and the flurry of CLE activity surrounding changes that went into effect in December of 2006.

Sources of eDiscovery Trends

Not so surprising was the fact that 45% of the respondents said that their main source of information on electronic discovery was print media. Next closest was Web sites at 35% followed by e-mail feeds at 20% and conferences at 22%. Consultants received a 12% figure while the percentages who answered either “colleagues” or “case law” were even at 5% and specific CLE sessions were at 2%. What struck me about these figures was that traditional methods of gaining legal knowledge (print media, reading cases or statutes and discussing issues with other attorneys) were approximately 60% while newer types of electronic sources such as Websites and RSS feeds were approximately 40%, indicating that these non-traditional methods of electronic delivery of information directly to the desktop are a significant factor in how attorneys are educating themselves.

How Much Is That Case Worth?

When asked specifically about matters involving e-discovery, 68% answered that they had handled such a case. 30% of those had a matter valued over $5 million with the others ranging from $5 million to less than $100,000. 21% had handled multiple matters with case values ranging high and low, indicating that eDiscovery cases are not just restricted to high-dollar cases. The vast majority expected their eDiscovery caseload to either increase (58%) or remain stable (33%) in 2008.

Consultant or No Consultant

The question, “Have you ever hired an electronic discovery consultant or firm?” provided the biggest surprise of the survey for me. 69% of the respondents indicated that they had not hired an eDiscovery consultant or firm. Those who did hire such a company preferred Kroll (25%) Lexis-Nexis Applied Discovery (20%), Fios (18.5), FYI (18% ) and EED (15%) All other companies listed (KPMG, Encore, Stratify, Attenex and Navigant) came in at single digit percentages.

Upon examination, the breakdown is perhaps not so surprising. The respondents answering “yes” to the consultant question were the large firm attorneys with high value cases. The respondents answering “No” were predominately sole-practitioners and small firms. The fact that these are respondents performing a high percentage of their eDiscovery work in-house is a theory perhaps born out by the fact that the two most popular products listed as a response our question about products are Summation at 64% and Concordance at 47% . Both products are more easily used by smaller firms to perform their own eDiscovery processing, especially on email files. And in fact, after those two products, no other company had higher than a 10% response except for EnCase, which is typically used for forensic-level analysis of servers and workstations.

Software of Choice

Interestingly, the attorneys who answered about their experience with the software they used, confirmed my experiences working with various firms around the country: the vast majority of attorneys are either ambivalent towards, or unhappy with the software they are employing. In this case, 2/3 of the respondents declined to rate their software of choice at all but of those who did (and 25% of the respondents admitted that they didn’t actually use it themselves, but left that task to a staff member: not surprising in a survey with such a high number of partners responding), 42% found their choice “satisfactory” or “ok”. An equal number (13%) were either very happy or very dissatisfied.
The most common complaint? “Poor interface” at 9%. And the product most often mentioned by name as the best? Neither Summation nor Concordance. IPro was the stand-out, whose users were enthusiastic about IPro’s ease of use.

On the Web

Another surprise for me was the high number of respondents who had used a Web-based application to host their eDiscovery documents. Given the number of small firms and solos represented, I expected this number to be relatively low, yet 66% answered in the affirmative. The most often mentioned products here were iConnect (25%) and Lextranet (17%) with FYI (10%), CaseCentral (10%), Catalyst (8%) and CaseLogistix (5%) rounding out the leaders with Kroll, OnTrack, EED and Applied Discovery all getting one mention. 8% couldn’t tell and 5% were using a custom application. Most curious statistics in this category? 12% of the respondents said they DIDN’T KNOW what Web application they were using!

Most Important Issues Regarding eDiscovery

Not surprisingly, the one eDiscovery issue that the majority of respondents felt was most important was cost. But it was not a dominant response at only 20%. The remainder of the responses were very closely bunched with education on the eDiscovery issues at 12% followed by tactical usage (8%) and then project management, authentication and “I have no idea” all at 7%, the last clearly reinforcing the education answer. Smaller numbers, but nearly identical figures (at 3-5%), came in for communications with client, high volume of data, judicial education, metadata and compliance.

Conclusion

So what general trends can we take away from these results? Clearly, eDiscovery is cutting across all the legal demographics of firm size, case values and attorneys but a significant number of lawyers are still unfamiliar with the requirements and characteristics of electronic discovery. No single vendor is dominating the market in Illinois and national vendors are clearly splitting the business with local shops. Although well known products such as Summation and Concordance have a high market presence they are being pushed by the rise of Web based applications and, although cost conscious, attorneys are rating both vendors and products on a number of other factors besides price.

All of which means that the eDiscovery market is still growing and I look forward eagerly to seeing what this survey tells us a year from now.

About the Author: Tom O’Connor is the Director of the Legal Electronic Documents Institute. Tom is a nationally-known consultant, speaker and writer in the area of computerized litigation support systems. Tom’s involvement with large cases led him to become familiar with dozens of software applications for litigation support and he has both designed databases and trained legal staffs in their use of eDiscovery tools. Tom is the author of The Automated Law Firm, a guide to computer systems and software published by Aspen Law & Business, now in its fourth edition and The Lawyers Guide to Summation, published by the ABA.

The IP world: A place for firms of all sizes

By Olivia Clarke

After working as a summer associate at both an intellectual property boutique firm and a general practice firm, Sandra Frantzen needed to pick which world to work in.

With a law degree and bachelor’s degrees in chemistry and environmental studies, she discovered that she liked how specialized an IP boutique firm could be. The lawyers, who often possess technical or science backgrounds, can delve into specific intellectual property issues as opposed to skimming the surface, she said.

”At a boutique you really have an opportunity to understand the technology, and to be intimately familiar with it. And personally, it gives a lot of value to the client,” said Frantzen, a shareholder at McAndrews, Held & Malloy, an IP boutique firm. ”When [handling] technology, a superficial understanding of that technology really isn’t good enough.”

Like Frantzen, many lawyers opt to combine their science degrees with their law degrees and practice at IP boutique firms.

Many Chicago IP boutique firms opened in the ’80s and ’90s, during a time when clients wanted lawyers who could understand the technical side of their businesses. They usually couldn’t get this IP help at general practice firms.

Today many general practice firms see the value in having their own IP practices, and often employ lawyers with experience similar to those at IP boutique firms. Some boutique firms cannot withstand the competition and close their doors, while others remain very successful because they’ve created a niche for themselves in the legal market. These boutiques have become the David to the large firm’s Goliath and are successfully competing for IP business.

”General practice firms, in the past 10 years, have really improved the technical people at their firms,” Frantzen said. ”You might have a very large firm, 600 lawyers, and an IP department of 30 people. When you have a boutique, you really have a lot more lawyers that have the knowledge and experience to help you with all your issues.”

Changing times

The IP boutique firm model is from a time when the patent practice was viewed as a very distinct, very specialized realm, said Richard Gruner, director of the Center for Intellectual Property Law at The John Marshall Law School.

It made sense for firms to be organized around a patent practice, Gruner said. But interest in intellectual property has grown.

The patent area now intersects with other areas of business, and the broader legal world now pays closer attention to IP, he said.

Many large firms are now concerned when a piece of their clients’ affairs goes to another law firm, Gruner said. A large firm may merge with an IP boutique firm to keep its clients’ matters under one roof, and so it can integrate the firm’s business advice with its IP advice more effectively, he said.

But, he said, he believes there will always be room for IP boutique firms. Smaller- and medium-size businesses that don’t have broad legal needs, but need patent advice, will want to stay with these firms.

Successful IP firms must provide the full-spectrum of patent needs, and handle such areas as patent prosecution, patent licensing and patent enforcement, Gruner said.

Patent prosecution involves the drafting of patent applications, and the shepherding of those applications through the United States Patent and Trademark Office’s patent application process.

”It’s a tradeoff between having a narrow specialization versus the importance of those other non-patent skills,” he said. ”One can make a case that one or the other is more important.”

Robert Half Legal reported in its February survey that intellectual property ranked fourth in terms of practice areas that will experience the most growth in the next year.

Division Director Billie Watkins said there’s always a demand for lawyers with technical backgrounds in such areas as engineering and computer science, and especially in firms specializing in patent practices.

”I do see that there has been an expansion in terms of mid-to-large firms expanding their IP practices,” Watkins said.

IP boutique firms have had a wonderful run because IP has been hot for a long time, but the market has changed dramatically, said Joel Henning, senior vice president and head of Hildebrandt International’s Chicago office.

Many IP boutiques relied on patent prosecution for profitability, and that could be a problem in today’s market, Henning said.

”Some general practice firms are getting out of patent prosecution all together,” he said. ”It is one of the areas of the law that is beginning, and I stress only beginning, to be outsourced overseas to India.”

A corporation’s general counsel may outsource the company’s patent prosecution, or the outside law firm may use offshore outsourcing, Henning said.

These individuals from India speak good English, are well-trained in both the law and in a science or technical area, and have the overall skills to handle patent prosecution.

Their work may then be reviewed for quality and consistency by either the corporation’s inside counsel or by the outside firm.

”IP litigation remains very hot but because it’s so hot, the good general practice firms with high-end litigators have been very, very savvy about competing with the IP boutique for the most profitable IP litigation,” Henning said, ”and they are increasingly successful at it.”

Many IP boutiques have been pretty complacent about their success in the marketplace so they’ve been slow to react, he said. As a result, they’ve lost clients and lawyers, and some have closed up shop.

”I would say, for IP boutiques that are managed in a very strategic way, they can survive and prosper,” Henning said. ”But I don’t see many of them doing that.”

Roper & Quigg opened in 1990 to exclusively handle patent litigation. The IP boutique firm found success, but the cases were getting bigger and bigger.

It needed to bring in outside help more often to handle these cases, said then-name partner Harry Roper.

The firm decided to join Jenner & Block in 2004, and Roper is partner and chair of Jenner & Block’s IP practice. He said he likes that larger firms have more resources, and a wider diversity of lawyers with a variety of expertise.

”Over the past five years, we’ve seen more and more boutiques indeed merge with larger firms,” Roper said. ”But on the other hand some of the boutiques have still been very successful, and still remain quite strong.

”I think you are going to see fewer boutiques, but the ones left standing are still going to be very strong, well-positioned firms.”

Adapting to the legal market

A strong IP boutique firm should offer patent prosecution, Roper said.

Smaller clients do not always have in-house patent prosecution capabilities, and many large firms do not focus on this area, he said.

”I think a lot of the smaller clients that have very, very limited inside resources may find themselves in a situation where they need a full range of IP lawyer expertise, particularly in patents,” he said. ”If they don’t have any in-house patent people, small clients like to use one firm to do that. I think boutiques will be attractive to those kinds of clients.”

Niro, Scavone, Haller & Niro started in 1976, during a time when big firms did not consider IP to be a premier field, said Raymond P. Niro, a founder and senior partner.

But Niro said interest in patents grew with the creation in 1982 of the U.S. Court of Appeals for the Federal Circuit — a merger of the U.S. Court of Customs and Patent Appeals and the appellate division of the U.S. Court of Claims.

This change piqued law firms’ interest in patents, in part, because significant dollar judgments soon followed, he said.

Citing The National Law Journal, he said IP litigation today amounts to the largest dollar value of all verdicts — ahead of contract, products liability, fraud, and medical malpractice litigation.

Patent infringement lawsuits cost, on average, between $3 million and $8 million in fees, he said, citing the American Intellectual Property Law Association’s Economic Survey 2007.

”Because it became a hot area, it attracted the big firms,” Niro said. ”That changed everything significantly. It created a level of incivility.

”It used to be a sort of club where everybody knew everybody. It became more of a business-intense environment instead of a collegial environment with patent lawyers working together. It also brought people who purported to be IP lawyers but had no technical training.”

Some boutique and general practice firms have found a way to work together. Large firms often recommend Davis McGrath when conflicts prevent them from handling the matter themselves, said Bill McGrath, name partner and associate director of John Marshall’s Center for Intellectual Property Law.

Davis McGrath, a 12-lawyer IP boutique firm that started in 1990, may work with a larger firm when the boutique has a particular expertise that the larger firm doesn’t have.

”They feel comfortable sending the matter to us,” McGrath said. ”We aren’t going to walk away with the client, but we are providing excellent services.”

His firm has grown and become more sophisticated in terms of the type of clients it handles, but it wants to maintain a small-firm atmosphere, he said.

”I don’t want it to sound like partners at big firms don’t pay attention to their clients, but in some ways, with a smaller firm, more senior partners are probably more accessible than they might be at a larger firm,” McGrath said.

IP boutique firms enjoyed decades of success, but they must now change the way they do business because the clients’ needs have also changed, said John Mortimer, managing partner of Wood Phillips, a 16-lawyer IP boutique firm founded in 1876.

”I think, more than ever, our assistance is required to allow them to make good decisions on their IP portfolios,” Mortimer said. ”Our objective is to make sure every dollar achieves its maximum value.”

”Thirty years ago, a lot of companies were concerned about building patent portfolios without being as critical to what they were patenting. That was at a time when they didn’t have to pay maintenance fees to maintain patents,” he said. ”Now there is a need to bring out their portfolios and get rid of assets that are not of value or not going to bring value, and spend the money in areas where the future is more in focus.”

He said he’s confident that his firm will always offer a service that is in demand, but it must be offered properly. IP boutique firms must be flexible to their clients’ needs.

General practice firms face some challenges in entering the IP legal market, Mortimer said.

”The patent practice is not something that meshes perfectly with the general practice in the larger firms,” he said. ”There are differences and they have to be accommodated for, and that is often difficult in a large-firm environment.”

When McAndrews, Held & Malloy started in 1988, IP boutique firms were much smaller, said George McAndrews, a founder and chairman of the board. His firm began with six lawyers and today has 90. It adds between four and six lawyers each year.

”As the corporations got larger and we entered into national and global economies, the ability of the boutique firm to keep pace required many of them to expand to what I now call ‘mega boutiques,”’ he said.

The use of juries in IP litigation exploded in about 1983, which created a greater demand for technically trained lawyers who can translate the language of an inventor into information a judge or jury would understand, he said.

Today his firm searches for people who are not only at the top of their law class, but also at the top of their engineering or science classes, he said.

”Many technically trained people become immersed in jargon that reflects their technical competency,” McAndrews said. ”Lawyers, though, are communicators to people with minimal technical competency, and that requires an art form that isn’t present with merely technical people or non-technically trained lawyers.

”The boutique firms recognize this and their success or lack there of revolves around how well they can get this community of like-minded and like-trained men and women together to accomplish the common purpose of being advocates for their clients.”

Creating a niche

Niro, Scavone, Haller & Niro, an IP boutique firm with 32 lawyers, has carved out a niche for itself in the legal market.

About 80 to 90 percent of its patent litigation is handled on a contingent-fee basis, Niro said. The firm realized there was a need for good lawyers to represent good people who cannot afford the legal process.

”That has opened up an opportunity to take cases that some of the big firms would not,” Niro said. ”The contingent fee aligns the interests of the lawyers and the client. If you are successful for a client you get paid, if you aren’t, you don’t.”

The firm tries to select cases very carefully, and receives more cases than it can accept, he said. It retains scientists and engineers who assist the firm in evaluating cases.

IP boutique firms can succeed in today’s legal market with a successfully executed business model that offers value to its clients.

”I like the idea that we can define our own path,” he said. ”We have a focused area. We know and have the experience in doing this kind of work and we don’t go outside of it. It allows us the opportunity to focus on an area of the law and not have to worry about trends or directions and incompatible areas.”

There will always be clients who decide to work with a firm that has the expertise, as opposed to a firm that is a one-stop shop, said Robert Gerstein, a partner and a member of the executive committee at Marshall, Gerstein & Borun, an 80-lawyer IP boutique firm that was founded in 1955.

”In whatever area you are working in, you have to have a deep expertise,” he said. ”If you are going to do biotechnology work, it is not enough that you have some people with some chemical background. You need to have people who are really knowledgeable in that area.”

Boutique firms must communicate to clients and potential clients the importance of hiring lawyers who work with their specific problems, specific business or specific technology on a daily basis, Gerstein said.

He said his firm looks for lawyers in the patent area, in particular, who ”have a passion for learning new technology. And another thing we find that is extremely important for everyone is the ability to write well. What we do day in and day out is provide written work product for our clients.”

IP boutique firms need to be careful that they don’t put all their eggs in one basket, said Grantland Drutchas, a founder and managing partner of McDonnell Boehnen Hulbert & Berghoff, a 75-lawyer firm founded in 1996.

Those IP boutique firms that ditched patent prosecution for litigation find that those models do not work, Drutchas said. And larger firms are swallowing up those boutique firms that banked entirely on litigation as their primary moneymaker.

His firm maintains a balance of litigation and patent prosecution, he said.

And with an almost exclusive focus on high-tech industries, including biotechnology and pharmaceuticals, telecommunications, computing and software, business methods, and information-age trademarks, the firm says its weathered the rise and fall of the economy by staying focused on the cutting-edge industries that drive production.

”We have a pretty diverse practice, especially for the Midwest,” Drutchas said. ”We end up having a pretty extensive pool of candidates for lawyers. There are a lot of people who grew up in the Midwest, who went out and got PhDs, and are looking to come back to the Midwest. But there really are not a lot of firms that provide really high-caliber work for them.”

Drutchas said some general practice firms view their patent or IP group as a service group for the firm’s overall clients. Those lawyers aren’t expected to independently bring in their own clients, which can create a glass ceiling for them.

”When I started in law, which was in 1985, patent lawyers were really kind of looked at or referred to as the plumbers of the legal profession,” he said. ”It was considered unduly technical. Even the litigation surrounding patents, most general practice firms didn’t want to touch it.”

Today, general practice firms, he said, ‘’see it as one of the last bastions of bet-your-company litigation. When a company is risking losing an entire product line when accused of infringement, they are willing to spend a great deal of money. The general practice firms have seen this as a large potential revenue maker.”

A Trial Run

By Jerry Crimmins

”Ladies and gentlemen, we are here today because of the injury that Robert Parker inflicted on my client, Mary Wallace.”

The plaintiff’s lawyer, Carol P. Woosley, looks angry, sometimes fierce, as she delivers her brief, opening statement. She walks up and down and makes vivid gestures. Woosley (pictured above, center), of Bruce, Farrel, Dorn & Associates, doesn’t know, but the jurors are difficult. It is going to be a bad day for plaintiffs at DePaul University College of Law’s Litigation Lab.

”My client is married, a normal housewife with children who enjoys playing racquetball every week with other retired people at a park facility near her house in the Chicago suburbs. My client has been doing this for two years,” Woosley says.

With assurances of confidentiality, Woosley has taken the opportunity to present three personal injury cases to a mock jury of DePaul law students. She seeks their reactions, their opinions, their comments on the evidence, and even their suggestions.

This service costs Woosley $350 for two hours of the law students’ live time. The students also had agreed to read in advance the documentation she supplied on each case. That way, their comments would be based on evidence and legal issues far beyond what she might present in her brief, opening argument.

As part of the promise of confidentiality, the teacher, attorney Michael R. Panter, says the students must all go through conflict checks before they hear any case to try to assure that none is connected to the opposing parties or their counsel.

(For this story, the names and facts in the cases have been changed.)

”On the date in question, my client went to the park facility to play racquetball, and people paired off into teams,” Woosley continues.

”That day, my client hooked up to play as partners with Robert Parker.

”Robert was more competitive. He was there to win, and that’s what he was going to do. Mrs. Wallace and the two people on the other side were having fun.”

The law students listen with the deadpan expressions typical of jurors.

Two of the students wear baseball caps indoors. Most are dressed in pullovers, sweaters or sweatshirts.

Only one, a young woman, wears business attire and pearls.

”The ball comes back, and it’s out of my client’s range,” Woosley continues. ”Mr. Parker hits her right in her eye with his racquet. He hits her so hard she almost lost the sight of her eye.

”She has to undergo lengthy medical treatment. Her medical bills are over $30,000.

”I ask for a verdict in favor of my client and against Mr. Parker for what he did in striking my client so hard she almost lost the sight of her eye.”

The ”defense counsel” then speaks. He is really the 13th student, Fernando Gutierrez, and not yet a lawyer.

”Mrs. Wallace and Mr. Parker played together for several months,” Gutierrez tells the students. He explains that the players’ manner of dividing the court was long settled.

”Mr. Parker always wore sports goggles. The plaintiff just wore prescription glasses, no goggles,” Gutierrez adds.

”Mr. Parker made contact with her with a backhand swing while he was in his part of the court. He struck Mrs. Wallace with the side of his racquet.

”He did exhibit ordinary care. He was in his part of the court. When he began his swing, she was 8 to 10 feet away. …

”She should expect that Mr. Parker would hit the ball since she could not. She was well aware of his style of play. …

”I would hope the jury finds for the defendant, therefore, with all the facts to be considered in this case.”

When the student jurors are asked to give their opinions, one comment stands out.

”If I was on the jury,” states Cortney Closey, ”I would be pissed off I had to take a day off work to hear this case, and I vote for the defendant.”

Only two of the 12 student jurors say they would find in favor of the plaintiff, and even those two would give the defendant only 40 to 50 percent of what she sought.

Woosley doesn’t mind. She and her law firm are really insurance defense counsel. She had decided to argue the other side’s case.

Her venue, Litigation Lab, is a new course this semester at DePaul. It is the brainchild of Panter, a career Chicago plaintiff’s attorney.

One trial consultant said Panter’s course is perhaps a first for any American law school.

Panter invites trial lawyers to present their pending cases to one of his two classes of law students to help the lawyers work out whatever problem the lawyers choose.

By the time this article was reported, Panter said 20 lawyers had presented their cases to one of his Litigation Lab classes, 15 plaintiff lawyers and four defense lawyers, and one other.

The cases included medical malpractice including severe birth injuries, a railroad injury, motor vehicle accidents, tort cases involving municipalities, a product liability case, a dispute over a government contract, various damage cases involving homeowners’ insurance, and two cases in which patients were allegedly abused.

In one of those abuse cases, the patient was allegedly harmed by a residential care home, and in another, by a doctor ”who allegedly breached patient boundaries,” according to Panter.

In one instance, a lawyer brought his clients to talk to a class to seek reactions. ”It was extremely emotional,” Panter said.

In another class, the only question was whether the lawyer should accept an offer from one of the defendants or continue against two defendants. Cases involve questions of procedure, jury instructions, and substantive law.

Because the students may research the cases, ‘’students have looked up and found amazing information for the lawyers,” according to Panter. ”Really, few lawyers can compete with the students as far as finding stuff in the computer.”

On the day that a reporter attends, the law students’ comments and suggestions are a mixture of what could be expected of ordinary, student-age jurors, plus comments displaying the extra knowledge that would be expected of third-year law students.

Panter goes around the table to ask each student his or her opinion.

”Sports are inherently dangerous,” argues student Mike Silverman after hearing the racquetball case. ”It’s not apparent the defendant broke any rule of conduct. When playing sports, you have to break the rules in order to find any level of negligence. There is none here.”

”She (the plaintiff) put herself at risk for the fun of sports,” another student, Bill Rock, asserts. ”It’s not his fault he was playing to win. She didn’t wear goggles.”

Lindsey Wills, the young lady in business attire and pearls, says, ”If you play with racquets, you’ve got to expect to get hit.”

After similar remarks from the student-jurors, student Ryan Smith is called on.

”I say plaintiff this time!”

”Whoa” and ”Ohhhhh” his fellow students exclaim all together.

”Stand up,” Panter commands. ”Talk to the jury.”

Smith rises. ”I play racquetball,”he says. ”If the ball’s coming and, hey, somebody’s right here, you don’t swing.

”You owe a person the obligation not to hit somebody in the head.

”Your duty is not to hit somebody in the head.”

Attorney Woosley gets drawn into this rapid-fire conversation and says when she used to play racquetball, she used to get hit.

At this point, trial consultant Patricia McEvoy of Zagnoli, McEvoy, Foley LLC in Chicago, who often gives advice in Litigation Lab, offers two observations about a potential trial:

”People who don’t play sports are not going to understand. You guys are all talking from a very competitive point of view. There are going to be people on the jury who don’t have that experience.”

Also, McEvoy says, the lawyers need a diagram for the trial to show the players’ positions on the court, and, for the defense lawyer, to show that the plaintiff is out of the defendant’s field of vision.

To sum up, Panter asks, ”Do you give anything to the defendant?” Out of 12 jurors, only Smith and Kyle Armstrong next to him agree to give the defendant more than 1 percent of what she sought. They would give her only 40 to 50 percent.

Having none of that, student Brian Molloy, asserts, ”I would sanction the attorney who brought it (the lawsuit).”

Woosley commented later she ”found it worthwhile to get the input of other people, especially young, fresh people who have some knowledge of the law but are not yet mired in taking one side or the other.”

In Litigation Lab, she said, ”You get a fresh look at your case, and you might find a little gold nugget that you overlooked.”

An extra benefit to the lawyers who make the presentations, Woosley said, is that they get Mandatory Continuing Legal Education credit for participating.

”I would much rather obtain the (CLE) hours working on my cases,” Woosley noted, ”than attending a lecture on something I either know or have no need to know.”

A discussion of plastic Solo cups is an example of the original points of view the students might offer. This occurs when defense lawyer Woosley presents another of her personal injury cases from the plaintiff’s side.

The subject is a large, backyard party with beer in southern Wisconsin attended by 18- to 20-year olds — at least one of whom had a reputation for violence. At the party, several young men were shot and wounded.

The defendant homeowner contends that he was indoors, and he did not know the young people in the backyard, including his nephew, were drinking beer.

Gutierrez, still playing defense lawyer, argues that the event was ”not a type of circus as the plaintiff contends. It was a mere party that was turned into a scene of horror” by young men who were not invited.

”This was ‘appallingly unexpected,’ Gutierrez argues. The defendants he says were not responsible.

When asked, the students are overwhelmingly for the defense in this case, too.

But then Panter asks them to argue the opposite side, for the plaintiff.

The students instantly switch and argue against their own opinions.

”Violence is obviously forseeable,” argues student Jeff Bloom, ”when you have 18 year olds, alcohol, one with a history of violence.”

Three students argue that the red Solo cups in use at the party were the dead giveaway to the homeowner that the party goers were drinking beer.

”You can’t hide the cups,” says Phil Kunz.

”Guys might pee in the bushes, but the girls will come in the house” to urinate, points out Kyle Armstrong.

Partiers going in and out of the house carrying red Solo cups seems to mean to the students the homeowner knew the party goers were drinking beer.

”There are 20 kids, a keg of beer, a supply of Solo cups.” states Bill Rock. Add to that one young man with a ”history of violence.” ”I think that defines negligence.”

The students have argued against their real opinions only because Panter asked them to.

In reality, the only person at the table who seem to sympathize to any degree with the defendants is McEvoy, the trial consultant.

”I disagree with everybody,” McEvoy says. ”I expect the property owners to have some control over the property.”

Panter advises the defendant to give a little. ”I say admit bad judgment,” he argues. ”Demonize” the fellow with the gun. ”Pay the med pay,” he adds.

”Med pay,” he explains later, is a provision of homeowners’ insurance and automobile insurance, which will pay medical expenses incurred up to the the limit of the coverage. He says it is ”unrelated to fault.”

In its inaugural semester, DePaul has offered Litigation Lab in two sections of 12 students each. Each section is fully enrolled.

Panter said he has also added four additional, two-hour class sessions to allow more lawyers to come in and present their cases.

He recently prepared a blue and red flyer to attract more students.

”Litigation Lab announces 4 additional sessions. … Come and see what all the BUZZ is about! Meet and help great lawyers with active cases! 2Ls who do a session will get a preference in signing up for Litigation Lab next fall!”

Panter likes exclamation points. Nevertheless, it is noteworthy that 30 more students signed up to take part in those for extra sessions — for no credit (exclamation point).

The cases that remained to be heard in the spring semester, according to Panter, included one involving whether an insurance company is liable for a large loss — which Panter won’t describe further — with many millions of dollars at stake; also ”a divorce case, a probate case, a patent case, a defense auto, a med mal defense, and 4 plaintiff cases.”

Still to come also was a session with a doctor who frequently delivers medical testimony who will try to show ”proper cross and direct examination techniques” for medical testimony.

”This is going to be a real treat for these students,” according to Panter, ”because they wouldn’t normally ever get an opportunity to work so closely and so candidly with a top physician like this. He has never done anything like this with law students before.”

Attorney George T. Brugess of Hoey & Farina who appeared before one of the Litigation Lab classes this semester commented afterward:

”The litigation lab program is truly visionary. It is unlike anything we had in law school. The lab not only gives me the chance for feedback on an important case, it shows…students why lawyers practice in firms, to discuss the best way of handling a file. The dynamics of group discussion never fails to give birth to new ideas and novel ways to approach a case. The group discussion certainly did in this case.”

Woosley said, ”I absolutely recommend it. … Some of the students picked up on points that I did not think were particularly strong or meaningful and used them to weave a different take on the case than I had.”

Inevitably, the students have suggestions for improvement.

”Fewer PI (personal injury) cases. More time with the lawyers,” suggested student Ian Wolfe after the first five weeks.

”If we could get more clients in, that would be great,” said student Joni Holder.

”Great transition course from law school to real world,” stated a student in an anonymous evaluation form.

”It’s honestly the best class I have taken in law school,” said another anonmyous student in an evaluation form. ”This class is preparing the students to be lawyers, not just how to act like one or read cases.”

On the day that a reporter attends the class, Woosley argues her third case on behalf of a plaintiff who was injured while he and his neighbor were painting the house owned by the plaintiff’s neighbor.

The ladder, several years old, owned by the neighbor, broke. The plaintiff hurt his leg and had many thousands of dollars in medical bills, she said.

Both the plaintiff and the neighbor weighed more than the ladder’s advertised capacity. In fact, of course, the defendant is Woosley’s client.

Out of the 12 students on the jury, Kyle Armstrong is the only one to find for the plaintiff.

”The defendant gave the plaintiff a ladder. The ladder says 200 pounds maximum. … When he gets on the ladder, it’s not his ladder. He’s helping his neighbor out. You’ve got to see some negligence” on the part of the neighbor-defendant,” Armstrong says.

The neighbor ”knows what this (ladder) can hold. Our plaintiff doesn’t know. You have to play something.”

Other students are not impressed since the defendant also used the ladder.

Near the end of the class, Panter asks the students to offer Woosley several ‘’sayings, slogans, themes” that would apply to all three cases and that a defense lawyer such as Woosley can use.

This exercise is for the students, of course.

”No knowledge means no liability,” says Lesley Melega. ”Unintended accidents aren’t intended to create liability.”

”Accidents happen. People make mistakes,” says Joni Holder.

”Show how a verdict for the plaintiff would hurt the jury or society,” offers Cortney Closey.

Brian Molloy says, ”A finding for liability opens up every single, everyday accident for a future lawsuit.”

Around the water cooler — Brinks lawyer writes a novel

Each week I will highlight a different case or legal happening, and solicit your thoughts on the impact of it in the legal community.

Jerry Jacover has lived in Chicago most of his life.

He grew up on the North Side and has lived and breathed the Chicago Cubs. He attended countless games with his father, and then with his own sons. He even attended the unforgettable Cubs game in 2003 when Steve Bartman interfered with a ball that Moises Alou was trying to catch. That situation, in part, led to the end of the Cubs’ road to the World Series.

Jacover, a partner at Brinks Hofer Gilson & Lione, said that when the Boston Red Sox won the World Series the next year, and seemed jubilant about the removal of the team curse, he thought they had no clue what it would be like to really have a curse on them.

This thought process led to him writing the novel, “Merkle’s Curse - why the Chicago Cubs have not won a world series since 1908.”

“During the summer of 2003, two life-long fans of the Chicago Cubs realize that their favorite team is really cursed. They become obsessed with undoing the curse lest it undermine their team’s march to its first World Series in almost 60 years and its first Major League Championship since 1908.

“Unbeknownst to them, the curse has its origins in an Old Testament prophesy that has had a profound effect on both the history of the world and the game of baseball. In the process, it traces a dark, forbidding path from the Holy Land, through the Roman Empire, medieval Europe, West Africa, and pre-Columbian America, before leaving an imprint on the United States and its national pastime.”

Jacover said he wrote and revised the book over about two years. He typically wrote on weekends, often in his sunroom on his laptop computer. He tried to write a chapter or two each week, and the evenings were often spent revising those chapters.

He has plans for other books, but right now he’s trying to get used to the whirlwind that occurs when promoting a new book.

“I’m sort of a very family-oriented person, and all of this other stuff is just not me,” he said. “[The publicity] is very embarrassing to me, but I know I have to do it. I’m eager to have people read it and I hope people enjoy it.”

Jacover said there is an underlining message that baseball is like life.

“Sometimes you get bad calls and sometimes you make errors and sometimes you just strike out,” he said. “But you have to pick yourself up and get back in the game.

“A more obvious message in reading the book is, you have to learn what to take from the past and what not to. If you forget the past you will be a fool, but if you don’t let go of certain things you will be a victim. Wisdom is really knowing the difference between the two.”

For more information about “Merkle’s Curse,” visit www.merklescurse.com.

Around the water cooler — Q & A with Steve McCormick

Each week we will pose these three questions to different lawyers in the legal community.

This week we talk with Steve McCormick, a partner at Kirkland & Ellis. He has been with his firm for 37 years, and is a commercial trial lawyer.

– What do you find most interesting about your practice?

Without a doubt, the courtroom is the most interesting and challenging part of my job — the be-all-and-end-all of my professional life. Everything I do is in preparation to stand up in some courtroom somewhere as the champion of my client.

– What makes a good lawyer?

Beyond the most obvious, there are two related things that stand out in my mind.

First, the best lawyers are those who are willing to drill down to bedrock — to the nth degree, where it’s called for — in order to produce the best work product in support of the client’s case that can possibly be produced. This means making a lot of sacrifices. If you read about the lives of the great trial lawyers throughout the ages, you always see this willingness to drain yourself dry when it’s necessary. (Obviously, not every situation calls for this, and not every client can afford it, but where it matters most, the best lawyers put aside whatever they have to put aside to get the job done.)

Second, the best lawyers are those with the best imaginations. Out of a thousand lawyers who will produce a decent piece of work product — whether it’s a brief or a closing argument — there will be one who will take the same facts and the same law and figure out a way to present it that really sparkles and catches everyone’s attention. This is related to the first point, because sometimes a lot of imagination is the result of a lot of perspiration.

– What is the biggest legal news right now, and what is its impact? 

I don’t know if it’s exactly a “right now” thing, but the globalization of business presents dramatically new challenges to the trial lawyer. So many disputes now involve multinational, multicultural issues that we all have to struggle to keep up.

Around the water cooler — Markham case

Each week I will highlight a different case or legal happening, and solicit your thoughts on the impact of it in the legal community.

Senior Federal District Judge Milton Shadur entered an agreed order April 1 confirming what is believed to be the largest private settlement of a fair housing/ disability discrimination suit of its kind in Illinois history, according to Ungaretti & Harris.

Under the order, Markham will pay $400,000 to settle disability and housing discrimination claims brought in January against the city, its mayor, David Webb, Jr., and other municipal officials by a developmentally disabled resident and the non-profit operator of his group home, St. Coletta’s of Illinois.

The order obligates the city to comply with all applicable fair housing laws and to exempt St. Coletta’s from any future ordinances, regulations or licensing requirements for group homes for the developmentally disabled. It also provides that the court will maintain supervisory jurisdiction to enforce its requirements for five years.

The case alleged that Markham city officials systematically blocked St. Coletta’s establishment of a group home for developmentally disabled residents from November 2007 to January 2008.

The settlement came after the city was forced to admit that its mayor personally took the unprecedented step of ordering the water service to the residence cut off in January. The suit also alleged that Markham’s efforts to exclude St. Coletta’s came while the city and mayor were under a conciliation agreement with the U.S. Department of Housing and Urban Development resolving a prior housing and disability discrimination complaint by another operator of a separate Markham group home for the developmentally disabled — Karriem’s Developmental Services, Inc.

Nicholas Anaclerio, one of the lawyers who represented St. Coletta’s and a partner at Ungaretti & Harris, said the case sends a strong message to other municipalities that they must understand the fair housing laws and comply with them.

“We’ve got a lot of years between us and the institution of these laws,” Anaclerio said. “Yet people with disabilities and those who are advocates, like St. Coletta’s, do encounter some staunch opposition. I don’t think any elected office services their constituents well who isn’t aware of or who doesn’t comply with these laws.”

One of the challenges of this case was trying to avoid a lawsuit, he said. His client tried to work with the other side to address any concerns, unfortunately, litigation could not be avoided.

He also said it was a challenge to find both monetary and non-monetary relief - but they did.

“It would be wise for any municipality, small or large, particularly those that don’t have employed legal counsel to make sure they understand the [law],” Anaclerio said. “Probably the majority of towns and cities and villages are anxious to comply with the law and if they understand what the requirements are, they are going to do their best to meet them.”

Info Tech Law: Arbitration begins with the contract

By Alan S. Wernick
Wernick & Associates

Arbitration, one form of alternative dispute resolution, is an integral part of the fabric of many technology agreements. How an arbitration clause is drafted can have a significant impact in the event of a dispute involving the agreement.

Many contract drafters place the ADR provision into the category of contract boilerplate. Frequently the time-worn ‘’standard arbitration language” is inserted into the contract and the parties may give little additional thought to the ADR provision. Possibly this is because the parties focus, as they should, on the success of the subject of the contract and the arbitration provision speaks to the possible failure of the transaction. For several reasons, I suggest that, in most cases, the arbitration provision should be given more consideration by the parties.

First, if a breach of the agreement is subsequently alleged, the agreement will most likely be read by a third party unfamiliar with the specific negotiations and background of the transactions. Second, that third party may be a judge or an arbitrator trying to figure out what the parties intended in the agreement. Third, in most cases, thoughtful attention to the drafting of the arbitration provision gives the parties an opportunity to shape how their dispute will be resolved in the event of a breach.

There are multiple factors that may be considered by the parties in deciding whether or not to include an ADR provision in their agreement. But, when the choice is made to include an ADR provision, the parties should carefully consider the alternatives in drafting the particular elements of the ADR provision. As the U.S. Supreme Court stated in Preston v. Ferrer, No. 06-1463, decided Feb. 20, 2008):

”[T]he Federal Arbitration Act (FAA or Act), 9 U.S.C. 1 et seq. (2000 ed. and Supp. V), establishes a national policy favoring arbitration when the parties contract for that mode of dispute resolution. … When parties agree to arbitrate all questions arising under a contract, the FAA supersedes state laws lodging primary jurisdiction in another forum, whether judicial or administrative.”

Like most contract provisions, there is no ”one size fits all” in the drafting of the ADR provision — the ADR clause in one agreement may contain inappropriate language for the next transaction. The ADR clause must be carefully drafted to fit the specific transaction.

The contract drafter, who may be one of the parties or their lawyer, after a careful legal analysis of the particular facts of the specific transaction will make certain decisions concerning what to include, or not, in the drafting of this provision. The following is not an exhaustive list of all possible considerations for the drafting of an ADR provision for arbitration, but will provide you with a starting point:

Arbitration administration (for example, administered by the American Arbitration Association, one of the other arbitration administration entities, or a private arbitrator).

Number of arbitrators (one or three).

Method of selection of arbitrators (neutral selection process or ”party-appointed” arbitrator selection).

Arbitrators’ qualifications (for example, knowledgeable in information technology and/or computer law, licensing, copyright law, and/or the computer industry).

Scope of arbitration clause. (Will it cover all disputes or just certain types?)

Is a stepped ADR process appropriate (include mediation steps, C-level management involvement)?

If the contract is to be formed online, what form of acceptance will be needed to bind the other party to the contract in general, and the ADR provision in particular?

”Entry of judgment” language.

Location of the hearing.

Choice of law provision.

Type of damages available (e.g., injunctive relief, specific performance, money damages). Will preliminary relief be available? (Note, this is permitted under the AAA Commercial Rules.)

Discovery (pre-hearing discovery scope including number of depositions, time limits, discovery period, and so forth).

Form of award (a detailed written [”reasoned”] opinion - but note, it may increase the cost of the arbitration because of the additional arbitrator’s time involved).

Multiple parties issues (for example, disputes involving third parties who were strangers to the arbitration agreement).

Remedies (for example, delineate the scope of arbitrator authority in award, but be careful in limiting the arbitrator’s ability to award any statutory remedies).

If this is an international transaction, consider specifying the language of the hearing.

For some additional drafting elements to consider, you may want to take a look at the AAA’s ”Drafting Dispute Resolution Clauses: A Practical Guide” as one reference. Again, this is not an exhaustive list, and the contract should be prepared and reviewed by knowledgeable legal counsel.

The bottom line is to remember that the arbitration provision is one way to manage your legal risks, so be mindful when drafting ADR clauses, avoid the ”it’s just boilerplate” trap, and be prepared for the contract negotiations of the ADR clause.

©2008 Alan S. Wernick

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