Master Techniques for Counsel Mediating and Arbitrating the Large Complex Intellectual Property Case

Transcription

1 Master Techniques for Counsel Mediating and Arbitrating the Large Complex Intellectual Property Case April 20, :00 pm to 2:30 pm ET PROGRAM SUMMARY Speakers: Reginald Holmes and Marriann Panarella This 90-minute webinar will address how counsel in large, complex IP cases can use mediation or arbitration to their client's best advantage. AGENDA 2:00 p.m. Welcome and Introduction of Speakers (5 minutes) 2:05 p.m. Mediation of Complex Intellectual Property Disputes (75 minutes) deciding to mediate the IP dispute; what mediation style works best in IP matters; selecting a mediator - expertise and process skills; ten tips for successful mediation preparation; five master principles for presenting your case in mediation; closing the deal; enforcing the settlement Arbitration of Complex Intellectual Property Disputes deciding to arbitrate the IP dispute; the arbitration agreement; injunctions/emergency relief; ad hoc institutional arbitration for IP matters; selecting your arbitrator(s) - technical and IP legal expertise; five tips for preparing for the preliminary hearing; ten master principles for presenting your IP case in arbitration; after the hearing: post-arbitration briefing, the arbitration award and enforcing the award. 3:20 p.m. Conclusion and Questions (10 minutes) 3:30 p.m. Evaluation (5 minutes) 3:35 p.m. Adjourn Copyright 2016 American Arbitration Association

2 Reginald A. Holmes, Esq. The Holmes Law Firm Profession Current Employer-Title Mediation Profession Work History Experience Reginald A. Holmes, Esq. Neutral ID : Arbitrator, Mediator, Referee, Private Judicial Officer, Attorney; Professional Consultant The Holmes Law Firm of Atlanta and Los Angeles Arbitrator, Mediator, Referee, Private Judicial Officer, Attorney; Professional Consultant Chairman, The Holmes Law Firm, 2000-present; Chairman of the Board, Renaissance Oak Real Property Development, LLC; Executive Vice President and General Counsel, Horne Entertainment Inc., ; General Manager for Intellectual Property Licensing and Business Development/Assistant General Counsel for Intellectual Property and Business, McDonnell Douglas Corp., ; Baker & Hostetler, ; Chairman, Holmes & Associates, ; General Counsel, Western Region, Wang Laboratories Inc., ; Director of Contracts and Pricing, Rockwell International, ; Patent Attorney, Wescom Inc., ; Patents and Copyright Clerk, Cushman, Darby & Cushman, Extensive and over arching in-depth blue chip and "in the trenches" experience as an attorney, litigator, business executive, professional consultant, "In House" corporate counsel, Judge and ADR neutral. Career has encompassed vast areas of complex business, commerce and conflict issues. The following is a narrative of some of that experience: Extensive experience with major sophisticated nationwide franchise, dealers and third party representative agreements including Structuring, negotiating and enforcement and termination of all manner of complex and sophisticated franchise and distribution agreements; expert on management of franchisor/franchise relationship management; FORMER PATENT ATTORNEY WITH DEEP EXPERIENCE WITH TECHNOLOGY AND INTELLECTUAL PROPERTY ISSUES including the conceptionalization, funding, development, exploitation, protection and enforcement of technology and intellectual property rights through the use of contracts, patents, trademarks, copyrights, trade secrets,; invention, inventor and inventorship advice, counseling and planning; acquisition, commercialization and revenue generation from patents and other IP with strong emphasis on information, computer and telecommunication technology; litigation including infringement, antitrust and fraud claims, ADR, legislation and public education; conduct of Markman Hearings; Consultant to private alternative "clean" energy investment group; Experience in the employment area include recruitment, executive compensation and termination of employees and executives; as well as harassment, sex and race discrimination, defamation, employee theft and fraud, privacy and secrecy protection, retaliation and wrongful termination claims; Experience in the entertainment and sports area include working as General counsel and EVP of business affairs and offering management and legal counseling

3 directed towards movie and TV show production, internet gaming, and sports franchises and other Hollywood based entertainment assets; vetting TV and movie productions and clearing intellectual property rights. Background and experience in the financial and commercial area includes structuring, capitalizing, managing, growing, LBO and taking public corporations, partnerships and LLC's; counseling related to asset base financing and mortgage backed securities; advice directed towards the restricting, bankruptcy and reorganization of distressed businesses; Counseling fiduciaries on investment powers, duties and responsibilities; and management of consumer credit and debt. As an attorney and General partner in the real property and construction area experience includes "Deal making" and all manner of joint ventures and strategic engagements for the development and financing of sophisticated commercial, planned and multi-unit residential real estate projects including appraisal, environmental assessment, profitability analysis, development, construction, marketing and workout issues; have handled both sides of claims for construction defect and fraud. In the international arena experience includes: Negotiation of joint venture arrangements, manufacturing and supply agreements and the Structuring, negotiating and enforcement of all manner international franchise and international distribution deals; Counsel directed towards Intellectual property rights acquisition and IP protection and enforcement strategies for China, Japan, India, the Pacific basin, Europe and Africa. Background also includes significant experience in intellectual property valuation and rate of return analysis, computer aided design, e-commerce law, aerospace, government contracts, managing multi-ethnic employees groups and developing self-directed employee learning programs, global dispute resolution, proper management of outside counsel and legal fees and "Line" P&L responsibility. General Experience Extensive and over arching in-depth blue chip and "in the trenches" experience as an attorney, litigator, business executive, professional consultant, "In House" corporate counsel, Judge and ADR neutral. Career has encompassed vast areas of complex business, commerce and conflict issues. The following is a narrative of some of that experience: Extensive experience with major sophisticated nationwide franchise, dealers and third party representative agreements including Structuring, negotiating and enforcement and termination of all manner of complex and sophisticated franchise and distribution agreements; expert on management of franchisor/franchise relationship management; FORMER PATENT ATTORNEY WITH DEEP EXPERIENCE WITH TECHNOLOGY AND INTELLECTUAL PROPERTY ISSUES including the conceptionalization, funding, development, exploitation, protection and enforcement of technology and intellectual property rights through the use of contracts, patents, trademarks, copyrights, trade secrets,; invention, inventor and inventorship advice, counseling and planning; acquisition, commercialization and revenue generation from patents and other IP with strong emphasis on information, computer and telecommunication technology; litigation including infringement, antitrust and fraud claims, ADR, legislation and public education; conduct of Markman Hearings; Consultant to private alternative "clean" energy investment group; Experience in the employment area include recruitment, Reginald A. Holmes, Esq. Neutral ID :

4 executive compensation and termination of employees and executives; as well as harassment, sex and race discrimination, defamation, employee theft and fraud, privacy and secrecy protection, retaliation and wrongful termination claims; Experience in the entertainment and sports area include working as General counsel and EVP of business affairs and offering management and legal counseling directed towards movie and TV show production, internet gaming, and sports franchises and other Hollywood based entertainment assets; vetting TV and movie productions and clearing intellectual property rights. Background and experience in the financial and commercial area includes structuring, capitalizing, managing, growing, LBO and taking public corporations, partnerships and LLC's; counseling related to asset base financing and mortgage backed securities; advice directed towards the restricting, bankruptcy and reorganization of distressed businesses; Counseling fiduciaries on investment powers, duties and responsibilities; and management of consumer credit and debt. As an attorney and General partner in the real property and construction area experience includes "Deal making" and all manner of joint ventures and strategic engagements for the development and financing of sophisticated commercial, planned and multi-unit residential real estate projects including appraisal, environmental assessment, profitability analysis, development, construction, marketing and workout issues; have handled both sides of claims for construction defect and fraud. In the international arena experience includes: Negotiation of joint venture arrangements, manufacturing and supply agreements and the Structuring, negotiating and enforcement of all manner international franchise and international distribution deals; Counsel directed towards Intellectual property rights acquisition and IP protection and enforcement strategies for China, Japan, India, the Pacific basin, Europe and Africa. Background also includes significant experience in intellectual property valuation and rate of return analysis, computer aided design, e-commerce law, aerospace, government contracts, managing multi-ethnic employees groups and developing self-directed employee learning programs, global dispute resolution, proper management of outside counsel and legal fees and "Line" P&L responsibility. Experience as a Mediator Specialties and Sub- Specialties Alternative Dispute Resolution Experience Has served as a mediator in hundreds of disputes. These disputes have spanned across the full range of human endeavors and involved just about every conceivable subject matter. More than 20 mediations have been conducted in the following general areas: commercial and business; franchise, dealer and partnership; employment discrimination and wrongful termination; intellectual property (patents, trademarks, copyrights and trade secrets, technology, software and related services and anime issues); banks, credit card and financial institutions; real estate and construction; entertainment and sports entities and international and multi-national disputes. Amounts in dispute have varied from a few thousand dollars to over $200 million dollars. Breaches and violation in country or international law agreements, treaties or constraints. Member of the AAA's Large Complex Case Panel for more than 10 years. Since 1988 has served as chair, sole and panel arbitrator, mediator, referee, private judge, Reginald A. Holmes, Esq. Neutral ID :

5 private justice, Discovery Referee, Markman hearing officer or judge pro tem in hundreds of complex commercial disputes. Amounts in dispute have ranged from small dollar matters to amounts in controversy well in excess of $200 million. Subject matters in dispute have ranged across the pantheon of referenced industries including software fraud, entertainment industry disputes, termination of distributorship, breach of a sports contract, patent infringement, race discrimination, sexual harassment, partnership dissolution, and stock, securities and investor fraud, construction defect, breach of entertainment distribution contract, breach of surety and trustee obligation, identity theft, defamation, and imaging rights theft, software defect fraud and breach of international distribution rights. Frequent panelist and lecturer on ADR, private justice and technology topics for various bar and business organizations. Former chair of the AAA's Los Angeles B2B Advisory Committee. Representative Issues Handled as a Mediator Alternative Dispute Resolution Training Cases mediated are usually of the complex variety with many issues, claims and request for remedies involved. However the general subject matter themes for a few of areas of focus are as follows: -INTELLECTUAL PROPERTY - infringement, damages and royalty entitlement, patent claims construction and markman hearing analysis, look and feel infringement, inventor and work for hire rights, contract breach, fraud, antitrust and punitive damages, and interference issues. -FRANCHISE - franchisee program compliance, geographical and territorial limitations, royalty and payment issues, infringement, fraud, franchisor support issues and state compliance issues. Employment disputes - race, sex, orientation and religious discrimination, hostile work place, reinstatement claims, defamation, back pay, reasonable accommodation, reverse discrimination, employee theft, work performance, wrongful termination, breach of contract, fraud, and punitive damages. -INTERNATIONAL - breach of contract, geographical and territorial breaches limitations, IP rights violations, product or service quality issues, trade dress or name issues, royalty and payment issues, infringement, fraud, support service issues and breaches and violation in country or international law agreements, and treaties or constraints. AAA Roundtable - Arbitration Panels, 2015; AAA How You Can Make the Most of Mediation's Global Growth 2015; AAA The 31st Annual Joint Colloquium, NY, 2014; AAA ICDR International Symposia in Advanced Case Management Issues, 2014; AAA ediscovery 2.0, 2014; AAA Advanced Mediation Series: Managing the Dynamics of a Multi-Party Class, 2014; AAA Winning at Arbitration: More than 30 Specific Tips Advocates Can Use to Improve Arbitration Outcomes, 2014; AAA Managing a Successful Arbitration, 2013; AAA/ICDR Neutrals Conference, 2012, 2009; College of Commercial Arbitrators Annual Meeting, 2011, 2008; AAA Regaining Speed and Economy in Dispute Resolution, 2011; ICDR/IBA Four Roundtables in Times Square - Putting the Spotlight on International Arbitration on Broadway, 2011; AAA Due Process Dilemmas: How Far to Go in the Name of Fairness, 2011; AAA Spring Construction Conference, Mediation: It's Not New, So What's Next?, 2011; AAA Better, Faster, Cheaper: Reducing Costs in Labor Arbitration, 2011; AAA Workplace Bullying: The Role of Policies and ADR Systems, 2011; AAA Dealing with Delay Tactics in Arbitration (ACE004), 2010, 2005; AAA How to Prevent Arbitrations from Transforming into Litigations, 2009; AAA Electronic Discovery in Arbitration: What You Need to Know, 2009; AAA Reginald A. Holmes, Esq. Neutral ID :

6 Current Issues in Employment Arbitration: The Arbitration Fairness Act of 2009 Legislation and Recent Court Decisions, 2009; AAA Hot Topics in International Construction Arbitration, 2009; AAA Alternative Investments Meet Alternative Dispute Resolution, 2009; ICDR Joint Colloquium on International Arbitration, 2008; AAA Construction Mediation Conference, 2007; ICDR International Symposia in Advanced Case Management Issues, 2007; NAA Beyond the Protocol: The Future of Due Process in Workplace Dispute Resolution, 2007; AAA Neutrals Conference, 2006, 2005; AAA Pro Se: Managing Cases Involving Self- Represented Parties (ACE002), 2006; DRS/LA Bar, 30-Hour Mediator Training, 2005; AAA Arbitration Awards: Safeguarding, Deciding & Writing Awards (ACE001), 2005; AAA Commercial Arbitrator II Training: Advanced Case Management Issues, 2001; Price Waterhouse Company, Directing Efficient High Stakes ADR Proceedings, 2000; AAA/USATF Doping Grievance Arbitrator Training, 2000; AAA Commercial Arbitrator Training, 1999; Los Angeles County Bar, Arbitration and Mediation Seminar, 1998; various other ADR training. Multi Party Mediation Experience Years of Practice as a Mediator Education Professional Licenses Professional Associations Total Number of Cases Mediated Mediation Experience as an Advocate or Party Publications and Speaking Engagements Has mediate d cases where the number of parties have ranged from three to 15. Most of these cases involved franchise or insurance claims. 20 University of Florida (BS, Electrical Engineering-1975); Georgetown University (JD-1978) Admitted to the Bar: Virginia, 1978; Illinois, 1979; California, 1981; U.S. Patent Bar (inactive), State Bar of California (International Law Section, Executive Committee; Franchise Law Section, Executive Committee); Los Angeles County Bar Association (Board of Trustees, Judicial Appointments Committee); Langston Bar Association (Past President); California Judicial Council; Public Counsel (Past Board of Directors); College of Commercial Arbitrators (Fellow); California Association of Distinguished Arbitrators (Fellow); Association for International Arbitration; Kappa Alpha Psi (Life Member); NB United Fund (Past Chairman). 200 Has served as a full time neutral for more than 10 years. Prior to this, handled scores of mediations as an advocate where the amount in dispute ranged from a few thousand to tens of millions of dollars. Now actively presents programs and training seminars for mediation advocates. "Navigating the High Intensity Mediation", California Department of Fair Employment and Housing, January 6, 2015; "Challenges and Issues with Bias and Culture in International arbitration", Third Annual LACBA & ICDR International Arbitration Conference, May 9, 2014; "Mediating and arbitrating USA v. Canada commercial franchise and distribution disputes" Toronto, Canada, Toronto, June, 2014; "How to get your mediator to see things your way", LACBA Labor and Employment law Section, May 4, 2014; "Arbitrating and mediating disputes with Reginald A. Holmes, Esq. Neutral ID :

7 China connected parties and issues", Guangzhou, China, April, 2014; "Dispute resolution and conflict management in the corporate board room", ABA DRS spring meeting, Washington, DC, April 2013; "Cutting edge techniques for winning the international arbitration case", Tokyo, Japan, December 2013; "Dispute Resolution for the Billion dollar Intellectual property disputes from an arbitrator who has presided over one", ABA, San Francisco, June 2014; "The Ins and Outs of acting as private Settlement Counselor", ACR annual convention, San Diego, October 14, 2013; "Achieving Justice for small players and corporate persons in hotly contested arbitrations", College of Commercial Arbitrators, Santa Fe, New Mexico, October, 2013; "Preventing Runaway Arbitrations", ABA annual convention, San Francisco, Ca., August 2013; "Protecting Mediator confidentiality", Beverly Hills Bar Association, May, 24, 2012; The great debate: Arbitration v. Litigation, ABA annual meeting, Chicago, August 2012; "Fostering private Justice", DePaul University Law School, June 22, 2011; "How to build a successful mediation or arbitration practice", ABA DRS section, Denver, April, 2011;"Master Techniques for Winning the Large Complex Case," The Emerging Issues Forum, 2010; "Private Justice-ADR's Only Legitimate Objective," LOS ANGELES LAWYER, 2010; "The Many Splendid Roles of the Lawyer in ADR," Pepperdine Law School, Straus Institute, 2010; "Arbitrating international commercial disputes in Georgia", ICLE in Georgia, 2010; "Mediating Employment disputes in Georgia", ICLE in Georgia, 2010; "An Essential Toolbox for the Champions of ADR," 2009; The Private Justice System in a Post-ADR World,", AAA, 2009; "A Primer on Mediating and Arbitrating the Multimillion Dollar Franchise Dispute," 2008; "A Primer on Arbitrating International Intellectual Property Cases," 2008; "A Better Option: Mediating and Arbitrating the High Stakes Employment Case," 2008; "Understanding and Winning Consumer Arbitration Cases," 2008; "When the Building Must Go On: The Med/Arb Option for Construction and Real Estate Projects," 2007; "Avoiding Armageddon Through ADR," 2006; "Keys for Successful USA Based International Arbitration," 2005; "Winning Mediation Strategies," 2001; "Winning Arbitration Strategies for the Large Complex Patent Case," 1999; "The Legalities of Exporting," Department of Commerce, ; "Structuring Distribution Agreements in Asia," Computer Law Institute, 1988; Contributing Editor, "Negotiating Computer Contracts," 1984, Mediation Philosophy Mediation References My mediation philosophy is grounded on the notion that every dispute or conflict can be orderly advanced or resolved in a structured fashion provided that the resolution of the dispute is desired by the parties. The role of the mediator is to assist the parties in obtaining the outcome (usually settlement) that they are seeking from the mediation. Each mediation is unique. My approach is customized for the parties, attorneys or representatives, subject matter and outcomes or results sought. A consideration of these factors will result in an evaluative, facilitative, transformative or mixed approach being employed. The expectation is that the parties will participate in the mediation in good faith, listen to the other side, respect the mediation process and advocate for an outcome that is acceptable to them. Russell M. Frandsen, rfrandsen@businesslegalgroup.com, (626) ; Melissa J. Fassett, mjf@ppplaw.com, (805) ; Hellen Huang, hhuang@ssd.com, (213) Reginald A. Holmes, Esq. Neutral ID :

8 Alternative Dispute Resolution Training Citizenship Languages Locale AAA How You Can Make the Most of Mediation's Global Growth 2015; AAA The 31st Annual Joint Colloquium, NY, 2014; AAA ICDR International Symposia in Advanced Case Management Issues, 2014; AAA ediscovery 2.0, 2014; AAA Advanced Mediation Series: Managing the Dynamics of a Multi-Party Class, 2014; AAA Winning at Arbitration: More than 30 Specific Tips Advocates Can Use to Improve Arbitration Outcomes, 2014; AAA Managing a Successful Arbitration, 2013; AAA/ICDR Neutrals Conference, 2012, 2009; College of Commercial Arbitrators Annual Meeting, 2011, 2008; AAA Regaining Speed and Economy in Dispute Resolution, 2011; ICDR/IBA Four Roundtables in Times Square - Putting the Spotlight on International Arbitration on Broadway, 2011; AAA Due Process Dilemmas: How Far to Go in the Name of Fairness, 2011; AAA Spring Construction Conference, Mediation: It's Not New, So What's Next?, 2011; AAA Better, Faster, Cheaper: Reducing Costs in Labor Arbitration, 2011; AAA Workplace Bullying: The Role of Policies and ADR Systems, 2011; AAA Dealing with Delay Tactics in Arbitration (ACE004), 2010, 2005; AAA How to Prevent Arbitrations from Transforming into Litigations, 2009; AAA Electronic Discovery in Arbitration: What You Need to Know, 2009; AAA Current Issues in Employment Arbitration: The Arbitration Fairness Act of 2009 Legislation and Recent Court Decisions, 2009; AAA Hot Topics in International Construction Arbitration, 2009; AAA Alternative Investments Meet Alternative Dispute Resolution, 2009; ICDR Joint Colloquium on International Arbitration, 2008; AAA Construction Mediation Conference, 2007; ICDR International Symposia in Advanced Case Management Issues, 2007; NAA Beyond the Protocol: The Future of Due Process in Workplace Dispute Resolution, 2007; AAA Neutrals Conference, 2006, 2005; AAA Pro Se: Managing Cases Involving Self-Represented Parties (ACE002), 2006; DRS/LA Bar, 30-Hour Mediator Training, 2005; AAA Arbitration Awards: Safeguarding, Deciding & Writing Awards (ACE001), 2005; AAA Commercial Arbitrator II Training: Advanced Case Management Issues, 2001; Price Waterhouse Company, Directing Efficient High Stakes ADR Proceedings, 2000; AAA/USATF Doping Grievance Arbitrator Training, 2000; AAA Commercial Arbitrator Training, 1999; Los Angeles County Bar, Arbitration and Mediation Seminar, 1998; various other ADR training. United States of America Chinese Pasadena, California, United States of America Compensation Reginald A. Holmes, Esq. Neutral ID : Hearing: Study: Travel: Cancellation: Cancellation Period: Comment: $575.00/Hr $575.00/Hr $250.00/Hr $ /Day 45 Days Hourly rate charged for all hours worked. If a scheduled hearing is cancelled, postponed or continued within 30 days of its scheduled date for any reason, the parties will be assessed a $ fee for each such cancelled, postponed or continued date,

9 Reginald A. Holmes, Esq. Neutral ID : which shall be payable immediately. Unless otherwise specified, no travel expenses are assessed for hearings conducted in within 30 miles of the arbitrators Los Angeles, Chicago or Atlanta offices.

10 Merriann M. Panarella, Esq. Current Employer-Title Profession Work History Experience Merriann Panarella, Esq.-Commercial, Transactional, Intellectual Property Arbitrations Arbitrator, Mediator, Consultant-Commercial, Transactional and Intellectual Property Disputes in New York City and Boston Arbitrator, Mediator, Consultant, present; Litigation Partner, Intellectual Property and Complex Commercial Practice Groups, Wilmer Cutler Pickering Hale and Dorr LLP, ; Law Clerk for The Honorable W. Arthur Garrity, Over 30 years experience in all aspects of complex litigation including lead trial counsel at the pretrial, trial, and appellate levels, and in Markman hearings in patent cases. Has managed trial teams including lawyers, scientists, experts, paralegals and technical support personnel and has negotiated and drafted complex settlement, licensing, and confidentiality agreements. Litigation experience includes: -Contractual and commercial matters -Licensing and technology development agreements -Patent cases in diverse industries and technologies -Trade secret and non-compete claims -Partnership and other collaborative disputes -Deceptive trade claims -Employment disputes both contractual and statutory -Antitrust matters -Securities lawsuits -Real estate development agreements -Environmental matters involving gas storage tank liability and other issues -Trademark and copyright claims -Insurance matters Industry experience including: Telecommunications, medical devices, life sciences, pharmaceuticals, software, oil and gas, plastics, health care, sporting goods, and various methods of manufacture (laser, ink jet, plastics, and thermistor technologies). Domestic and foreign clients have included large New York Stock Exchange listed companies as well as small venture backed start-ups and individuals. Litigation clients included, for example: Merriann M. Panarella, Esq. Neutral ID : Global manufacturer of high performance analogue semiconductors for use in The AAA provides arbitrators to parties on cases administered by the AAA under its various Rules, which delegate authority to the AAA on various issues, including arbitrator appointment and challenges, general oversight, and billing. Arbitrations that proceed without AAA administration are not considered "AAA arbitrations," even if the parties were to select an arbitrator who is on the AAA's Roster.

11 mobile phones in a multi-million dollar dispute involving 12 patent and related trade secrets -Worldwide provider of innovative medical devices in a multi-million dollar dispute involving five patents related to thoracic drainage devices -National manufacturer of open programmable switches in a technology development dispute over the miniaturization of proprietary switching technology -U.K. medical device manufacturer in a dispute involving multiple patents directed to vascular foot pumps -Leading manufacturer of temperature control devices in a trade secret dispute over thermistor manufacturing -Canadian telecommunications company in an antitrust matter -Global oil and gas refining and marketing company in multiple cases involving environmental issues, product liability claims Alternative Dispute Resolution Experience Arbitration experience including in large, complex cases, for example: a multimillion dollar dispute over the development of a medical device, licensing disputes, a hospital accounting dispute. Mediation experience including as counsel and mediator, intellectual property disputes, licensing and technology agreements, contracts, deceptive trade claims, real estate and environmental matters. Panels: -American Arbitration Association (Arbitration) -International Chamber of Commerce (ICC) -World Intellectual Property Association (Arbitration and Mediation) -Financial Industry Regulatory Authority (Arbitration) -Mediation Works, Inc. (Mediation) -Massachusetts Fee Arbitration Board (Arbitration) Alternative Dispute Resolution Training -ICDR Awards and Commentaries - Just How Different Is International Arbitration Than Domestic Arbitration? 2015; -Chartered Institute of Arbitrators (CIArb), Fellow CIArb Diploma in International Arbitration (2012) CIArb International Commercial Arbitration Training (Montreal 2011) -International Chamber of Commerce (ICC) Ninth Annual ICC New York Conference (2014) ICC International Commercial Arbitration Workshop (Florence 2014) ICC International Dispute Resolution (2004) -American Arbitration Association (AAA) "Exceeded Powers": Recent Trends in Cases Challenging Arbitrator Authority (2014) Maximizing Efficiency & Economy in Arbitration: Challenges at the Preliminary Hearing (2013) Advanced Case Management Issues (2006) Arbitrating Intellectual Property Disputes (2005) Merriann M. Panarella, Esq. Neutral ID : The AAA provides arbitrators to parties on cases administered by the AAA under its various Rules, which delegate authority to the AAA on various issues, including arbitrator appointment and challenges, general oversight, and billing. Arbitrations that proceed without AAA administration are not considered "AAA arbitrations," even if the parties were to select an arbitrator who is on the AAA's Roster.

12 Fundamentals of the Arbitration Process (2005) -Financial Industry Regulatory Authority (FINRA) Live Video Basic Arbitrator Training (2013) Basic Arbitrator Training Part II: Expungement Training (2013) Basic Arbitration Training Part I (2013) -American Bar Association 12th Annual Advanced Mediation and Advocacy Skills Institute (2014) -Harvard Law School Program of Instruction for Lawyers Mediation Workshop (40 hours) (2003) -World Intellectual Property Organization (WIPO) Mediation Training, (16 hours) (Geneva 2005) -Mediation Works, Inc. (MWI) Mediator Roundtables (2014) Mediation Training for Volunteers (2005, 2013) Professional Licenses Professional Associations Admitted to the Bar: Massachusetts, 1980; New York, 1980; U.S. District of Massachusetts, 1980; U.S. Court of Appeals, First Circuit, 1981; U.S. Federal Circuit Court of Appeals, Chartered Institute of Arbitrators, Fellow -American Bar Association (Dispute Resolution, Co-Chair Intellectual Property Committee, WIDR Member, Intellectual Property Law and Litigation Sections) -International Chamber of Commerce (ICC) -CPR Institute for Dispute Resolution, International Commission on Patent Disputes (past) -American Intellectual Property Law Association (AIPLA) -Boston Bar Association (past council member) -Boston Bar Foundation (Fellow) -Boston Club -Wellesley College Business Leadership Counsel (invitation only) Education Wellesley College (B.A., Summa Cum Laude, Economics, Phi Beta Kappa, 1975); University of Virginia (J.D. 1979). Publications and Speaking Engagements Citizenship Languages Locale Boston Bar Association, Moderator, "Grow Your ADR Practice: Advice From the Experts"; "Considering a Legal Career", Wellesley College Keynote Address; "Moving for Injunctive Relief", MCLE, (Second Edition); "Presentation to Mass Medic: "Intellectual Property: What it is and How to Obtain It"; "Stemming the Patent Litigation Tide," Medical Device and Diagnostic Industry, and China Legal Manager (Inaugural Issue); Has spoken and written on alternative dispute resolution, litigation and intellectual property matters. United States of America English Natick, Massachusetts, United States of America Merriann M. Panarella, Esq. Neutral ID : The AAA provides arbitrators to parties on cases administered by the AAA under its various Rules, which delegate authority to the AAA on various issues, including arbitrator appointment and challenges, general oversight, and billing. Arbitrations that proceed without AAA administration are not considered "AAA arbitrations," even if the parties were to select an arbitrator who is on the AAA's Roster.

13 Compensation Hearing: Study: Travel: Cancellation: Cancellation Period: Comment: $400.00/Hr $400.00/Hr $0.00/Hr $0.00/Hr 0 Days No charge for travel in New York City and Boston only charge travel in other locales. Merriann M. Panarella, Esq. Neutral ID : The AAA provides arbitrators to parties on cases administered by the AAA under its various Rules, which delegate authority to the AAA on various issues, including arbitrator appointment and challenges, general oversight, and billing. Arbitrations that proceed without AAA administration are not considered "AAA arbitrations," even if the parties were to select an arbitrator who is on the AAA's Roster.

14 2013 American Arbitration Association, Inc. All rights reserved.

15 The majority of IP cases are brought to the federal courts. However, arbitration is a more effective option. This paper will address common myths about arbitration that often cause those seeking dispute resolution to turn to the more costly court system for the resolution of their intellectual property disputes. Intellectual Property Arbitration vs. Litigation MYTHS Arbitration can t be used effectively in patent infringement disputes. Mediation is preferable to arbitration to resolve IP disputes. IP cases are best decided in a court setting. The arbitration process is impossible to control, with runaway costs and unaddressed substantive and procedural issues. Arbitration is no quicker than litigation. Arbitration is no less expensive than litigation. Arbitration does not permit interim injunctive relief. Arbitrators split the baby, satisfying neither party. Size matters arbitration is not appropriate for very large or very small cases. There are more qualified IP mediators than IP arbitrators. Products of the Mind Require Special Handling (Note: AAA data related to IP cases excludes filings from claims programs.) The future value of what is at stake financially when a dispute over intellectual property (IP) ownership occurs can be enormous. A business s competitive position, even its viability, can depend upon protecting its IP assets patents, copyrights, trademarks, trade secrets and technical knowledge. For example, revenues from licensing represent a significant and increasing source of income for companies possessing proprietary technology; rampant piracy reflects an increasing loss of sales. And, the shorter product life cycle in today s technology markets drives companies to keep up with and surpass competitors with a latest and greatest product, genre or feature. A 2006 study conducted by Price Waterhouse Coopers on patent and trademark damages reports a dramatic increase in IP litigation, including record numbers of infringement actions, with patent and trademark actions among the fastest growing filings in the court system. Because IP dispute outcomes can play such an important role in some companies success, owners are reexamining how these disputes can be most effectively handled. Today, IP disputes are wider in scope than just ten years ago, often involving multi jurisdictions and multi defendants, as well as are more nuanced, covering topics intrinsic to new and fast-growing technologies. Complexity is a given. The cost of IP resolution continues to climb in lockstep with this complexity. Yet, as the complexity of the issues escalate, the need for a speedy resolution becomes more critical. The majority of IP cases are brought to the federal courts. However, arbitration is a more effective option. This paper will address common myths about arbitration that often cause those seeking dispute resolution to turn to the more costly court system for the resolution of their intellectual property disputes.

16 M y t h # 1 : Arbitration can t be used effectively in patent infringement disputes. A common belief is that arbitration is suitable only to settle licensing disputes. Not so in addition to its large caseload of alleged breaches of licensing agreements, the AAA has experienced an acceleration of the post-dispute submission of patent cases, with good reason. A majority of patent-damage jury or bench decisions are overturned, adjusted or remanded back, adding to the uncertainty and the cost associated with patent litigation. Arbitral decisions cannot be appealed. The above-mentioned PWC 2006 Patent and Trademark Damages Study notes that the number of patent-infringement actions has grown 109% since 1991, and that only about 30% of the patent-damages decisions issued by U.S. federal district courts are affirmed by the appellate court. Delays due to case reversals or remand in court cannot occur in arbitration. In the context of patent litigation, one of the parties often files a Motion for Summary Judgment following the district court s opinion on claim interpretation. If the court grants the motion, an appeal usually follows. If the United States Court of Appeals for the Federal Circuit reverses the district court either reverses the case or remands the case for further proceedings the parties will incur significant costs and lost time. Resolving IP disputes by means of arbitration greatly reduces the potential implications of an adverse decision. In litigation, a company may lose the particular case as well as the underlying patent, copyright or trademark. In arbitration, an adverse IP decision is restricted solely to a particular claimant. M y t h # 2 : Mediation is preferable to arbitration to resolve IP disputes. Actually, the AAA s experience is the opposite: of the 375 IP cases filed with the AAA in 2006, 354 or 94% chose arbitration as opposed to 21 or 6% that selected mediation. Of those 354 cases that began as arbitration cases, 4 cases have settled through mediation to date. There are two significant reasons arbitration is preferred over mediation for IP cases: Mediation is an alternative dispute resolution (ADR) method that is most effective when the parties have had or will have an ongoing business relationship, not the case in many types of IP disputes. The existence of a past or anticipated future business relationship adds a layer of civility and cooperation to the negotiation, greatly facilitating settlement. In most patent or trademark infringement disputes, for example, the alleged infringer does not have a past, and is not likely to have a future, business relationship with the owner of the intellectual property at issue. In this case, the more formal structure of arbitration is often the most effective ADR approach to utilize. National court judgments or mediation settlements are not as enforceable internationally as arbitral decisions. Enforceability is a key concern as the scope of intellectual property widens internationally. International arbitration awards are readily enforceable world wide as a result of the ratification by over 100 countries of the 1958 New York Convention for the Enforcement of Foreign Arbitral Awards. Enforcement under the New York Convention is greatly enhanced if the arbitration has been administered by a recognized third-party administrative body such as the AAA, in accordance with well established rules and procedures. In contrast, there is no comparable treaty to enforce national court judgments or mediation settlements. M y t h # 3 : IP cases are best decided in a court setting. The U.S. Supreme Court s landmark decision ((Markman v. Westview Instruments, Inc., 517 U.S.370) held that judges are to evaluate and decide the meaning of the words used in patent claims. However, many judges must rely upon the presentation of the lawyers for their understanding of the patent at issue and its underlying technology, as well as of current IP law, trade customs and industry norms. A high reversal rate of decisions often results; an escalation of costs and crucial loss of time to the IP owner always results. pa g e 2 i n t e l l e c t u a l property arbitrat i o n vs. litigat i o n: products of the mind require special handling

17 In a 1903 IP decision, Justice Oliver Wendell Holmes Jr. declared: It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations. [Adam Liptak. Sports Artist Sued for Mixing Crimson and Tide. New York Times (November 12, 2006):1, 25.] His pronouncement well applies to disputes in all areas of intellectual property and makes one of the most compelling arguments for using arbitration to settle IP disputes. A prime benefit of the arbitral process is the ability to select a neutral with precise subject matter expertise to address an issue, leading to more efficient and fairer hearings and avoiding the extra step involved in educating judge or jury in the specialized knowledge of the inventors, engineers and experts. Confidentiality of trade secrets, patents and development work is preserved in arbitration as opposed to the public nature of trials. Regardless of complexity, size or global scope of the IP dispute, the AAA has an appropriate specialty panel. > The AAA maintains IP panels in Patents, Copyrights, Trademarks and Technology. Qualifications for membership vary by panel, all extremely stringent. Almost 70% of patent panel members are admitted to practice before the United States Patent and Trademark Office. > Members of the AAA IP panels who possess extensive arbitration experience and case-management expertise are invited to sit on the AAA s Large Complex Case (LCC) panel, handling claims or counterclaims exceeding $500,000. Filers of LCC cases have the opportunity to fine-tune their neutral selection even further. > IP members possessing international experience and expertise handling international arbitral proceedings are included on the panel of the AAA s International Centre for Dispute Resolution (ICDR). M y t h # 4 : The arbitration process is impossible to control, with runaway costs and unaddressed substantive and procedural issues. Case filers and their advocates can exercise far more control over the management of the arbitration process than in litigation because they can tailor it to meet their needs. Unlike litigation, the flexibility associated with arbitration encourages parties to narrow the scope of the issues to be addressed, thus restricting potential outcomes and significantly reducing discovery. In 2006, 99% of the IP cases filed with the AAA involved the use of a customized arbitration provision. A well drafted, pre-dispute clause in an IP agreement or a carefully devised post-dispute stipulation allows the parties control over numerous issues including but not limited to: > Extent of discovery > Recovery of attorneys fees > Choice of procedural or substantive law > Hearing locale > Access to interim relief > Neutral selection methods, number and qualifications > Time constraints > Issues to be addressed during the hearing(s) > Protective orders > Consolidation > Availability of motion practice > Limitation on remedies > Issuance of a reasoned award On January 1, 2006, the AAA introduced the Supplementary Rules for the Resolution of Patent Disputes, a set of patent-specific procedures specific to managing the arbitration of these cases. Created from the collaboration of the AAA and the National Patent Advisory Council, consisting of patent litigators, in-house patent counsel and patent practitioners, the Rules are available at pa g e 3 i n t e l l e c t u a l property arbitrat i o n vs. litigat i o n: products of the mind require special handling

18 M y t h # 5 : Arbitration is no quicker than litigation The time frame for a typical completed arbitration is, in fact, much shorter than that of a litigation case in the experience of the AAA, approximately one third the amount of time. Arbitration s greatly reduced discovery schedule, along with virtually no motion practice and little access to appeal, result in sizeable time savings. In addition, because scheduling of an arbitration is so flexible, cases often can be heard long before a court date would be available. An analysis by the IP litigation firm of Harness, Dickey & Pierce noted the following estimated times for the litigation of an IP matter: Case evaluation phase 1-2 months Pre-trial proceedings (pleadings, discovery, motions) months Trial 2-3 weeks Appeal 2 nd Trial (occurs in approx. 53% of the time) Compare that with the following statistics: 8-12 months months 73% of the IP cases filed with the AAA during FY 2006 required seven or fewer days of hearing time. The median number of days from filing to award was 396 just over one year even for large complex IP cases with claims and counterclaims exceeding $1,000,000. M y t h # 6 : Arbitration is no less expensive than litigation. Because of the opportunity afforded to parties and their advocates to streamline steps in the arbitral process, arbitration generally is far less expensive than litigation. A study by the American Intellectual Property Law Association in 2005, reported in the Dispute Resolution Journal, May-July 2006, notes that more than half the sum of legal fees in IP litigation typically is accrued in the process up to completion of discovery, which can be substantially limited by using arbitration. M y t h # 7 : Arbitration does not permit interim injunctive relief. Arbitration has joined litigation in offering interim relief to parties in commercial cases. Emergency relief (for example, from an alleged copyright or patent infringement or a misappropriated trade secret) can be critical to the IP owner s business, and a preliminary injunction must be expedited to prevent further damage. A party to arbitration can obtain emergency relief in the following ways: The AAA s rules for commercial arbitration authorize the arbitrator to award injunctive relief and measures for the protection or conservation of property. The pre- or post-dispute arbitration agreement can authorize the use of AAA s Optional Rules for Emergency Measures of Protection, which provide for an emergency arbitrator to be appointed from a special AAA panel within one business day and a hearing schedule established within two days thereafter. Upon a showing of a likelihood of irreparable harm, the emergency arbitrator may award emergency relief. A few decisions under the Federal Arbitration Act (FAA) have held that parties to an arbitration agreement have waived their right to seek any judicial relief, or conversely, that seeking judicial relief operates as a waiver of arbitrability. In response, the AAA s commercial rules include a provision authorizing parties to seek interim judicial relief without waiving their right to arbitrate. M y t h # 8 : Arbitrators split the baby, satisfying neither party. AAA IP cases typically result in clear winners: 57% of the claims awarded in 2003 IP cases were 51% or more of the claim amount, with almost half over 75%. Respondents were awarded 51+% of the counterclaim amount in 20% of the cases, and 75+% in 13% of the disputes. Non-monetary claims were affirmed in 67% of such cases. pa g e 4 i n t e l l e c t u a l property arbitrat i o n vs. litigat i o n: products of the mind require special handling

19 M y t h # 9 : Size matters arbitration is not appropriate for very large or very small cases. Firstly, in any case, it makes sense to save the dollars that are quickly used up in the litigation process even before the case goes to trial. But here are some statistics demonstrating that the above statement simply isn t true: Of 220 IP cases arbitrated with the AAA during 2006, 24% of the cases had claims and counterclaims below $75,000. Another 34% had claims and counterclaims in excess of $500,000. Parties in 20% of the cases were seeking non-monetary relief in the form of a declaratory decision; the rest of the claims fell in between. M y t h # 1 0 : There are more qualified IP mediators than IP arbitrators. Due to mandatory mediation clauses in standard IP documents (such as licensing agreements) and the introduction of mandatory mediation programs in the federal courts, there has been a growth of interest in using mediation to resolve disputes. However, the pool of experienced mediators possessing IP expertise has not kept pace with this interest. Since mediators do not necessarily have the technical expertise needed for particular IP cases, parties often need to hire experts as co-mediators, which adds cost, time and another level of schedule coordination. Arbitration, on the other hand, can offer parties a decision-maker with subject matter knowledge well as negotiation expertise. Summary Intellectual property disputes are well served by arbitration, as a more efficient, less costly, less risky and potentially fairer avenue of resolution than IP litigation particularly due to the availability of a decision-maker who possesses the expert and technical knowledge specific to an individual IP case. Additionally, the confidentiality of the very IP that the company seeks to protect is preserved through arbitration as opposed to its exposure in open court. pa g e 5 i n t e l l e c t u a l property arbitrat i o n vs. litigat i o n: products of the mind require special handling

20 Resolution of Patent Disputes Supplementary Rules Effective January 1, 2006 Table of Contents Introduction Standard Arbitration Clause Mediation... 3 Supplementary Rules for the Resolution of Patent Disputes Applicability National Panel of Arbitrators Preliminary Hearing and Scheduling Order Enforceability... 6 Appendices USC, ' 294: Voluntary arbitration USC, ' 135: Interferences USC, ' 907: Limitation on exclusive rights: innocent infringement... 7 Introduction The suitability of arbitration as a prompt and effective means of resolving intellectual property disputes has been well recognized in recent years. This is evidenced by the fact that a growing number of intellectual property disputes are arbitrated each year under the auspices of the American Arbitration Association (AAA). In the patent field, arbitration is also facilitated by important legislation expanding the range of disputes that may be arbitrated. The American Arbitration Association is a not-for-profit, public service organization offering a broad range of dispute resolution services to business executives, attorneys, individuals, trade associations, unions, management, consumers, families, communities, and all levels of government. Services are available through AAA headquarters in New York and through offices located in major cities throughout the United States. Hearings may be held at locations convenient for the parties and are not limited to cities with AAA offices. In addition, the AAA serves as a center for education and training, issues specialized publications, and conducts research on all forms of out-of-court dispute settlement. Arbitrability of patent disputes was aided when former President Ronald Reagan, on August 27, 1982, signed Public Law , which specifically provides for the voluntary arbitration of a broad range of patent disputes, including questions of validity and infringement. The arbitration section of PL (35 USC, ' 294) became effective on February 27, 1983.