difficult situations in ip mediation: moulding the …...alicante 30.5.2014 technology & ip...

1 © J. Lack & D. Stilitz 2008-14. All rights reserved. Alicante 30.5.2014

Alicante, Spain -- May 30th 2014, 09h30-10h30

Difficult situations in IP mediation: Moulding the mediation to the dispute.Jeremy LACK, SwitzerlandMediator, Barrister, Attorney-at-Law & ADR [email protected]

Daniel STILITZ QC, United KingdomBarrister and [email protected]

Angel GALGO PECO, Spain (moderator)Judge, President of Madrid Commercial Court No. [email protected]


Welcome & General Survey

1. How many of you have participated in a mediation?

2. How many?

a) 0 mediations?

b) 1-10 mediations?

c) 11-50 mediations?

d) 51-100 mediations

e) > 101 mediations?

3. How many of you have participated in an IP mediation?

4. How many of you participated in selecting a mediator?

5. How many of you participated in designing the process?

LET’S START OFF WITH A TYPICAL IP CASE …


Is this person infringing? (clockwise = v. anti-clockwise = )

INFRINGING:The dancer turns CLOCKWISEIf we see her as standingon her LEFT FOOT

NOT-INFRINGING:The dancer turns ANTI-CLOCKWISEIf we see her as standingon her RIGHT FOOT

"We do not see things as they are. We see

things as we are" Anais Nin


Although the “objective” aspects of the dispute may be apparent …

… the “subjective” aspects remain to be discovered.

The Iceberg of conflict

The FactsThe Law(s)

The Positions

Misunderstandings Perceptions

EmotionsInterestsConcerns FeelingsBeliefsValuesNeedsFears

A dispute is never about what it is about …


Who is the Mediation for?

NOT THE MEDIATOR

NOT THE REPRESENTATIVES

THE PARTIES

WIDER PUBLIC INTEREST?

SUBJECT ALWAYS TO

compliance with regulatory, competition and other legal norms


Planning pre-mediation


Agenda for pre-mediation

Who are the parties?• Types of entity• Principals• Representatives• Experts• Domestic jurisdiction

What are the relevant relationships?• Internal relationships• Relationships between parties

- personal- commercial- disputatious etc.

What are the expectations?• Historical• Cultural• Personal

Nature of the dispute?• Above the waterline• Below the waterline


Key mediator role during mediation

FLEXIBILITY

• Mediator as guardian of agreed process

• Mediator as intervener in the agreed process

“PILOT OF PROCESS TO DESTINATION CHOSEN BY THE PARTIES”


“Old World” vs. “New World” IP paradigms

Litigation & Arbitration Mediation


Technology & IP Disputes: A Cultural Dimension?

“Ever more frequently, oneexperiences the same patent beinglitigated in more than one Europeanjurisdiction. This has very often givenrise to what I believe to be the mostinteresting aspect of the topic underconsideration: the differences whichhave arisen in jurisprudence whichreflect a difference in philosophy andeven in culture when it comes toconstruing patent claims.”

“As one of the London patent judges[Laddie J.] recently stated:'Intellectual Property litigation ingeneral and patent litigation inparticular in Europe is in a state ofsome disarray.’”

Judge Michael FyshPatents County Court, UK (1999)

a triangle= ½ h x r

a rectangle= h x r

The invention is …

a square= h x h


Article 69 EPC: Extent of protection

(1) The extent of the protection conferred by a European patent or a European patent application shall bedetermined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

(2) For the period up to grant of the European patent, the extent of the protection conferred by the Europeanpatent application shall be determined by the claims contained in the application as published. However, theEuropean patent as granted or as amended in opposition, limitation or revocation proceedings shall determineretroactively the protection conferred by the application, in so far as such protection is not thereby extended.

Protocol on the Interpretation of Article 69 EPC of 5 October 1973 as revised by the Act revisingthe EPC of 29 November 2000

Article 1: General principles: Article 69 should not be interpreted as meaning that the extent of theprotection conferred by a European patent is to be understood as that defined by the strict, literal meaning ofthe wording used in the claims, the description and drawings being employed only for the purpose of resolvingan ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline andthat the actual protection conferred may extend to what, from a consideration of the description and drawingsby a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted asdefining a position between these extremes which combines a fair protection for the patent proprietor with areasonable degree of legal certainty for third parties.

Article 2: Equivalents: For the purpose of determining the extent of protection conferred by a Europeanpatent, due account shall be taken of any element which is equivalent to an element specified in the claims.

Political compromises e.g., Art. 69 EPC (UK v. DE = ?)


IP = A Fragmented World, with unclear “BATNAs”

Source: Interbrand (BusinessWeek 2007)

• Fragmented Rights: TM v. ® v. © v. Designs v. Patents v. Trade Secrets v. DNS …• Fragmented Geographies: OHIM v. EPO v. countries (v. US/China/Japan/S. Korea …)• Fragmented Professions: Agents v. attorneys v. lawyers v. solicitors v. barristers …• Fragmented Logic: “Either/or”, not “and”; Business interest = barrier to competition


The Result = Fish in fishbowls

ADR = How to prevent a mix of possibly contradictory outcomes?


The Process: Appropriate Dispute Resolution (ADR)

Least EvaluativeLeast Structured

Least Formal

Most EvaluativeMost Structured

Most Formal

Consensual Parties in control

Adversarial Third party in control

NEGOTIATION

MEDIATION

EARLY NEUTRAL APPRAISAL

CONCILIATION

EXPERT EVALUATION

ARBITRATION

LITIGATION

Sour

ce:

J. K

alow

ski,

JOK

Cons

ultin

g


Tribunal

P1 P2

Resolution

Litigation or Arbitration

Source: Joanna Kalowski


… Conciliation …

P1 P2

CPrecedents Legal doctrine

“OBJECTIVE” JUSTICE

Statutes

ResolutionProposals


Zone of Possible Agreement(ZOPA)

“Relevant” facts

Positions


M

P1 P2

Resolution

… Mediation

“SUBJECTIVE” JUSTICE


• No ZOPA• No proposals• Interests, not Positions• No facts are irrelevant (emotions, relationships …)• Law is a benchmark, not a driver for outcomes


Two axes to consider: Process v. Substance

Facilitative (process)

Directive (process)

Non

-Eva

luat

ive

(sub

ject

mat

ter)

Evaluative(subject m

atter)

Sour

ce:

Bas

ed o

n L

. Ris

kin

“The

New

Old

& N

ew N

ew G

rids

”

B. Directive

Non-Evaluative

D. DirectiveEvaluative

A. Facilitative

Non-Evaluative

C. FacilitativeEvaluative


Different national cultures are emerging …So

urce

: Ba

sed

on

L. R

iski

n “T

he N

ew O

ld &

New

New

Grid

s”

D.Directive

Evaluative

Facilitative (process)

Directive (process)N

on-E

valu

ativ

e(s

ubje

ct m

atte

r)

Evaluative(subject m

atter)

B.Directive

Non-Evaluative

A. Facilitative

Non-Evaluative

C.FacilitativeEvaluative

?

Danger!

It is impossible to generalize. The parties and the mediator should be aware that different models can exist (even within the same country) and choose whatever suits best.


NEGOTIATION ABOUT NEGOTATION

The importance of PRE-MEDIATION

MEDIATOR’S ROLE IN PRE-MEDIATION:

- Expert on process- Information gatherer: bird’s eye view- Process guide- Process broker

“We have to consider the process as part of the problem”David Plant

What if the parties cannot agree what they want?


Factors• Parties• Certainty of outcome• Costs• Time & deadlines• Applicable law(s)• Languages• Skill sets• Venue & distances• Institutional rules• Nationalities/cultures• Counsel• Neutrals (roles & no.)• Availabilities• Advisors & Experts• Confidentiality• Discovery• Implementation• Enforcement

Process Design: Combining ADR Options? (Hybrids)

Sequential• Med-Arb• Arb-Med• Windows• Arb-Med-Con-Med-Arb• Consent awards

Parallel• Med//Arb• Carve-outs• Shadow mediation• Partnering

Integrated• MEDALOA• Dispute Boards• Combined Neutrals• ??? (3 question marks)


Difficult IP Cases & Moulding the Process to the Case

1. Mediating ownership/inventorship issues? What to do when the national laws are different?

2. Mediating co-ownership issues: who can do what?

3. What is included in an IP license when it is not expressly stated? (What does “a license” mean?)

4. Disputes over differing valuations of IP assets?

5. Mediating invalid IP assets?

6. Mediating disputes between competitors: unfair competition or anti-trust issues?

7. What to do when the law is unclear?

8. What if a hybrid process (e.g., Med-Arb, MEDALOA, or Arb-Med) is needed?

9. How far does confidentiality extend? Does it prevent waiver of US attorney-client privilege in IP cases?

difficult situations in ip mediation: moulding the …...alicante 30.5.2014 technology & ip...

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