Mediating IP Cases: Patents – Who should mediate?

In the last article in this series, we outlined the basics of U.S. utility patents and some typical disputes involving patents.  We then began to apply that background to thinking about who should mediate the dispute.  We’ll now consider that further.  

Who should mediate?

We suggested you will want to look for a mediator who is familiar with patent law, issues, and background, and also patent trials, reviews, and appeals. You also want a mediator who has developed skill and experience in the mediation process.

Sometimes the choice of mediator is not up to the parties, although most courts allow parties hire their own mediator if they do it soon enough.  More on that later. 

What technical expertise should a mediator have?

There is one more consideration.  Should the mediator have a background in the technology involved in the dispute?  For a software license, should  your mediator also be a software engineer or a programmer?  Should a mediator in a medical products dispute have a background in designing those products, or medicine?  Do you need a mechanical engineer for a dispute about a machine or manufacturing process?  While you’re at it, since patent damages can be complicated, how about an accounting degree?

Well, that would all be nice.  But one overriding consideration cautions against demanding that sort of background.  It is rare to find a mediator skilled in patent law, patent litigation, and mediating disputes, and also with a specific scientific or other technical background.  Your pool of candidates is likely to be exceedingly small, if you can find such a person at all.  And remember, the mediator won’t be deciding the case.  A judge and/or jury or perhaps a patent office hearing officer will. 

Likely the best you will be able to do is find a mediator who is used to learning about and working with technology and how that plays out in court or at the patent office.  So, to be sure, you will want a mediator with a background that allows her or him to be able to understand the technology well enough to evaluate the parties’ positions intelligently.  But it is probably too much to ask to require experience in the exact technology at issue. 

Chances are you are better off with someone very skilled at mediating disputes than someone very skilled in the particular technology at issue.  But, as noted in the last article, the mediator should have sufficient background to be able to understand and evaluate the parties’ positions in the case.  If they don’t think the mediator understands the technological issues, they normally won’t value the mediator’s advice. 

Finding a mediator

Your patent dispute is likely to be regional or national in scope.  If so, so should your search for a mediator.

Court directed

In some districts, the court will assign a Magistrate Judge to hold a settlement conference in the case, which is much like a mediation.  This is true in Minnesota, my home state.  In other districts, the court may assign you to a mediator.  In many districts, though, you are on your own.

Even in those districts where the court typically controls the situation, if you and your opponent prefer to choose your own mediator, courts are generally will let you do that, particularly early in the case.  But courts will still normally require a settlement conference if the case has not settled, and the trial date is close.

SVAMC, AAA, JAMS, CCA

So, where do you find the best mediator for your patent dispute?  Here are a few ideas.

Silicon Valley Arbitration and Mediation Center maintains a list of The World’s Leading Technology Arbitrators and Mediators, which it refers to as the “Tech List.”  You can check out the mediators on the list and obtain a potential mediators’ bios at svamc.org.

ADR providers can help you identify a mediator for your dispute.  AAA, for example, has a list of mediators you can draw on.  And AAA will also administer the mediation.  Administration allows your mediator to concentrate on your case and leave the details of setting up the mediation, finances, and those sorts of tasks to a skilled administrator.  Getting access to the list and getting help in identifying the available mediators is extremely valuable.  You can get started at aaamediation.org. 

JAMS also provides mediation services on a national basis.  Check out  jamsadr.com/mediation to learn more.

You may also want to look into the College of Commercial Arbitrators.  CCA is an invitation-only organization that brings together leading arbitrators in a professional organization.  Many of the members of the College also serve as mediators.  You can search by geographic area and expertise at ccarbitrators.org .  While not dedicated to mediation, CCA is still a useful source for identifying possible mediators and also getting more background on possible mediators.  This may be of particular interest in identifying a mediator in a patent dispute headed for arbitration.

Mediator writings

Many mediators write articles about mediation and ADR that are published in national publications by ABA and AIPLA as well as local publications by state and local bar associations.  An internet search or search on those organization’s websites if you have access, should help you find articles and other information to help you identify and evaluate possible mediators.

Many mediators also maintain websites.  Those should provide you valuable insights about a potential mediator’s background, experience, and approach to mediation.  Some mediators even write articles on their websites about mediation that should help you understand their experience and approach to mediation of patent disputes.  You’re reading one now.

Colleagues

Of course, you will also want to check with your colleagues and other professionals you know about their experience with mediators.  You can then use the other sources noted above to learn more about a possible mediator, or check with your colleagues about any experience with mediators you identified from those sources.

Talk to potential mediators

You can talk to potential mediators.  So, after identifying a potential mediator, you can call him or her up to learn more about his or her background and experience with patent disputes, the technology at issue, approach to mediation, and other information.  That will be valuable to you in deciding whether the potential mediator is right for your case.  Of course, once chosen, a mediator will normally disclose to the other side  discussions you have had with him or her to keep things on the up and up and foreclose any suspicions your opponent may have about partiality.  So, confine your discussions with potential mediators to learning about the mediator’s background, rates, availability, experience, approach to mediation, and the like. 

Talk to your opponent

You may have identified a mediator or two you think will be perfect for your case.  But you don’t get to decide that alone.  Your opponent needs to agree.  This means you should identify mediators who are highly skilled and experienced in mediation and not just mediators you think will be especially sympathetic to your position in the case.  The other side will never accept that mediator.

Even more importantly, if a party or their counsel becomes convinced during the mediation that the mediator is favoring the other side unfairly, the mediation may well just shut down.  The party that thinks it is being treated unfairly may well decide it is better off taking a chance at trial. So, identify a skilled mediator, not a partisan you think will favor you.

Coming up – when to mediate

In the next article, we’ll consider when to mediate a patent dispute.  Hint – early can be better, but only if you do it right.