How Patent Arbitration Fits in a Post-Grant World

When the Leahy–Smith America Invents Act took effect in September 2012, and introduced to the U.S. Patent and Trademark Office post-grant trial proceedings, commentators said it could mean a drastic decline in the use of arbitration to decide patent disputes.

There was good reason for concern.  The proceedings were promised to be efficient and expeditious.  They provide third parties with an administrative opportunity—a trial process, to be sure, but an alternative to court litigation–to effectively and efficiently challenge validity in the USPTO of any patent claim.

The post-grant proceedings are an adversarial process before the Patent Trial and Appeal Board, with a statutory one-year pendency from the date of initiation.

Post-grant proceedings provide what alternative processes frequently promise: They are faster and less expensive than traditional litigation.

But the proceedings–post-grant review and inter partes review—are limited to validity issues.

The market outcome has been that, instead of supplanting arbitration, the post-grant proceedings have proven to be a complementary process to ADR.

And, notes New York patent neutral Peter L. Michaelson in the cover story in the new March issue of Alternatives, patent arbitration, “where employed in appropriate situations and structured properly, will likely see increasing use.”

In his article, Michaelson notes that the issues in patent disputes, whatever the forum, often range well beyond challenges to the patent’s validity.  The USPTO’s post-grant proceedings are fundamentally different from arbitration and are not ADR substitutes, writes Michaelson, “and thus not likely to adversely affect the future use of arbitration to any significant extent.”

But how do post-grant proceedings and arbitration work together in defending a patent portfolio?  Obviously, if business considerations beyond validity are part of the claim, arbitration can come into play, rather than traditional litigation.

Using a generation-old conflict resolution tenet, author Michaelson says that patent arbitration requires proper structuring.  The invocation of arbitration to resolve a patent dispute involves “fitting the process to the fuss,” he writes.

“Once properly configured, an arbitral process can yield substantial cost and time efficiencies, along with other benefits unavailable through litigation.”

In his March Alternatives article, available later this week for free for CPR members after logging into CPR’s website here, and available by subscription here and at altnewsletter.com, Michaelson details those benefit.  He describes the steps needed to provide a patent arbitration forum that maximizes satisfying outcomes faster and at less cost than proceeding to court, and discusses the need for ADR when faced with more than a validity challenge.

The New Italian Mediation Law: Experimenting with a “Soft” Approach to Mandatory Mediation

By Giulio Zanolla, LL.M., Esq., CPR Speaks Contributor

GiulioMediation was first introduced as a prerequisite to litigation in the Italian legal system in 2011, when the government issued a decree to implement the EU Mediation Directive of 2008. This legislative measure sparked a mix of enthusiastic reactions and harsh criticisms that culminated with lawyer strikes against its implementation. In 2012, the mandatory provision of the mediation regulation was declared unconstitutional, but the Constitutional Court’s decision was based on the government’s lack of legislative legitimacy to impose the mandatory requirement, rather than on the illegitimacy of the mandatory requirement itself.

The heated debate on the mediation regulation continued inside and outside the rooms of policymakers and led the Italian Parliament to enact a law in 2013 re-introducing mandatory mediation for certain civil and commercial actions in a mitigated form. The new mediation law, which is not affected by the constitutionality issue of the previous regulation, aims to address the concerns brought by a sector of the legal community claiming that the prerequisite of participating in mediation prior to bringing a legal action unjustly burdens and restricts disputants’ rights to access to justice. Unlike the previous regulation, the new Italian mediation law mandates that parties in certain civil and commercial disputes attend only an initial information session with the mediator; it does not require parties to participate in an actual mediation process as a prerequisite to litigation. The parties remain free to opt out of the mediation before the actual process starts and without any consequence for refraining to continue in mediation.

Through the initial information session, the parties have an opportunity to learn about the mediation process and make an informed decision regarding whether to attempt an out-of-court resolution through mediation or to initiate litigation. The information session is free of charge, and parties who refuse to attend the session are subject to sanctions in the subsequent trial. Only if all the parties agree to proceed with mediation will the mediator formally commence the procedure and begin to facilitate discussions of the disputed issues. With the new Italian mediation law, the parties’ participation in the actual mediation process is fully voluntary. The parties’ only mandatory requirement is to educate themselves about the option of mediation through the initial information session.

Recent statistical data available from the Ministry of Justice regarding the first six months of 2014 demonstrates that more than 22 percent of all disputes for which the initial information meeting is mandatory and more than 50 percent of disputes mediated by deliberate initiative of the parties are resolved without recourse to court litigation. In a little over a year since enactment of the law, the benefits of the new law are tangible, not only for those parties who resolved their disputes without litigation, but also—and especially—for the overwhelmed Italian judicial system as a whole, and ultimately for all taxpayers.

Most important, each of the numerous information sessions and mediations that took place but did not result in settlement created a concrete opportunity for parties and attorneys to familiarize themselves with the mediation process and educate users about mediation, thus contributing to the development of the culture of mediation throughout the country.

If we believe that the principle of voluntariness is of fundamental value to the mediation process and if we agree that the need for user education is a critical element in the development of a culture of mediation, the Italian mediation law could represent a balanced solution to the question of how to promote the use of mediation through legislation. The next few years’ statistics will reveal whether the number of parties who choose to continue in mediation past the initial information session, and the concomitant overall settlement percentage, will grow thanks to an increased level of awareness and sophistication among mediation users.

Giulio Zanolla is an attorney, a mediator, an ADR instructor, and the author of the blog The Case for Mediation: An ADR Blog by Giulio Zanolla. This article was first published in the The Weinstein JAMS International Fellow Newsletter, Fall 2015. Mr. Zanolla can be reached at giulio@zanollamediation.com.

2016 Copyright of Giulio Zanolla, Esq. – All Rights Reserved

CFPB Decision Implicitly Recognizes Arbitration as Legitimate Alternative to Litigation

CFPB’s Decision Not to Bar Mandatory Arbitration Clauses Implicitly Recognizes Arbitration as Legitimate Alternative to Litigation

There has been much focus over the past years on mandatory arbitration clauses combined with class action waiver provisions that preclude parties from bringing claims on anything other than an individual basis. Earlier this month, in a move to protect consumers, The Consumer Financial Protection Bureau’s Arbitration Field Hearing announced the Bureau’s decision, following a study and report the CFPB published and issued to Congress earlier this year, to launch a rulemaking process to bar class action waivers in combination with consumer financial arbitration agreements,

Here’s what CFPB Director, Richard Cordray, had to say regarding the decision:

After carefully considering the findings of our landmark study, the Bureau has decided to launch a rulemaking process to protect consumers. The proposal under consideration would prohibit companies from blocking group lawsuits through the use of arbitration clauses in their contracts. This would apply generally to the consumer financial products and services that the Bureau oversees, including credit cards, checking and deposit accounts, certain auto loans, small-dollar or payday loans, private student loans, and some other products and services as well. …

 So what does this rulemaking process mean?

To start, the rules wouldn’t ban arbitration clauses altogether. Rather, they would require clauses to state that they don’t apply to cases filed as potential class-action lawsuits unless a judge denies class certification or a court dismisses the claims. Furthermore, the proposals would mandate that companies using arbitration clauses divulge records to the CFPB showing the claims filed by consumers and the awards issued — which may be made available to the public in an effort to ensure fairness and transparency of the arbitration process on behalf of the consumer. Should the proposal be adopted by the CFPB, new rules would apply to financial products overseen by the CFPB, including those cited by CFPB director, Cordray.

Many consumer groups are hailing the CFPB’s efforts as a victory for consumers. Still, the CFPB’s move is expected to face stiff opposition from the likes of the U.S. Chamber of Commerce; the Minneapolis-based Association of Credit and Collection Professionals (ACA International), a membership group of credit and collection industry firms as well as asset buyers, attorneys, creditors and vendor affiliates; and other business groups which, according to a recent New York Times article, maintain that “arbitration offers a more efficient but equally fair means for consumers to resolve complaints. These private proceedings, held outside court, provide the same opportunity for relief without the staggering legal bills, the groups say.”

According to CPR’s SVP of Product Development and Public Policy, Beth Trent, “While it’s difficult to tell the precise impact of the CFPB’s proposed rule, the CFPB’s decision not to bar mandatory arbitration clauses is quite telling. It implicitly recognizes that arbitration is a legitimate alternative to litigation, which is supported by the CFPB’s own data which shows that arbitration is a speedier process than class action litigation, that claim rates in class actions are low, and that average recovery per class member is low.”

“People generally prefer speedy resolution of their claims, and it’s not clear that individuals would necessarily choose to bring a class action,” Ms. Trent added. “That said, lawyers most often initiate class actions with only one, or a few named class representatives, and the vast majority of individuals have no choice regarding whether they are included in a proposed class. In fact, they may be entirely unaware that they are included in a class action at all. Ultimately, the impact of the proposed rule will be shaped, at least in part, by the business response to that rule. Most notably, whether businesses offer arbitration programs that meet standards of due process and consumer needs in a cost-effective manner.”

The next CFPB step is convening meetings of a Small Business Regulatory Enforcement Fairness Act panel, which will review the impact of the proposed regulation on small businesses.  The first such meeting is scheduled for Washington, D.C., Oct. 28, according to the CFPB Monitor, a blog published by the Philadelphia-based law firm Ballard Spahr.

Litigation Financiers: Explain Yourselves!

Litigation Financiers: Explain Yourselves!

By Russ Bleemer

Replies are due from litigation financing companies to a request by prominent U.S. senators on how the firms run their operations and earn their profits.

In a sweeping inquiry, the senators asked three financing firms about how they fund lawsuits and arbitrations, usually against big companies, in exchange for a share of the recovery.

Two of the firms are based in the United Kingdom, and a third in Australia.  All are affiliated with hedge funds.  The litigation financing firms, whose parents are publicly traded overseas, get most of their revenue from investing in U.S. litigation and arbitration cases.

The field has grown immensely in recent years, and U.S. regulation is a patchwork of court decisions, legal ethics rules, and state laws.

But this is the first time lawmakers in the nation’s capital have taken notice, and they are not happy with what they are seeing in the wake of the industry’s growth.

In a late August release, Senate Judiciary Committee Chairman Chuck Grassley, R., Iowa, and Senate Majority Whip John Cornyn, R., Texas, issued three letters they had sent to the companies.  The letters were a deep dive into the companies’ operations, asking 12 expansive questions about the kinds of cases that the companies invest in, how much money the firms have advanced, and the names of the law firms they are backing.

Grassley and Cornyn—generally business-friendly conservatives—are clearly suspicious, and the questions may be precursors to regulating litigation financing.  In giving the firms until the middle of last month to produce the extensive replies the questions require, Grassley noted in a press release statement that:

Litigation speculation is expanding at an alarming rate. And yet, because the existence and terms of these agreements lack transparency, the impact they are having on our civil justice system is not fully known.  . . . It’s vitally important to our civil justice system that litigation decisions aren’t unduly influenced by third parties.

The senators’ concern is that the litigation financing firms are perpetuating courtroom fights and adding frivolous litigation to court dockets–even though at least one firm says it is backing fewer individual plaintiffs and leaning significantly toward financing business-to-business litigation conducted by big law firms.

The senators’ questions asked for the financing firms’ revenues for supporting arbitration matters, too, as well as whether the financing agreements include arbitration clauses.  The letters asked if the arbitration clauses cover disputes between the financing firms and the plaintiffs they back over whether the plaintiffs should settle their cases.

The Grassley/Cornyn inquiry picks up on long-running objections by the U.S. Chamber of Commerce, whose tort-reform arm has blasted litigation financing since its U.S. emergence over the past decade.  But the letters are information requests, and not subpoenas; Grassley, chairman of the powerful Senate Judiciary Committee, has not announced that he is considering hearing.

The senators asked for a reply by Sept. 18.  At this writing, neither Grassley nor Cornyn have released further information.  And only one of the three firms, Burford Capital, a U.K. firm incorporated in Guernsey, an island in the English Channel, has issued a full public response. Noting that “[w]hat may be new about Burford is its introduction of professionalism and institutional specialization to the field,” the firm posted its lengthy Sept. 25 defense of litigation financing in response to the senators’ inquiries on its blog, here.

But for the litigation financing firms’ initial reactions, and more facts and figures as well the background that led to the Grassley/Cornyn letters, see the ADR Briefs feature, “Senators Want Explanations from Top Litigation Funding Firms,” in the October Alternatives (to be cited at 33 Alternatives 140 (October 2015)), which will be available on Oct. 6 HERE for free for CPR members and HERE for subscribers.  CPR membership information is available HERE, and Alternatives subscription information is available at www.altnewsletter.com.

Russ Bleemer is a CPR Consultant and the Editor of CPR’s award-winning publication, Alternatives

Arbitration Fairness Act of 2015 (AFA): An Overly Simplistic Approach?

The Arbitration Fairness Act of 2015 (AFA), recently introduced by Senator Al Franken and Representative Hank Johnson, would amend the Federal Arbitration Act, 9 U.S.C. §§ 1 et seq. (FAA), to eliminate mandatory, pre-dispute arbitration clauses in employment, antitrust or civil rights matters—as well as all nearly all consumer contracts, for such things as cars, credit cards and cell phones. Allowing parties to agree to arbitration only after a dispute has arisen, the AFA would apply to “any dispute or claim that arises on or after” the date of AFA’s passing. The legislation would also give federal courts—instead of arbitrators—the authority to rule on an agreement’s validity and enforceability.

This is not the first legislative effort to narrow the use of pre-dispute arbitration agreements; somewhat similar bills were introduced in 2011 and then again in 2013, but neither made it out of committee. While some are applauding this step towards banning what they refer to as “forced” arbitration, others have expressed concerns that requiring parties to agree to arbitration only after a dispute has already arisen might take away the parties’ critical ability to utilize arbitration preventatively, planning for it in order to avoid disputes in the first place. Others question the wisdom of transferring these responsibilities away from arbitrators and to an already beleaguered court system. Finally, while the AFA does not expressly prohibit businesses from entering into pre-dispute arbitration agreements with other businesses, some question the effect this might have on the enforceability of arbitration in business contexts where there is potential consumer application.

Institute for Conflict Prevention & Resolution (CPR) President & CEO Noah Hanft observed that, “Just as with litigation, there are circumstances where arbitration may be abused. But, if practiced properly and thoughtfully, as it should be, arbitration remains a  more effective, efficient and less costly way to resolve certain disputes—a result from which consumers can clearly benefit as well.”

Hanft concluded, “Care must be taken that any legislation aimed at protecting abuses in the use of arbitration not be overly simplistic or condemn a practice that has brought real benefits in a multitude of circumstances around the world. Even advocates of tort reform that decry litigation abuses don’t propose sweeping bans on certain types of litigation.”