Originially from: World Arbitration and Mediation Review (WAMR)

Arbitration: A Creative Alternative to Intellectual
Property Litigation in Light of two Recent U.S. Supreme
Court Decisions
By Richard H. Kreindler
[Editor's Note: Richard H. Kreindler is Coordinator of the
European/Middle East Disputes Practice Group of Jones Day Reavis &
Pogue and a Partner in its Frankfurt office. The following remarks were
made at the "U.S. Patent Law Conference: Enforcing and Profiting from
U.S. Patent Rights at the Millennium," held at the Frankfurt Chamber of
Commerce and Industry on September 19, 1997.]
The two U.S. Supreme Court decisions—Herbert Markman v.
Westview Instruments, Inc., 116 S.Ct. 1384 (April 23, 1996) and Warner-
Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 117 S.Ct. 1040 (March
3, 1997)—are considered to be landmark cases by many transnational
litigation and arbitration practitioners, particularly in the area of
intellectual property dispute resolution. The two cases already have been
critiqued extensively both in the United States and elsewhere for what
they expressly held and for what they declined to decide. The purpose of
the present commentary is not to repeat or to pass judgment on any of
those prior observations. Rather, it is to examine the impact of these two
long-awaited and now much-discussed Supreme Court holdings upon the
increasing tension between litigation and arbitration as vehicles for
resolving intellectual property disputes, especially in cross-border
relationships.
What do the Markman and Hilton Davis decisions, separately and
collectively, betoken for the continuing comparison of litigation and
arbitration as competing vehicles for settling international patent disputes
with a United States nexus? Both from an American and a foreign
perspective, this question is a crucial one. It is also a question which, amid
the profusion of analyses of these two decisions, has not been raised or
answered from a transnational perspective.