Disclosure and Admission of Evidence in the International Arbitration of Intellectual Property Disputes - Chapter 7 - Arbitration of International Intellectual Property Disputes, Second Edition
Angela Foster – Certified as a mediator and arbitrator, Ms. Foster has resolved and adjudicated over 500 disputes involving patent infringement/validity, licensing, commercial and business disputes, breach of contract and negligence actions, employment discrimination claims, trade secret theft, trademark and copyright infringement disputes. She is immediate past Chair of the Dispute Resolution Section of the New Jersey State Bar Association and a member of numerous alternative dispute resolution panels including the Commercial and Large Complex Case mediation and arbitration rosters of the American Arbitration Association (AAA), the Panel of Distinguished Neutrals of the Institute for Conflict Resolution & Prevention (CPR), the World Intellectual Property Organization (WIPO), a Financial Industry Regulatory Authority (FINRA) arbitrator, and the International Centre for Dispute Resolution (ICDR) panel of mediators and arbitrators. Ms. Foster was also appointed to the Silicon Valley Arbitration & Mediation Center’s List of the World’s Leading Technology Neutrals. She is an invited fellow of the College of Commercial Arbitrators and a member of the AAA-ICDR Council. She received a PhD in Biochemistry and Molecular Biology, a bachelor’s in Microbiology, and a juris doctorate in law from Rutgers University.
Merriann M. Panarella is a prominent arbitrator and mediator whose practice includes domestic and international intellectual property and technology disputes. Previously, she was a senior partner at Wilmer Cutler Pickering Hale and Dorr where she litigated patent infringement, trade secret, non-compete, and other technology-related matters both nationally and internationally. She has represented clients in mediations, arbitrations, mini-trials and other dispute resolution processes. Ms. Panarella is a Fellow of the Chartered Institute of Arbitrators and serves as a tutor for their Accelerated Route to Fellowship course. She currently serves on the arbitration and mediation panels of many of the principal dispute resolution institutions including the American Arbitration Association, CPR International Institute for Conflict Prevention and Resolution, World Intellectual Property Organization, International Chamber of Commerce, American Health Lawyers Association, and Financial Industry Regulatory Authority. She also is a member of the Silicon Valley Arbitration and Mediation Tech List. In addition, she serves as a neutral for the mediation panels for the Southern District of New York and for the Commonwealth of Massachusetts. Early in her legal career, Ms. Panarella was a law clerk to the Honorable W. Arthur Garrity, Jr. She is a frequent lecturer and author on a broad range of dispute resolution issues including the international arbitration of intellectual property disputes and life science matters. For more information on Merriann Panarella, please consult www.panarellaADR.com.
I. Introduction—the Need for Disclosure in Intellectual Property Cases
Intellectual property disputes can be extremely complex and technical, and much of the information necessary to mount an effective claim or defense may be in the exclusive possession of the adverse party or of non-parties. For example, in a dispute over royalties due under a patent license the sales of the licensee will only be revealed in its private financial records or, in the same dispute, if an inequitable conduct defense is raised. Knowledge of the licensor-patentee of the prior art may be relevant but may only be disclosed in the patentee’s internal email.
The parties in IP litigation in United States’ courts take for granted that they will be able to obtain broad discovery of documents and information in the possession of their adversary and non-parties in order to prove their cases. This is true because the liberal discovery provisions of the Federal Rules of Civil Procedure, or state law counterparts, apply. But such broad assumptions are incorrect when parties have agreed to have their IP disputes resolved by arbitration, particularly if the arbitration is international in character.
When deciding whether, and how, to submit such disputes to resolution by arbitration, the parties are well advised to ensure that they have a firm grasp of the pertinent rules and practices of the various arbitral institutions that administer international IP arbitrations. Additionally, parties must know the constraints imposed by local law at the proposed seat, customary and usual practices in international arbitration and how they can agree to disclosure rules to serve their objectives. Agreeing to arbitration without considering such issues can be a recipe for misfortune. This is particularly so for an international IP dispute.
By its very name, international arbitration seeks to resolve disputes that cross territorial borders and legal jurisdictions. In most cases it brings together parties from different countries and judicial systems and seeks to supply them with a neutral tribunal to resolve their dispute. Because the parties come from different places, both geographically and philosophically, they may have very different views on how the proceeding should be conducted. This may be apparent in a number of the aspects of an international IP arbitration, but it is probably most notable with respect to discovery or disclosure and to a lesser extent with respect to the hearing evidentiary procedures themselves.
This chapter seeks to provide practitioners of differing legal backgrounds with guidance regarding general disclosure and evidentiary practices in modern international arbitration, particularly as those topics bear on the arbitration of IP disputes. It covers, among other topics, (i) arbitral norms and other guidance pertaining to disclosure, (ii) issues related to electronic discovery, information security and data protection, (iii) the impact of the arbitral seat on disclosure and hearing procedure, (iv) the effect of privilege on admission of evidence, (v) the sanctions that may be imposed for failure to comply with disclosure obligations and (vi) the impact of all of the foregoing on the resolution of international IP disputes.