Discovery - Chapter 6 - Arbitration of Intellectual Property Disputes in the United States
David L. Evans is co-chair of the litigation department at Murphy & King, Professional Corporation, in Boston, Massachusetts. He represents large public corporations, closely held companies and individuals in the resolution of complex business disputes.
Mr. Evans also maintains an active practice as a certified neutral arbitrator and mediator, serving in more than 350 cases. As a neutral, he has presided over a broad range of business disputes involving areas such as intellectual property rights and licenses, finance and accounting, technology development and transfer agreements, stock/asset purchases, energy, biotechnology, medical devices, real estate, private investment firms, and business separations.
Mr. Evans is a member of numerous arbitration and mediation panels, including the Commercial and Large, Complex Case Panels of the American Arbitration Association (AAA), the Panel of Distinguished Neutrals of the International Institute for Conflict Prevention and Resolution (CPR), the International Centre for Dispute Resolution (ICDR) Panel of Arbitrators and Mediators, the ICC International Court of Arbitration (North America), the Court of Arbitration for Sport (CAS) in Switzerland, the London Court of International Arbitration (LCIA), World Intellectual Property Organization (WIPO) and the AAA Master Mediator Panel.
He has been selected as a Massachusetts Super Lawyer in Business Litigation in every year the award has been offered (2006-2018), named a top-rated lawyer in ADR law by The American Lawyer and recognized with an AV Preeminent Peer Rating from Martingdale-Hubbell.
He also serves as a member of the Board of Directors of the American Arbitration Association, and as the co-chair of the Large Case Committee of its Council. For his contributions to the AAA, Mr. Evans received its Outstanding Director Award in 2014.
Theodore J. Folkman is a shareholder of Murphy & King, P.C., in Boston, where he has a complex civil litigation and commercial arbitration practice. He is a member of the commercial and consumer arbitration panels of the American Arbitration Association and has recognized expertise in international judicial assistance and other areas in private international law. Prior to joining Murphy & King, Mr. Folkman was an associate with Hill & Barlow, PC, in Boston, and judicial law clerk to the Hon. Ann Aldrich, U.S. District Judge for the Northern District of Ohio. Mr. Folkman speaks frequently at law schools and bar events on topics of private international law and is the author of several works in this area, including International Judicial Assistance (MCLE, 2d ed. 2016) the chapter on service of process in International Aspects of Litigation: A Practitioner’s Deskbook (ABA 2017), and the chapter on choice of law in The Arbitration of International Intellectual Property Disputes (Juris 2012). Mr. Folkman is a member of the Amicus Committee and former chairman of the Massachusetts Practice and Procedure Committee of the Boston Bar Association, from which he received the President’s Award in 2016. He holds a law degree from Harvard Law School, a master’s degree in political science from Columbia University, and a bachelor’s degree in politics from Princeton University.
Savings in cost and time is one of the main benefits of arbitration when compared with civil litigation. One of the main ways arbitration seeks to obtain those savings is by refusing to import from the US courts the typically extensive and expensive practice of pretrial or pre-hearing discovery. As the size of arbitrated cases has increased, however, there has been a tendency towards increased pre-hearing discovery.
Parties in IP disputes require discovery for the same kinds of reasons parties want discovery in other commercial disputes. If the case involves infringement of a patent, the patent holder will want the business records of the infringer showing that it was making or using the patented invention. If the case involves a claim of willful infringement, the claimant will want internal correspondence that could be used to demonstrate willfulness. In a dispute about reasonable royalties, the parties may want to look to discovery from third parties to obtain royalty rates that their experts can use in doing their analyses. And so forth. This chapter surveys the scope of discovery in IP arbitration under the relevant statutes, several leading sets of arbitration rules, and in industry guidance that either the parties themselves or a tribunal may choose to adopt.
I. The Purposes of Discovery
The purposes of pre-hearing discovery in an arbitration in the United States are the same as the purposes of pre-trial discovery in litigation. First, the opposing party, or a third party, may be in possession of evidence that a party needs to prevail in its claim or defense. Second, it may be necessary to perpetuate testimony that for various reasons a party may not be able to present at the hearing. Third, and perhaps most familiar to American litigators, discovery “make[s] a trial less a game of blind man’s bluff and more a fair contest with the basic issues and facts disclosed to the fullest practicable extent.”