Peter L. Michaelson
Michaelson ADR Chambers, LLC
590 Madison Avenue, 21st Floor
New York, New York 10022
a) Principal ADR Experience -- 1991 to present
a) international and domestic:
(i) intellectual property (IP) disputes (including patent disputes spanning a wide range of technologies; trademark, domain name and trade secret disputes),
(ii) information technology (IT), and
(iii) technical and technology-related disputes
across many industries and industrial sectors, including, e.g., aviation, defense contracting, energy, general manufacturing, infrastructure (including investment), electronics (hardware and software), lighting, major appliances, medical devices, telecommunications and pharmaceuticals; and
b) international and domestic commercial disputes across a wide range of other substantive areas including, e.g.: antitrust (merger), breach of contract, consumer credit, consumer fraud, consulting, joint ventures and partnerships, licensing (including university technology transfer), mergers & acquisitions, securities and financial, and telecommunications (including reciprocal compensation).
Substantial matters arbitrated include:
As a member of a three-person panel and under the ICDR, an international patent licensing dispute concerning hot-wall vertical furnaces used in atomic layer deposition processing in semiconductor fabrication with damages potentially reaching approximately US $ 60 Million..
As chair and under FINRA, a contractual dispute between a major investment company, as Claimant, and a major international securities broker dealer as Respondent. The dispute concerns the sale to the Claimant by the Respondent of notes issued by a foreign oil and gas exploration and production company for financing development and exploitation of a foreign oil field. The Claimant alleges the Respondent engaged in fraud and misrepresentation in the sale and seeks more than US $ 65 Million in damages from the Respondent.
As chair and under the ICDR, a contractual dispute concerning indemnification under a stock purchase agreement, underlying a US $ 425 Million corporate acquisition, with approximately US $30 Million in contention.
As a member of a three-person panel and under the ICC, an international patent licensing dispute concerning haptic technology used in mobile telecommunications devices with approximately US $ 60 Million in contention and requested injunctive relief potentially prohibiting at least hundreds of millions of dollars of future device shipments to the US.
As a member of a three-person panel and under the ICDR, a contractual dispute concerning an international IT supply/consulting agreement involving licensed resale of commodity trading and risk management software for intended use by a national electric utility.
As an emergency arbitrator and under the ICDR, a contractual dispute, between the Internet Corporation for Assigned Names and Numbers (ICANN) and a domain name registrar, involving a suspension, imposed by ICANN on the registrar, of new generic top level domain name registrations and inbound name transfers for non-compliance with its Registrar Accreditation Agreement with ICANN (the award is publicly available).
As a member of a three person panel and under the ICDR, an international patent licensing dispute involving several US patents concerning compact fluorescent lamps with approximately US $ 100 million in contention.
As sole arbitrator and under the AAA, a domestic patent licensing dispute involving magnetic resonance imaging technology with approximately US $ 25 Million in contention.
As a sole arbitrator and via a CPR referral, a domestic dispute, involving allegations of breach of confidentiality, and trademark infringement, concerning manufacture and distribution of a web-based, demand-side energy load management system with damages claimed of US $107 Million.
As chair and via a CPR referral, a domestic patent infringement dispute, involving a genetically-engineered, monoclonal-antibody based pharmaceutical drug with approximately $100 Million claimed.
As a party-appointed arbitrator, an investment dispute, under the UNCITRAL rules and through the LCIA, between a US telecommunications company and a foreign government as respondent, involving alleged governmental expropriation of a national wireless mobile telecommunications network, with damages being claimed by the telecommunications company of approximately US $150 Million.
As a member of a three-person panel and via a CPR referral, a domestic patent infringement dispute involving coronary arterial stents, with multiple US patents at issue, between two major multi-national competing medical device manufacturers with liability estimated to be between US $400-800 Million.
b) Non-ADR Experience -- 1979 to 2012
April 2012-present: Michaelson ADR Chambers, LLC (Arbitrator, Mediator and Attorney at Law); July 1984-April 2012: Michaelson and Associates (Attorney, Arbitrator and Mediator); October 2010-April 2012: General Counsel (virtual), Direct Grid Technologies; 1982 1984: Pennie & Edmonds (Associate Attorney); 1979-1982: Bell Telephone Laboratories (Member of the Legal and Patent Staff). 1975-1979: Electronics Development Engineer and Electronics Project Engineer (successively Control Systems Research, Inc.; Alcoa; and Rockwell International).
While as virtual General Counsel for Direct Grid Technologies, LLC, I handled wide variety of general corporate issues, including intellectual property.
I conducted intellectual property and unfair competition litigation in the U.S. Courts; and inter-parte and ex-parte proceedings in the U.S. Patent and Trademark Office involving patents and trademarks, including, e.g. patent appeals, patent reissues, patent interferences and trademark oppositions; and (with foreign counsel) overseas patent and trademark oppositions.
Specifically, my non-ADR experience includes having:
(a) acted as counsel in patent infringement cases involving, e.g., software-based systems, electronic hand¬held calculators, video equipment, electronic instruments, and electronic point of sale terminals and computer systems utilizing these terminals;
(b) prepared patent validity and infringement opinions involving complex electronic technology; prepared trademark validity and infringement opinions;
(c) counseled in intellectual property, antitrust, unfair competition, and privacy law;
(d) prepared/prosecuted several hundred patent applications, both U.S. and foreign, covering a wide range of electronic and mechanical technologies, e.g.; microprocessor and computer hardware and software including massively parallel processing systems; operating systems; cryptography; business methods; decision-theoretic processing; complex electronic systems (both computer and non-computer based) in the technical areas of, e.g., industrial process control and measurement, digital data transmission, communications including radio, wireline and mobile wireless, digital transmission and ISDN, VoIP, asynchronous transfer mode (ATM) and general packet and circuit switching, networking, high definition television (HDTV), video and image processing including image compression and enhancement, video cameras, avionics, speech recognition and processing, radar and medical electronics; semiconductors and semiconductor fabrication; fiber optics; photographic apparatus; displays, including liquid crystal displays (LCDs); electronic circuitry; and mechanical devices and metallurgy; and
(e) prosecuted many U.S. and foreign trademark applications.
Experienced in patent and trademark licensing, including F/RAND licensing.
Chartered Institute of Arbitrators (Fellow & Chartered Arbitrator; Chair Emeritus - NY Branch; Former Institute Trustee (Americas Region)); College of Commercial Arbitrators (Fellow); Member of the “Tech List” -- Silicon Valley Arbitration and Mediation Center; American College of e Neutrals (Fellow); International Arbitration Club of New York; ABA; NJ, NY and AK State Bar Associations.
AAA (LCC, commercial, technology and various specialized panels) and ICDR; BCICAC; CPR; HKIAC; WIPO; ICC; LCIA; SIAC; KLRCA; FINRA; USDC EDNY; and others.
I have arbitrated: international and domestic high-stakes disputes involving the substantive areas noted above. Since 1991, I have served on over 700 matters as sole arbitrator, co-arbitrator or panel chair, with quite a few of those matters involving claims in excess of US $100 million and some exceeding US $500 Million.
-Select Bibliography-“Patent Arbitration: It Still Makes Good Sense”, Landslide (Journal of ABA IP Law Section), Vol. 7, No. 6, July/August 2015, p 42-47; “Neutral Selection: Some Guidance from a Neutral”, Dispute Resolution Journal, Vol. 69, No. 1, June 2014, pages 25‑31; “Demystifying Commercial Arbitration: It’s Much Better Than You Think”, New Jersey Law Journal, Vol. 216, No. 7, Section 3 -- Alternative Dispute Resolution Supplement, May 26, 2014, pages S1, S2 and S8;”Enhanced Tribunals: Why It’s Time to Use Personality Screening to Supplement Selection Criteria”, CPR Alternatives, November 2010 and “Can Conflicting Styles Be Detected? How Personality Screens Make Tribunal ‘Matches’ for More Effective Arbitration, CPR Alternatives, December 2010; “Enhancing Arbitrator Selection: Using Personality Screening to Supplement Conventional Section Criteria for Tripartite Arbitration Tribunals”, Arbitration, Vol. 76, Feb. 2010, p. 98-112; “In International Arbitration, Disclosure Rules at the Place of Enforcement Matter Too”, Dispute Resolution Journal, Vol. 62, No. 4, November 2007-January 2008, pages 82-88. Numerous other articles and presentations given on various aspects on arbitration and IP‑ and technology-related ADR. For a complete list of my publications and presentations and for further details about me, see my detailed CV accessible at my website.