Though patent disputes are complex, mediation can provide a way toward resolution. To increase the likelihood of success, here are some factors to take into account.

A recent patent infringement suit between mobile device makers Apple and Samsung had gone to court after a failed attempt at mediation. Despite the participation of both of the company’s officers, the conflict was not settled through mediation because of the multiple claims within the case.

Does this mean that mediation is not effective for patent disputes?

Quite the contrary. In this case between a technology consulting company and a manufacturer, an outcome had been achieved through mediation. The conflict started after the manufacturer used the patent invention of the consulting company for its products. The consulting firm only disclosed its invention because of a consulting contract, but it did not provide a license to the manufacturer; hence the dispute. After a joint session with a mediator and private caucuses, both sides eventually reached an agreement themselves, in relation to all claims.

To raise the likelihood of this outcome, mediators, and even the counsel of both parties need to consider some factors when undergoing mediation. After all, mediation is faster, costs less and is more convenient and confidential than going to court.

FACTORS TO CONSIDER ABOUT PATENT MEDIATION

1. Awareness of both parties on mediation – Before the process begins, both sides need to be informed about all the aspects of mediation, and its difference from litigation. Mediation is voluntary, so both sides have control over the process, including when to end it. Unlike litigation or arbitration, the agreement reached during mediation is non-binding but can be formalised, if the parties wish. Furthermore, the goal of mediation is to achieve a lasting business solution between both parties; and not to determine whether there has been an infringement or not, as in court. Because of this objective, mediation does not require either side to submit all confidential information. This offers a huge benefit for companies involved in patent disputes as they will not have to divulge their “trade secrets.”

2. The choice of mediator(s) for the case – The selection of mediator(s) that will facilitate the process is also crucial to be able to settle patent disputes. Since cases tend to be technical in nature, it is recommended that the mediator should have expertise on the legal issues, while not needing to be a subject matter expert on patents. A patent expert can be involved, if required to provide parties with a realistic perspective, including the costs involved. This will be identified early at the intial consultation phase to ensure that the right people are involved in the mediation to set it up for success.  In handling patent disputes, the mediator will facilitate the robust negotiations but without using an evaluative approach, nor offer their opinion on the case.

The reason for this is that any knowledge on the technical aspects of the case held by the mediator could limit their perspective to the rights and options of both sides, instead of considering their interests to facilitate a creative and lasting outcome.

3. Timing of mediation – When it comes to the timing of mediation, it is recommended that it should take place early in the development of the case. There are two advantages for this: First, both sides are generally less hostile and less entrenched in their position at the beginning of the conflict, allowing for an objective evaluation of the strengths and weaknesses of the case. Second, an early mediation may spare both sides costly litigation expenses if they reach a resolution. After both parties have submitted preliminary infringement contentions, preliminary invalidity contentions and claim construction statements, it is ideal for them to seek mediation. However, mediation can occur even before this happens.

Aside from this, parties may also choose to undergo mediation after the claim construction hearing, where a judge interprets ambiguous keywords in the patent claim. However, this may vary according to the nature of the case, because the ruling is not entirely crucial to start mediation. Since there aren’t any specific rules on the timing, the best place to start mediation is when both sides are still uncertain about their positions in litigation. Mediation can happen at any time or stage and can happen parallel to any litigation.

4. The number of representatives from both sides – The right people need to be present at the mediation.  No more and no less.  For patent mediation to move forward, executives with settlement authority from both parties should be present during the entire process. This makes it easier to make concrete decisions and reach an outcome. Going back to the Apple and Samsung case, it can be seen that both of the companies’ executives participated in mediation. Because of the complexity of the case, however, mediation failed. While mediation did not resolve all the issues in the case, , both companies signified that they were still willing to keep communication lines open to reach settlement. When it comes to the participation of counsel, however, lawyers are welcome but not necessary.

5. Mediator’s careful management of private caucuses – In patent mediation, both sides tend to further disclose their position during private caucuses, rather than during joint meetings. Therefore, it is important for the mediator to take into account what is being said during caucuses. They should ensure that both sides remain informed about the entire process, while keeping a close eye on mutual interests that can emerge. In the successful mediation of the technology consulting company and the manufacturer above, the mediator saw mutual interests appear during his private meetings with each of them. The consulting company feared it would not secure business with firms similar to the manufacturer in the future. On the other hand, the manufacturer realised that using the technology from the consulting firm would lead to higher expenses in the future. The mediator then seized this opportunity to offer both companies a lasting business resolution.

Since patent disputes can be quite complicated, mediators and solicitors need to consider these points when undergoing mediation to ensure that their clients can settle their conflict without having to devote a long time in court and rack up expenses related to litigation.