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It's been a little while since I have posted on matters relating to the IP ADR Blog, but perhaps I can start with California’s special take on trade secrets, one of my favorite subjects. In particular, recall the state statute requiring plaintiffs to identify their trade secrets “with reasonable particularity” before discovery can be commenced. (California Code of Civil Procedure Section 2019.210.) I blogged about this earlier when Sylvester Stallone’s low carb chocolate pudding kindly added to our understanding of the parameters of the trade secret designation statute. Well, the statute is in the legal news again.

This time, the question is whether CCP 2019.210 applies to trade secret cases in federal court. One would think this would be a relatively easy issue – pick one, yes or no, and let’s get on with it. But apparently that would take the fun out of it. Instead, California’s district courts have had a tough time making up their minds on this one…and it’s causing we trade secret practitioners some consternation.

The latest to try his hand at this one is Judge Moskowitz in the Southern District of California, who believes he has sorted it all out for us in his recent opinion in Hilderman v. Enea Teksci, Inc. (USDC SD CA 2010) No. 05cv1049, 2010 WL 143440.

CCP 2019.210 Review

A little background first (with apologies to fellow TSGs who know this already).

Recall that CCP 2019.210 requires a plaintiff to describe his trade secrets “with reasonable particularity” before he can commence discovery. The rule certainly seems reasonable enough:

“Before a defendant is compelled to respond to a complaint based upon claimed misappropriation or misuse of a trade secret and to embark on discovery which may be both prolonged and expensive, the complainant should describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons who are skilled in the trade, and to permit the defendant to ascertain at least the boundaries within which the secret lies.”

Diodes, Inc. v. Franzen (1968) 260 Cal.App.2d 244, 253, 67 Cal.Rptr. 19.

The purpose of the disclosure rule is also noble enough: (a) help the court shape discovery; and (b) provide the defendant with sufficient notice of what he is alleged to have stolen so he can develop a defense.

So what can go wrong with this? Plenty.

Does 2019.210 Apply to Federal Cases?

In the Hilderman case, the counterclaimant, apparently just assuming that 2019.210 applied in the federal action, served a trade secret disclosure on the counter-defendants identifying the trade secrets at issue as (a) employee contact information; (b) customer information; and (c) some kind of “processes and checklists.” Discovery and litigation thereupon proceeded and the cased steamrolled forward.

However, just before trial, it appears that the counterclaimant may have been trying to pull a fast one – it wanted to present evidence of additional allegedly stolen trade secrets, including pricing information, vendor leads, and employee leads. Naturally enough the counter-defendants cried foul, moving to exclude this evidence on the grounds that it had not been disclosed pursuant to 2019.210. Not a bad argument – since it wasn’t disclosed, the party didn’t know these alleged secrets were part of the case, and hence did not undertake appropriate discovery regarding them. One cannot blame the counter-defendants for feeling sandbagged.

Judge Barry Moskowitz of the Southern District of California surprised everyone by ruling that the counter-defendants' argument lacked merit, not because they weren’t sandbagged, but because Section 2019.210 doesn’t apply to federal court actions to begin with.

The Court first noted that while the 9th Circuit has so far been silent on this issue, “[t]he district courts have reached different conclusions.” Nonetheless, with appropriate “due respect” for its sister courts who obviously got it all wrong, the Hilderman court held that 2019.210 conflicted with FRCP 26. (Rule 26 requires certain initial disclosures by parties in all federal cases, and serves as the gatekeeper for the initiation of discovery.) It would be unseemly, after all, for a little state court rule like 2019.210 to impact the initiation of discovery in big federal court when there is a perfectly good federal rule on the books doing the same thing.

Now this would seem to be a good thing for the counterclaimant who was hoping to have no limits on the alleged trade secrets it could assert at trial as having been misappropriated. On the other hand, is it fair to the counter-defendants, having relied on the now non-mandatory 2019.210 disclosures, to have to defend against new alleged trade secret thefts without having had a chance to prepare a defense? Talk about your surprise at trial.

Fairness

Well, that wasn’t a hat rack sitting behind the bench. Judge Moskowitz was all over the fairness argument, and had that one covered without the need for 2019.210:

"Accordingly, the Court holds that § 2019.210 does not apply to federal actions. The Court's holding does not, however, give [the counter-claimant] free reign to try trade secret claims that were not disclosed in its “Trade Secret Disclosure.” As discussed at the hearing, as a matter of fairness, Counter-Defendants must have been given fair notice of [couner-claimant’s] trade secret claims, whether in the “Trade Secret Disclosure” or other discovery responses. If Counter-Defendants were not given fair warning of certain trade secret claims, [counter-claimant] may be barred from presenting these claims at trial."

In other words, defendants are entitled to notice of the trade secrets at issue, even in federal court. And whether that notice comes by way of a potentially non-mandatory 2019.210 disclosure, or an interrogatory response, it doesn’t really matter. So long as the defense is given “fair warning” of the trade secret claims, all is good. At least in Judge Moskowitz’s court.

What does all this mean? Well, it continues the debate over whether 2019.210 applies to federal trade secret cases. The money now seems to be favoring “inapplicable.” Nonetheless, if you find yourself as a defendant in a federal trade secret claim, cover yourself. Whether there is a 2019.210 disclosure or not, make sure your interrogatories at least ask for an itemized statement of each and every trade secret at issue.

-MY

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Jordi Masdevall, Senior Information Technology Attorney at Baker & McKenzie’s Barcelona office reports that the World Intellectual Property Organization’s Arbitration and Mediation Center, in cooperation with the “Format Recognition and Protection Association” (FRAPA), now provides ADR services in disputes relating to television formats.

These disputes may concern allegations of format plagiarism or the unauthorized copying of TV formats, such as those used for game, reality or talent shows and sitcoms. Programs using these formats are often remade in different markets using local parties.

The agreement between WIPO and FRAPA provides that WIPO will take on the latter’s existing mediation activity and will administer TV format-related disputes filed under the WIPO Mediation and Expedited Arbitration Rules for Film and Media.

The Film and Media Rules were adopted in December 2009, and are specifically tailored to the specific characteristics of disputes arising in the film and media sectors. They foresee appointment of a specialist from a dedicated international WIPO Panel of film and media mediators, arbitrators and experts. The WIPO Center and FRAPA also envisage providing specialized training and information sessions on format dispute resolution.

The undersigned, though not (yet) a member of this particular panel, is a mediator and arbitrator for WIPO.

-EvG

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The Google Book Settlement (GBS) raised the question of whether filing a class action can be an acceptable lever for obtaining IP licensing; that question remains a topic of concern with scholars and Amici continuing the dialog. See, Grimmelmann’s Big View of the GBS here. 

Recently the US Copyright Group under the banner of SAVECINEMA.ORG launched a new IP strategy targeting thousands of unidentified anonymous independent Internet Users who allegedly without authorization downloaded and shared protected film.

All the claims are represented by the same counsel, with the same construct - inconvenient forum, anonymous Does. The most recent, brought by Voltage Pictures for infringement of Best Picture-winner The Hurt Locker, names 5,000 Doe defendants. As of June, 2010, seven suits, against 14,583 Does, have been filed in the District of Columbia. Nat Anderson at Arts Technica Law & Disorder in his March 31, 2010, post figured out how the strategy works (and thanks to him for sharing EFF’s “spam-igation” tag); as he explains:

“The tech comes from GuardaLey, a company registered in England and Wales. According to a declaration from GuardaLey's Director of Data Services, Patrick Achache, the company identifies BitTorrent users sharing Far Cry in two ways. First, it simply searches P2P networks for Far Cry, then connects to the swarms and logs the IP addresses of those sharing the file—not subtle, but it works. Second, it reviews ‘server logs obtained from P2P networks to determine the users who were offering the files of this copyrighted movie.’ Just a second—it does what now? How did GuardaLey get access to P2P server logs? The company doesn't say; perhaps it runs its own honeypot trackers in order to obtain IP addresses. In any event, the company ends up with IP addresses of users with bits of some file called "Far Cry." It then downloads the bits of the picture it can get and logs the file metadata. From the IP address, it figures out which ISP is responsible and e-mails them, asking the ISP to retain all logs on the IP address in question at the time in question. Next, Achache must verify the content in the file. ‘I or one of my assistants have watched a DVD or VHS copy of the motion picture provided by Plaintiff,’ he writes. The team then accesses the downloaded files and confirms ‘that they contain a substantial portion of the motion picture identified in the Complaint.’ That's when the lawyers take over, filing federal cases against Does and seeking the court's permission to send subpoenas to the ISPs. If allowed, the ISPs would then turn over subscriber information belonging to the user who was assigned the IP address at the time in question. Defendants are apparently then given a chance to settle; if not, the case could proceed as a named lawsuit.”

The strategy could not get traction without use of the legal “Doe defendant” fiction, a common and legitimately useful tool in litigation when the true identity of all of the culpable defendants is unknown; when used with online “anonymous” defendants, linked by software identifying their location and identity, and against whom, after filing suit and using court process to identify, a threat is made to settle or else, a whole other picture is presented. These individual defendants, residing all over the country, must either defend civil actions brought in Washington, DC, or pay as demanded to make the case go away. As constructed, use of the “Doe defendant” allegation is the first lever in this new business model because without the sweep of this net, mass litigation against defendants could not proceed – each individual defendant would need to be named and sued in a jurisdiction within which minimum contacts exist.

As reported by Nate Anderson on June 1, 2010:

“The model couldn't be simpler: find an indie filmmaker; convince the production company to let you sue individual ‘John Does’ for no charge; send out subpoenas to reveal each Doe's identity; demand that each person pay $1,500 to $2,500 to make the lawsuit go away; set up a website to accept checks and credit cards; split the revenue with the filmmaker.”

To shed a different light on this issue, consider the June 13, 2010 post at Torrent Freak, a recent interview of independent film director Sam Bozzo, who claims that if you make a good film, having it leaked to BitTorrent can only help. It's only bad if your film isn't very good:

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In February 2002, Vincent and Liza Concepcion entered into a cellphone agreement with AT&T Mobility. They had been attracted by AT&T’s promotion of free cellphones when committing to a two-year contract. Then the Concepcions were presented with a bill for $30.22 in sales tax for the two phones.

I remember how surprised I was when this “free” cellphone resulted in a bill for sales tax. Besides thinking it could be an illegal tie-in, I let it go. Sometimes I think that Apple violates antitrust laws as well by compelling iPhone users to take out an AT&T contract. I know, it has become quite the norm these days, to tie a particular model cellphone to a particular carrier. Shouldn’t that be illegal?

Anyway, after some years had passed, the Concepcions did not take this charge for sales tax lying down, arguing that when you promote a “free” cellphone, it should be free, and not be subject to sales tax for the full price of the phone if bought separately. To do otherwise would be “fraudulent”.

Obviously, bringing an individual suit for $30.22 did not seem like the viable thing to do. So in March 2006 they and three other persons (Jennifer Laster et al.), whose claims were consolidated with theirs, decided to bring a class action against AT&T in the Southern District of California. But, under their adhesion contract with AT&T (“take it or leave it”), the plaintiffs were confronted with an arbitration clause that – you guessed it - included a class action waiver clause. 

On a side note, I wonder whether the right to a class action can be waived at all. To my knowledge this question has never been raised in California. The modern class action device was derived from a common law concept called virtual representation, which meant that “a person who was not a party to an action was deemed to have been virtually represented, and thus bound by the judgment, if his or her interests had received adequate representation by a party. See, e.g., Bernhard v. Wall, (1921) 184 Cal. 612, 629.” Arias v. Superior Court, 46 Cal.4th 969, 988-989 (2009). Don’t these origins of the class action sound very much like something parties cannot waive? I found one recent report where a court held that you cannot validly waive the right to bring a class action against a car dealership in South Carolina under its Dealers Act, as it is explicitly against public policy. 

Almost five years after the Concepcions had entered into their cellphone contract (but 3 months before they filed suit), AT&T amended the arbitration agreement and added what they called a “premium payment” equal to the maximum claim that may be brought in your county’s small claims court. In California, that maximum claim is $7,500. AT&T would pay this amount if the arbitrator awarded in favor of the consumer an amount greater than AT&T’s last written settlement offer before the arbitrator was selected. 

I don’t quite understand how AT&T thought this would change the class action waiver from being substantively unconscionable under California law to one that is substantively “conscionable”. Both the District Court and the Ninth Circuit did not think it changed anything either, when they had to decide on the validity of the clause upon AT&T’s motion to compel arbitration. Laster v. AT&T Mobility LLC, 584 F.3d 849 (9th Cir. 2009).

As the Ninth Circuit explained, AT&T would simply offer to pay the face value of the claim before the arbitrator was selected and thus avoid having to pay the $7,500. “Thus, the maximum gain to a consumer for the hassle of arbitrating a $30.22 dispute is still just $30.22.” Laster, 584 F.3d at 855. 

The validity of an arbitration agreement is decided by the court rather than the arbitrator, in accordance with Section 2 of the Federal Arbitration Act (“FAA”). Prima Paint Corp. v. Flood & Conklin Mfg. Co., 388 U. S. 395 (1967); Buckeye Check Cashing, Inc. v. Cardegna, 546 U. S. 440 (2006); Preston v. Ferrer, 552 U.S. 346 (2008). Only when the validity of the entire contract is challenged, is the arbitrator competent to decide the issue. This distinction stems from the wording of Section 2 (as interpreted in Prima Paint), which provides that arbitration clauses “shall be valid, irrevocable, and enforceable, save upon such grounds as exist at law or in equity for the revocation of any contract.” In order for a court to be able to decide on a motion to compel arbitration pursuant to Section 3, it needs to decide on the validity of the arbitration clause under Section 2. 

Following the California Supreme Court’s decision in Discover Bank v. Superior Court, 36 Cal.4th 148 (2005), the Ninth Circuit Court of Appeals analyzed the validity of the class action waiver. Generally, under California law, in order to be valid, an agreement must be able to withstand both a procedural and a substantive “conscionability” test. Adhesion contracts are held to be procedurally unconscionable.

....

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On April 6th of this year, the Patent and Trademark Office announced its new Ombudsman Pilot Program for patent examinations. David Kappos, the USPTO’s Director, states in his blog entry of May 12, 2010 that the program was established to assist in meeting the Agency’s priority to improve relations with its stakeholders.

Sounds good, doesn’t it? Admittedly, it is refreshing to see that the PTO is responsive to complaints from patent attorneys. Patent practitioners and applicants alike have often been frustrated with the process. Director Kappos gives examples such as when the examination process has stalled, or where applicants are unsure of the appropriate person to contact for assistance. Or where attorneys need assistance getting connected with the right person to help them resolve a particular issue. In other words, he says, the program is intended as a “pressure relief valve”.

This is all very laudable, but is this really the job for an ombudsman, Mr. Kappos? I always thought an ombudsman was there to resolve disputes you might have with an agency, not just a sophisticated receptionist who can connect you with the right person.

Maybe this person ought to be called a Facilitator rather than an Ombudsman. Yes, I hear you wonder: “Isn’t an ombudsman a facilitator?” Yes, all mediators and ombudsmen are facilitators, but not all facilitators are mediators or ombudsmen. The online Merriam-Webster dictionary defines ombudsman as “a government official (as in Sweden or New Zealand) appointed to receive and investigate complaints made by individuals against abuses or capricious acts of public officials.” That is not, at least not at the moment, what the USPTO’s ombudsman is supposed to do.

The USPTO’s webpage dedicated to the Pilot Program describes its purpose as:

“enhanc[ing] the USPTO’s ability to assist applicants and/or their representatives with issues that arise during patent application prosecution. More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program can assist in getting the process back on track.”

The “official” purpose sounds more meaningful, and even somewhat at odds with what Director Kappos describes. I can see that such an Ombudsman could be useful if the normal prosecution process has stalled or even broken down completely, and nobody seems to know why. But when you read on, the details are pretty much the same as what Director Kappos describes. So, back to “Facilitator”?

According to the aforementioned website, the Ombudsman Pilot Program is not intended to circumvent normal communication between applicants and examiners or Supervisory Patent Examiners (SPEs). Applicants are encouraged to continue to use established customer service offices throughout the USPTO for information on other related topics. But wait, SPEs also function as ombudsman representatives!

The Program is running across all Technology Centers, using TC ombudsman representatives who are Supervisory Patent Examiners (SPEs) and Quality Assurance Specialists (QASs) prepared to field questions and concerns from the public and work with the appropriate PTO employees (SPEs, Directors, Petitions contacts, etc.) to facilitate responses. The ombudsman representative will help ensure that the applicant's issues are addressed quickly – usually within five business days. The ombudsman representative will also ensure confidentiality when requested by the applicant or applicant's representative.

The good news is that this Pilot Program provides an additional tool in helping to move the patent application process along. Presumably, another set of eyes can look at the situation and inquire why the process is stalled. I hope the staff members who are expected to play a role in the Pilot Program will get adequate training to use mediation-derived techniques that they can use in dealing both with the applicant and their colleagues who have been assigned to the matter.

Note, however, that the Ombudsman Program is not designed to deal directly with the merits of the application. An answer to a “FAQ” summarizes it nicely:

“When you have a question about a specific application in prosecution and have been unable to find the correct person to assist you or have been unable to obtain assistance from the examiner or SPE to whom the application is assigned, then the Ombudsman Pilot Program is the venue to use. If your question is a general question and not associated with a particular pending patent application, then the Ombudsman Pilot Program is not the appropriate program to use. The Ombudsman Pilot Program is not meant to be a universal assistance center but rather a place to get prosecution assistance when you have exhausted normal channels in the Technology Center (TC).”

The Pilot Program is scheduled to run for a year. After that, the Notice in the Federal Register indicates that the USPTO may extend it with “appropriate modifications based on feedback from the participants, the effectiveness of the pilot program and the availability of resources.”

To use the program, you need to complete a form on the PTO website, which you will find by scrolling down all the way. This form requests basic information, such as name, e-mail address and telephone number. You submit this information directly from this webpage, whereupon someone will call you within one business day.

So, patent applicants, let the USPTO know how this program is working for you, and whether or not you would like to add certain tasks to the Ombudsman, such as receiving and investigating complaints, and acting as an intermediary to help resolve them. Under the form just described, you will find the e-mail address you can use to give feedback, questions or comments!

-EvG

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In reading the NYT this past Sunday, I pondered the article by Brad Stone, targeting Google’s “monopoly” in online search and advertising, posing the question: Sure It’s Big. But is That Bad?

Increasing governmental antitrust scrutiny of search giant Google’s practices, which target Google’s favoring of its own properties, begs the question of whether Big is Evil and can we trust Big – the same issue raised in the Google Book Settlement - is Big itself inherently Evil and what can Big do to be otherwise?

Distinguished trademark lawyer and blogger Paul Reidl in his April 17, 2010, IP Alley post Counterfeiting, Civility, and IP Backlash impliedly asks the same question about Big Law as he ponders the IP Backlash. Paul’s recent description of Big Law bullying in a trademark dispute with allegedly counterfeit goods is an example of the shadow side of power which fuels the IP backwash and disempowers all brand owners who rightfully seek to police their marks and retain consumer confidence as well as respect within their own markets. As Paul confirms, the target of the dispute may be innocent and the dispute itself of Big Law’s own making. Here’s what happened to Paul and his client:

“The demand letter from Big Law was a typical Strum und Drang letter sent on behalf of Big Corporate America. Roberto Duran would have said “no mas” immediately on receipt. And, in fact, the recipient immediately did. He was a trader with several small retail outlets. He had bought the goods from a regular supplier who had been selling them to his competitors; the supplier had bought them from a web site. It sure looked legitimate, which made me wonder: how the heck was he to know if these were counterfeit if, in fact, they were? When he saw competitors and a web site selling the same product the assumption that they were legitimate was certainly a reasonable one. His first inkling that there was a problem occurred several days before he received the letter when someone (presumably the Big Law investigator) bought one of the goods from him, told him that it was counterfeit, and that he was going to jail unless he stopped selling them.”

 As Paul points out, the key issue was never fully investigated by the Big Law accuser:

“… whether in fact the goods were counterfeit or were they simply being sold by an unauthorized retailer? Since I knew that the trademark owner sold only through authorized retailers, this was not a small point because if the goods were genuine then the recipient of the demand letter had a perfect right to sell them. The trademark owner’s gripe would then be with the person who breached their contract and sold the goods outside the authorized channels, not with my retailer.”

 When Paul questioned counsel about this key issue, more bullying ensued. 

“I was told that was not relevant; didn’t I know that the trademark owner was a huge company and that this was a famous brand? Didn’t I know that counterfeiting was criminal and that Big Law could crush my client? Didn’t I know that they were entitled to damages, enhanced damages, attorneys’ fees, and first born children? When I mentioned the investigator’s comments about criminal activity, I was scoffed at: that did not happen, your client is a liar.”

Paul’s experience is noteworthy because in this case, Big Law was meeting true empowerment in a trademark lawyer of Paul’s experience, depth and integrity – coupled with what appears to have been an innocent client. Concluding that the surrender occurred at the outset and the ensuing attack by Big Law pointless, what was Big Law’s objective?

The chilling effects of market power can be reframed when we ask – what is Power? Does Power mean strength and control? Does it mean being forceful, dominant, a winner, a tyrant?

Power has two sides – one which can destroy, and one which can create positive change. The real problem with how we define power is that if we limit our view to seeing it as control, then we must always fight for that control for fear that we will lose Power if we lose control. When we expand our understanding of Power to include the positive, empowered qualities of power, such as knowledge, communication, resources, authenticity, patience, insight, influence, growth and ultimately choice, we can see a larger view and can collaborate without losing anything.  When we power with, rather than power over, we open up our empowerment as a healthy tool for accomplishing collective goals.

So, what is Power in the IP world?

Can we expand its definition to include the positive qualities that empowerment brings to a community, a market place, or in Google’s case, even a universe like the internet? And how can we as attorneys and mediators entrusted with IP matters empower our clients and ourselves as we navigate and lead by example? Puts a new spin on anti-trust, with emphasis on the word “trust.” Lots to contemplate as we view Big and Evil, metaphors which themselves portend a certain mindset before we even investigate the facts to see whether the larger collective goals can be met through a collaborative perspective.

Special thanks to Fleet Maull and Kate Crisp for their efforts to empower healthy leadership in all venues through their “Path of Freedom Facilitator Training”, which was the inspiration for the power with concept rather than the narrow and limiting view of power over as in control.

-MZ

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Cultivating Qualities of Being

Introduced here in my first post as having a “contemplative law practice,” a few friends politely inquired – what is a “contemplative law practice,” and what does that have to do with IP or mediation? So I have been contemplating and in this post, with the help of a few other contemplative lawyers, try to bring it all together – IP, mediation and meditation.

In my experience, they are all connected...

Mediation

Vicki Pynchon previously blogged here about an article by Danny Ciraco entitled "Forget the Mechanics and Bring in the Gardeners: an Exploration of Mediation in Intellectual Property Disputes". Ciraco’s article, written over a decade ago, blazed the trail for the modern view (recently articulated by Google General Counsel William Patry as quoted in my March post) that IP is all about “relationships.” Juxtaposing the court system as a machine, and mediation as an organism, Ciraco believed in the flexibility of mediation of IP disputes:

“By describing mediation as an organism we will be able to see its potential to effectively deal with IP disputes. In particular, we will look at mediation's flexibility, its cost-effectiveness, its sensitivity to time, its effectiveness in dealing with highly technical and complex issues, its respect for confidentiality, and its effectiveness to deal with internationally complicated disputes -- all of which will illustrate mediation's organic design.”

Comparing mediators to gardeners evokes the cultivation of process rather than contraction by judgment. Viewing IP as interests, not stand-alone rights, is the mediator perspective. Copyright provides a good example. A grant of a limited monopoly, essential safety valves are built into the copyright system which impact the rights holder’s relations with others – limited duration, first sale, idea/expression, fair use, and public domain – relationships with borders and edges which create an interdependent system of interests. Without the safety valves, we could not tolerate copyright at all. So when working with copyright issues, our view is always dependent on seeing the relationships, not just positions. Copyright law is in one sense built on a mediator’s perspective. The expanse of IP itself – copyright, patent, trademark, right of publicity, trade secrets – is interdependent and often must be unbundled as we recognize that one right cannot be co-opted by another.

Meditation

Contemplative practice relates in the same reflective manner, supporting a view which opens up the process to encompass all of the interests awaiting recognition. One of the ways this open view can be cultivated is by a meditation practice. From a meditator’s perspective, contemplative practice follows “bare attention” gained in meditation to engaged attention on values cultivated by a mindfulness practice. If we as an individual can develop a direct relationship with who we are, instead of using conditioned beliefs to feel right and make others wrong, then we can be open, flexible and kind with others without feeling that we’re losing something in the process. Grounding ourselves in self-awareness and self-reflection, we bring this presence to mediation, bringing peace into the room. Basic goodness, compassion, empathy, and equanimity serve as attitudes developed in a mindfulness practice.

Integration into a Contemplative Practice

Mediation, by looking at what is and opening awareness to all of the interests, has a commonality with meditation practice. We see what is, and then work with it. By having many tools to work with, we are not limited to only one view. Flexible, we can be gardeners cultivating peace. If the parties can go back into the system healthier, with a fresh awareness of their role in the system and how to better navigate to avoid future disputes, then we as mediators with a meditator’s perspective have contributed to a community of artists, inventors, creators, consumers, and distributors and in this contribution, have enlarged and enriched the collective as well as our own personal practice. This is how I personally benefit from integrating a legal and mediation practice with my personal meditation practice – resulting in a contemplative law practice. It is the engagement with others and the benefits of serving in a community which lifts my practice off the cushion and into the world in which I have trained and developed legal skills to help others.

Robert Chender, an attorney and meditator in NYC, with his own blog Contemplative Law, serves as an example of how we can integrate what we know with who we are. With a sophisticated legal practice in Manhattan at Seward & Kissel, and as the Director of the New York City Bar Association Contemplative Lawyers Group, as well as offering CLE programs for lawyers, law students and judges, Robert embodies the meditative approach as he balances being a leader in both realms – as a lawyer and meditator. Whether working with lawyers, partners, clients, or training others in meditation, his practice informs and transforms his relationships. Robert recently shared with me how his training with Chogyam Trungpa Rinpoche, helped him in his goal of applying his meditation practice in all aspects of his life: his teacher didn’t just teach him how to meditate, he also taught him how to shift his view, how to contemplate and apply his practice out in the world to serve himself and others. I asked Robert to add his own reflections here to address the busy IP lawyers and mediators who follow this blog. Here is what he said:

“As lawyers we’re continually asked for help, by clients and colleagues, and indeed that’s what we’re paid for. However, it may be best to help in a way that’s quite different than the ostensible request – for example, if a client wants to litigate because he feels personally wronged, it may be possible to examine the situation and work out a solution in which both parties can put aside their grievances and avoid a prolonged and expensive fight. This is of course true for both counsel and mediators. The main question is how we do that – the training that’s required to be skillful in mediation (whether formal or informal) is very different than the training we received in law school, and requires an examination of what our assumptions are about what we’re trying to accomplish. Some attorneys relish a fight, and want to dole out punishment to the other side – but that’s not looking at what I think should be the larger goal of attorneys, which is to create peace and facilitate people’s livelihoods, one client at a time. Training our minds, through meditation or otherwise, is a helpful and perhaps key prerequisite to accomplishing this goal.”

In 2008, I was introduced to two other leaders in the contemplative law movement, Charlie Halpern, founding dean of City University of New York Law School and now teaching contemplative practices at BOALT, and Doug Chermak, a Bay Area environmental lawyer, when I attended an annual retreat in northern California held by the Center for Contemplative Mind in Society, led also by Zen priest Norman Fischer. The Shambhala Sun magazine recently interviewed Robert, Charlie and Doug (May 2010 issue), heralding their contribution to mindfulness for lawyers. Doug described a “meditative perspective” as helping lawyers cultivate insight into the challenges so they are “not cut off from who they are as a core human being.” My experience as a participant at the 2008 retreat, attended by judges, law professors and students, big firm partners and every type of lawyer in between, was that lawyers, young and old, are dedicated to their professional practice and duties to their clients, but also long for a way to navigate within the conflux of emotions and ethical challenges experienced within the profession. Our challenge is to find our seat so we can navigate in the profession amidst the very real challenges of earning a living, supporting partners and employees at the office, and families and communities at home.

Applying Robert’s Shambhala “art of living” approach, we are challenged to shift our view when our conditioned, reactive responses arise – for instance, in an IP dispute where we instinctively see infringement of a client’s legal rights as a battle cry - and instead give attention as well to their relationships. In shifting our view, we can add value to a client’s cause by leading with a mediator’s and meditator’s perspective, adding value to our own life as well. At law schools, law firms, courts and everywhere lawyers and mediators apply their art, this shift in view is happening now.

In addition to Robert Chender’s blog Contemplative Law , you can follow Stephanie West Allen, author of the weblog Idealawg, which is dedicated to all things related to contemplative law and mindfulness and has a wonderful list of resources for your practice.  You can also follow and join Cutting Edge Law, the active internet community for mediators and contemplative practice.

The Contemplative Mind in Society website is also a great resource for contemplative practice and hosts podcasts from past law retreats, and where you can also sign up to receive news on upcoming law retreats, including one expected this fall at BOALT featuring Charlie, Doug and Robert; J. Patton Hyman’s 2007 article on lawyers and mindfulness is a also great introduction to mindfulness and meditation for lawyers.

Finally, we hope you have already added the June 10-12 Pepperdine’s Straus Institute’s Summer Skills Conference to your calendar, where you can learn more about mediation and mindfulness when Len Riskin and Rachel Wohl present Mindfulness for Conflict Resolvers: Lawyers, Mediators, Negotiators, Judges, Arbitrators & Managers.

-MZ

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Several weeks ago, I came across an exciting article by Frances Murphy and Francesco Liberatore of Jones Day’s London office, that I wanted to blog about, but did not get around to. By pure coincidence, I looked at it again today, and concluded I still want to blog about it!

Why?

Because I believe it is an important subject that every IP mediator and every mediation participant needs to be aware of!

The article alerts us to the fact that recently the European Commission began a process of checking whether patent settlements concluded among a number of pharmaceutical companies infringe EU Antitrust laws.

In this particular case, the Commission had sent an information request in January of this year as a follow-up to its inquiry into the pharmaceutical sector. As Frances and Francesco point out, “The Commission is in particular looking at patent settlements where an originator company pays off a generic competitor in return for delayed market entry of a generic drug (so-called “reverse payments patent settlements”).”

This suggests, the authors write, “that the Commission may be initiating a program to periodically monitor settlement agreements and could launch infringement proceedings against settlements it finds anticompetitive.”

The authors then go into the details of the antitrust rules regarding reverse payments patent deals, and analyze ho they compare to the law in the United States as it is developing between the FTC and the US courts. For a copy of the article, look here.

What interests me for our IP ADR Blog is how the eternal conflict between the antitrust laws and the “carve-out” created by patent protection may affect mediation.

Clearly, the parties, and hopefully also the mediator, need to be on the lookout for how patent laws interact with the antitrust laws of the United States and the European Union. Of course, while the mediator should not ever be tempted to give legal advice, it would be entirely within his province to raise the issue as a question as he/she helps the parties as they explore settlement options.

What should the mediator do if the parties agree on a settlement that he knows will violate antitrust laws? What if he only suspects it may violate antitrust laws? I welcome your input!
 

-EvG

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