Who Should Arbitrate?

• Author: David A. Allgeyer
• Pages: 23-27

23

CHAPTER 5

Who Should Arbitrate?

We have so far addressed types of patent cases most likely to be

amenable to arbitration, the statutory basis for patent arbitration,

and whether to provide for a panel or a single arbitrator. We now

consider qualifications arbitrators should have in a patent case.

We noted earlier that one of the advantages of arbitration

is the ability to participate in the choice of the decision maker.

Indeed, because arbitration is governed by contract, you can pro-

vide for a particular background right in the arbitration clause.

So, what kind of expertise do you want in an arbitrator in a

patent case? Here are a few ideas.

SUBJECT MATTER EXPERTISE

Given the need for subject matter expertise, you will want an

arbitrator who is very familiar with all aspects of a patent case.

I still remember years ago when I asked a federal judge at a

pretrial hearing in California what kind of Markman claim con-

struction procedures he typically used. He told me he didn’t use

any. That told me we were in for a difficult educational process

with someone who probably wasn’t all that interested in mas-

tering the intricacies of patent law. I sure can’t blame a busy

federal judge with a huge docket including criminal cases and

about anything else you can imagine not being anxious to fully

embrace the intricacies of patent law. But you can avoid that

situation in patent arbitration, and you should.