Resumes of Professional Staff

Peter L. Michaelson, Esq., F.C.I. Arb.

Attorney, Arbitrator & Mediator

Legal Experience:

A. ADR (IP, IT, Telecommunications & Technology Disputes)

Arbitrated:
(a) international and domestic intellectual property (IP) disputes, principally patent disputes involving complex electronic and mechanical technologies;
(b) information technology (IT) and technology-related disputes involving, e.g. computer hardware and software installations, and consulting agreements;
(c) interconnection, billing and contract disputes involving large U.S. telecommunications carriers; and
(d) a bilateral investment treaty (BIT) dispute.

Mediated and also served as a Court-appointed expert in patent law in numerous patent litigations in the U.S. District Courts involving complex electronic technology, including, e.g., voice messaging, auto-pilot controls and hand-held personal digital assistants (PDA's); various mechanical technologies involving, e.g., consumer appliances, medical devices and aircraft; and Hatch-Waxman based pharmaceutical disputes. Also mediated trademark litigations in the U.S. District Courts.

Substantial matters recently handled:

• Arbitrated, under the American Arbitration Association (AAA), a domestic patent dispute involving air bag technology including, among other issues, inventorship of each of approximately 20 US patents.
• Arbitrated, via a CPR referral, a domestic patent dispute, involving a genetically-engineered pharmaceutical drug having cumulative sales through 2006 of approximately US $4.4 Billion and expected additional sales throughout the remainder of the terms of the patents in dispute of approximately US $22 Billion.
• Arbitrated a BIT dispute under the UNCITRAL rules and through the London Court of International Arbitration (LCIA), specifically an international contract dispute between a US telecommunications company and a foreign government involving alleged governmental expropriation of a national telecommunications network, with damages being claimed by the telecommunications company of approximately US $150 Million.
• Arbitrated, under the AAA, a domestic patent dispute involving reverse geometry contact lenses, and, in conjunction therewith, conducted along with my co-arbitrators, a Markman (claim construction) hearing.
• Arbitrated, under the AAA, a contract dispute involving a very large semiconductor manufacturer and concerning development of specialized integrated circuits for DSL (digital subscriber line) equipment with liabilities being claimed amounting to several tens of millions of US dollars.
• Mediated, via a court-annexed referral from the United States District Court - Eastern District of New York, a domestic Hatch-Waxman patent dispute, involving a pharmaceutical drug having annual sales of approximately US $350-400 Million. This mediation encompasses four separate Hatch-Waxman actions, which have been consolidated for mediation, collectively involving two plaintiff "branded" manufacturers and three defendant generic drug manufacturers.
• Arbitrated, via a CPR referral, a domestic patent dispute involving 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, and in conjunction therewith conducted, along with my co-arbitrators, a Markman hearing.
• Mediated, via a World Intellectual Property Organization (WIPO) referral, an international patent dispute involving both mechanical and electronic aeronautical technology, with multiple US patents at issue, with potential liability to the parties involved of approximately US $600 Million. Through this mediation, the parties not only settled their existing disputes but also agreed on establishing a framework to avoid future patent disputes going forward.
• Arbitrated, under the AAA, an IT dispute resulting from an installation of enterprise (ERP) software and involving a large international accounting/IT consulting firm with liabilities claimed between US $25-40 Million.
• Mediated an international patent dispute between two large US appliance manufacturers that successfully ended five years of foreign patent litigation with liabilities claimed of approximately US $30 Million.
• Mediated a US patent dispute involving personal digital assistants (PDAs) which successfully ended US patent litigation and formed a framework for future business co-operation between the disputants.
• Arbitrated, via a CPR referral, a telecommunication dispute concerning payment of reciprocal compensation between a large incumbent local exchange carrier (ILEC) and a competitive local exchange carrier (CLEC) with a total amount of compensation impacted at the ILEC estimated at approximately US $50 Million.
• Arbitrated domain name disputes for ICANN accredited dispute resolution service providers (WIPO, NAF, AAA, CPR, eResolution).
  
  *For all my web-published domain name arbitration decisions, see www.mandw.com/decisions.html (approximately 160 decisions thus far)
  
  Served on single and three person arbitration panels, as chair of three person panels, and as mediator and co-mediator.

(Read letters of commendation)

B. ADR (other)

Mediated, for the New Jersey Superior Court, disputes covering a wide range of substantive legal areas (including, e.g., contract, malpractice, real property, employment discrimination and general commercial matters).

C. Non-ADR

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 interferences and trademark oppositions.

Specifically, 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.

Also, prepared/prosecuted many patent applications, both U.S. and foreign (>900 in the US alone) (click here for sample), 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, digital transmission and ISDN, VoIP, asynchronous transfer mode (ATM) and general packet and circuit switching and cellular, 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; cryptography; semiconductors and semiconductor fabrication; fiber optics; photographic apparatus; displays, including liquid crystal displays (LCDs); electronic circuitry; and mechanical devices and metallurgy.

Prepared patent validity and infringement opinions involving complex electronic technology; prepared trademark validity and infringement opinions. Prosecuted U.S. and foreign trademark applications.

Experienced in patent and trademark licensing.

Counseled in intellectual property, antitrust, unfair competition, and privacy law.

Reported Decisions (as arbitrator):

Paxar Americas Inc. v. eNom Inc., 84 USPQ2d 1730 (Nat. Arb. Forum,
June 22, 2007 (Sole Panelist)

Shaw Industries Group Inc. v. Arcadia Publishing Inc., 84 USPQ2d 1574 (WIPO, March 20, 2007) (Sole Panelist)

SPX Corp. v. Hevun Diversified Corp., 81 USPQ2d 1621 (Nat. Arb. Forum,
November 13, 2006) (Sole Panelist)

Beat the Bookstore, LLC v. May Enterprises, 79 USPQ2d 1360 (Nat. Arb. Forum, December 19, 2005) (Sole Panelist)

Sound Unseen Ltd. v. Vanderhorst, 77 USPQ2d 1585 (WIPO, August 18, 2005)
(Sole Panelist)

Estate of Marlon Brando v. Whois Guard, 77 USPQ2d 1229 (Nat. Arb. Forum,
August 29, 2005) (Sole Panelist)

Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Lima, 74 USPQ2d 1887 (Amer. Arb. Assoc., May 13, 2005) (Sole Panelist)

Lockheed Martin Corp. v. Skunkworx Custom Cycle, 74 USPQ2d 1486 (WIPO, January 18, 2005) (Sole Panelist)

Mess Enterprises v. Scott Enterprises Ltd., 74 USPQ2d 1289 (WIPO, January 25, 2005) (Presiding Panelist)

True Blue Productions Inc. v. Hoffman, 73 USPQ2d 1512 (WIPO,
December 22, 2004) (Sole Panelist)

National Collegiate Athletic Association v. Brown, 72 USPQ2d 1319 (WIPO,
August 30, 2004) (Sole Panelist)

Register.com Inc. v. Reile, 70 USPQ2d 1351 (Nat. Arb. Forum, January 27, 2004) (Sole Panelist)

Office of Personnel Management v. MS Technology Inc., 70 USPQ2d 1333 (Nat. Arb. Forum, December 9, 2003) (Presiding Panelist)

Cable News Network LP v. Khouri, 68 USPQ2d 1570 (Nat. Arb. Forum, December 16, 2002) (Presiding Panelist)

National Association of Professional Baseball Leagues, Inc. v. Zuccarini,
67 USPQ2d 1315 (WIPO, January 21, 2003) (Co-Panelist)

Kalaydjian v. Steinle, 64 USPQ2d 1576 (Nat. Arb. Forum, August 27, 2002 ) (Sole Panelist)

Princeton Linear Associates Inc. v. Copland, 61 USPQ2d 1895 (Nat. Arb. Forum, February 8, 2002) (Sole Panelist)

ADR Panel Memberships (including accreditations):

Volunteer Arbitrator/Mediator -- New Jersey and New York rosters, Association of the Bar of the City of New York -- World Trade Center relief efforts - September 11 Pro Bono Initiatives (administered through the American Arbitration Association)

Fellow of the Chartered Institute of Arbitrators (F.C.I. Arb.)
Chartered Arbitrator (UK)
Member - Panel of Chartered Arbitrators
The Chartered Institute of Arbitrators
London, England (see www.arbitrators.org)

Fellow of the College of Commercial Arbitrators
Austin, Texas (see www.thecca.net)

Fellow of the ACICA

Member of Panel of Arbitrators
Australian Centre for International Commercial Arbitration
Sydney, Australia (see www.acica.org.au)

Member of Distinguished Panel of Neutrals -- Technology, e-Discovery, ICANN (Internet Corporation for Assigned Names and Numbers) Domain Name and Year 2000 Panels

International Institute for Conflict Prevention & Resolution

(formerly "CPR Institute for Dispute Resolution")

New York, New York (see www.cpradr.org)

Arbitrator – International Centre for Dispute Resolution (ICDR)

(international division of American Arbitration Association)

New York, New York

(see www.icdr.org)

Arbitrator -- Commercial Panel (technology sub-panel) and Domain Name Dispute Panel
American Arbitration Association (AAA)
New York, New York (see www.adr.org)
(see AAA Domain Name Dispute Panel of Neutrals)

Approved Mediator/Arbitrator in Intellectual Property Disputes

Approved Arbitrator -- ICANN Domain Name Disputes

World Intellectual Property Organization (WIPO – a specialized member agency of the United Nations)

WIPO Arbitration and Mediation Center

Geneva, Switzerland (see arbiter.wipo.int/domains/panel/panelists.html)

Accredited Mediator - Centre for Effective Dispute Resolution (CEDR)
London, England (see www.cedr.co.uk)

Arbitrator -- International Chamber of Commerce (ICC)
International Court of Arbitration, United States Council for International Business

New York, New York (see www.iccwbo.org/index_court.asp)

Arbitrator -- London Court of International Arbitration (LCIA) - North American Council
London, England (see www.lcia-arbitration.com)

Arbitrator -- ICANN Uniform Domain Name Dispute Resolution Policy and Register Transfer Dispute Resolution Policy (TDRP) Panels; and Intellectual Property and Consumer Credit Dispute Arbitration Panels
Mediator - Intellectual Property Panel
National Arbitration Forum (NAF), Minneapolis, Minnesota
(see www.arb-forum.org/domains/panelists.asp)
(see NAF IP Panel brochure)

Arbitrator -- Asian Domain Name Dispute Resolution Centre
ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) and Register Transfer Dispute Resolution Policy Panels
Hong Kong International Arbitration Centre
Hong Kong
(see www.hkiac.org)

Arbitrator -- National Association of Securities Dealers (NASD) and New York Stock Exchange (NYSE), now FINRA (Financial Industry Regulatory Authority)
New York, New York
(see www.finra.org)

Arbitrator and Mediator
United States District Court - Eastern District of New York
(see: Roster of Mediators: www.nyed.uscourts.gov/adr-bin/dispall.pl
see: Roster of Arbitrators: www.nyed.uscourts.gov/adr-bin/dispallarb.pl)

Mediator -- New Jersey Superior Court
(see www.judiciary.state.nj.us/acms/medr/)

Legal Positions Held:

1984 - present - Principal; and Attorney, Arbitrator & Mediator
Michaelson & Associates
Shrewsbury, New Jersey

1982 - 1984 - Patent Attorney
Pennie & Edmonds
New York, New York

1979 - 1982 - Corporate Patent Attorney (Member of the Legal and Patent Staff)
Bell Telephone Laboratories
Holmdel, New Jersey

Education:

Legal -

New York University School of Law
New York, New York
June 1985 - LLM (Trade Regulation)

Duquesne University School of Law
Pittsburgh, Pennsylvania
June 1979 - JD
Senior Staff Member - Duquesne Law Review

Mediation, Arbitration & Negotiation (principal training) -

Advanced Mediator Training
The Hague, Netherlands
CPR Institute of Dispute Resolution
New York, New York
October 2004

Advanced Mediator Skills Training
Chipping Campden, Gloucestershire, England
Mediation and Training Alternatives (MATA)
in association with
Centre for Effective Dispute Resolution (CEDR)
London, England
May 2004

Arbitrator II Workshop - Advanced Case Management, Somerset, NJ, October 2002
Arbitrator I Workshop - Fundamentals of the Arbitration Process, New York, NY, December 2001
American Arbitration Association

6th Annual International Summer School
Mediator Skills Training
Vevey, Switzerland
CEDR
London, England
August-September 2001

Advanced Mediation Techniques Training Course
Center for Dispute Settlement
Washington, DC
May 2000

Program of Instruction for Lawyers -- The Lawyer as Negotiator Workshop,
June 1999; and
Advanced Mediation Workshop, November 1997
Harvard Law School
Cambridge, Massachusetts

WIPO Workshop for Arbitrators
World Intellectual Property Organization
WIPO Arbitration and Mediation Center
Geneva, Switzerland
November 1996

Program of Instruction for Lawyers -- Mediation Workshop
Harvard Law School
Cambridge, Massachusetts
June 1996

Mediation of Intellectual Property Disputes Training Program
WIPO Arbitration and Mediation Center
Geneva, Switzerland
May 1995

Program on Negotiation - Negotiation Workshops
Harvard Law School
Cambridge, Massachusetts
June 1993

Technical -

Carnegie-Mellon University
Pittsburgh, Pennsylvania
May 1975 - M.S. - Electrical Engineering

Carnegie-Mellon University
Pittsburgh, Pennsylvania
May 1974 - B.S. - Electrical Engineering & Economics

Bar Memberships:

Alaska (2000)

New York (1986)

New Jersey (1980)

U.S. Patent and Trademark Office (1980)

Pennsylvania (1979)

Various Federal District Courts and Courts of Appeal, including U.S. Supreme Court (1986), U.S. Court of Appeals for the Federal Circuit (1983) and U.S. Court of Appeals for the Third Circuit (1981)

Technical Experience:

Designed and developed computer-based industrial process control and measurement systems, microprocessor and computer hardware and software, as well as, general electronic and specialized interface circuitry.

Technical Positions Held:

1977 - 1979 - Electronics Development Engineer
Rockwell International Corporation
Municipal & Utility Division
Pittsburgh, Pennsylvania

1976 - 1977 Electronics Development Engineer
Aluminum Co. of America (Alcoa)
Alcoa Technical Center
Production Equipment Laboratories
Pittsburgh, Pennsylvania

1975 - 1976 Electronics Project Engineer
Control Systems Research, Inc.
Pittsburgh, Pennsylvania

Professional Memberships:

Alaska Bar Association

American Bar Association (Dispute Resolution and Intellectual Property sections)

American Intellectual Property Law Association (AIPLA)

Association Internationale pour la Protection de la Propriete Industrielle (AIPPI)

Chartered Institute of Arbitrators

College of Commercial Arbitrators

Federal Bar Association (ADR, Federal Litigation and Intellectual Property Sections) and The Association of the Federal Bar of the State of New Jersey

International Bar Association (Arbitration and Mediation Committees)

International Institute for Conflict Prevention and Resolution (formerly “CPR Institute for Dispute Resolution”)

New Jersey Intellectual Property Law Association

Other Credits and Qualifications:

Master -- Justice Marie L. Garibaldi American Inn of Court (NJ) for Alternative Dispute Resolution

Member -- National Patent Advisory Council, American Arbitration Association

Member -- CPR International Commission on Patent Disputes, Arbitration Committee (and Expedited Arbitration subcommittee) and e-Discovery Committee

Member -- IP Panel Advisory Committee, National Arbitration Forum

Publications:

Contributed articles concerning various aspects of intellectual property law and alternative dispute resolution to professional, legal and technical publications; specifically:

"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 (click here to view published version) (click here to view re-printed version)

"Vacatur Not Warranted for Undisclosed Trivial Past Association - But Guidance for Other Transactions is Lacking," Dispute Resolution Journal (ADR News Section, Ethics in Arbitration), Vol. 62, No. 1, February-April 2007, pages 4 and 21 (click here to view)

"The 1984 Semiconductor Chip Protection Act - A Comprehensive View," Communications and the Law, Vol. 8, No. 5, October 1986,
pp. 23-55 (click here to view)

"Patent and Trade Secret Protection of Software: Patentability of Programs - Nature and Scope of Trade Secret Protection," Computer Software and Chips 1986, Practising Law Institute, 1986, pp. 403-429

"Legal Defenses Against Piracy," Electronics Week, Vol. 38, No. 9, March 4, 1985, pp. 53-56 (click here to view)

"Software Protection in the United States - Facts, Fantasies, Methods and Results," Proceedings of EUREL - 6th European Conference on Electrotechnics, EUROCON 84, Computers in Communication and Control, Brighton, England, September 1984, pp. 54-57 (click here to view). Reprinted in Japanese in Business Communication Journal, published by the Kikaku Center Co., Ltd., Tokyo, Japan, pp. 59-63, December 1984 (click here to view)

"A Brief Look at the Legality of Competitive Restrictions Imposed on Trade Secret Licensees by Trade Secret Licensors," Journal of the Patent Office Society, Vol. 63, No. 6, June 1981, pp. 320-334 (click here to view)

Seminars and Presentations Given:

Conducted numerous legal seminars concerning intellectual property law, alternative dispute resolution and domain name arbitration for various professional and continuing legal education organizations and national, state and regional bar associations, the most recent being:

"Arbitration and Mediation of Intellectual Property Disputes Today" jointly sponsored by ABA IP and Dispute Resolutions Sections at 2007 Annual Meeting of the American Bar Association, San Francisco, California, August 9-14, 2007 (speaker requested by WIPO) (annual meeting brochure) (DR section program schedule) (IP section events & programs) (presentation graphics) (letter of appreciation)

"Resolving Domestic and International IP Disputes Through Arbitration and Mediation" Presentation by WIPO Arbitration and Mediation Center, sponsored by IP and International Law Sections of The D.C. Bar Association and the Federal  Circuit Bar Association, Washington, D.C., May 22, 2007 (speaker requested by WIPO) (program announcement) (presentation graphics)

"Advanced Strategy and Tactics for Intellectual Property Disputes", Session D5, April 27, 2007 at ADR in Bloom, Ninth Annual Spring Conference of the American Bar Association (ABA) Section on Dispute Resolution, Washington, D.C., April 25-28, 2007 (panelist) (conference brochure)

"WIPO: Domain Names  Dispute Resolution" Annual Meeting of the International Law and Practice Section of the New York State Bar Association, New York City, January 24, 2007 (substitute speaker requested by Debevoise & Plimpton LLP for David Bernstein) (meeting announcement) (presentation graphics)

"Confidentiality and Conflict of Interests in Intellectual Property Disputes", Intellectual Property Focus Area, an International Commercial Arbitration and Mediation Conference, The International Centre for Dispute Resolution (of the American Arbitration Association), Philadelphia, Pennsylvania, December 6, 2006 (panelist presenting on topic) (conference brochure)

"Alternative Dispute Resolution in Intellectual Property Disputes", International Intellectual Property Society Meeting, New York City, September 14, 2006 (panelist) (meeting announcement) (presentation graphics)

"Advanced Strategies and Tactics for Intellectual Property Disputes" and "Consideration in Selecting a Mediator - An In-house Perspective" at ADR on My Mind in Georgia, Eighth Annual Spring Conference of the American Bar Association (ABA) Section of Dispute Resolution, Atlanta, Georgia, April 5-8, 2006 (panelist in both sessions) (conference brochure)

"Confronting Realities and Ethical Traps in IP ADR", Session 2A, at Hot Topics in Entertainment and Intellectual Property, American Bar Association (ABA) Section of Dispute Resolution, Las Vegas, Nevada, October 21, 2005 (panelist) (flyer)

"Mediation in IP Cases: Practice Pointers from All Perspectives", New York Intellectual Property Law Association, New York City, January 14, 2005 (panelist) (flyer)

"Resolution of Intellectual Property Disputes in the 21st Century" workshop in IP ADR at 50th Council Meeting of the Asian Patent Attorneys Association (APAA), Fukuoka, Japan, October 24-27, 2004 (panelist invited by APAA) (conference brochure) (workshop agenda) (presentation graphics)

"Resolving Patent Disputes through Mediation and WIPO -- Less Risk, Less Cost and Better Results", BIO (Biotechnology Industry Organization) Intellectual Property Counsels' Meeting, Boston, Mass., October 4-5, 2004, (spoke in my own capacity and also represented WIPO Arbitration and Mediation Center) (flyer) (presentation graphics)

Panelist for "ADR Practitioner Session", WIPO Mediation Interest Group Meeting, September 6, 2004, World Intellectual Property Organization, Geneva, Switzerland (meeting agenda)

"Common Pitfalls and Some New Twists to IP ADR", Session E8, April 17, 2004 at Resolution and Resilience in New York, 6th Annual Spring Conference of the American Bar Association (ABA) Section of Dispute Resolution, New York, New York, April 15-17, 2004 (panel member for roundtable discussion) (conference brochure)

"Patent ADR - A Better Way: Less Risk, Less Cost, Better Results", Part of Session C15 "ADR in a High Tech World", March 21, 2003, at Insight for Inspired Practice, 5th Annual Spring Conference of the American Bar Association (ABA) Section of Dispute Resolution, San Antonio, Texas, March 20-22, 2003 (panelist) (conference brochure)

"ADR and Internet Domain Names -- The New Top Level Domains and Their Dispute Resolution Processes", Advanced Seminar in Trademark Law, Practising Law Institute, New York City, June 5, 2002 (cover book pages)

"Tales of a Domain Name Arbitrator -- Revenge, Deceit and Extortion. Watch Out! You Just Might Be the Next Victim" and "Pete's Patent Law Primer - What You Need to Know", Recent Developments in Intellectual Property & E-Commerce on the Internet, Alaska Bar Association, Anchorage, Alaska, October 11, 2001 (flyer)

Other Professional Activities:

Engaged in other professional activities, including:

WIPO Arbitrator for Mock International Licensing Dispute held at 2007 Annual Meeting of the Licensing Executives Society (LES), Vancouver, B.C., October 14-17, 2007, specifically sessions 5-L and 6-L "Resolving International Licensing Disputes through Arbitration", October 17, 2007 (requested by WIPO to represent organization and to serve as arbitrator) (annual meeting brochure) (session handout)

Volunteer arbitration judge for First Annual National Arbitration Competition sponsored by the American Bar Association and the National Arbitration Forum, William Mitchell College of Law, St. Paul, Minnesota, November 18-20, 2005

Listed in and Ratings:

Martindale-Hubbell:
a) "AV" Rated (highest)
b) listed in 2007 Bar Register of Preeminent Lawyers

Who's Who in America

Who's Who in the East

Who's Who in American Law

Who's Who in American Finance and Industry

Who's Who in Finance and Business

Who's Who in the World

Who's Who in Emerging Leaders in America

Representative clients:

Eastman Kodak Company

International Business Machines (IBM) Corp.

Koninklijke KPN NV (Royal KPN Telecom) (The Netherlands)

McGill University (Canada)

Micro Motion (subsidiary of Emerson Electric Corp.)

Microsoft Corporation

Nederlandse Organisatie voor toegepastnatuurwetenschappelijk Onderzoek TNO
(The Netherlands)

Nokia Corporation (Finland)

Sanyo Electric Co., Ltd. (Japan)

3Com Corporation

Telcordia Technologies (formerly Bell Communications Research - Bellcore)

Zentrum Mikroelektronik Dresden (ZMD) AG and ZMD America Inc.

Various small and mid-size organizations from established mature corporations to young start-up ventures

References:

ADR and client references will gladly be furnished upon request.

Most recent update: April 10, 2008