UPC judge: ADR centre should favour mediation over arbitration

An alternative dispute resolution centre attached to the Unified Patent Court should focus on mediation over arbitration, a judge at the court suggested yesterday, January 10.

Sam Granata, who will be a judge at the UPC local division in Brussels, was speaking at an online event hosted by the Munich Intellectual Property Dispute Resolution Forum.

A panel that also included senior in-house counsel at InterDigital and Xiaomi explored the role of the Patent Mediation and Arbitration Centre (PMAC), which will be part of the UPC.

The centre, which will have bases in Slovenia and Portugal, will provide staff and facilities to help parties who wish to resolve cases out of court or are advised to do so by a judge.

Its scope includes mediation between parties and the appointment of arbitrators to resolve disputes.

Granata, who is also a judge at the Court of Appeal in Antwerp, said he was a strong believer in mediation but was reluctant to send parties to arbitrators, who are effectively in competition with courts.

“It’s as if the hunter directed the parties to the poacher,” he said.

The judge was more optimistic about the potential for PMAC mediators to help resolve disputes, especially those related to damages and costs.

Granata also urged court officials to ensure UPC judges are trained as mediators.

“It helps judges to see how mediation works and they also learn valuable communication skills,” he said.

Counsel at InterDigital and Xiaomi both agreed that the PMAC would need to have a tight focus on core issues to be successful.

ZiAng Zhuang, director of IP and litigation at Xiaomi in Beijing, said disputes over fair, reasonable, and non-discriminatory (FRAND) royalties were often too complex to be resolved quickly via arbitration.

“There are issues to be worked through with arbitration but alternative dispute resolution (ADR) is not a one-size-fits-all solution, especially for FRAND disputes,” he said.

Steve Akerley, head of IP and litigation at InterDigital in Delaware, said ADR had to remain efficient in order to be attractive.

“If the PMAC is intended to cover infringement and validity, that removes some of the efficiencies we typically see in international arbitrations,” he said.

If PMAC arbitrations operated at the same efficiency level as the UPC, parties would prefer the UPC because they would retain the right to appeal, Akerley added.

The UPC is scheduled to open on June 1, following a series of delays.