Lawyer - Arbitrator and Mediator
Areas of Expertise:
✔ Commercial/Business ✔ Contract Disputes
✔ Copyrights ✔ Engineering
✔ Intellectual Property ✔ Internet
✔ Joint Ventures ✔ Licensing
✔ Media & Communications ✔ Mergers & Acquisitions
✔ Mining ✔ Partnerships
✔ Pharmaceuticals ✔ Real Estate
✔ Software ✔ Technology
✔ Telecommunications ✔ Trademarks
✔ Trade Secrets and Confidentiality Disputes
I have been a trial lawyer, mediator and arbitrator for over 40 years, with a practice focusing on business disputes, including technology-related and intellectual property litigation. I have been appointed as an arbitrator in over 125 disputes, many involving technology or intellectual property issues.
I served as a law clerk to Judge William E. Orr of the U. S. Court of Appeals for the Ninth Circuit. I was a founder/partner of Skjerven, Morrill Macpherson in 1976, which became one of the leading intellectual property boutiques in Silicon Valle, and then joined Sidley Austin LLP as a partner in 2003. Since my retirement in 2012 I have been a full time arbitrator, mediator and special master. I have also taught patent litigation and intellectual property law as an adjunct professor at Golden Gate University Law School in San Francisco.
Representative cases handled as a sole arbitrator or panel member include: • Breach of contract claims arising from the international sale of software and technology to design and manufacture chipsets for wireless devices. • Contract and fraud claims arising from purchase of a major international engineering firm • Patent and technology ownership issues regarding quartz inertial sensor solid state gyroscope patent and technology • Claims for nonperformance under a contract between Japanese and Taiwanese parties for the manufacture of chips for camcorders • Technology ownership, contract and tort issues arising from alleged failure to develop interactive product sales website • Claims for indemnity against semiconductor manufacturer by customer whose end products were accused of patent infringement • Technology transfer and contract claims arising from contract licensing DNA micro array technology • Breach of contract claims arising from alleged misuse of license for credit reporting computer software • Breach of contract claims arising from termination of software reseller's license • Contract breach issues involving design and production of custom integrated circuit for a video camera • Breach of contract issues involving a license to resell software • Breach of contract to provide worldwide air charter services for multi-branch international school • Claims arising from law firm dissolutions, including allocation of assets and liabilities, ownership of name and client accounting issues • Infringement of patents in the electronics, communications, electric lighting, construction, earthmoving equipment and other areas • Claims arising from alleged breach of license to medical laser patent and know-how • Claims for termination of license to major apparel trademark • Claims involving computation of earn out in sale of telephone exchange • Issues arising from alleged breach of an agreement to purchase optical disk products • Claims for software license breach including interpretation of license provisions and computation of damages • Claims for breach and wrongful termination of agreement to outsource IT services for a major Silicon Valley technology company • Patent ownership and trade secret claims involving silicon polymer chemistry processes for manufacturing semiconductor circuit products • Claims between Southeast Asian companies concerning the design and implementation of a factory system for tracking and controlling semiconductor manufacture • Claims against a major US mobile phone carrier for inaccurate billing and phantom telephone charges • Claims arising from a contract for search engine optimization (SEO) • Claims for breach of sellers’ covenants in an acquisition of an electronics testing company, including claims of failure to provide GAAP-compliant financial statements • Breach of contract claims regarding obligations of distributor of major international sports equipment and apparel brand to contribute to fund for promotion of the mark • Many cases involving contracts for development of websites and software programs
I have had extensive training as an arbitrator since I began acting as a neutral over thirty years ago. Recent training includes: • ICC: The Conduct of Proceedings and Case Management – the Arbitrator’s Perspective, 2017 • CIArb: Arbitrating Patent Disputes: Innovative Approaches and New Concerns, 2017 (Faculty Member) • AAA Roundtables 2014-present: Recent Arbitration Case Updates; Mediation Legal Updates; Arbitration Panels; Substance Abuse and the Twinkie Defense in ADR; Arbitrator Use and Misuse of Experts; Jurisdiction; and many other topics. • AAA: It’s Not Just “Litigation Lite” – Making Rulings on Evidentiary Objections, 2015 • AAA: Dispositive Motions in Arbitration, 2015 • AAA: Damages for Neutrals, 2015 • Golden Gate University Law School 14th Annual Recent Developments in IP Law and Policy Conference: Developments in Patent Law, 2015 (Faculty Member) • AAA: Decision Making Skills for Arbitrators, 2014 • AAA: Dealing with the Pro Se Party, 2014 • Bar Association of San Francisco: Significant Arbitration Cases in 2013 • AAA: What's a Respondent Like You Doing in a Place Like This? Confronting Arbitrability and Jurisdiction Issues in Arbitration, 2013 • Golden Gate University Law School 10th Annual Conference on Recent Developments in Intellectual Property Law: The Year in IP Law: Patent ‘Reform, 2011 (Faculty Member) • Berkeley Journal of International Law, Advancing Arbitration: An Examination of Modern Trends in International Arbitration, 2010 • Golden Gate University Law School 9th Annual Conference on Recent Developments in Intellectual Property Law: The Federal Circuit Takes On Patent Damages Reform, 2010 (Faculty Member) • NCCAVS Plasma Applications Group: A Patent Owner's Forum of Choice - The Rise of the ITC, 2010 (Speaker) • ICC: East Meets West: Evolving Issues in International Arbitration in the Asia-Pacific Region, 2010 • Golden Gate University Law School 8th Annual Conference on Recent Developments in Intellectual Property Law: Trickle Down Jurisprudence, 2009 U. S. District Court for the Northern District of California; Effectively Mediating Claims About Money, 2009. • Golden Gate University Law School 7th Annual Conference on Recent Developments in Intellectual Property Law: The Patent Pendulum Reverses, 2009 • U.S. District Court for the Northern District of California: Arbitrator, Mediator and Early Neutral Evaluator training • U.S. District Court for the Northern District of California: Monthly Advanced Mediation Practice Group 2 meetings 2004-present
Admitted to practice in: • California • Nevada • All U.S. District Courts in California and Nevada • U.S. Courts of Appeal for the Ninth and Federal Circuits • U.S. Patent and Trademark Office • U.S. Supreme Court
Appointed to the Silicon Valley Arbitration and Mediation Center List of the World’s Leading Technology Neutrals Named as a Northern California Super Lawyer in Intellectual Property Litigation, 2005-2013 and in Alternative Dispute Resolution 2014-201. Named to the Best Lawyers in America in Litigation - Intellectual Property and Patent Law 2013-2019. Martindale-Hubbell Top Rated Lawyer in Intellectual Property Law 2013-2019.
American Arbitration Association Commercial Panel (Large & Complex Case and Technology specialty panels); CPR Institute for Dispute Resolution Panel of Distinguished Neutrals; (Technology, Cross-Border and San Francisco specialty panels). Robert has also served on International Chamber of Commerce (ICC) International Court of Arbitration and International Center for Dispute Resolution panels.
California and Nevada Bar Associations Fellow, College of Commercial Arbitrators Fellow, Chartered Institute of Arbitrators San Francisco Bay Area Intellectual Property Inn of Court
University of Nevada B. S. in Mining Engineering with four-year honors; Harvard Law School J. D. cum laude.