Attorney at Law, Arbitrator & Mediator
The Law Office of Stephen P. Gilbert
Areas of Expertise:
✔ Biotech ✔ Contract Disputes
✔ Copyrights ✔ Engineering
✔ Intellectual Property ✔ Internet
✔ Licensing ✔ Pharmaceuticals
✔ Software ✔ Technology
✔ Trademarks ✔ Trade Secrets and Confidentiality Disputes
Provider-administered and self-administered arbitration of commercial, licensing, technology, and intellectual property disputes, including the following.
Sole panelist: Dispute concerning franchising and termination of franchise; dispute concerning funding agreement and promissory notes; dispute concerning individual contractual liability and related issues (e.g., piercing corporate veil, de facto corporation, corporation by estoppel); professional services partnership disputes; complex dispute involving approval of medical devices by FDA and entitlement to data; music licensing dispute; contract termination dispute concerning broadcast of famous television series; trade secrets disputes between start-up companies and major pharmaceutical companies; dispute concerning joint venture operating agreement under Delaware law; alleged violation of rights in “personal data” under US-Swiss Safe Harbor Framework; dispute concerning automated treasury and debt management systems; dispute concerning development and marketing of OTC drug and cosmetic products; dispute concerning veterinary pharmaceuticals, clinical trials, and rights to clinical data; dispute concerning marketing of athletic gear; dispute involving alleged violation of consumer protection laws; licensing dispute involving genetics; software development dispute; development/ownership copyright dispute involving virtual reality; patent/licensing disputes involving consumer electronics; contract dispute concerning development/marketing of genetics therapy; licensing dispute concerning analgesics; dispute involving patent enforcement entities (Non-Practicing Entities); dispute concerning valuation of intellectual property; dispute concerning allocation of legal expenses and formula for determination of royalties; dispute concerning overpayment of patent royalties for medical assays; dispute concerning under-reporting of patent royalties for electronics; dispute concerning infringement of patents for production/editing of composite videos; dispute concerning call center technology license; dispute concerning microfluidics, diagnostics, and Delaware LLC Operating Agreement.
Panel Chair: Dispute concerning brokerage fees for foreign currency trading; agricultural product development/supply dispute; dispute concerning quality of consulting services for obtaining FDA approvals; biotechnology dispute (with party-appointed non-neutral co-panelists); dispute concerning development/ownership of financial services software; dispute concerning telecommunications billing systems; trade secrets/contract dispute concerning military protective clothing; luxury products trademark licensing dispute; patent infringement dispute concerning software and databases; patent licensing dispute concerning compact lighting devices; music licensing dispute.
Co-panelist: Real estate dispute concerning land use, zoning, and development; dispute concerning employment agreement in apparel industry; dispute concerning performance of wireless telecommunications network; shareholder dispute (involving alleged coercion of minority shareholders under Delaware law); funding dispute between charitable organizations; dispute concerning risk management software; development/marketing dispute involving analgesics (reasoned award rendered within four months of appointment of panel); unusually large, complex licensing/patent dispute involving cancer diagnostics; dispute concerning supply of allegedly substandard-quality meat; dispute concerning disposal of pharmaceutical waste; dispute concerning fees for intellectual property legal services; dispute concerning failure of case management software in visa/immigration field; breach of contract dispute concerning manufacture of integrated circuits; design patent infringement dispute concerning jewelry boxes; trademark licensing dispute concerning luxury items; dispute regarding alleged overpayment of royalties for software and devices; drug discovery/development dispute; copyright/tortious interference dispute involving educational testing; trademark licensing commission dispute; database maintenance dispute; commercialization, licensing, and investment dispute concerning genetic sequencing and nanotechnology; disputes concerning clothing/apparel industry; dispute concerning manufacture of semiconductors; trade secret misappropriation and trademark infringement dispute in pulp and paper industry; trade secret dispute concerning military vehicles; dispute concerning medical imaging software; dispute concerning indemnification for patent infringement; dispute concerning development and production of recombinant proteins.
Issues handled: Motions in limine, to dismiss, for partial summary judgment, for intervention, for preliminary injunction, for sanctions, and for disqualification of counsel; justiciable controversy; arbitrability/subject matter jurisdiction; claim preclusion/res judicata; collateral estoppel effect of earlier court and arbitral proceedings; effect of bankruptcy on arbitration; discovery disputes (including disputes relating to experts, discovery outside the United States, subpoenas, eDiscovery, protective orders, and discovery from third parties); scheduling disputes; equitable estoppel; burden of proof; statute of limitations; laches; waiver; choice of law; parol evidence rule; evidentiary disputes; exclusion of testimony and witnesses (including experts); qualification of experts; contested postponement of Hearing; attorney-client privilege, work product, and in camera privilege review; fraud in the inducement; negligent and intentional misrepresentation; malpractice; defamation; failure to defend; audits; breach of contract; breach of fiduciary obligations; quantum meruit; unjust enrichment; patent ownership; patent infringement; patent unenforceability; patent misuse; determination of prevailing party in multi-claim dispute; award of attorneys’ fees, costs, and interest; discovery costs prior to Award; neutrality of party-appointed arbitrators; tortious interference; measure of damages; lost profits; present worth; fair market valuation of business; fair market valuation of assets; reasonable royalty (e.g., Georgia-Pacific framework); corporate dissolution and distribution of assets. Amounts in dispute ranged up to over US$300 million (sole panelist).
MEDIATION Provider-administered and self-administered mediation of two-party and multi-party commercial, licensing, technology, and intellectual property disputes in which the principal issues concerned, for example, patents (e.g., for explosive devices, illumination apparatus, separation mechanisms, clothing, fibers/films/non-woven structures), copyrights (e.g., for architectural plans, computer files, advertising copy, website design, recordings, stock photos, compliance materials, movies), trademarks (for consumer goods, household furnishings, foodstuffs, beverages, jewelry, clothing, membership in environmental organization, charitable fundraising events), trade secrets (e.g., for customer lists, engineering information, and pricing information), loan guarantee (for real estate purchase/development), indemnification (e.g., by a licensee/sublicensor of its sublicensees), pharmaceutical marketing rights, professional services partnerships, subsidies for clinical provision of drugs, diagnostic apparatus intellectual property, digital books, aerospace technology, employment/headhunter services, party goods, over-the-counter (OTC) preparations and related intellectual property, website control/maintenance.
Issues in dispute: Ownership of patents, patent infringement, ownership of copyrights, copyright infringement, counterfeiting, trademark infringement, false advertising, trade defamation, cyber-piracy (concerning, e.g., domain name registration), ownership of websites, misappropriation of trade secrets, theft of artwork, fraud in the inducement, breach of fiduciary obligations, LLC operating agreements, violation of financial terms of loan, breach of mediation settlement agreement, insurance contributions, obligations of loan guarantor, bankruptcy, indemnification, scope of contractual rights, breach of non-competition clauses, quantum meruit, unjust enrichment. Amounts in dispute ranged up to about US$50 million.
LEGAL EXPERIENCE I am a generalist who is also an IP attorney, and I have over forty years’ experience in all aspects of intellectual property (65-70% patent, 20-25% trademark, and 5-10% copyright) and related areas (unfair competition, trade regulation/antitrust, corporate, employment, etc.), including: litigation; appeals; counseling; opinions; infringement, patentability, validity, state-of-the-art, and registrability searches and studies; oppositions; revocations; transactional and due diligence; licensing; and prosecution. Handled patent matters in many areas, including electrical (e.g., television, radar, RFID, communication satellites), information systems, business methods, Internet, website, software (e.g., financial, medical), mechanical (e.g., rotary filtration equipment, diesel engines, toys, medical devices and prostheses, box manufacturing, valves, airplane winglets), and chemical and biotech (e.g., organic and inorganic chemicals, pharmaceuticals, biologicals, monoclonal antibodies, medical assays, pulp and paper, cosmetics, polymers, and genetics). Patent litigation concerned, e.g., biodegradable plastics, blowing agents for polyurethane foams, cephalosporin antibiotics, surgical devices, sorters/collators for copying machines, wall covering systems, hard and soft contact lenses, palletizing and packaging equipment, clothing, and electrical connectors for batteries. Patent reissue, reexamination, interference, and patent term extension proceedings. Trademark and copyright matters involved, e.g., software, perfume, sporting goods, laboratory equipment, candy, gas stations, motel chains, music, books, advertising, and photographs. Handled matters involving unfair competition, advertising clearance, rights of privacy/publicity, moral rights, theft/misappropriation of trade secrets, confidentiality agreements, disclosure agreements, material transfer agreements, employment agreements, works made for hire, architectural works, US Customs, ITC Section 337, technical data export licenses, antiboycott compliance rules, and valuation of intellectual property.
PRE-LAW TECHNICAL EXPERIENCE Seven years’ experience as a chemical process design engineer and consulting engineer and three years (part-time) as a computer programmer. Most of the work as a chemical engineer concerned petrochemicals (e.g., styrene, ethylene oxide, glycols, maleic anhydride, fluorinated hydrocarbons, nylon), petroleum refinery operations, coal gasification, and cogeneration and included conceptual process design, equipment design (e.g., chemical reactors, distillation columns, heat exchangers), and economic evaluation. Helped design and supervise construction and installation of research laboratory pilot plant for synthesis of methane; designed, built, and installed large high-temperature acoustic muffler needed to permit pilot plant to operate. The work as a programmer involved a variety of languages and various machines.
The Law Office Of Stephen P. Gilbert, 2011-present; Partner, Bryan Cave LLP, 1988-2010 (Co-Leader of Intellectual Property Client Service Group, 2007-2010); Partner, Stiefel, Gross, Kurland & Pavane, P.C., 1988; Associate, Hubbell, Cohen, Stiefel & Gross, P.C., 1985-88; Associate, Fish & Neave, 1978-85; Associate, Arthur, Dry & Kalish, 1976-78; Consulting Engineer, Chem Systems, Inc., 1973-76; Chemical Process Engineer, Scientific Design Co., 1969-73; Computer Programmer, International Paper Co., 1967-69 (part-time).
Please see Experience section.
American Arbitration Association: Arbitrator Performance and Demeanor: Meeting Participant Expectations, 2018; e-Discovery: Arbitration in a Digital World, 2018; Advocacy in Arbitration, 2017; Out of Sight, Out of Mind: What You Need to Know about Preventing and Arbitrating Business-to-Business (“B2B”) Data Breaches, 2017; Red Flags & Risk Areas: Challenges to Arbitrator Authority, 2017; Using Guided Choice to Get the Most from Your Mediation, 2016; AAA/ICDR/Mediation.org Panel Conference, 2016; Society, Commerce and Dispute Resolution: Goals for Justice and Trade, 2015; Interim Awards, Partial Final Awards and the Functus Officio Doctrine: Tailoring Flexible Accessories to Suit a Strict Doctrine, 2014; What’s a Respondent Like You Doing in a Place Like This? Confronting Arbitrability and Jurisdiction Issues in Arbitration, 2013; Advanced Mediator Training – Managing The Dynamics of a Multi-Party Case, 2012; Muscular Arbitration – Trimming The Fat Out Of Arbitration, 2011; Fundamentals of Effective Mediation Advocacy, 2009; Arbitrator Ethics & Disclosure, 2007; Chairing an Arbitration Panel – Managing Procedures, Process & Dynamics, 2006; Dealing With Delay Tactics in Arbitration, 2005; Arbitration Awards – Safeguarding, Deciding & Writing Awards, 2003; Arbitrator Update, 2001; Commercial Arbitrator II Training – Advanced Case Management Issues, 2001; Commercial Arbitrator Training, 1999.
American Bar Association: Webinar, e-Discovery in Arbitration v. e-Discovery in Court, 2017; Dispute Resolution Section Annual Spring Meeting, 2015; Webinar, Ethical and Effective Negotiation: What Every Lawyer Should Know About Making a Deal, 2013.
American College of e-Neutrals, “Arbitrating in a Digital World: Fair & Expeditious Management of Electronic Discovery,” June 11-12, 2015.
Association for Conflict Resolution – Greater New York Chapter: Annual Meeting, 2011-2013 & 2015-2018.
Centre for Effective Dispute Resolution (CEDR): Mediator Skills Training Programme, 2013 (CEDR Accredited Mediator).
Chartered Institute of Arbitrators: Exploring Intra-Tribunal Dynamics and Decision-Making, 2016; Ethical Issues and Misconduct, 2016.
College of Commercial Arbitrators: Annual Meeting, 2011-2015 & 2017.
Columbia University School of Law/Chartered Institute of Arbitrators: International Commercial Arbitration, May 11-15, 2015.
Fordham University School of Law: Conference on International Arbitration/Mediation, 2011, 2013, 2016-2017; ADR Ethics in a Changing World, 2013.
ICDR: International Symposia in Advanced Case Management Issues, 2009 & 2011.
International Institute for Conflict Prevention & Resolution: Cross-Cultural Mediation Program, 2016; Annual Meeting, 2011 & 2012; CPR Basic Mediation Training Program, 2010.
Neuroawareness Consulting Services: Neuroscience Applied to Negotiation and Dispute Resolution, 2012.
New York International Arbitration Center: Arbitration Technopolis: Tips, Tools, And Technology To Support A Modern Arbitration Practice, 2017.
New York State Bar Association Dispute Resolution Section: Annual Meeting, 2012 & 2014-2018; Webinar, When Arbitration Goes to New York Courts: Recent Developments in the Recognition and Enforcement of Arbitral Awards, 2017; Dispute Resolution for 2013 and Beyond, 2013; New and Improved ADR Techniques for the Modern American Lawyer, 2012.
Silicon Valley Arbitration & Mediation Center: Webinar, Arbitrating Patent Disputes - The First Phases, 2017; Webinar, Arbitrating Patent Disputes - The Final Phases, 2017.
The Center For Mediation In Law: Advanced Seminar – Collaborative/Mediation Support & Development, 2011-2014; Seminar – Self-Reflection in Action for Conflict Professionals, 2012; Mediation Intensive Training, 2010.
U. S. District Court for the Southern District of New York: Mediator Practice Group meetings, 2016-2018; Discussion Series, Getting Past Impasse, 2015; Mediation Skills Workshop for Judges & Mediators, 2013; Refresher Training for Mediators, 2010 & 2012.
Various other ADR and related training (e.g., Thomson Reuters: Webinar, Predictive Coding Primer, 2018; Webinar, New Amendments To Federal Rules of Evidence, Rule 902, 2017).
Admitted to the Bar: New York (1976) and District of Columbia (1990); U.S. District Court: Southern (1977) and Eastern (1981) Districts of New York; U.S. Court of Appeals: Seventh (1980) and Federal (1982) Circuits; Registered Patent Attorney, U.S. Patent and Trademark Office (1976); U.S. Supreme Court (1980).
ARBITRATION – American Arbitration Association: Commercial, Patent, Large Complex Case, M&A, Joint Venture, Data Security, and International (ICDR) arbitration panels; International Institute for Conflict Prevention & Resolution: Biotech, Trademark, Technology, Real Estate, and New York City arbitration panels; Silicon Valley Arbitration & Mediation Center; World Intellectual Property Organization List of Mediators and Arbitrators; New York City Bar Association Arbitration Panel for Attorney Disputes. Also listed as an arbitrator with the Chartered Institute of Arbitrators, London Court of International Arbitration, and United States Council for International Business (USCIB) of the International Chamber of Commerce.
MEDIATION – American Arbitration Association Commercial Master Mediator Panel; International Institute for Conflict Prevention & Resolution mediation panel; Silicon Valley Arbitration & Mediation Center mediation panel; World Intellectual Property Organization List of Mediators and Arbitrators; U. S. District Court for the Southern District of New York mediation panel; New York City Bar Association Mediation Panel for Attorney Disputes. Also listed as a mediator with the Chartered Institute of Arbitrators, London Court of International Arbitration, and United States Council for International Business (USCIB) of the International Chamber of Commerce.
Fellow, College of Commercial Arbitrators (CCA)
Fellow, Chartered Institute of Arbitrators (CIArb)
Fellow, American College of e-Neutrals (ACESIN)
Member, National Academy of Distinguished Neutrals
Member/Panelist, Silicon Valley Arbitration & Mediation Center (SVAMC)
Member, New York International Arbitration Center (NYIAC)
Member, London Court of International Arbitration North American Users’ Council (LCIA)
Member, International Institute for Conflict Prevention & Resolution (CPR)
Member, Association for Conflict Resolution – Greater New York Chapter (ACR-GNY)
Member, American Bar Association (ABA)
Member, New York State Bar Association (NYSBA)
Member, Association of the Bar of the City of New York (NYCBA)
Member, New York Intellectual Property Law Association (NYIPLA)
BSChE (Bachelor of Science in Chemical Engineering), Columbia University School of Engineering and Applied Science, 1968; MSChE (Master of Science in Chemical Engineering), Columbia University School of Engineering and Applied Science, 1971 (master’s degree thesis proposed and evaluated a method for predicting thermodynamic activity coefficients); JD (Juris Doctor), Fordham University School of Law, 1975.
Author, “Dealing With Damages In Commercial Arbitration,” DISPUTE RESOLUTION JOURNAL, American Arbitration Association (forthcoming).
Co-Author, “Use Of Arbitration In Resolving Disputes Involving Intellectual Property,” chapter in HANDBOOK OF COMMERCIAL ARBITRATION, American Bar Association (forthcoming).
Co-Author, “Mediation Best Practices Guide For In-House Counsel: Make Mediation Work For You,” CPR Institute (2018).
Author, “The Arbitrator’s Proposal,” New York State Bar Association, NEW YORK DISPUTE RESOLUTION LAWYER, vol. 10, no. 2, pp. 24-30 (Fall 2017).
Co-Author, “Arbitrating Technology Cases: Considerations for Businesspeople and Advocates,” chapter in ADR ADVOCACY, STRATEGIES, AND PRACTICE FOR INTELLECTUAL PROPERTY AND TECHNOLOGY CASES, American Bar Association (2017).
Author, “Arbitration In The Life Sciences/Biotech/Pharmaceutical/Medical Device Field,” The College of Commercial Arbitrators website, http://www.ccaarbitration.org/wp-content/uploads/Life-Sciences-Pharmaceutical-Medical-Device-Field.pdf (2017).
Author, “Removing Anger in a Mediation Allowed Parties to Settle,” The Blog of The CPR Institute, https://blog.cpradr.org/2017/04/12/removing-anger-in-a-mediation-allowed-parties-to-settle/ (April 12, 2017).
Presenter, “Mediation: Principles, Process, And Strategies For The Mediator,” New York State Bar Association, Dispute Resolution Section, Mediation Committee (June 2016).
Co-Presenter, “Dispute Resolution for IP Claims: Lessons and Strategies,” Law Seminars International, Tenth Annual Conference on “Advanced Concepts in Licensing IP and Technology” (August 2015).
Co-Presenter, “Awarding Attorneys’ Fees: The Art And The Science,” American Bar Association, Dispute Resolution Section, 17th Annual Spring Meeting (April 2015).
Co-Presenter, “Ethics in Mediation: Lessons for Neutrals and Advocates,” LAWLINE “Bridging the Gap” CLE Presentation (December 2014).
Co-Presenter, “Principles on which to Anchor Awards of Attorneys’ Fees and Costs in Arbitration: The Art and the Science,” College of Commercial Arbitrators Annual Meeting (November 2014).
Co-Author, “Guidance Note: Arbitration And Social Media,” https://ciarbny.org/wp-content/uploads/Social-Media-Guidance-Note-Final062015.pdf (August 15, 2014).
Profiled in International Institute for Conflict Prevention & Resolution, ALTERNATIVES, vol. 32, no. 2, pp. 35-36, “Featured Panels: Technology Panel” (February 2014).
Author, “Legal Malpractice Claims Must Be Arbitrated; Arbitration Clause Not Unconscionable,” American Bar Association, Section of Litigation, Alternative Dispute Resolution, https://apps.americanbar.org/litigation/committees/adr/practice.html (January 10, 2014).
Author, “Prevailing Parties And Attorneys’ Fees,” DISPUTE RESOLUTION JOURNAL, vol. 68, no. 2, American Arbitration Association (November 2013).
Co-Author and Co-Presenter, “Getting The Arbitration Process Parties Want And Need—Drafting Arbitration Clauses,” CLE course presented at law firms under auspices of The College Of Commercial Arbitrators (2013-2014).
Co-Presenter, New York City Bar Association, “Dispute Resolution Among Lawyers” (2012).
Principal Reviser, New York City Bar Association, “The Amended Rules for Association-Sponsored Mediation And Arbitration Among Lawyers” (2012).
Co-Presenter, “Effective Use Of Experts In Mediation And Arbitration,” Association For Conflict Resolution – Greater New York Chapter Annual Meeting (June 2011).
Co-Presenter, “IP Alternative Dispute Resolution – Is It Ready For Prime Time?,” New York State Bar Association Annual Meeting, IP Session (January 2011).
Co-Author, New York State Bar Association White Paper, “The Benefits Of Mediation And Arbitration For Dispute Resolution In Intellectual Property Law” (January 2011), reprinted in New York State Bar Association, NEW YORK DISPUTE RESOLUTION LAWYER, vol. 4, no. 2, pp. 61-65 (Summer 2011).
Author, “Arbitrating To Avoid The Markman Do-Over,” DISPUTE RESOLUTION JOURNAL, American Arbitration Association (August/October 2006).
Prepared and presented CLE courses on arbitration, intellectual property, licensing, software, and litigation lessons learned from jury duty in a multi-week commercial case.
Guest lecturer on intellectual property in graduate school marketing courses.