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Roderick Thompson

Roderick M. Thompson, Esq.


Case Manager
Scott Schreiber
T: 415-774-2615
F: 415-982-5287
Two Embarcadero Center, Suite 1500, San Francisco, CA 94111

Biography

Available to conduct virtual/remote mediations, arbitrations and other ADR proceedings on a variety of online platforms, including Zoom.

Rod Thompson
applies his deep experience in complex commercial litigation from three different perspectives—as a trial lawyer, mediator and arbitrator—to efficiently resolve even the most difficult cases. Before joining JAMS, Mr. Thompson was an associate and then partner at a large international law firm for the first 20 years of his career, specializing in antitrust, competition and intellectual property litigation. For the next 20 years, he was a partner at a midsize Bay Area law firm known for success and its willingness to represent plaintiffs, as well as defendants, in high-stakes commercial litigation. All the while, Mr. Thompson served as neutral arbitrator, mediator and early neutral evaluator as time permitted.

Mr. Thompson brings the perspective of an experienced commercial trial lawyer/advocate to his role as neutral. As a mediator, early on in the process, he uses probing questions and effective listening to gain an understanding of the parties’ underlying interests as well as the merits of their positions. He believes that confidentiality and flexibility make mediation an effective tool for resolving commercial disputes. The parties must trust the mediator to disclose their true interests/needs, knowing that confidential information will not be shared with an opposing party or counsel without permission. Using the flexibility of mediation, Mr. Thompson helps parties to adapt and structure the process to best fit the unique opportunities presented by their dispute and any actual or potential business relationships.

As arbitrator, Mr. Thompson manages even in the most complicated and challenging disputes to ensure that the parties have the benefit of an efficient and fair adjudicative process and a fully informed, justified and understandable decision. Whether serving as chair, a wing or sole arbitrator, Mr. Thompson will ensure that the parties are provided an adequate opportunity to gather and present their evidence and arguments. Always looking to manage the process, he will rule promptly and decisively, working with the parties to obtain efficiently the necessary information to provide a reasoned award.

ADR Experience and Qualifications

  • Mediator since 1987, when Mr. Thompson was a member of one of the first classes of mediators trained in San Francisco in the early days of ADR 
    • Before 2000, mediated a wide array of disputes, including commercial, employment, trusts and estates, real estate and personal injury cases
    • Since 2000, has served as mediator primarily in commercial disputes, frequently involving technology, intellectual property and/or competition related cases; has successfully mediated over 100 patent, trade secrets, trademark/advertising and copyright-related controversies
  • Arbitrator, serving as sole, wing and chair, in a variety of cases beginning in the early 1990s
    • Representative awards include multi-week patent cases, law firm break-ups, software development and licensing disputes, and disputes over distribution agreements and commissions earned.
  • Early Neutral Evaluator, U.S. District Court for the Northern District of California, 2000–present
  • Settlement Judge Pro Tem, Unlawful Detainer Calendar, San Francisco Superior Court, 2004–2011

Representative Matters

Antitrust and Competition

  • Represented a defendant in class action alleging price-fixing by oil companies (In re Coordinated Pretrial Proceedings in Petroleum Prods. Antitrust Litig., 906 F.2d 432 (9th Cir.1990)
  • Trial lawyer in multiple litigation and arbitrations for owner of a global distribution system related to the introduction of disruptive online travel technology
  • Trial lawyer in Walker Process claim litigated over the anticompetitive assertion of patents covering touchpad locking lockers known to be invalid (Ojmar US LLC v. Security People Inc. (Case No. 16-cv-04948-HSG (N.D. Cal. 2018))

Copyright  

  • Conducted mediation via videoconference between security software competitors over defendant’s software program, which identified plaintiff’s product as having deceptive characteristics because it allegedly produced false positives for the presence of malware, and defendant’s claimed immunity from suit potentially available under Section 230 of the Communications Decency Act.
  • Represented amici in briefing in Authors Guild, Inc. v. HathiTrust, 755 F. 3d 87 (2nd Cir. 2014)(fair use of digital library for those with disabilities)
  • Sole arbitrator in copyright license dispute between a Swiss distributor and a U.S. copyright owner on royalties and copyightability of a popular toy sold worldwide
  • Trial lawyer in dispute over photographs displayed on the internet (Rosen v. Hosting Services, Inc., 771 F. Supp. 2d 1219 (C.D. Cal. 2010)) (summary judgment on DMCA claim)
  • Trial lawyer in litigation over copyrighted knick-knacks (Figi Graphics, Inc. v. Dollar General Corp., 33 F. Supp. 2d 1263 (S.D.1998)) (dismissed for lack of personal jurisdiction)  
  • Trial lawyer defending law firm against conflict of interest/malpractice claims arising from its alleged simultaneous representation of a celebrated rock-and-roll band and the lead singer’s father, who purchased the copyrights to the group’s songs

Entertainment

  • Conducted early neutral evaluation followed by mediation in dispute over copyright ownership in full-length documentary film with competing copyright ownership claims by the producer and director, where the subject of the documentary favored one party
  • Trial lawyer in music and movie downloading case (Disney Enterprises, Inc. v. Hotfile Corp., 798 F. Supp. 2d 1303 (S.D. Fla. 2011)) (motion to dismiss denied in part)
  • Mediated dispute among members of Jefferson Starship/Airplane over ownership of the group’s name and its use in reunion concerts
  • Mediated dispute between real-world owner of famous trademark used on vehicles nationwide and the maker of a video game console using software that incorporated the trademark into the games
  • As trial lawyer, represented a party in the malpractice/copyright lawsuit brought by Mike Love of the Beach Boys against a law firm, several other defendants and fellow Beach Boy Brian Wilson regarding alleged wrongful transfer of the copyrights in the Beach Boys’ catalog of songs

Health Care

  • Served as sole arbitrator in a dispute between a hospital system and a software company over email archiving and storage software
  • Represented a medical device client on products liability and intellectual property issues, including defense of a substantial class action
  • Represented two doctors/inventors in a dispute with a university and another doctor over their discovery of an improved method for pain relief
  • Mediated dispute between competitors over medical device patents related to treatment of chronic pain using spinal cord stimulation therapy
  • Served as wing arbitrator in multi-patent arbitration over inventions related to balloon-expandable coronary stents; panel issued claims construction order and held multi-week hearing before issuing final award
  • In a large antitrust action, represented the plaintiff class of self-funded health care payors (employers and union trusts) (UFCW & Employers Benefit Trust v. Sutter Health et al. (2015) 241 Cal. App. 4th 909) (affirming denial of motion to compel arbitration); case settled with defendants agreeing to groundbreaking monetary and injunctive relief
  • Represented third-party witnesses in arbitrations between large hospital system and health insurer over alleged breach of contract by insurer in not forcing its clients (non-parties to the contract) in to arbitration
  • Represented inventor of commercially successful treatment for dry eyes in successful effort to have his name added as inventor on several patents

Patent Cases

  • Panel chair in a complex and protracted arbitration between competitors (one based in China and the patent owner in the U.S.) over seven patents related to blow-molding technology and related counterclaims for breach of a cross license; panel conducted a two-day Markman (or claim construction) hearing and a three-week evidentiary hearing, issued a claims construction and a dozen other pre-hearing orders, three interim awards and a lengthy final award
  • Mediated two disputes between an inventor/employee and his former employer, a semiconductor equipment manufacturer, related to patent rights under Section 2870 of the California Labor Code and a separate, second invention on a micro lens array
  • Served on arbitration panel in dispute over the amount of FRAND/SEP royalties paid by a chip supplier seeking indemnity from its contract chip package design and manufacturer
  • Served as early neutral evaluator in legal malpractice claim asserted against international law firm by a biotech startup with a patented invention that predicted disease based on protein biomarkers present in a patient’s blood; the law firm allegedly copied a portion of the specification of plaintiff’s patent and used it in an application the firm filed for a competitor; converted to mediation and settled
  • Mediated dispute between competitors (one in Napa Valley and the other in South Africa) over patents covering a volatile acid reduction method used in the wine industry that eventually was resolved by the defendant purchasing the plaintiff’s business unit
  • Mediator in multi-patent dispute between chip makers over patents covering communication between a host computer and a network for transmission of a frame of data stored to a dedicated transmission buffer
  • Trial lawyer defending two, 10-patent cases filed by non-practicing entity, which purchased the rights to thousands of patents from a supplier (Round Rock Research v. Dell 904 F.Supp.2d 374 (D. Del. and E.D. Texas 2011-2012))
  • Mediator in several cases involving the same patent owner asserting infringement of patents relating to methods and controllers for improving the response time of liquid crystal displays against tablet/e-readers suppliers
  • Successfully handled several patent cases involving alleged payment card technology inventions (Restricted Spending Solutions, LLC v. Allow Card Of America, Inc. 743 F. Supp. 2d 954 (N.D. Ill. 2010)) (granting summary judgment) (Every Penny Counts, Inc. v. American Express Co., 563 F. 3d 1378 (Fed. Cir. 2009)) (affirming grant of judgment at Markman hearing)
  • Trial lawyer in three-week trial over alleged infringement of patents covering methods used in the manufacture of semiconductor chips (Dainippon Screen Mfg. Co., Ltd. v. CFMT, Inc., 142 F. 3d 1266 (Fed. Cir. 1998)) (reversing dismissal for lack of personal jurisdiction and giving opponent a "chutzpah award")

Technology Contract Disputes

  • Successfully mediated dispute between large Silicon Valley computer networking company and European chip design/manufacturer over failed set-top box product and alleged hundreds of millions of lost profit damages
  • Sole arbitrator in breach of contract claims over development of email archiving and storage software developed under a master software license agreement and multiple SOWs; issued interim and final awards
  • Trial lawyer in breach of contract arbitration over development of software used for generating rewards points and associated gifts under a master software license agreement and multiple SOWs; case settled shortly before hearing
  • Wing arbitrator on panel hearing dispute between large chip supplier and startup over joint development agreement of technology intended to be used for GPS pet tracking by insertion of a chip in pet’s collar; after multiple hearings, panel issued interim and final awards
  • Sole arbitrator over alleged breaches of and claims for indemnity under an exclusive license agreement between competitors providing software programs used by schools
  • Trial lawyer in arbitration between large Silicon Valley computer chip maker and European handset maker over chip design/failure and hundreds of millions of alleged unpaid expenses and damages

Trademark/Trade Dress

  • UDRP domain name arbitrator for WIPO and CPR, 2000–present
  • Mediated dispute between an established supplier and a startup that wanted to use the same, possibly descriptive, trademark; no matter who won, litigation threatened to damage the trademark; resolved via pre-mediation session discussions leading to business solution
  • Successfully mediated two cases involving a computer chip company’s well-known trademark against several internet startups that incorporated the mark as part of their names
  • Successfully mediated series of cases involving a strong trademark used by a primarily brick-and-mortar business against several internet competitors that used the trademark without consent on their websites
  • Trial lawyer in dispute over trade dress between a new entrant and the incumbent in market for clean-burning fire logs
  • Trial lawyer in trademark disputes over licensing/482 tax issues and the tax consequences of transfer of trademark rights from U.S subsidiary to international parent company

Trade Secrets

  • Mediated and resolved acrimonious litigation between a small, specialized software company that had created customized programs for its much larger, vertically integrated customer; both claimed to have trade secrets in the program; matter resolved by leveraging related but separate business relationships and use of guaranteed minimum sales
  • Mediated successfully dispute between two companies with Italian principals, one located in Italy and the other in Silicon Valley, involving trade secret, licensing and trademark claims in the consumer electronics and IoT space
  • Acted as mediator in dispute between U.S. technology company that sold products designed to increase internet advertising revenue and its exclusive European reseller; mediation conducted by videoconference with one party in Switzerland and the other in San Francisco; case resolved via a mediator’s proposal
  • Served as mediator in dispute between former employees and nationwide educational service provider over claims of breach of duty of loyalty for competing while still employed and use of proprietary lead generations and methods for improving classroom teaching effectiveness
  • Trial lawyer in many disputes involving claims that former employees were competing with former employer by allegedly using stolen trade secrets

Selected Awards and Honors

  • List of the World’s Leading Technology Neutrals, Silicon Valley Arbitration & Mediation Center, 2016–2020
  • Best Lawyers in America,Intellectual Property Litigation, 2015–2020
  • Managing Intellectual Property, IP Stars, 2013–2020
  • California Lawyer Attorney of the Year Award (for his Ninth Circuit victory representing the City of Sunnyvale in defeating a Second Amendment challenge), 2016
  • Daily Journal, List of the Top 75 IP Litigators in California (twice)
  • Benchmark Litigation, State Litigation Stars in California
  • Northern California Super Lawyers, 2011–present
  • PLC Which Lawyer?for Dispute Resolution
  • Award of Recognition (for service in the court's Alternative Dispute Resolution Program), U.S. District Court for the Northern District of California), 1999
  • Mediator of the Year, Distinguished Service Award, American Arbitration Association, 1989

Memberships

  • Member, Board of Directors, The Mediation Society, 2019–present
  • Member, Local ADR Rules Committee, United States District Court for the Northern District of California, 2017–2019
  • Member, Technology and California Regional Panels, CPR Institute for Dispute Resolution, 1994–present
  • Member, Mediation and Early Neutral Evaluation Panels, United States District Court 
  • Member; UDRP, Arbitration and Mediation Panels; World Intellectual Property Organization; 1999–present
  • Member; IP, Antitrust, Business Law, Dispute Resolution and Science and Technology Sections; American Bar Association
  • Member, Antitrust and Litigation Sections, State Bar of California 
    • Past Chair, Alternative Dispute Resolution Committee
    • Member, Litigation Section Executive Committee
  • Member, ADR Section, San Francisco Bar Association
  • Member, American Intellectual Property Law Association (AIPLA), 1992–2015
    • Chair and Co-Chair, ADR Committee
  • Member, Licensing Executives Society, 1992–2010

Speaking Engagements

  • Two-Part Online Course: Mediation in the Patent/Technology Case; Silicon Valley Arbitration and Mediation Center and Stanford Law School (with David Allgeyer, Janet Martinez and Harrie Samaras); August 4 and 6, 2020; see https://svamc.org/event/two-part-online-course-mediation-in-the-patent-technology-case
  • Online presentation: COVID-19’s Impact on International Tech Startups: Appropriate Dispute Resolution to the Rescue, ABA Business Law Section (with Ryan Abbott (moderator), Elana Freeman, Olga Mack and Stephanie Montaño), July 27, 2020
  • Silicon Valley Arbitration and Mediation Center (SVAMC) All-Members Meeting, panel on the impact of litigation funding on meditation and arbitration, May 2019
  • The Mediation Society, roundtable on the impact of litigation funding on meditation, January 2019
  • Advanced Issues in Tech and Patent ADR: Advocacy at the Arbitration Hearing, WIPO and SVAMC (panel with Amb. (r) David Heubner, Neil A. Smith and Grant Kim), November 7, 2018
  • Advanced Issues in Tech and Patent ADR: Making Mediation Work in the Tech/Patent Case, WIPO and SVAMC (moderator of Panel: Less Weinstein, Brad Waugh and Cathleen Anderson), November 7, 2018
  • How Technology Is Shaping the Future of ADR Practice, ABA Dispute Resolution Section (moderator of panel: Gary Benton, Daralyn Durie, Daniel Garrie and Renny Hwang), April 20, 2017
  • The Future of Patent Mediation, ABA Dispute Resolution Section (panelist along with Jeff Kichaven (moderator), Michael Ng. Stefani Shanberg and Lauren Sigler), April 18, 2017
  • Smarter, Faster, Cheaper Technology Dispute Resolution Conference, Panel: Should Arbitration and Mediation Be Utilized in Tech Disputes? Faster? Cheaper? (with Susan Nycum, Les Schieflebein, Serena Lee, Colin Rule and Robert Morrill), September 16, 2016 
  • Problems/Challenges in Effectively Using Arbitration and Mediation in Patent Litigation and Ways to Improve Their Use, ABA Annual Meeting (moderator of panel: Judge James Ware (Ret.), Scott Donahey and Harrie Samaras), August 8, 2013
  • Comparison of Available Arbitration Clauses and Forums, AIPLA Annual Meeting (presentation with handout publication; panel with Mike Kaminski, Kevin Casey and Tom Creel), October 18, 2001

Selected Publications

  • Partner, Farella Braun + Martel LLP, 1999–2020
  • Partner/Associate, Pillsbury Madison & Sutro LLP, 1980–1999
  • J.D. Hastings College of the Law, 1980
    • Order of the Coif
  • B.A., Economics, Trinity College, 1977

News

Events

Practice Areas

  • Business & Commercial
  • Cybersecurity & Privacy
  • Employment Law
  • Entertainment & Sports
  • Health Care
  • Intellectual Property
Available nationwide

Disclaimer

This page is for general information purposes.  JAMS makes no representations or warranties regarding its accuracy or completeness.  Interested persons should conduct their own research regarding information on this website before deciding to use JAMS, including investigation and research of JAMS neutrals. See More

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