Justia Arbitration & Mediation Opinion SummariesArticles Posted in Intellectual Property
ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc.
In 2007, ROHM Japan and MaxPower entered into a technology license agreement (TLA). ROHM Japan was permitted “to use certain power [metal oxide semiconductor field-effect transistors (MOSFET)]-related technologies of” MaxPower (Licensor) developed under a Development and Stock Purchase Agreement in exchange for royalties paid to MaxPower. The TLA, as amended in 2011, includes an agreement to arbitrate “[a]ny dispute, controversy, or claim arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof.” Arbitration is to be conducted “in accordance with the provisions of the California Code of Civil Procedure.”In 2019, a dispute arose between ROHM Japan and MaxPower concerning whether the TLA covers ROHM’s silicon carbide MOSFET products. MaxPower notified ROHM Japan of its intent to initiate arbitration. Shortly thereafter, ROHM's subsidiary, ROHM USA, sought a declaratory judgment of noninfringement of four MaxPower patents in the Northern District of California and four inter partes review petitions. The district court granted MaxPower’s motion to compel arbitration and dismissed the case without prejudice, reasoning that the TLA “unmistakably delegate[s] the question of arbitrability to the arbitrator.” The Federal Circuit affirmed. In contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate arbitrability to an arbitrator. View "ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc." on Justia Law
Landau v. Rheinold
The Second Circuit affirmed the district court's confirmation of an arbitration award under 9 U.S.C. 9 for petitioners and other individuals. This case involved a dispute between two groups of the Bobov Hasidic Jewish community in Brooklyn that agreed to arbitration before a rabbinical tribunal. The tribunal ruled that petitioners owned the "Bobov" trademark, and the district court confirmed the ruling.The court held that district courts should "look through" a 9 U.S.C. 4 petition to the underlying controversy to determine whether subject matter jurisdiction exists to confirm the arbitration award pursuant to 9 U.S.C. 9. The court held that the district court properly looked through the arbitration petition here to the underlying controversy to determine that it had subject matter jurisdiction. In this case, the district court properly turned aside respondent's non-jurisdictional arguments, found the petition "effectively" unopposed and that no issue of material fact precluded confirmation, and did not err in confirming the award. View "Landau v. Rheinold" on Justia Law
Evans v. Building Materials Corp.
In 2009, RNB and GAF entered into an agreement under which GAF would promote RNB’s “Roof N Box” product, a three-dimensional roofing model, to building construction contractors affiliated with GAF. The agreement required the parties to submit disputes “arising under” the agreement to arbitration. GAF terminated the agreement after about a year. In 2016, RNB, together with its founder and president, Evans, brought suit against GAF based on GAF’s activities in marketing its own product that competes with the Roof N Box. The complaint alleged design patent infringement, trade dress infringement, and unfair competition. GAF moved to dismiss or stay the action pending arbitration. The district court denied that motion. The Federal Circuit affirmed, stating that GAF’s assertion that the arbitration provision covers the claims stated in the complaint is “wholly groundless.” The complaint challenges actions whose wrongfulness is independent of the 2009 agreement’s existence. View "Evans v. Building Materials Corp." on Justia Law
LG Elecs., Inc. v. Interdigital Commc’ns, Inc.
Defendants, collectively referred to as “InterDigital,” and LG Electronics, Inc. entered into a non-disclosure agreement, titled “Agreement Governing Confidential Settlement Communications (the NDA), after LG filed a demand for arbitration with the International Centre for Dispute Resolution. InterDigital claimed that the parties did not intend to prevent the submission of pre-NDA evidence to the arbitral tribunal and disclosed in its brief to the tribunal alleged settlement communications. LG then filed this action seeking injunctive relief compelling InterDigital to withdraw its brief, claiming that InterDigital breached the NDA by submitting the documents to the arbitrators. InterDigital moved to dismiss LG’s complaint in favor of arbitration, asking the Court of Chancery to exercise its discretion under the doctrine established in McWane Cast Iron Pipe Corp. v. McDowell-Wellman Engineering Co. to dismiss the action in favor of the earlier-filed arbitral proceeding. The Court of Chancery dismissed the action in favor of the earlier-filed arbitral proceeding under the McWane doctrine, concluding that this case met the McWane doctrine’s requirements. View "LG Elecs., Inc. v. Interdigital Commc’ns, Inc." on Justia Law
Oracle America, Inc. v. Myriad Group A.G.
This case stemmed from a dispute between the parties over license agreements which allowed Myriad access to Oracle's Java programming language. On appeal, Myriad challenged the district court's partial denial of its motion to compel arbitration. The court concluded that the incorporation of the United Nations Commission on International Trade Law (UNCITRAL) arbitration rules into the parties' commercial contract constituted clear and unmistakable evidence that the parties agreed to arbitrate arbitrability. Accordingly, the court reversed and remanded for further proceedings. View "Oracle America, Inc. v. Myriad Group A.G." on Justia Law
Promega Corp. v. Life Tech. Corp.
In 1996, RG, exclusive licensee of a German patent and corresponding patents in the U.S., Europe, and Japan relating to genetic identification, entered into a license agreement with Promega, granting Promega certain licenses. The agreement included a clause, providing that “all controversies or disputes arising out of or relating to this Agreement, or relating to the breach thereof, shall be resolved by arbitration” and prohibited assignment without consent. Assignments were approved in 2001 and 2003; a subsequent assignment from IP to LT was not approved. In 2008 LT believed that Promega was paying less than required royalties. Negotiations failed and LT demanded arbitration. Promega sought a declaratory judgment of non-arbitrability, alleging infringement of five patents and contenting that rights under the 1996 agreement had never been assigned to LT. IP then moved to compel arbitration. The district court ordered arbitration, finding that IP was the assignee, remained in existence, and that it was irrelevant that Promega alleged that IP was merely a puppet of LT. The Federal Circuit affirmed.View "Promega Corp. v. Life Tech. Corp." on Justia Law
Lenox MacLaren Surgical Corp. v. Medtronic, Inc.
In this interlocutory appeal, Defendants Medtronic, Inc. (and several of its subsidiaries) appealed a district court's denial of their motion to compel Plaintiff Lenox MacLaren Surgical Corporation (LM) to arbitrate its antitrust claims against them even though none of the Defendants signed the distribution and licensing agreement containing the arbitration provision. Upon review of the district court record, the Tenth Circuit concluded that even if LM's antitrust claims either expressly or implicitly alleged collusion between subsidiary Medatronic Danek USA and one or more of the other Medtronic subsidiaries, they were not "intimately founded in or intertwined with" the obligations in the agreement at issue in this case. "In sum, equity does not demand that LM be compelled to arbitrate its antitrust claims against the Medtronic Defendants. The district court therefore did not err in denying the Medtronic Defendants’ motion to compel arbitration." View "Lenox MacLaren Surgical Corp. v. Medtronic, Inc." on Justia Law
Wells Fargo Bank, N.A. v. WMR e-PIN, LLC, et al.
Synoran and e-Pin (appellants) appealed from the district court's confirmation of an arbitration award in favor of Wells Fargo, which had prevailed on its claims for breach of contract and for misappropriation of trade secrets. Appellants maintained that the district court lacked jurisdiction to confirm the award, erred in confirming the award, and abused its discretion in denying their motion to amend or terminate a permanent injunction issued as part of the award. The court rejected appellants' claim that Wells Fargo was a citizen of both South Dakota and California and concluded that the district court did not err in determining that it had subject-matter jurisdiction over the action. The court also held that the district court did not err in determining that appellants had waived their right to challenge the award of injunctive relief; in declining to vacate the award on the grounds that the arbitration panel exceeded the scope of its arbitral mandate; and in confirming the award of attorneys' fees against e-Pin. The court further held that the district court did not abuse its discretion in denying the motion to terminate or amend the permanent injunction. Accordingly, the judgment was affirmed. View "Wells Fargo Bank, N.A. v. WMR e-PIN, LLC, et al." on Justia Law
Nokia Corp. v. Interdigital Communications, Inc., et al.
Appellants appealed from an order of the district court denying its motion, made after a preliminary injunction was vacated by the court, to recover damages against an injunction bond posted by appellee. At issue was whether the district court correctly concluded that the damages sought were not proximately caused by the injunction, and that, in deciding this issue, the district court should have applied a presumption in favor of recovery against the bond. The court held that a wrongfully enjoined party was entitled to a presumption in favor of recovery against an injunction bond and that the district court's decision was insufficient to permit meaningful appellate review. Accordingly, the court vacated the order and remanded for reconsideration and clarification.