Evans v. Bldg. Materials Corp. of Am., (Fed. Cir. June 5, 2017) (Before Reyna, Linn, and Taranto, J.) (Opinion for the court, Taranto, J.)
Before the underlying suit, the parties entered into an agreement that called for arbitration. After commencement of the suit, the district court denied a motion to dismiss or stay because it ruled that the claims in the complaint were not covered by the arbitration agreement. The Federal Circuit affirmed.
The Agreement was for promotion of a roofing product covered by certain intellectual property. It called for arbitration of “any dispute or disagreement aris[ing] under this Agreement.” The Court determined that the scope of the arbitration provision did not cover the intellectual property claims before the district court because the arbitration provision only covered the obligations established by the Agreement (the promotion of the plaintiff’s products). The court also found that the appellant failed to preserve its confidentially based argument, which arguably was covered by the arbitration provision, by failing to argue those grounds in its opening brief. Thus, the Court affirmed.
When negotiating a service agreement related to intellectual property assets, arbitration clauses should be written broadly enough to encompass claims based on those intellectual property assets, assuming that arbitration is the desired forum. “Any dispute or disagreement arising under this Agreement” is insufficient.