CAFC: Arbitration of Intellectual Property Claims Not Covered by Agreement

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. 



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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