Decision Compelling Arbitration Affirmed Where Valid Agreement Exists

This article previously appeared in Last Month at the Federal Circuit, April 2012

Judges: Rader, Newman (dissent), Dyk (author)

[Appealed from W.D. Wis.. Judge Crabb]

In Promega Corporation v. Life Technologies Corporation, No. 11-1263 (Fed. Cir. Mar. 28, 2012), the Federal Circuit affirmed the district court's decision granting Invitrogen IP Holdings, Inc.'s ("IP Holdings") motion to compel arbitration.

In 1996, Research Genetics, Inc. ("Research Genetics") was the exclusive worldwide licensee of patents and patent applications in the United States, Europe, and Japan (collectively, the "licensed patents") relating to genetic identification, including U.S. Patent No. RE37,984 ("the '984 patent"). On June 19, 1996, Research Genetics entered into a license agreement (the "1996 agreement") with Promega Corporation ("Promega"), which granted Promega "an exclusive, worldwide, license under [the licensed patents] " in certain markets and a nonexclusive license under the licensed patents for all other uses, other than those exclusively reserved for Research Genetics.

Under the terms of the 1996 agreement, Promega was required to pay Research Genetics a royalty on all products sold pursuant to the exclusive license grant. Additionally, Promega had the right to sublicense the licensed patents. The 1996 agreement included an arbitration clause which provided that "[a]ll controversies or disputes arising out of or relating to this Agreement, or relating to the breach thereof, shall be resolved by arbitration."

The 1996 agreement also provided that the agreement could "not be assigned by either party without the express written consent of the other party." In 2001, in connection with Research Genetics' merger into its parent company, Invitrogen Corporation ("Invitrogen"), Promega granted written consent to assign Research Genetics' rights under the 1996 agreement to Invitrogen. In...