arbitration : CAFC Alert

In a dispute over a patent licensing agreement, CAFC refuses to deny enforcement of an arbitration clause based on a technicality

Ryan Chirnomas | March 29, 2012

Promega Corporation et al. v. Life Technologies Corporation et al.

March 28, 2012

Panel:  Newman, Dyk.  Opinion by Dyk.  Dissent by Moore.

Summary

Despite an oversight relating to transfer of a patent licensing agreement during a licensee’s merger proceedings, the Federal Circuit held that the licensee retained its right to demand arbitration in a dispute with a sub-licensee. Although the licensee ultimately did not suffer any negative legal consequences due to this oversight, this case provides a good reminder to corporate IP counsel to carefully review all tech transfer agreements during mergers or reorganizations.  Here, a single letter to the sub-licensee could have saved the licensee from significant distraction.


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