Federal Circuit Patent Watch: Arbitration Rules Incorporated-by-Reference into License Agreement may Delegate to Arbitrator the Authority to Determine Arbitrability

Federal Circuit Patent Watch: Arbitration Rules Incorporated-by-Reference into License Agreement may Delegate to Arbitrator the Authority to Determine Arbitrability

Client Alerts

Contributors

Precedential Federal Circuit Opinions

  1. ROHM SEMICONDUCTOR USA, LLC v. MAXPOWER SEMICONDUCTOR, INC. [OPINION] (2021-1709, November 12, 2021) (LOURIE, O’MALLEY, and CHEN)      

    O’Malley, J.  Affirming district court decision compelling arbitration and dismissing declaratory judgment action without prejudice. The parties’ technology license agreement included an arbitration provision stating that arbitration is to be conducted “in accordance with the provisions of the California Code of Civil Procedure” (CCCP). The relevant provision of the CCCP stated that “[t]he arbitral tribunal may rule on its own jurisdiction.” Use of the permissive “may” allowed the arbitrator to address arbitrability only where necessary. And the license agreement’s incorporation of the CCCP (and the CCCP’s delegation of arbitrability to an arbitrator) was a sufficiently clear and unmistakable delegation of authority to determine arbitrability.

  2. GALPERTI, INC. v. GALPERTI S.R.L [OPINION] (2021-1011, November 12, 2021) (MOORE, PROST and TARANTO)     

    Taranto, J. Vacating decision of the Trademark Trial and Appeal Board finding no proven falsity in the applicant’s statement regarding its use of the mark being “substantially exclusive.” In finding no falsity in that statement, the Board committed two legal errors: requiring petitioner-challenger to establish its own proprietary rights to the mark and disregarding use of the mark by others during the relevant period. On the first issue, the petitioner-challenger did not need to establish secondary meaning of its own uses in order for those uses to be counted in determining the falsity of applicant’s claim of substantially exclusive use. On the second issue, use by anyone, regardless of relation to the challenger, may undercut a claim of substantially exclusive use.

Contributors