Promega Corporation and Max-Planck-Gessellschaft zur Forderung der Wissenschaften E. V. v. Life Technologies Corporation, Invitrogen IP Holdings, Inc. and Applied Biosy stems, LLC (U.S. Court of Appeals for the Federal Circuit No. 2011-1263)

摘要

In 1996, Research Genetics, Inc. ("Research Genetics") was the exclusive worldwide licensee of German patent number 38 34 636 and corresponding 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 which granted Promega "an exclusive, worldwide, license under [the licensed patents] for the HUMAN GENETIC IDENTITY MARKET and the HUMAN CLINICAL MARKET" and a nonexclusive license under the licensed patents for all other uses other than those exclusively reserved to Research Genetics, J.A. 646-47. Underthe terms of the 1996 agreement, Promega was required to pay Research Genetics an initial license issue fee and a royalty on all products sold pursuant to the exclusive license grant. Additionally, under section 9.4 of the 1996 agreement, Promega had theright to sublicense the licensed patents. Additionally, section 22.1 of the 1996 agreement included an arbitration clause which provided that "[a] 11 controversies or disputes arising out of or relating to this Agreement, or relating to the breach thereof, shall be resolved by arbitration." J.A. 658.