The opinion of the court was delivered by: Judge Blanche M. Manning
Plaintiffs Abbott Laboratories and its German subsidiary, Abbott GmbH & Co. K.G., have filed a motion to compel arbitration and for an antisuit injunction against defendant Qiagen Gathersburg, Inc., all stemming from a dispute over a patent licensing agreement. For the reasons set forth below, Abbott Laboratories' motion to compel arbitration is granted, while the motion to compel arbitration of its German subsidiary is denied, as is the request for an antisuit injunction.
Abbott Laboratories is a pharmaceutical developer and manufacturer with an international presence, including entities to which the court will refer separately as Abbott US and Abbott Germany, and jointly as Abbott. Abbott filed the instant suit against defendant Qiagen Gaithersburg, Inc., which owns patented technology used to manufacture a test for the human papilloma virus.
Qiagen licensed Abbott US to use its technology. Under that license, Abbott Germany was also entitled to use the technology. But Qiagen purported to terminate the licensing agreement in writing on March 13, 2009, after Abbott allegedly failed to pay all of the royalties due. In a written response to Qiagen's March 13, 2009, letter, Abbott US disputed that Qiagen had any basis for terminating the agreement or that Qiagen had complied with the procedures to terminate that are set out in the licensing agreement.
Qiagen asserts that Abbott has still not fully paid it all of the royalties due under the licensing agreement, and thus filed suit against Abbott Germany in Germany on November 4, 2009, alleging patent infringement. Abbott US and Abbott Germany responded by filing the instant action in which they seek the following relief: (1) Abbott US's request for an order compelling arbitration over whether the licensing agreement has terminated (Count I); (2) Abbott Germany's request for an order compelling arbitration over the patent infringement issues raised in the German litigation (Count II); and (3) an antisuit injunction against Qiagen enjoining it from proceeding with its patent infringement action against Abbott Germany (Count III).
Before the court is Abbott's motion to compel arbitration and for a preliminary antisuit injunction.
The Federal Arbitration Act provides that: a contract evidencing a transaction involving commerce to settle by arbitration a controversy thereafter arising out of such contract or transaction, or the refusal to perform the whole or any part thereof, ... shall be valid, irrevocable, and enforceable, save upon such grounds as exist at law or in equity for the revocation of any contract.
9 U.S.C. § 2. Courts have broadly interpreted the Act to govern the interpretation, enforcement, and validity of arbitration agreements in commercial contracts. Moses H. Cone Memorial Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 24 (1983). The purpose of the Act is to promote arbitration clauses in commercial contracts, and therefore, courts broadly construe the Act and resolve any doubts in favor of arbitration. Mitsubishi Motors Corp. v. Soler Chrysler-Plymouth, Inc., 473 U.S. 614, 625 (1985); Moses H. Cone Memorial Hosp., 460 U.S. at 24-25. However, "arbitration is a matter of contract and a party cannot be required to submit to arbitration any dispute which he has not agreed so to submit." AT & T Technologies, Inc. v. Communications Workers of America, 475 U.S. 643, 648 (1986).
I. MOTION TO COMPEL ARBITRATION
A. Scope of Arbitration Clause
Article 16 of the licensing agreement contains the arbitration clause, which reads as follows:
The parties agree that any dispute that arises in connection with this Agreement shall be resolved by binding Alternative Dispute Resolution in accordance with the ...