774 F.Supp.3d 837
E.D. Tex.2025Background
- Plaintiff Adaptive Spectrum and Signal Alignment, Inc. (ASSIA) sued AT&T Corp. and others in the Eastern District of Texas for patent infringement.
- AT&T moved to transfer the case to the Northern District of California based on a forum selection clause in a contract between the parties or, alternatively, to stay the case pending arbitration.
- AT&T relied on a joint development and patent license agreement, specifically Amendment No. 12, arguing the forum selection clause applied to this dispute.
- ASSIA contended the patents at issue were not covered by the agreement, as they were developed and owned by ASSIA, and that the relevant agreement (and its forum clause) did not apply to the claims in this lawsuit.
- AT&T also argued a separate arbitration provision compelled resolving disputes regarding the forum selection clause via arbitration.
- The court denied AT&T’s motion, finding neither the forum selection clause nor the arbitration provision applied to the dispute at hand.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Applicability of Forum Selection | Clause applies only to agreement scope | Clause is broad, covers any claim | Clause inapplicable |
| Scope of "Claim" in Contract | Tied to indemnity/Stanford sublicense | Has plain meaning, covers this case | Not broad enough to cover suit |
| Application to ASSIA-owned Patents | Not licensed, expressly excluded | License defense is non-frivolous | No nexus; patents excluded |
| Applicability of Arbitration Clause | Only applies to DSLO Agreement | Applies to disputes over forum clause | Clause does not govern this case |
Key Cases Cited
- Atl. Marine Constr. Co., Inc. v. U.S. Dist. Court for the W. Dist. of Tex., 571 U.S. 49 (controlling weight to valid forum-selection clauses in most cases)
- Gen. Protecht Grp., Inc. v. Leviton Mfg. Co., 651 F.3d 1355 (standard for applying a forum selection clause in the context of a license defense)
- The Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (forum selection clauses generally enforced unless unreasonable)
- Weber v. PACT XPP Techs., AG, 811 F.3d 758 (enforceability of forum selection vs. contract interpretation)
- Mitsubishi Motors Corp. v. Soler Chrysler–Plymouth, Inc., 473 U.S. 614 (scope of arbitration agreement determined by federal law)