2:22-cv-00101
E.D. Tex.Feb 9, 2023Background:
- Parties: Bloom Energy Corporation (plaintiff) v. Plansee SE and Global Tungsten & Powders Corp. (defendants).
- April 1, 2010 IP Agreement contains Section 3.2 requiring disputes to be finally determined by WIPO expedited arbitration in Geneva (English).
- Defendants initiated WIPO arbitration (Feb. 9, 2022) alleging breach (royalty/non-solicitation), patent infringement, and know‑how misappropriation; arbitrator stayed arbitration pending this Court’s jurisdictional ruling.
- Bloom filed a declaratory judgment action (Apr. 3, 2022) asserting claims including correction of inventorship, patent invalidity and unenforceability, noninfringement, misappropriation, unfair competition, tortious interference, breach of supply/warranty, RICO, and Sherman/Clayton Act claims.
- Defendants moved to dismiss or stay under Rules 12(b)(1)/(3) to enforce arbitration (alternatively dismiss RICO/Clayton claims under 12(b)(6)).
- Magistrate Judge recommended granting the motion to STAY the entire action because the arbitration clause clearly and unmistakably delegates arbitrability to the arbitrator and most claims are arbitrable or sufficiently intertwined with arbitrable issues.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the arbitration clause delegates arbitrability to the arbitrator | Clause does not clearly delegate the threshold issue of arbitrability to an arbitrator | Section 3.2(b) (disputes "concerning... interpretation") clearly delegates arbitrability to an arbitrator | Delegation is clear; arbitrability threshold is for the arbitrator; court recommends stay |
| Are inventorship, invalidity, unenforceability, and noninfringement arbitrable? | These patent challenges are not expressly covered by the IP Agreement | 35 U.S.C. §294 permits arbitrators to consider statutory patent defenses; the Agreement has no carveouts | Counts relating to inventorship, invalidity, unenforceability, and noninfringement are arbitrable |
| Are misappropriation, unfair competition, tortious interference, RICO, and Sherman Act claims arbitrable or stayable? | Some tort/antitrust claims fall outside IP Agreement and predate the Agreement | These claims are intertwined with ownership/confidential‑information disputes governed by the IP Agreement (including Background IP) | These claims are arbitrable or at least stayable because resolution of arbitrable ownership issues will inform their merits |
| Whether the entire case should be stayed pending arbitration | Bloom opposes staying all claims and argues certain claims are non‑arbitrable | Defendants request dismissal or stay of action pending arbitration; arbitrator already stayed proceedings pending court ruling | Magistrate recommends staying the entire action and leaving arbitrability determinations to the arbitrator |
Key Cases Cited
- Invista N. Am., S.A.R.L. v. Rhodia Polyamide Intermediates S.A.S., 503 F. Supp. 2d 195 (D.D.C. 2007) (inventorship disputes have been found arbitrable under similar agreements)
- Douglass v. United Servs. Auto Ass'n, 79 F.3d 1415 (5th Cir. 1996) (procedural rule on objections to magistrate judge reports and recommendations)