Production Resource Group, L.L.C. v. Martin Professional, A/S
2012 U.S. Dist. LEXIS 159854
S.D.N.Y.2012Background
- PRG alleges patent infringement by Martin under post-termination conduct in the U.S.
- Two contemporaneous agreements (License and Consultancy) include choice-of-law/venue and dispute-resolution provisions.
- Forum selection clauses designate England and Wales Courts; dispute resolution requires mediation before court resolution.
- Plaintiff contends contracts terminated; Defendants argue contracts govern and enforce forum clause.
- Court analyzes whether forum clause is mandatory, covers the action, and governs patent-related disputes under federal forum-clause law.
- Court grants Defendants’ motion to dismiss, finding forum selection clauses enforceable and applicable to the patent claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the forum clause enforceable under Phillips test? | Clauses are not applicable since contracts terminated and action is patent enforcement. | Clauses are enforceable; the dispute arises under or relates to the agreements. | Clause enforceable; valid four-part test supports enforcement. |
| Is the forum clause mandatory or merely permissive? | Clauses are permissive since enforcement language limits only certain aspects. | Clauses are mandatory given exclusive jurisdiction language. | Clauses are mandatory. |
| Do the forum clauses cover this patent infringement action? | Claims do not arise under the contracts; not covered. | Claims are related to or arise in relation to the contracts. | Patents claims relate to and are governed by the forum clauses. |
| Does enforceability fail because termination would render clauses inapplicable? | Termination voids forum clause applicability. | Survival clauses keep forum clause viable post-termination. | Survival clauses preserve applicability; termination does not defeat enforceability. |
| Is enforcement unreasonable given patent-law considerations across jurisdictions? | English courts may not apply US patent law; enforcement would be unjust. | No substantial reasons showing unreasonableness; courts can interpret or apply cross-border patent issues. | Enforcement not unreasonable; clause upheld. |
Key Cases Cited
- Phillips v. Audio Active Ltd., 494 F.3d 378 (2d Cir. 2007) (four-part analysis for forum-selection clauses)
- TradeComet.com LLC v. Google, Inc., 693 F. Supp. 2d 370 (S.D.N.Y. 2010) (enforcement of forum selection clause can be via Rule 12(b) motions)
- Cfirstclass Corp. v. Silverjet PLC, 560 F. Supp. 2d 324 (S.D.N.Y. 2008) (notes multiple paths to enforce forum selection clauses)
- New Moon Shipping Co. v. MAN B & W Diesel AG, 121 F.3d 24 (2d Cir. 1997) (no single Rule 12 mechanism; forum-clause enforcement varies)
- M/S Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (U.S. 1972) (presumption of enforceability of forum clauses; strong showing required to rebut)