An Earlier U.S. Judgment Insufficient To Enjoin A Foreign Arbitration Where Issues In The U.S. Litigation And Foreign Arbitration Are Not Identical Or Functionally The Same

In Sanofi-Aventis Deutschland GmbH v. Genentech, Inc., No. 12-1454 (Fed. Cir. May 10, 2013), the Federal Circuit affirmed the district court's ruling against enjoining a foreign arbitration of a license to the patents-in-suit despite a U.S. judgment of noninfringement.

The dispute originated from an agreement ("the Agreement") in which Behringwerke AG ("Behringwerke") licensed Genentech, Inc. ("Genentech") intellectual property, including Behringwerke's patent applications that matured into U.S. Patent Nos. 5,849,522 and 6,218,140 (collectively "the patents-in-suit"), related to DNA enhancers for amplification of drug production rate in a cell. In addition to requiring a fixed annual payment for Genentech to practice the patents-in-suit for research purposes, the Agreement also required Genentech to pay a running royalty of 0.5% on the sale of commercially marketable goods incorporating a "Licensed Product." The Agreement defined Licensed Product as "materials