Amiblu Technology AS v. U.S. Composite Pipe South, LLC

CourtDistrict Court, M.D. Louisiana
DecidedJuly 1, 2025
Docket3:22-cv-00259
StatusUnknown

This text of Amiblu Technology AS v. U.S. Composite Pipe South, LLC (Amiblu Technology AS v. U.S. Composite Pipe South, LLC) is published on Counsel Stack Legal Research, covering District Court, M.D. Louisiana primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Amiblu Technology AS v. U.S. Composite Pipe South, LLC, (M.D. La. 2025).

Opinion

UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF LOUISIANA

AMIBLU TECHNOLOGY AS CIVIL ACTION VERSUS 22-259-SDD-RLB U.S. COMPOSITE PIPE SOUTH AND KEN M. THOMPSON, LLC

RULING

Before the Court is the Motion to Cancel Jury Trial and Convert to Bench Trial filed by Plaintiff Amiblu Technology, AS (“Amiblu”).1 Defendant U.S. Composite Pipe South (“USCPS”) opposes the Motion.2 Amiblu filed a Reply,3 and USCPS filed a Surreply.4 For the reasons that follow, the Motion will be granted. I. BACKGROUND The factual background of this case has been laid out in detail in prior Rulings.5 The Court will provide a summary of the salient facts here. Amiblu owns certain intellectual property, know-how, and trade secrets related to the manufacturing of continuous wound glass reinforced plastic piping (the “Flowtite Process”).6 USCPS and Amiblu are parties to a Know-How and Intellectual Property License Agreement (the “License Agreement”) whereby Amiblu, under its former name of “Flowtite,” grants a license to USCPS as follows: [Flowtite] hereby grants to USCP[S] and USCP[S] hereby accepts, upon the terms and conditions set forth in this

1 Rec. Doc. 120. 2 Rec. Doc. 123. 3 Rec. Doc. 130. 4 Rec. Doc. 145. 5 See Rec. Docs. 36, 68, 159. 6 Rec. Doc. 15, ¶ 7. Agreement, for an unlimited duration, an exclusive licence [sic] of the Process under [Flowtite’s] Intellectual Property and Know-How to manufacture, have made, use and sell the Products within the territory of the United States of America and Canada.7

The License Agreement requires USCPS to pay royalties to Amiblu on all “[p]roducts manufactured by USCP[S] as a result of th[e License] Agreement” through March 1, 2012, after which USCPS would have three consecutive renewal options to “extend the term of this Agreement” for five years “upon written notice of exercise of such option at least ninety (90) days prior to the expiration of the term, or extended term, hereof.”8 In addition to the intellectual property, the License Agreement grants USCPS additional rights “during the Period of Royalty Payments” (the “Royalty Period”).9 These rights, referred to as the “Auxiliary Rights,” include 1) authorization of USCPS to state on its products that it is manufacturing “under license from [Flowtite]” and to use “the relevant Trademarks and Copyrights of [Flowtite],” and 2) the right to receive from Amiblu any new additional know-how related to the Flowtite Process developed or acquired during the Royalty Period, which Amiblu has the duty to “promptly disclose and convey.”10 Amiblu filed suit seeking declaratory judgment that all of USCPS’s rights under the License Agreement expired due to USCPS’s failure to renew the most recent term, which ended on March 1, 2022.11 Amiblu alternatively alleged the License Agreement was

7 Rec. Doc. 1-4, p. 3 (SEALED). 8 Id. at p. 4 (SEALED). 9 Id. at pp. 3–4 (SEALED). 10 Id. (SEALED). 11 Rec. Doc. 15, ¶ 18. extinguished due to “failure of consideration.”'* Amiblu’s Complaint prays for the following declaratory relief: e “The term of the [License] Agreement has ended;”'s e USCPS no longer has “any further license or other rights, exclusive or otherwise, to use the Flowtite Process;”'4 e USCPS no longer has “any further license or other rights, exclusive or otherwise, to use the Flowtite Mark or to state on its products or in commercial correspondence or literature that any of its products are manufactured under license from Flowtite;”'® e “Any obligation of [Amiblu] to provide know-how, assistance, training, or other access to information regarding any Flowtite Process or subsequent ‘know- how’ developed during the term of the Agreement ceased on March 1, 2022, and no further or ongoing obligation exists;”'® and e ‘“[Amiblu] is the sole owner of all Patents, Trademarks, Copyrights, or other intellectual property rights as to the Flowtite Process and Flowtite Mark, and is free to license any or all such rights as it sees fit to any third party now that the term of the [License] Agreement has ended.”'” USCPS filed a Counterclaim against Amiblu.'2 USCPS asserts that Amiblu breached the License Agreement by 1) restricting USCPS’s access to know-how, in

12 Id. at J 24. 13 Id. at J] 25. 14 Id. 18 Id. 16 Id. 7 Id. 18 Rec. Doc. 52. Page 3 of 15

violation of Amiblu’s duty to “promptly disclose and convey” the know-how, and 2) improperly attempting to unilaterally terminate the License Agreement.19 USCPS prays for injunctive relief and specific performance.20 Both parties later filed motions for partial summary judgment. USCPS’s Motion sought a finding that as a matter of undisputed fact, the license for the Flowtite Process

is for an “unlimited duration,” meaning that USCPS’s intellectual property rights continue beyond the end of the Royalty Period.21 Amiblu’s Motion sought: 1) dismissal of USCPS’s Counterclaim for breach of the License Agreement; 2) entry of declaratory judgment finding that Amiblu’s obligations under the License Agreement have been extinguished; and 3) dismissal of USCPS’s affirmative defenses.22 The Court granted USCPS’s Motion for Partial Summary Judgment, finding that as a matter of undisputed fact, the parties intended the license to extend beyond the duration of the Royalty Period for an unlimited duration.23 Amiblu’s Motion for Partial Summary Judgment was granted in part and denied in part. Specifically, the Court granted summary dismissal of eight of USCPS’s affirmative

defenses but denied Amiblu’s requests for entry of declaratory judgment that all of Amiblu’s obligations under the License Agreement have been extinguished and for dismissal of USCPS’s Counterclaim.24

19 See Id. at ¶¶ 98–99. The Counterclaim also included antitrust claims under the Sherman Act and the Clayton Act, but the antitrust claims were dismissed upon motion by Amiblu. See Rec. Doc. 68. 20 Rec. Doc. 52, ¶¶ 101, 102. 21 Rec. Doc. 78-1, p. 8. 22 Rec. Doc. 81-2, p. 1. 23 Rec. Doc. 159, pp. 8–28. Parol evidence of intent was offered by USCPS because the Court previously found the License Agreement ambiguous as to its term. USCPS’s summary judgment evidence of the intended duration of the agreement was undisputed. 24 Id. at pp. 28–54. While the parties’ motions for partial summary judgment were pending, Amiblu filed the instant Motion seeking to convert the trial of this matter from a jury trial to a bench trial.25 USCPS opposes the Motion and demands trial by jury.26 II. LAW AND ANALYSIS USCPS filed a demand for trial by jury pursuant to Federal Rule of Civil Procedure

(“Rule”) 38(b).27 According to Rule 39(a)(2), “[w]hen a jury trial has been demanded under Rule 38, the action must be designated on the docket as a jury action. The trial on all issues so demanded must be by jury unless … the court, on motion or on its own, finds that on some or all of those issues there is no federal right to a jury trial.”28 The Seventh Amendment to the United States Constitution provides: In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise re- examined in any Court of the United States, than according to the rules of the common law.29

According to the Supreme Court, “Suits at common law” refers to “‘suits in which legal rights are to be ascertained and determined’ as opposed to ‘equitable rights.’”30 Courts apply a two-part test in determining whether an action will resolve legal rights such that a jury trial is warranted: “First, [the court] compare[s] the statutory action to 18th-century actions brought in the courts of England prior to the merger of the courts of law and equity. Second, [the court] examine[s] the remedy sought and determine[s] whether it is legal or

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Amiblu Technology AS v. U.S. Composite Pipe South, LLC, Counsel Stack Legal Research, https://law.counselstack.com/opinion/amiblu-technology-as-v-us-composite-pipe-south-llc-lamd-2025.