Cytyc Corporation v. Deka Products

439 F.3d 27, 2006 U.S. App. LEXIS 5140, 2006 WL 475773
Court of Appeals for the First Circuit·Decided March 1, 2006·No. 05-2371·Published·Cited by 57 cases

Opinion

*29 SELYA, Circuit Judge:

Judicial review of arbitration awards is extremely narrow. As a 'result, “disputes that are committed by contract to the arbitral process almost always are won or lost before the arbitrator.” Teamsters Local Union No. 42 v. Supervalu, Inc., 212 F.3d 59, 61 (1st Cir.2000). This case is no exception to that general rule. Because the losing party, appellant Cytyc Corporation (Cytyc), has failed to establish any legally cognizable basis for setting aside the arbitrators’ award, we uphold the district court’s order granting the confirmation motion filed by the prevailing party, appellee DEKA Products Limited Partnership (DEKA).

I. BACKGROUND

Cytyc manufactures and sells a cervical cancer screening system. DEKA operates a commercial research and development laboratory. ■ In the late 1980s, Cytyc endeavored to improve the accuracy of the traditional Pap smear - test — a test that relies on technicians to prepare a microscope slide from each cervical cell sample and then review the specimen for irregularities. Due to human error, this methodology yields a relatively high incidence of false negatives. Cytyc proposed to solve that problem by using a computer imager to prescreen the slide specimens.

During the developmental phase of this project, Cytyc encountered a potentially insuperable obstacle: its imaging technology could accurately screen a thin, uniform layer of cells, but the slide specimens prepared by human technicians were often disuniform. Desirous of obtaining standardized slide specimens, Cytyc retained DEKA to create an automated process for transferring cells from a test sample onto a slide.

DEKA successfully developed such a process (the ThinPrep system). This system consists of two components. The first is the ThinPrep processor — a machine that transfers the cells onto the slide. The processor utilizes technology' patented by DEKA prior to its association with Cytyc. This body of knowledge is known as fluid management system (FMS) technology. The second component of the ThinPrep system is a set of four disposable accessories: a microscope slide, a sample collection device manufactured by a third party, a vial of Cytyc’s patented preservative solution, and a filter cylinder invented specifically for use in the ThinPrep system. While the ThinPrep system employs a number of products and processes, its sine qua non is the FMS technology.

In March of 1993, Cytyc and DEKA entered into a licensing agreement (the Agreement) relative to the ThinPrep system. The Agreement recited that DEKA, by means of the FMS technology, had developed a “method and apparatus ... to facilitate the preparation of slides for medical and laboratory purposes” and wished to license the FMS technology to Cytyc for use in the ThinPrep system. In exchange for this license, Cytyc agreed to pay DEKA a royalty “equal to One Percent ... of the Net Sales of Products or Improvements” covered- by the Agreement.

By its terms, the Agreement divided royalty-bearing “Products” into two categories: “Product Hardware” and “Product Disposables.” “Product Hardware” meant, in effect, the ThinPrep processor (we do not dwell on this, as there is no dispute between the parties concerning royalty payments related to hardware). “Product Disposables” comprised “any filter cylinder or similar disposable provided such disposable utilizes the Cytyc Technology, the FMS Technology or both.” The Agreement noted somewhat cryptically that the term “Product Disposable^] presently includes.[the filter cylinder].”

*30 Although the ThinPrep system functioned well, Cytyc struggled to perfect its imaging technology. Finally, it began to market the ThinPrep system without the computer imager. At some point, Cytyc developed a special microscope slide for use in the ThinPrep system and started to sell it, along with the other three disposable accessories, in a single bundle called the ThinPrep kit. The ThinPrep kit became a rousing commercial success, and Cytyc emerged as a leader in the market for cervical cancer screening systems. •

For some period of time, Cytyc made quarterly royalty payments to DEKA pursuant to the Agreement. In November of 2001, however, Cytyc notified DEKA of its belief that, for an earlier three-year period, it had calculated DEKA’s royalties too generously. In staking out this position, Cytyc posited that the Agreement entitled DEKA to royalties only on sales of the filter cylinder and not on sales of the other three disposable accessories included in the ThinPrep kit. Cytyc further informed DEKA that, consistent with this reading of the Agreement, it had computed the royalties referable to filter cylinder sales in accordance with the relative cost of the kit components (the relative cost ratio method). DEKA dispute^ both Cytyc’s overpayment claim and its method for figuring royalties. In DEKA’s view, the Agreement required Cytyc to pay a flat one percent royalty on net sales of all disposable accessories.

The parties attempted on at least two occasions to resolve their differences. At one such meeting, Cytyc’s chief financial officer threatened that if DEKA continued to resist Cytyc’s royalty calculation method, he would “manipulate” the cost data and suppress future royalties.

The Agreement gave DEKA the right to commission an independent audit of Cy-tyc’s books should questions arise about the amount of royalty payments due. When the parties’ negotiations stalled, DEKA exercised this prerogative. The final audit report covered the period from January of 1996 through September of 2002. The auditors described Cytyc’s relative cost ratio method of calculating royalties as “unusual and uncommon” and found that, even under this unorthodox approach, Cytyc had underpaid DEKA. The auditors further concluded that if the Agreement required the payment of royalties on the net sales of all disposable accessories contained in the ThinPrep kits, the amount of the underpayment would exceed $4,000,000 for the audit period alone.

The Agreement stipulated that disputes between the parties would be subject to binding arbitration. Armed with the audit report, DEKA served a demand for arbitration. It claimed, inter alia, that Cytyc had breached the Agreement by failing to pay royalties on the net sales of all the disposable accessories or, alternatively, by allocating royalties referable to the filter cylinder based on the relative cost ratio method.

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Cytyc Corporation v. Deka Products, 439 F.3d 27, 2006 U.S. App. LEXIS 5140, 2006 WL 475773 (1st Cir. 2006).

439 F.3d 27 (Cytyc Corporation v. Deka Products) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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