Schlumberger Technology Corporation v. Baker Hughes Inc.

CourtCourt of Appeals of Texas
DecidedOctober 13, 2011
Docket01-11-00562-CV
StatusPublished

This text of Schlumberger Technology Corporation v. Baker Hughes Inc. (Schlumberger Technology Corporation v. Baker Hughes Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals of Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Schlumberger Technology Corporation v. Baker Hughes Inc., (Tex. Ct. App. 2011).

Opinion

Opinion issued October 13, 2011

In The

Court of Appeals

For The

First District of Texas

————————————

NO. 01-11-00562-CV

———————————

Schlumberger Technology Corporation, Appellant

V.

Baker Hughes Incorporated, Appellee

On Appeal from the 270th District Court

Harris County, Texas

Trial Court Case No. 2011-25539

O P I N I O N

          Schlumberger Technology Corporation and Baker Hughes Incorporated are in the midst of an arbitration proceeding to resolve patent disputes.  A disagreement has arisen about whether the presiding panel of arbitrators has jurisdiction to determine a discrete subissue raised by Baker Hughes in the proceeding.  Schlumberger contends that the subissue should be resolved by the same panel, but Baker Hughes argues that the issue is governed by a prior settlement agreement between the parties and must be resolved by the mediator who facilitated that agreement.

Baker Hughes initiated court proceedings, and both parties filed motions to compel arbitration in accordance with their respective positions.  The trial court granted Baker Hughes’s requested relief and denied Schlumberger’s motion.  Schlumberger now appeals from the trial court’s interlocutory order that denied its motion to compel arbitration.  We conclude that we have jurisdiction over this interlocutory appeal.  We further conclude that the parties agreed to let the arbitrators resolve their disagreement about the proper arbitral forum for their dispute and that the trial court should have compelled arbitration of that issue.  Accordingly, we reverse the trial court’s order denying Schlumberger’s motion, and we remand for further proceedings consistent with this opinion.

Background

          Schlumberger and Baker Hughes are competitors in the business of developing, manufacturing, and marketing tools for use in the oil and gas industry.  Both own or control patents related to such tools.  At various times, disputes have arisen about each party’s alleged infringement of the other’s patents.  One of these disputes involved reciprocal claims relating to sensor tools used to gather information and fluid samples from oil and gas wells.  Baker Hughes claimed that Schlumberger’s tool infringed a certain patent, and Schlumberger alleged that Baker Hughes’s tool infringed certain of its patents.  The parties mediated this dispute, and in October 2004 they executed a settlement agreement.  The parties granted each other reciprocal licenses to the patents at issue in that dispute, and they released and discharged each other from “any and all claims, demands or suits, known or unknown, fixed or contingent, liquidated or unliquidated whether or not asserted in the above case, as of this date, arising from or related to the events and transactions which are subject matter to this case.”  The 2004 settlement agreement also contained the following dispute resolution provision:

If a dispute arises with regard to the interpretation and/or performance of this agreement or any of its provisions, the parties agree to attempt to resolve same by phone conference with the Mediator who facilitated this settlement.  If the parties cannot resolve their differences by telephone conference, then each agrees to schedule a day of mediation with the Mediator within thirty (30) days to resolve the disputes and to share the costs of the same equally.  If a party refuses to mediate, then the parties agree to submit the issue to binding arbitration before the Mediator in this matter and the party bringing the arbitration shall be entitled to recover attorney’s fees or costs in such arbitration.

          After the 2004 settlement agreement was finalized, additional disputes arose between the parties concerning their intellectual property.  To facilitate efficient resolution of these disputes, in 2009 the parties entered into two additional agreements: the Patent Dispute Resolution Agreement and the Patent Dispute Procedure Agreement.  The Resolution Agreement provided that its purpose was to address and resolve then-current disputes and to provide a process for addressing future disputes about the infringement and validity of each party’s patents.  That agreement defined “Current Disputes” as “those Disputes for which assertions have been made prior to the signing of this Agreement,” and it expressly referenced an attached exhibit that listed the Current Disputes.  The Resolution Agreement also defined “Dispute” as:

. . . any dispute between the Parties arising out of or relating to or in connection with a claim of 1) infringement or the damages arising therefrom, or 2) the invalidity or unenforceability of either Party’s Patents.  “Dispute” shall also include disputes relating to the interpretation, construction, alleged breach of this Agreement, the Procedure Agreement, a license agreement or covenant not to sue relating to a Patent or Patents, or amounts paid under such a license agreement or covenant not to sue.  Disputes arising under existing licenses or covenants not to sue shall be treated in accordance with Section 3.2, below.

Schlumberger and Baker Hughes agreed that “any Current Disputes or future Disputes . . . shall be solely resolved as set forth in the Procedure Agreement.”

          Section 3 of the Resolution Agreement carved out an exception for disputes arising from any preexisting patent or license agreement that contained its own dispute resolution procedures.  By that provision the parties agreed:

3.       TREATMENT OF EXISTING AND FUTURE PATENT AGREEMENTS

  3.1  

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