Wells Fargo Bank, N.A. v. WMR E-Pin, LLC

653 F.3d 702, 2011 U.S. App. LEXIS 18283, 2011 WL 3862589
CourtCourt of Appeals for the Eighth Circuit
DecidedSeptember 2, 2011
Docket09-3800
StatusPublished
Cited by38 cases

This text of 653 F.3d 702 (Wells Fargo Bank, N.A. v. WMR E-Pin, LLC) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eighth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Wells Fargo Bank, N.A. v. WMR E-Pin, LLC, 653 F.3d 702, 2011 U.S. App. LEXIS 18283, 2011 WL 3862589 (8th Cir. 2011).

Opinions

WOLLMAN, Circuit Judge.

Synoran, LLC (Synoran)1 and WMR e-Pin LLC (e-Pin) appeal from the district court’s2 confirmation of an arbitration [704]*704award of $1,865 million in favor of Wells Fargo, N.A., which had prevailed on its claims for breach of contract and for misappropriation of trade secrets. Appellants maintain that the district court lacked jurisdiction to confirm the award, erred in confirming the award, and abused its discretion in denying their motion to amend or terminate a permanent injunction issued as part of the award. We affirm.

I.

In 2001, Wells Fargo entered into a business relationship with appellant Synoran. The parties outlined the terms of the relationship in a Software Licensing Agreement (SLA), an umbrella agreement to be fleshed out by subsequent agreements between the parties. Under the SLA, Synoran would provide consulting services and software products to Wells Fargo that related to its management of customer accounts.

In 2003, Wells Fargo sought additional consulting services from Synoran related to the development of its Digital Information Exchange software (DIXE Software). The DIXE Software adopted a “distributed network” approach that Wells Fargo deemed proprietary. Wells Fargo and Synoran entered a second agreement (DIXE Consulting Agreement), under which Wells Fargo reserved certain intellectual property rights associated with the DIXE Software and acknowledged that certain other intellectual property rights associated with a “central switch” approach belonged to appellant e-Pin.

In 2004, Wells Fargo and e-Pin executed a Patent License Agreement (PLA) through which Wells Fargo acquired a license to use certain products patented by e-Pin that relate to cheek clearing and check settlement services. The PLA incorporated by reference the dispute resolution procedures from the SLA, which provided that any dispute must be resolved through arbitration. Of particular relevance to this appeal are provisions that relate to the scope of the arbitration proceeding and the forms of relief available to the parties:

Arbitrators (i) shall resolve all Disputes in accordance with the substantive law of the state in which the arbitration is held, (ii) may grant any remedy or relief that a court of the state in which the arbitration is held could order or grant with the scope here of and such ancillary relief as is necessary to make effective any award; and (iii) shall have the power to award recovery of all costs and fees, to impose sanctions and to take such other actions as they deem necessary to the extent a judge could pursuant to the Federal Rules of Civil Procedure, or other applicable law.
[ ... ]
Any award in arbitration under this Section shall be limited to monetary damages and shall include no injunction or direction to any party other than the direction to pay a monetary amount.

J.A. Ex. 000029 at ¶ 7, ¶ 9.

After e-Pin and Wells Fargo executed the PLA, e-Pin assigned certain patent interests to DataTreasury Corporation (DTC). DTC sued Wells Fargo for patent infringement. Wells Fargo invoked the dispute resolution procedures and initiated arbitration proceedings against e-Pin and DTC. DTC contended that it was not subject to arbitration and was ultimately dismissed. Synoran intervened and together with e-Pin asserted counterclaims against Wells Fargo arising from their rights under the SLA.

In July 2008, a three-member arbitration panel (the Panel) convened and heard twelve days of testimony. In its findings [705]*705of facts and conclusions of law, the Panel dismissed the appellants’ counterclaims, found in favor of Wells Fargo on its claims for breach of the SLA and misappropriation of the DIXE software trade secrets, and ordered that “Synoran and WMR e-Bank LLC” pay $1,265,000.00 in attorneys’ fees and $600,000.00 in costs.3 The Panel also permanently enjoined the appellants from using or disclosing the DIXE software trade secrets.

In October 2008, Wells petitioned the district court to confirm the arbitration award (the Award). Before ruling on that petition, the district court heard argument from the parties regarding its jurisdiction, ultimately concluding, over appellants’ objection, that the prerequisites of subject-matter jurisdiction had been satisfied. The appellants filed a cross-motion to vacate or modify the Award, arguing that the Panel had exceeded its authority when it 1) granted injunctive relief in violation of the governing arbitration procedures, 2) awarded attorneys’ fees, and 3) concluded that Wells Fargo was the “inventor and owner” of the DIXE software trade secrets.

The district court denied appellants’ motion to vacate or modify and granted Wells Fargo’s motion to confirm. It entered a judgment of $1,685,000 against the appellants and permanently enjoined them from disclosing or otherwise making use of the DIXE software trade secrets. Appellants moved to alter the judgment, asking the district court to lift the permanent injunction on the ground that Wells Fargo had made public the DIXE software trade secrets when it filed patent application with the United States Patent and Trademark Office. Appellants argued that the information no longer constituted a trade secret and that the injunction against its use or disclosure should be lifted. The district court denied that motion, and this appeal followed.

Appellants ask that we vacate the district court’s confirmation of the award for lack of subject-matter jurisdiction. In the alternative, they ask that we reverse the confirmation of the arbitration award, vacate the finding that Wells is the “inventor” of the DIXE software trade secrets, vacate the award of attorneys’ fees and costs against e-Pin, and lift the permanent injunction against them.

II.

Appellants contend that the district court lacked subject matter jurisdiction to confirm the Award. We review de novo questions of subject matter jurisdiction. Sac & Fox Tribe v. Bureau of Indian Affairs, 439 F.3d 832, 835 (8th Cir.2006). Federal subject matter jurisdiction exists if the amount in controversy exceeds $75,000 and the suit is between citizens of different states. 28 U.S.C. § 1332(a)(1). The parties agree that the amount in controversy element has been satisfied, but dispute whether they are diverse parties.

Appellant Synoran is a citizen of several states, including California. Appellants maintain that Wells Fargo is a citizen of California, its principal place of business, and of South Dakota, where its main office is located. They argue that the district court erred in holding that Wells Fargo, as a national bank, is deemed a citizen only of the state in which its main office is located.4

[706]*706National banks are “corporate entities chartered not by any State, but by the Comptroller of the Currency of the U.S. Treasury.” Wachovia Bank v. Schmidt, 546 U.S. 303, 306, 126 S.Ct. 941, 163 L.Ed.2d 797 (2006).

Free access — add to your briefcase to read the full text and ask questions with AI

Related

DONALD v. BANK OF AMERICA, N.A.
E.D. Pennsylvania, 2025
Booz Allen Hamilton v. D.C. Office of Tax and Revenue
District of Columbia Court of Appeals, 2024
Parada v. Anoka County
D. Minnesota, 2021
WEBER v. PNC INVESTMENTS LLC
W.D. Pennsylvania, 2020
Flinn v. Santander Bank, N.A.
359 F. Supp. 3d 128 (District of Columbia, 2019)
Flinn v. Santander Bank N.A.
D. Massachusetts, 2019
Ann Eleanor Ploetz v. Morgan Stanley Smith Barney
894 F.3d 894 (Eighth Circuit, 2018)
OneWest Bank, N.A. v. Robert W. Melina
827 F.3d 214 (Second Circuit, 2016)
Seagate Technology, LLC v. Western Digital Corporation, Sining Mao
854 N.W.2d 750 (Supreme Court of Minnesota, 2014)
Hungry Horse LLC v. E Light Electric Services, Inc.
569 F. App'x 566 (Tenth Circuit, 2014)
Robert Rouse v. Wachovia Mortgage, Fsb
747 F.3d 707 (Ninth Circuit, 2014)

Cite This Page — Counsel Stack

Bluebook (online)
653 F.3d 702, 2011 U.S. App. LEXIS 18283, 2011 WL 3862589, Counsel Stack Legal Research, https://law.counselstack.com/opinion/wells-fargo-bank-na-v-wmr-e-pin-llc-ca8-2011.