Dental USA, Inc. v. Beak & Bumper, LLC, No. 13 C 2149, Slip Op. (N.D. Ill. Feb. 21, 2014) (Chang, J.).
Judge Chang granted defendants’ Fed. R. Civ. P. 12(b)(3) motion to dismiss for improper venue because plaintiff’s design patent declaratory judgment claims related to dental pliers had to be arbitrated. The principals of the relevant parties entered a settlement agreement settling an early E.D. Michigan patent infringement suit which included the patents in suit.
The parties’ agreement bound “any and all businesses controlled” by either of them. That was sufficient to bind the parties in this suit, although none were parties to the agreement. It was sufficient that the parties’ principals bound them in the agreement. The agreement also required that plaintiff not infringe the patents in suit and that all disputes regarding the agreement be resolved by binding arbitration before the American Arbitration Association. The parties were already arbitrating a dispute regarding one of the patents.
The fact that defendants dismissed their arbitration infringement claims did not allow plaintiff to file a district court litigation. Defendants dismissed their claims without prejudice and were free to re file them with the American Arbitration Association.
Because the Court lacked venue, it did not need to consider defendants’ subject matter jurisdiction and personal jurisdiction arguments.