fwiw - LG Must Arbitrate With Wi-LAN In TV Patent Suit
By Kat Greene
Law360, Los Angeles (July 21, 2014, 9:05 PM ET) -- LG Electronics Inc. will have to face technology patent licensing company Wi-LAN Inc. in arbitration in a dispute over whether certain LG television models infringe patents it doesn’t own, a New York federal judge ruled Monday.
LG, fending off a lawsuit originally launched in Florida, argued that U.S. District Judge Ronnie Abrams shouldn’t send the dispute into arbitration, in part because Wi-LAN was the first to bring the suit to federal court instead of triggering arbitration over the alleged infringement, according to court records.
It further argued that the issue can’t be decided in arbitration and should be sorted out in New York court, but Judge Abrams found that the one to decide whether the issue should be arbitrated, per the agreement and federal arbitration laws, is the arbitrator, according to the ruling.
“The court agrees that, pursuant to the arbitration clause, this issue must be decided by the arbitrator,” Judge Abrams wrote. “Whether LG’s argument is viewed as raising an issue of contract interpretation or one of arbitrability, the parties’ agreement dictates that the arbitrator decide it.”
LG argued that Wi-LAN waived its right to arbitrate by being the first to file suit over the patents, but the court ruled that LG hadn’t established that it had been prejudiced by the court proceedings leading up to the initiation of arbitration, according to the decision.
The row started in Florida federal court in 2012, when Wi-LAN filed a suit alleging LG's flat panel televisions infringe two of its patents, one for piping interlaced television signals into progressive scan monitors and the other for increasing the frame rate of a digital television signal.
Shortly after the complaint was filed, LG sought to dismiss it, arguing that the televisions indicated in the lawsuit were covered by a patent licensing agreement it signed with Wi-LAN, according to court records. It also asked to move the suit to New Jersey.
Wi-LAN rebounded a few weeks later, in February 2013, with a motion to compel arbitration, citing a clause in that agreement that called for arbitration in the event of disagreement, according to the court.
LG then filed suit in New York federal court seeking an injunction to stop arbitration in the Florida dispute. Wi-LAN answered with an emergency motion in the Florida suit to stop LG from proceeding with its action in New York.
In August 2013, Wi-LAN withdrew its opposition to moving the proceedings to New Jersey and the Florida suit was transferred there, according to court records. However, both parties agreed New York should decide the arbitration issue, because New Jersey cannot enforce arbitration agreements outside the state, according to the filing.
Representatives for the parties did not immediately respond to requests for comment late Monday.
LG is represented by Richard D. Harris, James J. Lukas and Richard Aframe Edlin of Greenberg Traurig LLP.
Wi-LAN is represented by Kent T. Dallow, Brian O’Donnell, David E. Sipiora and Frederick L. Whitmer of Kilpatrick Townsend & Stockton LLP.
The case is LG Electronics Inc. et al. v. Wi-LAN USA Inc. et al., case number 1:13-cv-02237, in the U.S. District Court for the Southern District of New York.
--Additional reporting by Bill Donahue.
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