Interdigital Comm Co v. Fed Ins Co ( 2009 )

Opinions of the United
2009 Decisions States Court of Appeals
for the Third Circuit
1-29-2009
Interdigital Comm Co v. Fed Ins Co
Precedential or Non-Precedential: Non-Precedential
Docket No. 08-1986
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NOT PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
____________
No. 08-1986
____________
INTERDIGITAL COMMUNICATIONS CORPORATION;
INTERDIGITAL TECHNOLOGY CORPORATION;
Appellants,
v.
FEDERAL INSURANCE COMPANY
____________
On Appeal from the United States District Court
for the Eastern District of Pennsylvania
(D.C. No.: 2-03-06082)
District Judge: Honorable Eduardo C. Robreno
____________
Submitted Under Third Circuit LAR 34.1(a)
January 8, 2009
Before: CHAGARES, HARDIMAN, Circuit Judges and ELLIS,* District Judge
(Filed: January 29, 2009)
____________
OPINION OF THE COURT
____________
*
The Honorable Thomas Selby Ellis, III, Senior District Judge for the United States
District Court for the Eastern District of Virginia, sitting by designation.
HARDIMAN, Circuit Judge.
Interdigital Communications Corp. appeals an order of the District Court
confirming an arbitration award in favor of Federal Insurance Company. Interdigital
argues that the District Court should have stayed confirmation of the award so it can
assert a recoupment claim against Federal. The District Court confirmed the award after
it held that Interdigital no longer possessed a recoupment claim. We will affirm.
I.
Because we write exclusively for the parties, we recount only the facts essential to
our decision.
Interdigital was embroiled in patent litigation with Ericsson for ten years. During
that case, Interdigital and Federal had an insurance coverage dispute that was resolved in
2000 by a Reimbursement Agreement under which Federal agreed to pay all litigation
costs in exchange for a percentage of any payment Interdigital might receive from
Ericsson. In 2003, Ericsson agreed to pay Interdigital more than $100 million to settle the
patent litigation. Federal sought payment under the Reimbursement Agreement and,
when Interdigital refused to pay, Federal demanded arbitration pursuant to a mandatory
arbitration clause contained therein.
In response to Federal’s demand for arbitration, Interdigital filed a declaratory
judgment action in federal court, claiming that the Reimbursement Agreement was void.
The District Court disagreed and compelled arbitration. Significantly, Interdigital did not
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argue that any particular issue exceeded the arbitrator’s authority under the arbitration
clause; instead it merely objected to the timing of Federal’s arbitration demand, claiming
that the parties had not yet expended reasonable efforts to resolve the dispute on their
own. Before addressing that argument, the District Court noted: “as a threshold matter,
the [C]ourt must address whether the parties agreed to arbitrate and the scope of the
[arbitration] agreement between the parties.” Finding that “the parties have formally
agreed to arbitrate their dispute and the dispute falls within the scope of the arbitration
agreement,” the District Court concluded that the arbitrator had to decide whether the
parties had expended reasonable efforts to settle their dispute. Interdigital Commc’ns
Corp. v. Fed. Ins. Co., 392 F. Supp. 2d 707, 716-17 (E.D. Pa. 2005). The District Court
also noted:
Interdigital has not argued that its claims with respect to the amount of
Federal’s reimbursement do not fall within the scope of the agreement to
arbitrate. Rather, Interdigital argues that arbitration is not timely because
the parties have not satisfied a condition precedent that the parties meet to
resolve the dispute prior to submitting the matter to arbitration.
Id. at 716 (emphasis added).
The parties proceeded to arbitration, where they disagreed regarding royalty
payments subject to the Reimbursement Agreement, as well as the “additional value”
derived from non-monetary provisions of the Ericsson settlement. At no point did
Interdigital assert a defense to liability under the Reimbursement Agreement, or attempt
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to assert any counterclaim against Federal. The arbitrator awarded Federal almost $20
million, and Federal sought confirmation by the District Court.
Interdigital requested a stay so it could assert a counterclaim for recoupment based
on Federal’s alleged “bad faith and [breach of] contractual and fiduciary duties to . . .
Interdigital, by withholding reimbursement for attorneys’ fees . . . to coerce Interdigital to
enter the Reimbursement Agreement.” App. 392. Significantly, Interdigital averred that
its recoupment claim sought “the same monetary relief as Federal was awarded in the
arbitration.” App. 393. The District Court denied the stay, holding that the recoupment
claim should have been presented to the arbitrator because it was a defense to the merits
of Federal’s claim in arbitration. Interdigital timely appealed the order of the District
Court confirming Federal’s arbitration award.
II.
The gravamen of Interdigital’s argument is that the District Court erred in
precluding it from prosecuting in federal court a recoupment claim that it could not have
brought in arbitration. Interdigital’s appeal succeeds or fails depending upon whether its
recoupment claim is properly characterized as a counterclaim to Federal’s arbitration
claim or as a defense on the merits.
A.
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We begin with a brief discussion of recoupment. The leading treatise counsels that
untimely counterclaims [may] be asserted on the ground that the ability to
seek relief in the form of a common-law recoupment, which was a species
of defense, survives for as long as plaintiff’s claim can be asserted and
therefore is not barred by untimeliness. Thus, although a defendant cannot
seek affirmative relief on the counterclaim . . . [he] may assert [it as a
recoupment claim] to the extent that it defeats or diminishes plaintiff’s
recovery.
C HARLES A LAN W RIGHT, A RTHUR R. M ILLER & M ARY K AY K ANE, 6 F EDERAL P RACTICE
& P ROCEDURE § 1419 (2008). Under Pennsylvania law, “[r]ecoupment is the setting up
of a demand arising from the same transaction as the plaintiff’s claim or cause of action,
strictly for the purpose of abatement or reduction of such claim,” and “it is essentially a
defense to the debtor’s claim against the creditor rather than a mutual obligation.” Cohen
v. Goldberg, 720 A.2d 1028, 1030 (Pa. 1998). In the context of a contract dispute, when
“some claim [a] defendant has against [a] plaintiff aris[es] out of the very contract giving
rise to plaintiff’s claim,” the same transaction requirement is met and the defendant’s
claim may be asserted as recoupment, even if it would otherwise be time-barred.
6 F EDERAL P RACTICE & P ROCEDURE § 1401 n.1.
The requirement that a recoupment claim must arise out of the same transaction as
the plaintiff’s claim mirrors part of the compulsory counterclaim rule in the Federal Rules
of Civil Procedure. F ED. R. C IV. P. 13(a) (“A pleading shall state as a counterclaim any
claim which at the time of serving the pleading the pleader has against any opposing
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party, if it arises out of the transaction or occurrence that is the subject matter of the
opposing party’s claim [].”). Scholars and courts have noted:
[R]ecoupment is the common law precursor to the modern compulsory
counterclaim. Yet, the recoupment doctrine is more than a precursor; it has
survived the codification of compulsory counterclaims and enjoys
continuing vitality today as a means of asserting an otherwise time-barred
counterclaim.
David G. Epstein & Jonathan A. Nockels, Recoupment: Apples, Oranges and Fruit
Basket Turnover, 58 SMU L. R EV. 51, 58 (2005) (quoting Berger v. City of N. Miami, 820
F. Supp. 989, 992 (E.D. Va. 1993).
This is but a glimpse of the precedent on recoupment. Suffice it to say for present
purposes that recoupment is a type of counterclaim arising from the same transaction as
the plaintiff’s claim, and may be asserted for defensive purposes to diminish or extinguish
the plaintiff’s claim after the normal limitations period has expired.
B.
The distinction between counterclaim and defense is significant in the context of
arbitration. On one hand, parties may strictly limit the scope of an arbitration clause and a
court cannot compel parties to arbitrate claims beyond the arbitrator’s authority. See State
Farm Mut. Auto. Ins. Co. v. Coviello, 233 F.3d 710 (3d Cir. 2000); AT&T Techs., Inc. v.
Commc’ns Workers of Am., 475 U.S. 643, 648 (1986); Int’l Bhd. of Elec. Workers v.
Verizon N.J., Inc., 458 F.3d 305 (3d Cir. 2006). Therefore, even though recoupment
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mirrors a compulsory counterclaim in certain respects, one may not assert a recoupment
claim in the course of arbitration if it is excluded by a narrow arbitration clause.
On the other hand, a defense to an arbitrable claim is, in most cases, considered “a
component of the dispute on the merits and must be considered by the arbitrator, not the
court.” Chiron Corp. v. Ortho Diag. Sys, Inc., 207 F.3d 1126, 1132 (9th Cir. 2000). See
also Messa v. State Farm Ins. Co., 641 A.2d 1167, 1170 (Pa. Super. 1994) (“[I]t is for the
arbitrators to rule on the merits of the parties’ claims and defenses.”). In Chiron, the
Court of Appeals for the Ninth Circuit concluded that “[a]s with other affirmative
defenses such as laches and statute of limitations . . . a res judicata defense is a
‘component’ of the merits of the dispute and is thus an arbitrable issue.” Id. at 1134. See
also John Hancock Mut. Life Ins. Co. v. Olick, 151 F.3d 132, 138 (3d Cir. 1998) (res
judicata defense to arbitrable claim should be heard by the arbitrator, unless a prior
federal judgment is at issue); Nat’l Union Fire Ins. Co. v. Belco Petroleum Corp., 88 F.3d
129, 135 (2d Cir. 1996) (“The preclusion issue is not . . . a disagreement over whether the
parties agreed to arbitrate the merits of their dispute. [Rather, the] claim of preclusion is
a legal defense to National Union’s claim. As such, it is itself a component of the dispute
on the merits.”) (quotation omitted).
Interdigital characterizes its recoupment claim as a counterclaim rather than a
defense, arguing that because the arbitration provision in the Reimbursement Agreement
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involved only the monetary value of services that might be part of a settlement agreement
with Ericsson, it was unable to raise its recoupment claim in the arbitration. We disagree.
Although recoupment may be properly characterized as a counterclaim in certain
circumstances, here Interdigital’s recoupment claim is entirely dependent on Federal’s
claim – not merely to revive its timeliness, but also in substance. Interdigital has crafted a
theory of recovery superficially distinct from Federal’s reimbursement claim, but the only
damages claimed by Interdigital are the arbitration award itself. App. 393 (“Interdigital’s
claims of bad faith and breach of contractual and fiduciary duties . . . seek the same
monetary relief as Federal was awarded in the arbitration.”). Contrary to Interdigital’s
assertion that its defense “does not relate to the merits of Federal’s claim,” Appellant’s
Reply Br. at 9, the bad faith and breach of contract/fiduciary duty claims exist only to the
extent that the alleged harms led to the arbitration award. Thus, the recoupment claim is a
component of the underlying arbitration dispute in the same sense as other affirmative
defenses. See In re Trans World Airlines, 322 F.3d 283, 289 (3d Cir. 2003) (in
bankruptcy context, assuming that recoupment claim is an affirmative defense).
C.
We have previously held that a res judicata defense to an arbitration claim must be
decided by the court, not the arbitrator, if it involves the prior judgment of a federal court.
John Hancock, 151 F.3d at 138. But the policy concerns about the integrity and finality
of judgments, id., that justified the exception crafted in that case are absent in the context
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of Interdigital’s recoupment claim, which was based on bad faith and breach of contract.
Requiring Interdigital to present its recoupment claim to the arbitrator as a defense on the
merits is consistent with our view of arbitration:
[W]e have consistently admonished the courts to exercise the utmost
restraint and to tread gingerly before intruding upon the arbitral process.
There is, of course, good reason for this restrained approach. Arbitration is,
above all, a matter of contract and courts must respect the parties’
bargained-for method of dispute resolution. Indeed, arbitration most often
arises in areas where courts are at a significant experiential disadvantage
and arbitrators, who understand the language and workings of the shop, may
best serve the interest of the parties. Thus, there is a strong policy in favor
of arbitration and courts must resist the attempt to intrude upon arbitration
proceedings where the statute does not explicitly authorize court
involvement.
Id. at 136-37 (quotations and citations omitted).
We also find it significant that construing Interdigital’s recoupment claim as an
independent counterclaim beyond the scope of arbitration would be contrary to
Interdigital’s own position in 2005. See Interdigital Commc’ns, 392 F. Supp. 2d at 716
(noting that “Interdigital has not argued that its claims with respect to the amount of
Federal’s reimbursement do not fall within the scope of the agreement to arbitrate”). We
therefore conclude that Interdigital’s recoupment claim constitutes a defense on the merits
that should have been presented to the arbitrator. See United Steelworkers of Am. v. Am.
Smelting and Ref. Co., 648 F.2d 863, 870 (3d Cir. 1981) (rejecting attack on arbitration
award because the argument was not presented to the arbitrator); Interdigital Comm’cns
Corp. v. Fed. Ins. Co., No. 03-6082, 2008 WL 783560, at *7 (E.D. Pa. Mar. 24, 2008)
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(“A new defense, interjected at this late stage, is not a ground for relief from the
arbitration award.”) (citing 42 P A. C ONS. S TAT. § 7314).1
For the foregoing reasons, we will affirm the judgment of the District Court.
1
Even if Interdigital’s claim were a counterclaim instead of a defense, it waived
that claim by waiting until after arbitration to present it to the District Court. The parties
agreed to arbitrate under rules which grant the arbitrator authority to determine the scope
of the arbitration clause and require parties to give notice of all “claims, remedies sought,
counterclaims, and affirmative defenses (including jurisdictional challenges)” within
seven days. App. 450-64.
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