Trimless-Flashless v. Thomas & Betts Corp ( 2000 )

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
TRIMLESS-FLASHLESS DESIGN, 
INCORPORATED,
Plaintiff-Appellee,
v.  No. 00-1572
THOMAS & BETTS CORPORATION;
AUGAT, INCORPORATED,
Defendants-Appellants.

Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
Leonie M. Brinkema, District Judge.
(CA-00-245-A)
Argued: September 29, 2000
Decided: October 23, 2000
Before LUTTIG and WILLIAMS, Circuit Judges, and
Frederick P. STAMP, Jr., Chief United States District Judge
for the Northern District of West Virginia, sitting by designation.
Affirmed and remanded by unpublished per curiam opinion.
COUNSEL
ARGUED: Jonathan Park Graham, WILLIAMS & CONNOLLY,
L.L.P., Washington, D.C., for Appellants. Paul Kirby Vickrey, NIRO,
SCAVONE, HALLER & NIRO, Chicago, Illinois, for Appellee. ON
BRIEF: Paul Mogin, Matthew J. Herrington, Jonathan M. Landy,
2 TRIMLESS-FLASHLESS DESIGN v. THOMAS & BETTS
WILLIAMS & CONNOLLY, L.L.P., Washington, D.C., for Appel-
lants. Amy S. Owen, RICHARDS, MCGETTIGAN, REILLY &
WEST, P.C., Alexandria, Virginia, for Appellee.
Unpublished opinions are not binding precedent in this circuit. See
Local Rule 36(c).
OPINION
PER CURIAM:
Thomas and Betts Corporation and Augat Inc. (collectively
"Augat") appeal, pursuant to 9 U.S.C.A. § 16(a),1 from an April 28,
2000 order denying Augat’s motion to dismiss or in the alternative,
to stay, pending arbitration, all proceedings in this action for misap-
propriation of trade secrets brought by Trimless-Flashless Designs
Inc. (TFD). Augat argues that under applicable state law and the Fed-
eral Arbitration Act, 9 U.S.C.A. § 1 et seq. (West 2000), a provision
in the parties’ 1996 "Draft Outline Agreement" requires that some or
all of the claims in this dispute be submitted to arbitration. Because
we find that the three-word provision relied upon by Augat does not
constitute an enforceable arbitration clause, we affirm.
I.
TFD designs and develops molds, tooling, rubber and plastic for-
mulae, and processes for customers in the rubber, plastics, and other
industries. Augat is a subsidiary of Thomas and Betts Corporation and
is in the business of producing electronic connectors and electrical
interconnect products.
On October 23, 1995, Augat and TFD executed a "Proprietary Use
and Nondisclosure Agreement" governing a product development rela-
1
9 U.S.C.A. § 16(a) (West 1999) authorizes the taking of an interlocu-
tory appeal from any order refusing to stay an action pending arbitration.
TRIMLESS-FLASHLESS DESIGN v. THOMAS & BETTS 3
tionship.2 This agreement, which did not contain an arbitration provi-
sion, contemplated collaboration in the development of "prototype
and production molds" for Metalized Particle Interconnect (MPI)
devices,3 and barred Augat from disclosing or using confidential
information belonging to TFD. TFD’s complaint alleges that Augat
violated the Nondisclosure Agreement.
On August 22, 1996, TFD signed and returned to Augat a "Draft
Outline Agreement" that established a broader business relationship
between the parties, explicitly referencing and incorporating the ear-
lier Nondisclosure Agreement and providing a number of other terms.
See J.A. at 19. At some point Augat signed this agreement; TFD
maintains that Augat never returned an executed copy.
The Draft Agreement states that it "shall be effective unless and
until replaced by a subsequent more comprehensive document." See
J.A. at 19. It contains a number of provisions that are developed in
some detail, followed by a list of short phrases, titled "Miscellaneous"
and contained at § 6.0 of the agreement et seq. Among these phrases
is § 6.4, which states, "Massachusetts Law Applies;" § 6.5, which
states, "Arbitration of Disputes;" and § 6.6, which states, "Indepen-
dent Contractors." J.A. at 22.
A successful MPI product ultimately was developed, and TFD
asserts that during the process of developing this device, it disclosed
substantial quantities of proprietary and confidential information to
Augat in reliance on the Nondisclosure Agreement. After the develop-
ment of a viable molding technology, TFD alleges that Augat
informed TFD that it neither intended to purchase its molding tech-
nology from TFD, nor intended to engage TFD to produce the MPI
devices, but instead planned to use another source. Augat is now sell-
ing MPI devices, that TFD asserts incorporate TFD’s proprietary
2
Augat apparently drafted this agreement, which was sent to TFD with
a fax cover sheet, reproduced at J.A. 28, which stated, "look forward to
going to the next level."
3
Augat describes MPI devices as molded devices made from a com-
pound of polymer material and metal particles, which conduct electricity
and are used to connect packaged silicon computer chips to the circuitry
of personal computer boards. See Brief of Appellants at 3.
4 TRIMLESS-FLASHLESS DESIGN v. THOMAS & BETTS
trade secrets, thus giving rise to this action for misappropriation of
trade secret information.
The district court found that § 6.5, the claimed "arbitration clause,"
was "not clear enough to constitute an agreement to arbitrate the
issues raised" by TFD, J.A. at 137, and denied Augat’s motion to dis-
miss or to stay all proceedings pending arbitration. See J.A. at 139.
Augat argues that the Draft Agreement requires arbitration of all dis-
putes that arise under the Draft Agreement and claims that TFD’s suit,
although pleaded exclusively in terms of the Nondisclosure Agree-
ment, is so integrally related to the terms of the Draft Agreement as
to fall within the scope of the Draft Agreement’s arbitration clause.
TFD contends that the Draft Agreement was never a valid contract or,
in the alternative, that § 6.5 of the Draft Agreement is not a valid arbi-
tration clause. We address each contention in turn.
II.
We review a district court’s denial of a motion to compel arbitra-
tion de novo. See Cara’s Notions v. Hallmark Cards, Inc., 140 F.3d
566, 569 (4th Cir. 1998). The Federal Arbitration Act, 9 U.S.C. § 1et seq. ("the FAA"), creates a "‘heavy presumption of arbitrability,’"
such that "‘when the scope of the arbitration clause is open to ques-
tion, a court must decide the question in favor of arbitration.’" Ameri-
can Recovery Corp. v. Computerized Thermal Imaging, Inc., 96 F.3d
88, 92 (4th Cir. 1996) (quoting People’s Sec. Life Ins. Co. v. Monu-
mental Life Ins. Co., 867 F.2d 809, 812 (4th Cir. 1989)). Arbitration
is required if an arbitration clause is "‘susceptible of an interpretation
that covers the asserted dispute.’" Porter Hayden Co. v. Century
Indem. Co., 136 F.3d 380, 382 (4th Cir. 1998) (quoting United Steel-
workers of Am. v. Warrior & Gulf Nav. Co., 363 U.S. 574, 582-83
(1960)); see also Mitsubishi Motors Corp. v. Soler Chrysler-
Plymouth, Inc., 473 U.S. 614, 626 (1985) (stating that courts should
resolve all doubts concerning the scope of arbitrable issues in favor
of arbitration).
Nevertheless, "[a]rbitration under the [FAA] is a matter of consent,
not coercion, and parties are generally free to structure their arbitra-
tion agreements as they see fit." Volt Info. Sciences, Inc. v. Board of
Trustees of Leland Stanford Junior Univ., 489 U.S. 468, 479 (1989).
TRIMLESS-FLASHLESS DESIGN v. THOMAS & BETTS 5
"[T]he obligation to arbitrate is a creature of contract and . . . a party
cannot be required to submit to arbitration unless he has agreed to do
so in a contract." Marrowbone Dev. Co. v. District 17, 147 F.3d 296,
300 (4th Cir. 1998).
Federal law governs the interpretation of arbitration agreements
even when a contract includes a general choice-of-law provision ren-
dering effective the law of a certain state. See Smith Barney, Inc. v.
Critical Health Systems of North Carolina, Inc., 212 F.3d 858, 861
n.1 (4th Cir. 2000) (stating, in a case arising under agreement contain-
ing New York choice-of-law provision, that "[b]ecause arbitration
contracts must be construed in accordance with federal law, we are
not bound by New York state decisions"). State procedural rules gov-
erning arbitration may, however, be applied consistently with the
FAA. See Doctor’s Assoc., Inc. v. Casarotto, 517 U.S. 681, 688
(1996).
Augat argues strenuously that the district court erred in denying its
motion to dismiss or to stay all proceedings pending arbitration
because § 6.5’s lack of specificity can be cured under § 6.4 of the
Draft Agreement through the application of state-law default rules,
see Mass. Gen. Laws Ann. ch. 251, §§ 1-16 (West 2000), and by
application of the liberal presumption in favor of arbitrability. Augat
is correct in arguing that a very brief arbitration clause can indeed
impose a requirement to arbitrate, to the extent that doubts about the
scope of the clause can be resolved by the federal policy favoring
arbitration, and the failure to specify procedures can be cured by
applying specified default-rule procedures provided by state law.
Nevertheless, this "arbitration clause" is unenforceable, not because
§ 6.5’s scope is murky or because it fails to provide detailed proce-
dures, but simply because the evidence does not indicate that the par-
ties intended § 6.5 to be a binding, substantive, legally operative
provision. Nor does the evidence indicate that reasonable persons
would understand § 6.5 to be such. Section 6.5’s brevity and place in
the document tend to indicate that it is part of a list of undeveloped
"open terms" that have the appearance of discussion items. Further,
§ 6.5 does not even contain a verb. It does not state, "Disputes shall
be arbitrated," or "Arbitration of Disputes is Required," but merely,
"Arbitration of Disputes." J.A. at 22. It has the appearance of a topic
heading with no text and appears in the miscellaneous items section
6 TRIMLESS-FLASHLESS DESIGN v. THOMAS & BETTS
of the Draft Agreement. Augat contends that custom and usage indi-
cate that reasonable business persons would understand this provision
to constitute a binding arbitration agreement. It seems evident, how-
ever, that reasonable business persons would signal their intention to
require arbitration in a clearer fashion than is evidenced by this
clause, read in context. See, e.g., Ford v. Nylcare Health Plans, 141
F.3d 243, 246 (5th Cir. 1998) (enforcing clause that provided that
"[a]ny controversy or claim arising out of or relating to this Agree-
ment, or the breach thereof shall be settled by arbitration in accor-
dance with the Texas General Arbitration Act"); American Recovery
Corp. v. Computerized Thermal Imaging, Inc., 96 F.3d 88, 90 (4th
Cir. 1996) (enforcing arbitration clause that provided that "[a]ny dis-
pute, controversy or claim arising out of or related to this . . . Agree-
ment shall be resolved by binding arbitration"(emphasis omitted)).
For these reasons, we hold that the three-word phrase in § 6.5 does
not constitute an enforceable arbitration clause.
III.
In further support of the district court’s ruling, TFD argues that the
entire Draft Agreement is too indefinite and contains too many open
terms to be a valid contract. Resolution of this issue is inappropriate
because Augat only appealed the district court’s denial of its motion
to stay proceedings pending arbitration. We need not resolve the
question of whether the Draft Agreement is a valid contract because
regardless of the answer, § 6.5 is not a valid arbitration clause. We
decline to unnecessarily decide this interlocutory appeal on broad
grounds potentially impacting the merits of the case when it is clear
that the "arbitration clause" in the Draft Agreement is too indefinite
and spectral to constitute a valid agreement to arbitrate disputes.
IV.
We are mindful that "the federal policy favoring arbitration is not
a free-standing ground upon which to remit parties to arbitration, but
one that informs the court’s interpretation" of the parties’ agreement.
Brennan v. King, 139 F.3d 258, 266 n.8 (1st Cir. 1998); see also
American Recovery Corp. v. Computerized Thermal Imaging, Inc., 96
F.3d 88, 92 (4th Cir. 1996) (noting that "[w]hether a party has agreed
to arbitrate a dispute is a matter of contract interpretation"). Here, no
TRIMLESS-FLASHLESS DESIGN v. THOMAS & BETTS 7
reasonable interpretation of the parties’ agreement leads to the con-
clusion that § 6.5 constitutes an agreement to arbitrate disputes. The
order of the district court denying Augat’s motion to dismiss or to
stay all proceedings pending arbitration is therefore affirmed and the
case is remanded for further proceedings consistent with this opinion.
AFFIRMED AND REMANDED