General Protecht Group, Inc. v. Leviton Manufacturing Co., Inc.

United States Court of Appeals
for the Federal Circuit
__________________________
GENERAL PROTECHT GROUP, INC.
(formerly known as Zhejiang Dongzheng Electrical
Co.),
G-TECHT GLOBAL CORPORATION,
SECURELECTRIC CORPORATION, AND
WAREHOUSE-LIGHTING.COM, LLC,
Plaintiffs-Appellees,
AND
CENTRAL PURCHASING, LLC AND
HARBOR FREIGHT TOOLS USA, INC.,
Plaintiffs-Appellees,
v.
LEVITON MANUFACTURING CO., INC.,
Defendant-Appellant.
__________________________
2011-1115
__________________________
Appeal from United States District Court for the Dis-
trict of New Mexico in case no. 10-CV-1020, Judge James
O. Browning.
__________________________
Decided: July 8, 2011
__________________________
2 GENERAL PROTECHT v. LEVITON MFG
WILLIAM F. LONG, Sutherland, Asbill & Brennan,
LLP, of Atlanta, Georgia, argued for plaintiffs-appellees
General Protecht Group, Inc., et al. With him on the brief
were ANN G. FORT, LEI FANG and JOSHUA D. CURRY.
MARK J. ROSENBERG, Sills Cummis & Cross P.C., of
New York, New York, for plaintiffs-appellees Central
Purchasing, LLC, et al.
LARRY L. SHATZER, Wilson, Sonsini, Goodrich &
Rosati, P.C., of Washington, DC, argued for defendant-
appellant. With him on the brief were SHAUN R. SNADER;
and STEFANI E. SHANBERG and ROBIN L. BREWER, of Palo
Alto, California.
__________________________
Before LINN, SCHALL, and DYK, Circuit Judges
LINN, Circuit Judge.
Leviton Manufacturing Co., Inc. (“Leviton”) appeals
the grant of a preliminary injunction to enforce a forum
selection clause in a settlement agreement which resolved
a prior lawsuit brought by Leviton against General Pro-
techt Group, Inc., formerly known as Zhejiang Dongzheng
Electrical Co. (“GPG”). Because the district court cor-
rectly determined that the forum selection clause applies
to this case and did not abuse its discretion in granting
the preliminary injunction, this court affirms.
I. BACKGROUND
Leviton and GPG are both manufacturers of ground
fault circuit interrupters (“GFCIs”). In 2004 and 2005,
Leviton sued GPG and three other defendants, including
two of the Appellees, in the District of New Mexico for
infringement of U.S. Patent Nos. 6,246,558 and 6,864,766
(“’558 patent” and “’766 patent” respectively). In 2007,
GENERAL PROTECHT v. LEVITON MFG 3
the parties settled that lawsuit pursuant to the terms of a
confidential settlement agreement (“Settlement Agree-
ment”). The Settlement Agreement included the following
covenant not to sue:
2.1 . . . Leviton also hereby covenants
not to sue (1) Defendants . . . for alleged
infringement of the ’558 and/or ’766 pat-
ents based on the Dongzheng products
currently accused of infringement . . . and
(2) Defendants . . . for alleged infringe-
ment of the ’558 patent and/or the ’766
patent with respect to an anticipated fu-
ture new GFCI product that Defendant
Dongzheng has indicated its intent to
market in the U.S. in the future, provided
however that [the future product conforms
to a submitted design].
Gen. Protecht Grp., Inc. v. Leviton Mfg. Co., No. 10-cv-
1020, 2010 WL 5559750, at *2 (D.N.M. 2010); Appellees’
Br. at 7. The Settlement Agreement also specified that
the covenant not to sue applied to customers of the defen-
dants, and that “Leviton . . . agrees that Defendants’
customers are intended beneficiaries . . . and . . . can
enforce such provisions against Leviton . . . .” Appellees’
Br. at 8.
In addition, the Settlement Agreement included the
following clause entitled “Governing Law/Venue”:
Any dispute between the Parties relating
to or arising out of this [Settlement
Agreement] shall be prosecuted exclu-
sively in the United States District Court
for the District of New Mexico. The Par-
ties consent to the venue and jurisdiction
of such court for this purpose.
4 GENERAL PROTECHT v. LEVITON MFG
Gen. Protecht, 2010 WL 5559750, at *3.
In September 2010, Leviton filed a complaint with the
International Trade Commission (“ITC”) alleging in-
fringement by GPG and its U.S. distributors (the other
Appellees here) of U.S. Patents Nos. 7,463,124 and
7,764,151 (“’124 patent” and “’151 patent” respectively).
Around the same time, Leviton filed a complaint against
Appellees and other defendants in the Northern District
of California alleging infringement of the same two pat-
ents. The ’124 and ’151 patents are both continuations
ultimately depending from the applications that issued as
the ’558 and ’766 patents. Both the ’124 and ’151 patents
issued after the Settlement Agreement was executed and
the prior litigation resolved.
Following receipt of these complaints, GPG informed
Leviton that it believed it had a license to practice the
asserted patents under the Settlement Agreement, and
that Leviton was required to bring its case in the District
of New Mexico pursuant to the forum selection clause in
the same agreement. The parties were unable to agree,
and Appellees filed a complaint in the District of New
Mexico asserting declaratory-judgment claims for breach
of contract, non-infringement, and invalidity. GPG also
moved in New Mexico for a temporary restraining order
and a preliminary injunction against Leviton’s continued
litigation of the dispute outside of New Mexico.
The New Mexico district court granted the prelimi-
nary injunction enforcing the forum selection clause of the
Settlement Agreement. The district court found that
there was a likelihood of success on the merits because
GPG had asserted a defense of implied license, which
likely triggered the forum selection clause, and because
GPG was likely to succeed on the merits of this defense.
Gen. Protecht, 2010 WL 5559750, at *1. The district court
also considered the other three preliminary injunction
GENERAL PROTECHT v. LEVITON MFG 5
factors (irreparable harm, balance of hardships, public
interest) and found that each favored entry of a prelimi-
nary injunction. Id. at 25-28.
Leviton appealed and sought expedited review, which
this court granted, and a stay pending appeal of the
preliminary injunction, which this court denied. In De-
cember 2010, pursuant to the preliminary injunction,
Leviton voluntarily dismissed its California action and
moved to dismiss the ITC case against the GPG products.
That motion was granted.
On appeal, Leviton essentially makes three argu-
ments: (1) the forum selection clause does not apply
because it does not extend to cases in which the only
relationship the Settlement Agreement bears to the
subsequent dispute is that it possibly gives rise to a
defense; (2) even if the forum selection clause could apply
in such cases, the Settlement Agreement does not give
rise to an implied license defense in the present case as a
matter of law; and (3) the district court erred in its appli-
cation of the remaining three preliminary injunction
factors.
Leviton timely appealed and this court has jurisdic-
tion pursuant to 28 U.S.C. §§ 1292(a)(1), 1292(c)(1), and
1295(a)(1).
II. DISCUSSION
A. Standard of Review
Although this court generally applies the law of the
respective regional circuit on questions of procedure, this
court applies its own law in reviewing procedural matters
arising from substantive issues in areas of law within its
exclusive jurisdiction. See Tex. Instruments Inc. v.
6 GENERAL PROTECHT v. LEVITON MFG
Tessera Inc., 231 F.3d 1325, 1328 (Fed. Cir. 2000). In a
case such as this, involving an injunction against partici-
pation in a district court suit for patent infringement and
an ITC investigation under section 337 of the Tariff Act,
this court’s procedural law applies. Id. “Under Federal
Circuit law, this court sustains a grant or denial of a
preliminary injunction unless the district court abused its
discretion, or based its decision on an erroneous legal
standard or clearly erroneous findings of fact.” Id.B. Likelihood of Success on the Merits
1. Forum Selection Clause
The forum selection clause in the Settlement Agree-
ment states in relevant part that “any dispute between
the Parties relating to or arising out of this [Settlement
Agreement] shall be prosecuted exclusively in the United
States District Court for the District of New Mexico.”
Gen. Protecht, 2010 WL 5559750, at *3. Thus, whether
GPG is likely to succeed on the merits of applying the
forum selection clause depends on whether its implied
license defense crosses the threshold required to trigger
the “relating to or arising out of” provision of that clause.
The parties disagree about how high this threshold really
is.
As Leviton argues, if all that is required is a license
and a bare allegation that it provides a defense, then
virtually every subsequent dispute between contracting
parties would trigger such a forum selection clause. On
the other hand, as GPG argues, if a party seeking to
enforce a forum selection clause in the context of a license
defense must first establish, conclusively, that it would
win the license defense, such a forum selection clause
would be meaningless because if the defense should fail,
then the merits would have been litigated in a forum
GENERAL PROTECHT v. LEVITON MFG 7
other than that which was bargained for; and if the de-
fense should succeed, there would likely be nothing left to
litigate once the case arrives in the proper forum.
In Texas Instruments, this court held that “[p]atent
infringement disputes do arise from license agreements”
and that where “the governing law clause of the license
agreement is not limited to license related issues such as
the amount of royalty due, term of agreement, and cross
licensing[, that clause,] . . . as in any patent license
agreement, necessarily covers disputes concerning patent
issues.” 231 F.3d at 1331. This case presents a non-
frivolous dispute regarding the scope of a patent license.
The outcome of that dispute will determine whether the
patentee can sustain its suit for infringement. Thus,
there is no question in this case that the dispute “relates
to or arises out of” the Settlement Agreement. The forum
selection clause therefore applies, and the district court
did not abuse its discretion in granting the preliminary
injunction on that basis.
2. Implied License
The controlling case on the implied license question
presented here is TransCore v. Electronic Transaction
Consultants Corp., 563 F.3d 1271 (Fed. Cir. 2009). In
settling a prior case, TransCore had in effect licensed
MARK IV by covenanting not to sue under multiple
patents covering automated toll collection technology. Id.
at 1273. The settlement agreement included the following
provisions:
[TransCore] hereby agrees and covenants
not to bring any demand, claim, lawsuit,
or action against MARK IV for future in-
fringement of [the asserted patents] for
the entire remainder of the terms of the
respective [patents]. This Covenant Not
8 GENERAL PROTECHT v. LEVITON MFG
To Sue shall not apply to any other pat-
ents issued as of the effective date of this
Agreement or to be issued in the future.
...
TransCore . . . fully and forever release[s],
discharge[s] and dismiss[es] all claims,
demands, actions, causes of action, liens
and rights, in law or in equity (known,
unknown, contingent, accrued, inchoate or
otherwise), existing as of June 26 2001,
that [it has] against MARK IV . . . but ex-
cluding any claims for breach of this
Agreement. No express or implied license
or future release whatsoever is granted to
MARK IV or to any third party by this Re-
lease.
Id.Later, TransCore sued Electronic Transaction Con-
sultants Corp. (“ETC”), a third party consulting and
systems integration firm engaged by MARK IV, for in-
fringement of three of the same patents and—important
for this case—one additional “related patent that was
pending before the Patent and Trademark Office but had
not yet issued at the time of the TransCore-Mark IV
settlement.” Id. at 1273-74.
The court found that TransCore’s rights in the previ-
ously asserted patents, as against MARK IV technology,
were exhausted by its covenant not to sue MARK IV. Id.
at 1274. As to the continuation patent, the court found
that it was impliedly licensed to MARK IV and that the
implied license also exhausted TransCore’s rights in that
patent as against the MARK IV technology being installed
by ETC. Id. at 1278-79.
GENERAL PROTECHT v. LEVITON MFG 9
As this court reiterated in TransCore:
The essence of legal estoppel that can be
found in the estoppel of the implied license
doctrine involves the fact that that the li-
censor . . . has licensed . . . a definable
property right for valuable consideration,
and then has attempted to derogate or de-
tract from that right. The grantor is es-
topped from taking back in any extent
that for which he has already received
consideration.
Id. at 1279 (quoting AMP Inc. v. United States, 389 F.2d
448, 452 (1968)). As this court further explained, “[t]he
basic principle is . . . quite simple: ‘legal estoppel refers to
a narrow[] category of conduct encompassing scenarios
where a patentee has licensed or assigned a right, re-
ceived consideration, and then sought to derogate from
the right granted.’” Id. (quoting Wang Labs., Inc. v.
Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1581 (Fed. Cir.
1997)).
The TransCore court then held that “Mark IV’s rights
under its implied license to the [continuation patent] are
necessarily coextensive with the rights it received in the
TransCore-Mark IV license agreement.” Id. at 1279-80.
And the court found that:
[t]he language of the . . . settlement
agreement, which states that “[t]his Cove-
nant Not To Sue shall not apply to any
other patents . . . to be issued in the fu-
ture,” is not to the contrary. This lan-
guage may protect TransCore against
broad claims that future patents generally
are impliedly licensed, but it does not
10 GENERAL PROTECHT v. LEVITON MFG
permit TransCore to derogate from the
rights it has expressly granted[.]
Id. at 1279.
In the present case, the New Mexico district court ex-
plained that “[u]nder TransCore . . . the [Settlement
Agreement] granted an implied license to the ’124 and
’151 patents, if [GPG] must practice the ’124 and ’151
patents to obtain the benefit of their bargain to practice
the ’766 and ’558 patents.” Gen. Protecht, 2010 WL
5559750, at *19. Finding this condition met, the court
ruled in GPG’s favor. The district court also responded to
Leviton’s argument that this case could involve other
products outside the scope of the Settlement Agreement
by noting that “if Leviton wishes to conduct discovery
whether other products allegedly infringe its patents, it
may conduct such discovery in this forum.” Id. at *21.
On appeal, Leviton argues that TransCore does not
control the present case because: (1) TransCore is limited
to cases where the claims of the continuation are broader
than and therefore necessary to practice the claims of the
expressly licensed patents; (2) the manifest mutual intent
of the parties in the present case was to convey narrower
rights than were conveyed in TransCore such that no
license can be implied here; and (3) such a result conflicts
with this court’s holding in the earlier decided case of
Jacobs v. Nintendo of America, 370 F.3d 1097 (Fed. Cir.
2004). We address each argument in turn.
i. The Effect of TransCore
Here, Leviton urges that, because at least some
claims of its continuations are narrower than the previ-
ously asserted claims, asserting the newer, narrower
claims does not “derogate” from the right to practice the
licensed claims. Leviton notes that its new claims have
GENERAL PROTECHT v. LEVITON MFG 11
limitations such as a “three-wire electrical circuit,” a
“mounting flange,” and a “three-hole socket,” which were
not claimed in the licensed patents.
Leviton cannot deny, however, that the newly as-
serted continuations are based on the same disclosure as
the previously licensed patents and that, by definition,
the continuations can claim no new invention not already
supported in the earlier issued patents. Moreover, the
same products accused in the earlier suit are accused
here.
TransCore prohibits a patent licensor from derogating
from rights granted under the license by “taking back in
any extent that for which [it] has already received consid-
eration.” 563 F.3d at 1279 (quotation omitted). In this
case, Leviton’s actions have unquestionably derogated
from GPG’s rights under the Settlement Agreement. The
same products were accused. The same inventive subject
matter was disclosed in the licensed patents. If Leviton
did not intend its license of these products to extend to
claims presented in continuation patents, it had an obli-
gation to make that clear.
From our holding in TransCore it reasonably follows
that where, as here, continuations issue from parent
patents that previously have been licensed as to certain
products, it may be presumed that, absent a clear indica-
tion of mutual intent to the contrary, those products are
impliedly licensed under the continuations as well. If the
parties intend otherwise, it is their burden to make such
intent clear in the license. It is well settled that parties
are free to contract around an interpretive presumption
that does not reflect their intentions. Indeed, “patent
license agreements can be written to convey different
scopes of promises not to sue, e.g., a promise not to sue
under a specific patent or, more broadly, a promise not to
sue under any patent the licensor now has or may acquire
12 GENERAL PROTECHT v. LEVITON MFG
in the future.” Spindelfabrik Suessen-Schurr, Stahlecker
& Grill GmbH v. Schubert & Salzer Maschinenfabrik
Aktiengesellschaft, 829 F.2d 1075, 1081 (Fed. Cir. 1987).
In this case, Leviton did not do so.
ii. Mutual Intent of the Parties
Leviton argues that the mutual intent of the parties
in the present case distinguishes this case from the facts
of TransCore. Leviton contends that a number of provi-
sions in the Settlement Agreement make clear that the
parties intended that settlement to be merely a “walk
away.” Appellant’s Reply Br. at 8. For instance, Leviton
refers to provisions preserving Leviton’s right to sue on
related patents and GPG’s right to rely on the prior claim
constructions and its inequitable conduct defense. Levi-
ton argues that each of these provisions, by anticipating
future litigation, evidences mutual intent not to grant any
rights that would imply a license to any other patents.
TransCore is instructive in addressing Leviton’s ar-
guments. The Settlement Agreement there stated that
“This Covenant Not To Sue shall not apply to any other
patents issued as of the effective date of this Agreement
or to be issued in the future.” TransCore, 563 F.3d at
1273. Nonetheless, this court found that, by filing the
subsequent suit, TransCore had derogated from the right
it previously granted and that therefore the continuation
patent was impliedly licensed.
The provisions to which Leviton points manifest a
mutual understanding that future litigation between the
parties concerning related patents was a distinct possibil-
ity. But this does not address the question of whether the
parties intended that continuations could be asserted
against the same products. At best, the Settlement
Agreement is silent on this point. At worst, the careful
establishment of rules of engagement without any men-
GENERAL PROTECHT v. LEVITON MFG 13
tion of later suits involving the same products and related
patents shows that Leviton did not reserve this right.
Expressio unius exclusio alterius. The question of mutual
intent in the present case is controlled by TransCore.
iii. Jacobs Does Not Conflict
Finally, Leviton argues that, if interpreted to compel
a finding of implied license in the present case, then
TransCore conflicts with this court’s prior holding in
Jacobs v. Nintendo of America, 370 F.3d 1097 (Fed. Cir.
2004), and this court must follow Jacobs as the first-
decided case. According to Leviton, Jacobs compels a
finding that there is no implied license here. Leviton is
wrong on both counts: Jacobs neither conflicts with
TransCore nor controls this case.
In Jacobs, the patentee had previously licensed a pat-
ent covering the use of micromachined accelerometers as
components in tilt-sensitive control boxes. 370 F.3d at
1098. Analog Devices, Inc. (“Analog”) made micro-
machined accelerometers and provided them to third
parties who included them in control boxes. Id. Jacobs
had previously sued Analog for indirect infringement. Id.In settling that prior case, the parties agreed to the
following provisions:
License. Jacobs grants Analog an irrevo-
cable, perpetual, fully paid up license to
take any actions set forth in 35 U.S.C. §
271 which would, but for this license, con-
stitute an infringement or violation of Ja-
cobs’ patent rights under the [asserted
patent]. Without limiting the foregoing,
the license granted hereunder includes the
right to make, use, sell, import and export
components, including micromachined ac-
14 GENERAL PROTECHT v. LEVITON MFG
celerometers, for use in tilt-sensitive con-
trol boxes.
Covenant-not-to-sue. Jacobs covenants not
to sue Analog for any alleged infringement
or violation of the [asserted patent]. This
covenant-not-to-sue extends to any cause
of action having as an element the in-
fringement of the [asserted patent] by
Analog or any other party, whether occur-
ring in the past, present, or in the future.
Id. at 1098-99.
This court found that these provisions, taken to-
gether, meant that Nintendo had an implied license to use
Analog’s micromachined accelerometers in its products.
Id. at 1101-02. In its analysis, the court discussed the
“license” provision and the “covenant not to sue” provi-
sion, explaining that the covenant not to sue merely
provided “peace” whereas the license provided “prosper-
ity.” Id. at 1099. Important to Leviton’s argument, the
court opined that “[i]f all that Jacobs intended to do
through the settlement agreement was to free Analog of
its liability for infringement . . . the covenant not to sue
. . . would have been fully sufficient to serve that pur-
pose.” Id. at 1101.
Leviton argues that this statement from Jacobs
means that “covenant not to sue” language evidences a
narrow intent that cannot give rise to an implied license.
But Leviton carefully points out that it is not saying that
“the use of the term ‘covenant not to sue’ in Jacobs meant
there could be no implied license or that a covenant not to
sue is not a license.” Appellant’s Reply Br. at 15. Indeed,
at oral argument, Leviton admitted that Jacobs did not
hold that a covenant not to sue did not give rise to an
implied license, and stated that Jacobs supported that
GENERAL PROTECHT v. LEVITON MFG 15
view only “by negative inference.” Oral Arg. at 11:27-
12:18 available at http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2011-1115.mp3. Even if Leviton’s reading
of the import of that statement were correct, this would
not be a direct conflict of panel opinions as is necessary to
invoke this court’s rule of precedence. See Newell Com-
panies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed.
Cir. 1998).
We find nothing in the reasoning or holding of Jacobs
that conflicts with TransCore or supports, by “negative
inference” or otherwise, the proposition advanced by
Leviton.
C. Other Injunction Factors
In granting GPG’s request for a preliminary injunc-
tion, the district court considered the remaining injunc-
tion factors: irreparable harm to the moving party,
balance of hardships, and public interest. We address
each of these factors in turn.
1. Irreparable Harm
The district court found that GPG would likely be ir-
reparably harmed in the absence of a preliminary injunc-
tion because it would be deprived of its bargained-for
forum and because it would likely be forced to litigate the
same issues on multiple fronts at the same time. The
district court relied on Texas Instruments, Inc. v. Tessera,
No. C-00-2114 CW, slip. op. at 6 (N.D. Cal. Mar. 6, 2001),
for the view that “litigating simultaneously in California
and the ITC will cause financial and business hardship
. . . [and that] the inconvenience and disruption to its
business is irreparable.”
Leviton argues that “deprivation of one’s chosen fo-
rum . . . is not irreparable harm per se.” Appellant’s Br. at
16 GENERAL PROTECHT v. LEVITON MFG
50-51. Leviton cites Camping Construction Co. v. District
Council of Iron Workers, 915 F.2d 1333, 1349 (9th Cir.
1990), for this proposition. In Camping Construction the
issue in dispute was whether the Norris-LaGuardia Act
prohibited a district court from enjoining arbitration of a
dispute arising under a collective bargaining agreement.
Next, Leviton argues that litigating in multiple forums
does not constitute irreparable harm because GPG alleg-
edly “brought this on [itself]” by filing the second suit in
the District of New Mexico. Appellant’s Br. at 51. Accord-
ing to Leviton, GPG “should have raised [its] implied
license argument in the California Action rather than file
their declaratory judgment action [in New Mexico].” Id.Leviton also cites Hospah Coal Co. v. Chaco Energy Co.,
673 F.2d 1161 (10th Cir. 1982) for support. In Hospah,
the Tenth Circuit remanded a New Mexico court’s pre-
liminary injunction against participating in copending
Texas cases on the theory that the parties should have
litigated the issue of forum in the first-filed court under
the provisions of Federal Rule of Civil Procedure 12(b)
and 28 U.S.C. §1404. Id. at 1162-3.
GPG responds that, in the absence of the preliminary
injunction, it would face irreparable harm because of the
expenses involved in defending the ITC proceeding and
because its forum selection clause would be reduced to a
nullity. GPG relies on district court decisions that are not
binding on this court for each of these propositions.
We conclude that the district court’s determination of
irreparable harm was proper. Leviton’s reliance on
Camping Construction Co. is misplaced. That case in-
volved the question of a district court’s power to enjoin
arbitration of a dispute arising under a collective bargain-
ing agreement, consistent with the provisions of the
Norris-Laguardia Act. 915 F.2d at 1334. The Ninth
Circuit held:
GENERAL PROTECHT v. LEVITON MFG 17
[A]n [arbitration] award, prior to judicial
enforcement . . . . has no more effect than
any provision of a collective bargaining
agreement normally has; it cannot by it-
self inflict anything like irreparable injury
[. . . . A] labor arbitration is likely to have
therapeutic value even for the losing party
or parties[.]
Id. at 1349. Unlike an arbitration, an ITC proceeding can
have a direct and significant impact on a responding
party and is not a “therapeutic” exercise.
Leviton’s reliance on Hospah is equally unhelpful. As
an initial matter, Hospah does not compel litigation of the
license defense in California. At most it suggests that
GPG should have sought to enforce the forum selection
clause by first moving to dismiss or transfer in the Cali-
fornia court rather than by preliminary injunction in a
new action. But even assuming that that is what Leviton
intended to argue, the argument is a non-sequitur: GPG
was entitled to litigate this action in the District of New
Mexico by virtue of the forum selection clause to which
Leviton agreed. Any irreparable harm resulting from the
incremental challenge of also litigating in California and
the ITC, would be the consequence of Leviton’s election to
sue in two other forums, both of which it had already
bargained away. Moreover, by suing in both California
and the ITC, Leviton had already imposed the burden of
dual litigations on GPG, notwithstanding the automatic
stay of the district court case pending the 337 investiga-
tion. At most, Leviton has suggested that GPG would not
suffer irreparable harm as a result of litigating the choice
of forum first in California. But litigating the choice of
forum issue itself is not the basis of irreparable harm in
the present case.
18 GENERAL PROTECHT v. LEVITON MFG
Moreover, Hospah does not control. In Texas Instru-
ments, the Court held that the question of whether to
enjoin participation in a section 337 action would be
evaluated under this court’s procedural law. 231 F.3d at
1328. Likewise, in Laboratory Corporation of America
Holdings v. Chiron Corp., 384 F.3d 1326, 1331 (Fed. Cir.
2004), in affirming a district court’s injunction against a
party’s further prosecution of a copending action in an-
other district court, this court held that “because of the
importance of national uniformity in patent cases . . .
injunctions arbitrating between co-pending patent de-
claratory judgment and infringement cases in different
district courts are reviewed under the law of the Federal
Circuit.” This holding establishes not only that Federal
Circuit, and not Tenth Circuit, precedent controls this
case, but also that the remedy of injunction is appropriate
in these circumstances.
The district court’s finding of irreparable harm, being
neither clearly erroneous nor predicated on an error of
law, will not be disturbed.
2. Balance of Hardships
The district court found that the balance of hardships
favored the injunction because GPG would suffer the
hardships of litigating on two fronts and being deprived of
its bargained-for forum, as discussed above, but Leviton
could obtain substantially the same relief in district court
as in the ITC.
Leviton’s argument concerning the balance of hard-
ships relies upon its critique of GPG’s allegations of
irreparable harm, and adds that Leviton is being deprived
of the benefits of a unique forum with unique remedies.
GPG argues that Leviton could get the same relief in
district court, and that Leviton should not be able to count
GENERAL PROTECHT v. LEVITON MFG 19
as hardship its inability to avail itself of a forum it know-
ingly bargained away.
We conclude that the court did not abuse its discretion
in finding that the balance of hardships favored the
injunction. Having contracted for a specific forum, Levi-
ton should not be heard to argue that the enforcement of
the contract into which it freely entered would cause
hardship.
3. Public Interest
The district court also found that the public interest
was best served by entering the preliminary injunction.
The district court largely relied on M/S Bremen v. Zapata
Off-Shore Co., 407 U.S. 1, 10 (1972), for the proposition
that forum selection clauses “are prima facie valid and
should be enforced unless enforcement is shown by the
resisting party to be ‘unreasonable’ under the circum-
stances.” The district court understood this statement to
indicate that enforcement of forum selection clauses is,
generally, in the public interest.
Leviton argues that the “noncontroversial statement
that public policy favors enforcement of valid forum
selection clauses” Appellant’s Br. at 52. does not apply
because the forum selection clause does not govern this
dispute, and because it is contrary to public interest to
hinder an agency investigation.
GPG responds that the forum selection clause does
govern, and that, accepting this, Leviton does not appear
to dispute the proposition that forum selection clauses
should be enforced. GPG also argues that the injunction
does not apply to the ITC as such, but only to Leviton.
We agree with the district court that public policy fa-
vors the enforcement of the forum selection clause in this
20 GENERAL PROTECHT v. LEVITON MFG
case. Moreover, we find Leviton’s argument that the
injunction contravenes public interest by hindering an
agency investigation unpersuasive. As this court ex-
plained in Texas Instruments, “section 337 proceedings at
the ITC are recognized as litigation.” 231 F.3d at 1331.
The preliminary injunction here “will not and cannot
enjoin the ITC action.” Id. at 1332. There is no public
interest served by excusing a party’s violation of its
previously negotiated contractual undertaking to litigate
in a particular forum.
For these reasons, the district court correctly applied
the factors of irreparable harm, balance of hardships, and
public interest. The grant of the preliminary injunction
was not an abuse of discretion.
III. CONCLUSION
For the foregoing reasons, the district court’s issuance
of a preliminary injunction is affirmed.
AFFIRMED