Intellectual Property Law

Chief Judge Gregory M. Sleet: Motion to Enforce Settlement Agreement

By Karen E. Keller, Andrew A. Lundgren et al.

Chief Judge Sleet recently granted, in part, plaintiff?s motion to enforce the parties? settlement agreement to dismiss the case. Rohm and Haas Electronic Materials, LLC v. Honeywell International, Inc., C.A. No. 06-297-GMS, Memo. (D. Del. Apr. 16, 2009). The settlement agreement was the product of much negotiation. Id. at 2-6. Counsel for both parties advised the Court of the agreement and that signed agreements were being exchanged. Id. at 6. Finally, the agreement was memorialized by a joint letter filed with the Court whereby counsel also stated that a stipulation of dismissal would be submitted. Id. Before entering into settlement negotiations, the PTO granted defendant?s request to have plaintiff?s patents reexamined. Id. at 2. Amidst the negotiations for settlement, plaintiff met with the PTO to discuss the pending reexaminations. Subsequently, the PTO sent a copy of the ?interview summary? to defendant at the address they had on file. Id. at 4. Defendant?s refusal to honor the settlement agreement stemmed from plaintiff?s interview with the PTO and failure to disclose the interview. Id. at 8. Chief Judge Sleet determined that a final settlement agreement had been reached based on the extensive negotiations, and the communications with the Court that the agreement had been ?finalized.? Id. 10-11. The fact that the agreement had not been signed did not mean the agreement was not finalized, the parties conduct was evidence that the agreement was intended to be a final agreement. Moreover, plaintiff had no duty to disclose the PTO interview to defendant because the interview was a ?non-event.? Id. at 13-14.

Rohm and Haas Electronic Materials, LLC v. Honeywell International, Inc., C.A. No. 06-297-GMS, Memo. (D. Del. Apr. 16, 2009).

Full post as published by Delaware IP Law Blog on May 06, 2009 (boomark / email).