News

Firm Secures Tenth Circuit Affirmance in Patent Licensing Dispute

December 3, 2019

On Wednesday, November 27, we secured a Tenth Circuit affirmance for our client, Guidance Endodontics, LLC (Guidance).

The plaintiff, SS White Burs, Inc. (SS White), originally filed suit in July 2018 asserting a breach of contract claim in a patent licensing dispute, seeking injunctive relief and specific performance based on an anticipatory breach of a handwritten document that SS White alleged superseded a previously executed license agreement between the parties. 

In February 2019, the United States District Court for the District of New Mexico denied SS White’s motion for a preliminary injunction and granted Guidance’s cross-motion to compel arbitration and dismiss the lawsuit. The district court agreed with Guidance that the handwritten document was not a valid contract, thereby confirming that Guidance remained the sole owner of the patent in dispute. The district court subsequently denied SS White’s motion for reconsideration and SS White appealed.

In its November 27 Order and Judgement, the Tenth Circuit affirmed, agreeing with the district court that “no material factual disputes exist” and “that the district court did not err in denying SS White’s perfunctory request for a summary trial,” and in granting Guidance’s cross-motion to compel arbitration and to dismiss the lawsuit.

To read the decision, click here.