Affymax, Inc. v. Johnson & Johnson, No. 04 C 6216, Slip Op. (N.D. Ill. Mar. 21, 2011) (Kennelly, J.).

Judge Kennelly granted in part plaintiff Affymax’s motion to vacate the arbitration award between the parties, remand the case to the arbitration panel for further determination of the inventorships of foreign patents. The parties previously undertook two years of discovery before a three-member AAA panel. That panel held that Affymax and defendants (collectively "Johnson & Johnson") were joint inventors on several U.S. Patents and that Johnson & Johnson was the sole inventor as to one patent, and therefore, its foreign counterparts. Noting that it could not vacate the arbitration decision even for "gross" misapplication of the law, the Court considered Affymax’s arguments to vacate the award as to the patents held to be solely owned by Johnson & Johnson:

  1. The evidence suggested that the panel did conduct the claim-by-claim analysis required by the Agreement as to the US patents and claims. It did not matter that they did not detail the analysis for each US claim.
  2. The arbitrator’s decision clearly and thoroughly stated the law of joint inventorship. Affymax’s disagreement with the application of the law is not grounds for vacating an arbitration award.
  3. The arbitrator had the relevant evidence before them. The trail of documents connecting Affymax to the documents was not relevant because the arbitrators disagreed with Affymax regarding the conclusions drawn from the documents.
  4. The arbitrators manifestly disregarded the law by finding that the foreign patents had the same ownership interests as their U.S. counterparts without performing the required claim-by-claim inventorship analysis. The Court, therefore, vacated the award regarding the foreign patents and rewarded the arbitration panel for determination of inventorship of the foreign patents.