1. The 1999 Agreements were terminated as a matter of law as of April 22, 2005, except for the Confidentiality Agreement, whose obligations will terminate on April 22, 2008 (or "earlier if it can be shown that the confidential information is generally known and in the public domain through no act or omission of Primenergy").
2. PRM gave confidential information regarding gasifier technology to Primenergy, including eleven categories of information. The Arbitrator ordered Primenergy to return this information to PRM on or before May 22, 2005, and not retain any copies thereof
3. Primenergy, as licensee of technology owned by PRM, made improvements, advances, and refinements to that technology. PRM is entitled to compensation for these improvements.
4. As joint owner of the ‘505 and ‘978 patents, PRM is free to use and to license others to use the invention covered by those patents. Primenergy was ordered to assign an individual one-half interest on those patents to PRM on or before May 22, 2005.
5. On numerous occasions, Primenergy breached its contractual obligation to provide PRM with prompt notice of any improvements to the licensed technology. Nevertheless, PRM did not offer specific evidence of damages caused by these breaches.
6. PRM is entitled to a payment of $449,948.87 from Primenergy for Primenergy’s use of confidential information ("know-how" and "show-how"), consulting fee, and sums which Primenergy acknowledged that it owed. The Arbitrator ordered that this amount be paid on or before May 22, 2005.
7. Both parties committed breaches regarding their respective obligations for the territory of Japan. Although Primenergy failed to provide PRM with copies of proposals it was making to Kobe Steel, as required by contract. PRM admitted in testimony that it was unable to reach an agreement with Kobe because it could not come to terms on a confidentiality agreement— i.e., no causation. Also, "PRM. has not shown any specific dollar damages attributable to Primenergy’s breach of its obligations under the 1999 agreements based on the undisclosed dealings with Kobe Steel."
8. The Arbitrator enjoined Primenergy from any further discussions or business relationships with Kobe Steel until April 22, 2007.
9. The Arbitrator made detailed findings about the extent to which Primenergy could or could not use the licensed technology in the future.
...[B]oth the tort and contract claim asserted by PRM against Primenergy are "disputes under" the General Agreement and subject to arbitration.
To the extent that issues raised in this case, as between PRM and Primenergy, were or could have been resolved in the now-completed arbitration, res judicata will bar their relitigation here. To the extent they could not have been resolved in the arbitration that has now been completed—either because they did not yet exist or were then unknown— they must be submitted to arbitration before this Court can act on them.
1) All claims against Kobe Steel are dismissed.
2) As to the claims against the other respondents:
I. The contempt claim is dismissed, but we will grant leave to amend the Statement of Claims to assert ongoing breaches of contract beyond the date of the Arbitration Award.
II. The Fraud claim is dismissed.
III. The conspiracy claim is dismissed, except for the alleged conspiracy to convert intellectual property during the post-Award period. The Panel observes, however, that a corporation cannot conspire with its own employees or, except in narrow circumstances, its affiliates.
IV. The claim for misappropriation of trade secrets is dismissed except as to post-Award conduct and damages.
V. The claim for tortious interference is dismissed.
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