UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT

_________________________________ SS WHITE BURS, INC., Plaintiff - Appellant,

v. GUIDANCE ENDODONTICS, LLC, Defendant - Appellee. No. 19-2049 (D.C. No. 1:18-CV -00698-WJ-KBM) (D. N.M.)

_________________________________ ORDER AND JUDGMENT *

_________________________________ Before PHILLIPS , McHUGH , and EID , Circuit Judges.

_________________________________ SS White Burs, Inc. (“SS White”) and Guidance Endodontic s (“Guidance”) are embroiled in a licensing dispute over “V-Taper ,” a patented endodontic file used in root canal procedures. Th e district court denied SS White’s motion for injunctive relief and granted Guidance’ s cross-motion to compel arbitration, applying an arbitration clause within the parties’ License Agreement. It also denied SS White’s motion to reconsider.

* After examining the briefs and appellate record, th is panel has determined unanimously to honor the parties’ request for a decision on the briefs without oral argument. See Fed. R. App. P. 34(f); 10th Cir. R. 34.1(G). The case is therefore submitted without oral argument. This or der and judgment is not binding precedent, except under the doctrines of la w of the case, res judicata, and collateral estoppel. It may be cited, however, for its persuasive value consistent with Fed. R. App. P. 32.1 and 10th Cir. R. 32.1. FILED United States Court of Appeals Tenth Circuit 

### November 27, 2019
Elisabeth A. Shumaker Clerk of Court2 On appeal, SS White contends arbitra tion is not appropriate because the License Agreement was superseded by a ha ndwritten “Settlement Agreement” that makes no mention of arbitration. At the same time, SS White faults the district court for assessing the validity a nd enforceability of that subsequent agreement. Exercising jurisdiction under 28 U.S.C. § 1291, we affirm.
I. Background SS White is a longtime manufacturer of dental products, in cluding endodontic files used for root canals. SS White hoped to develop minimally invasive root canal products, so it pursued a li cense for V-Taper from Guid ance, the patent holder. Tom Gallop is the Chief Executive Offi cer (CEO) and co-own er of SS White. Dr. Charles Goodis, an inventor and endo dontist, is the founde r, CEO, and sole member of Guidance, as well as the founder and CE O of Edge Endo, LLC. In March 2015, SS White and Guidan ce executed a License Agreement, by which Guidance granted SS White a non-exclus ive license to inte llectual property, including the V-Taper patents. In exchan ge, SS White agreed to pay royalties to Guidance according to a designated schedule. Relevant to this appeal, the License Agreement contains an arbitration provision , which states that “[a]ny disputes by and between the parties arising under this Agre ement, other than [c ertain claims for injunctive relief], sha ll be resolved by arbitration.” Aplt. App. at 26. The License Agreement also contains a m odification provision, which sp ecifies that it “may be modified only by a written instrument that specifically refers to this Agreement and is signed by an authorized o fficial of each Party.” Id. at 28.3 In January 2016, the parties execut ed a document entitled “2016 Amendment to License Agreement” (“2016 Amendmen t”), which extends by one year the deadlines for (1) SS White’s r oyalty payments and (2) the termination of the License Agreement if SS White fa ils to meet its minimum sales requirements. Id. at 31-36. The parties made handwritten changes to a copy of certain sections of the License Agreement and attached the marked -up document as Exhibit A to the 2016 Amendment. Per the requirements of the License Agreement’s modification provision, the 2016 Amendment specifically re ferences “the March 26, 2015 License Agreement,” id. at 31, and is signed by an authorized official of each party. The final paragraph of the 2016 Amendmen t states that “[a]ll other terms and conditions of the License shall remain unchang ed” and incorporates “all the rights and obligations contained in the Licen se [Agreement].” Id. at 31. Ultimately, the relationship between th e parties soured, and SS White stopped making royalty payments. After some back and forth without a mutually satisfactory resolution, Gallop and Goodis met during an endodontist conference in Denver in April 2018. There they signed a handwritten document containing the following text: SS White pays Accrued royalties per Agreement + $175k/yr Next 5 years 2018, 2019, 2020, 2021 & 2022 In Exchange for this Edge Endo grants SSW Ownership Of all V Taper Patents [Signature] Chuck Goodis CEO4 [Signature] Tom Gallop SSW CEO Id . at 38. The parties present very different vers ions of this document’s origin and significance. SS White states that it wa s a product of negotia tions between Goodis and Gallop and repeatedly calls it a “Settlement Agreement.” See Aplt. Opening Br. passim . According to SS White, the document reduced to writing Go odis’s offer to sell Guidance’s ownership of the V-Taper patents outright to SS White 1 if SS White paid the accrued royalties fo r 2016 and 2017 and made year ly payments of $175,000 from 2018 through 2022. Guidance, by cont rast, characterizes the document as a “proposal” stemming from a “very brief and rushed” conversation between the companies’ leaders, for whic h “key terms and details would need to be negotiated before any contract was formed.” Aplt. App. at 93-94. We refer to this document as the “2018 Handwritten Document.” On May 11, 2018, SS White sent Guid ance a draft document entitled, “Second Amendment to License Agreement” (“Second Amendment”), prefaced with a cover e-mail from Gallop asking, “How does this work?” Id. at 122-36. The Second Amendment references the License Agreement and the 2016 Amendmen t by title and date. It contains three amendments to the License Agreement, which relate to

1 The document actually states that “ Edge Endo grants SSW Ownership,” Aplt. App. at 38 (emphasis added). In one allega tion of the complaint, SS White states that “Guidance is an alter-ego of Edge Endo” and that “Goodis . . . uses these entities interchangeably.” Id. at 8. But elsewhere in th e complaint, SS White calls the reference to Edge Endo a “drafting error.” Id. at 13.5 royalties and the assignment of patents a nd trademarks. First, by May 2018, SS White must pay $236,360.89 in royalties ac crued before December 31, 2017, and “upon such payment being made no royalties shall be due by [SS White] for any period thereafter.” Id. at 123. Second, by the e ffective date of the Second Amendment, Guidance and Goodis must tr ansfer and assign their rights to the V-Taper patents and trademarks to SS Wh ite through an Assignment Agreement and Trademark Assignment Agreement, for whic h drafts were attached. Third, in consideration for the assignments, SS White must make yearly payments of $175,000 to Guidance from 2018 through 2022. Th e draft Second Amendment confirms that “[a]ll other terms and conditions of the [L icense] Agreement sh all remain in full force and effect,” id. at 124, thereby leaving the arbitr ation provision in place. In an e-mail dated May 24, 2018, Gallop urged Goodis to “m emorialize” their agreement because “[a]mbiguity can lead to disputes.” Id. at 137. The parties never executed the Second Amendment. In July 2018, SS White filed a complaint in district c ourt, asserting a breach of contract claim and seeking injunctive re lief and specific performance based on an anticipatory breach of the 2018 Handwritten Do cument. Shortly thereafter, Guidance filed a demand for arbitration with the Am erican Arbitration Association, alleging that SS White breached the License Agre ement and the 2016 Amendment. SS White then filed a motion for a preliminary injunc tion in district cour t. Guidance opposed that motion and filed a cross-motion to comp el arbitration and di smiss the lawsuit. The district court denied SS White’s motion and granted Gu idance’s cross-motion. It6 held that the 2018 Handwritten Document did not supersede the License Agreement and the 2016 Amendment because it is not a valid and binding contract, so the arbitration provision from the License Agreement is st ill enforceable. SS White next filed a motion to alter or amend the judgment under Federal Rules of Civil Procedure 59(e) and 60, aski ng the district court to reconsider its ruling that the 2018 Handwritten Document was not a valid contract, to allow the parties to pursue discovery as to whethe r the parties intended to be bound by that document, and to permit a jury to resolve whether that doc ument is a valid contract. SS White also challenged the district court’ s finding that there were no material facts in dispute. The district court denied th e motion to reconsider as well, echoing its original ruling. SS White filed this timely appeal.
II. Standard of Review Our review is governed by two separate standards. We review the district court’s denial of SS White’s motion for a preliminary injunction and motion to reconsider for an abuse of discretion. See Planned Parenthood Ass’n of Utah v. Herbert , 828 F.3d 1245, 1252 (10th Cir. 2016) (motion for a preliminary injunction); Jennings v. Rivers , 394 F.3d 850, 854 (10th Cir. 2005) (post-judgment motion). We review de novo the district court’ s grant of Guidance’ s motion to compel arbitration. See Hancock v. Am. Tel. & Tel. Co. , 701 F.3d 1248, 1261 (10th Cir. 2012). In review ing whether arbitration is re quired, we apply the same legal standard the dist rict court employed, Avedon Eng’g, Inc. v. Seatex , 126 F.3d7 1279, 1283 (10th Ci r. 1997), which resembles the summary judgment standard, see Hancock , 701 F.3d at 1261. If “the parties dis pute the existence of an agreement to arbitrate, a court may grant a motion to co mpel arbitration if there are no genuine issues of material fact regard ing the parties’ agreement.” Id. (internal quotation marks omitted). The opposi ng party receives “the benefi t of all reasonable doubts and inferences th at may arise.” Id . (internal quotation marks omitted).
III. Analysis Applying these standards, we affirm for substantially the same reasons provided by the district court in its (1) Memorandum Opinion and Order Denying Plaintiff’s Motion for Preliminary Injunc tion and Granting Defe ndant’s Cross-Motion to Compel Arbitration and Dismi ss Case, dated February 27, 2019, see Aplt. App. at 191-206; and (2) Memorandum Opinion and Order Denying Motion to Alter or Amend Judgment, date d March 19, 2019, see id. at 259-63. The district court thoroughly traced the hi story of the partie s’ relationship and carefully considered the contents of th e License Agreement, the 2016 Amendment, the 2018 Handwritten Document, the par ties’ correspondence, and the Second Amendment. After parsing through the ev idence submitted by the parties, the court found that the 2018 Handwr itten Document “is not a valid and binding contract” because it “was never mean t to constitute a complete and exclusive document fully expressing the intent of the parties.” Id. at 202. Therefore, “the arbitration provision from the License Agreemen t is still intact, valid and enforceable.” Id . The district court also noted that SS White’s incorporati on of an arbitration provision into written8 agreements that preceded the 2018 Hand written Document and the draft agreement that succeeded it “belies its claim that it is being ‘forced ’ to arbitrate” this dispute. Id. at 203. We have nothing to add to the di strict court’s thought ful analysis as to why arbitration is required, and we discern no abuse of discretion with regard to its denial of SS White’s motion for a preliminar y injunction or its mo tion to reconsider. We are also not persuaded by SS White’s arguments on appeal. The crux of its argument here is that even if the underlying matter is arb itrable (which it continues to dispute), the district c ourt erred in going beyond th e threshold question of arbitrability when it found th e 2018 Handwritten Document to be invalid and thus reached the merits of its brea ch of contract claim. As explained below, however, a ruling on the validity of the 2018 Handwritten Document was centra l to the district court’s resolution of the parties’ competi ng motions given the arguments presented. In fact, SS White affirmatively sought su ch a ruling by repeatedly arguing in the district court that the di spute was not arbitrable because the 2018 Handwritten Document was (1) a valid, en forceable agreement that (2 ) superseded the License Agreement and the 2016 Amendm ent in their entirety. Th e two concepts went hand in hand. SS White also moved for an injunction on these grounds. In its complaint, for inst ance, SS White defined the License Agreement and the 2016 Agreement as “the ‘Superseded Agreem ent’” and alleged that “[t]he Settlement Agreement superseded [them] in their entir ety as the parties intended.” Aplt. App. at 7, 11. Then, in its mo tion for a preliminary injuncti on, SS White argued that it was substantially likely to succeed on its clai m for injunctive relief because “the9 Settlement Agreement and facts attendant ther eto evince all of the essential elements of a valid and enforceable c ontract” and “[t]he Settlement Agreement supersedes the Prior Agreements.” Id . at 51-52; see also id. at 51 (stating that “the Settlement Agreement is a valid, binding contract”); id. at 148 (“SS White will likely succeed on the merits because it has es tablished that the Settlemen t Agreement both: (1) is a valid and enforcement [sic] contract; and (2 ) supersedes the Prior Agreements.”). Similarly, in opposing arbitr ation, SS White argued that “[t]he contract under which [its] claims arise—the Settlement Agreemen t—is a valid and enforceable contract that does not contain an arbitration provision.” Id. at 145; see also id. at 50-51 and 148-53 (detailing SS White’s argument that the 2018 Ha ndwritten Document is a valid and enforceable contract). It also argued that the arbitration provision in the License Agreement and the 2016 Ame ndment did not survive because those agreements “were superseded in their entirety . . . as a matter of law” by the alleged
2018 contract. Id . at 145. 2 Having unequivocally asked the distri ct court to rule that the 2018 Handwritten Document was a binding and enfo rceable contract that superseded the parties’ earlier agreements as a matter of law, SS White cannot now complain about the district court addressing th is very issue. Furthermore, the legal justification for its argument is mispl aced. SS White relies on the prop osition that district courts

2 Notably, in making this argument, SS White did not reconcile the fact that the License Agreement expressly states th at it “supersedes all prior agreements, negotiations, and understandings of the Par ties,” Aplt. App. at 28, whereas the 2018 Handwritten Document cont ains no such provision.10 cannot consider challenges to the entirety of a contract containing an arbitration provision, such as challenge s based on fraud in the inducement of a contract or illegality of a contract. Aplt. Opening Br. at 22. But we face a very different scenario, in which an entirel y separate agreement that doe s not contain an arbitration provision is under scrutiny. The district court did not strike down an agreement containing an arbitration provision; it d eclared invalid an agreement that did not contain an arbitration provi sion, which was sandwiched between multiple agreements and a proposed agreem ent that did. SS White also argues on appeal that the district court “improperly resolved material disputes of fact in Guidance’s favor when it c oncluded that the parties’ dispute must be resolved in arbitration.” Id. at 4. We reject this argument too. In its briefing before the district court, SS Wh ite maintained that it had “presented undisputed facts— i.e. , the text of the Pr ior Agreements and Se ttlement Agreement,” such that “the issues before the [district court were] su sceptible to resolution as a matter of law.” Aplt. App. at 163. Even so, in case the distri ct court disagreed, SS White requested a summary trial and narrowly targeted discovery to resolve the issue of arbitrability. Id. The district court found the ma terial facts to be undisputed and explained that it “needed to decide onl y the legal significance of the facts.” Id. at 205. Consequently, it denied SS White ’s request for a summary trial and concomitant discovery. SS White now tries to create a factual di spute by pointing to the Declarations that SS White’s CEO prepared for this litigation, which “av er[] that, at the time of11 execution, the parties intended for the Set tlement Agreement to be binding and to supersede the License Agreem ent in its entirety.” Id. But SS White is only entitled to receive the benefit of reasonable doubts and inferences under the applicable standard. See Hancock , 701 F.3d at 1261. Additionally, “[a]ffidavits must contain certain indicia of reliability. . . . We do not consider concluso ry and self-serving affidavits.” Ellis v. J.R.’s Country Stores, Inc. , 779 F.3d 1184, 1201 (10th Cir. 2015) (internal quotation marks omitted). Notwiths tanding Gallop’s Declarat ions, it is clear from the record ev idence, particularly the flurry of communications and proposed agreements that SS White se nt to Guidance after the Ap ril 2018 meeting, that the 2018 Handwritten Document was a proposal and not a meeting of the minds. Significantly, as the district court empha sized when it found no material factual disputes exists, SS White did not initia lly acknowledge these important events, 3 let alone contest them: [W]hile Plaintiff never mentioned those subsequent proposals or the circumstances surrounding them, it did not dispute them, either. Strangely, the factual allegations in Plaintiff’s amended complaint do not venture past the da tes relevant to the 2018 Handwritten Document, and make no reference to subsequent events , and none of these proposals are included as e xhibits to the complaint. . . . Similarly, in its motion to reconsider, Plai ntiff simply pretends th ese subsequent events and proposals do not exist. Aplt. App. at 262.

3 Ultimately, SS White referred to th e arguments based on events post-dating the 2018 Handwritten Document as “no more than a distraction.” Aplt. App. at 153 (emphasis omitted).12 Because no material factual disputes exist, it follows that the district court did not err in denying SS White’s perfunctory request for a summary trial and narrowly targeted discovery to resolv e the issue of arbitrability. IV. Conclusion Accordingly, we affirm the district court’s decisions denying SS White’s motion for a preliminary injunction, granting Guidance’s motion to compel arbitration and to dismiss this lawsuit, and denying SS White’s motion to alter or amend the judgment against it.

Entered for the Court

Allison H. Eid Circuit Judge