| Nanomedicon, LLC v Research Found. of State Univ. ofN.Y. |
| 2013 NY Slip Op 08060 [112 AD3d 594] |
| December 4, 2013 |
| Appellate Division, Second Department |
| Nanomedicon, LLC, Respondent, v ResearchFoundation of State University of New York, Defendant, and Pelagia-Irene Gouma,Defendant and Third-Party Plaintiff-Appellant-Respondent. Medicon, Inc., Third-PartyDefendant-Respondent-Appellant; Anastasia Rigas, Third-PartyDefendant-Respondent. |
—[*1] Schnader Harrison Segal & Lewis LLP, New York, N.Y. (Theodore L. Hecht andCynthia A. Murray of counsel), for third-party defendant-respondent-appellant. Thompson Hine LLP, New York, N.Y. (Barry M. Kazan and Shaun McElhenny ofcounsel), for plaintiff-respondent and third-party defendant-respondent.
In an action, inter alia, to recover damages for breach of contract, the defendant andthird-party plaintiff appeals from so much of an order of the Supreme Court, SuffolkCounty (Pines, J.), dated March 15, 2012, as granted those branches of the motion of theplaintiff and the third-party defendant Anastasia Rigas, and those branches of theseparate motion of the third-party defendant Medicon, Inc., which were pursuant toCPLR 3211 (a) to dismiss the first, second, third, fifth, sixth, and seventhcounterclaims/causes of action in the third-party complaint insofar as asserted againsteach of them, and the third-party defendant Medicon, Inc., cross-appeals from so muchof the same order as denied that branch of its motion which was pursuant to CPLR 3211(a) (7) to dismiss the fourth counterclaim/cause of action in the third-party complaintinsofar as asserted against it.
Ordered that the order is affirmed insofar as appealed from; and it is further,
Ordered that the order is reversed insofar as cross-appealed from, on the law, andthat branch of the motion of the third-party defendant Medicon, Inc., which was pursuantto CPLR 3211 (a) (7) to dismiss the fourth counterclaim/cause of action in the third-partycomplaint insofar as asserted against it is granted; and it is further,
Ordered that one bill of costs is awarded to the plaintiff and the third-partydefendants appearing separately and filing separate briefs.[*2]
This appeal centers around various inventions ofthe defendant and third-party plaintiff, Pelagia-Irene Gouma, a faculty member of theState University of New York (hereinafter SUNY) at Stony Brook. Pursuant to 8NYCRR 335.28, which addresses SUNY's patents and inventions policy, SUNY ownedsome of Gouma's inventions at issue in this appeal and cross appeal. By writtenagreement (hereinafter licensing agreement), Research Foundation of State University ofNew York (hereinafter Research Foundation), on SUNY's behalf, licensed to Medicon,Inc. (hereinafter Medicon), certain inventions created by Gouma, but owned by SUNY.In 2009, with Research Foundation's consent, Medicon transferred to Nanomedicon,LLC (hereinafter Nanomedicon), all of its interests in the licensing agreement. Thedocumentary evidence reflects that notwithstanding Gouma's contrary contention, the2009 transfer was valid.
Nanomedicon commenced this action, inter alia, to recover damages for breach ofcontract, against Research Foundation and Gouma, and Gouma commenced a third-partyaction against Medicon and Anastasia Rigas, a Nanomedicon officer and employee.
Gouma contends that Medicon, Nanomedicon, and Rigas engaged in fraud, tortiousinterference with prospective economic advantage, and conversion in their efforts tobenefit from her inventions, and were unjustly enriched by her inventions. Gouma furtheralleges that Nanomedicon breached a confidentiality agreement pertaining to herinventions, and also seeks two declaratory judgments in connection with her inventions.
Nanomedicon and Rigas moved, and Medicon separately moved, to dismiss all of thecounterclaims/causes of action in the third-party complaint insofar as asserted againsteach of them, and the Supreme Court granted their respective motions, with theexception of those branches of the motions which were to dismiss the counterclaim/causeof action alleging fraud. Gouma appeals from so much of the order as granted thosebranches of the motions which were to dismiss six of her seven counterclaims/causes ofaction, while Medicon cross-appeals from so much of the Supreme Court's order asdenied that branch of its motion which was to dismiss Gouma's fraud counterclaim/causeof action insofar as asserted against it.
The Supreme Court properly granted those branches of the motions which were todismiss Gouma's counterclaim/cause of action for a judgment declaring the licensingagreement null and void on the ground that Gouma lacked standing because she was nota party to, or third-party beneficiary of, the licensing agreement. "A party asserting rightsas a third-party beneficiary must establish '(1) the existence of a valid and bindingcontract between other parties, (2) that the contract was intended for [her] benefit and (3)that the benefit to [her] is sufficiently immediate, rather than incidental, to indicate theassumption by the contracting parties of a duty to compensate [her] if the benefit is lost' "(State of Cal. Pub. Employees' Retirement Sys. v Shearman & Sterling, 95 NY2d427, 434-435 [2000], quoting Burns Jackson Miller Summit & Spitzer v Lindner,59 NY2d 314, 336 [1983]). Gouma, who is not a party to the licensing agreement, failedto allege that she is an intended third-party beneficiary of that agreement (see Superior Ice Rink, Inc. vNescon Contr. Corp., 40 AD3d 963, 965 [2007]; Parker & Waichman v Napoli,29 AD3d 396, 398 [2006]). In any event, even assuming that such an allegationcould be inferred from her complaint, dismissal would still be warranted, as thedocumentary evidence conclusively establishes, as a matter of law, that Gouma is not anintended third-party beneficiary of the licensing agreement (see 2470 Cadillac Resources, Inc. vDHL Express [USA], Inc., 84 AD3d 697, 697-698 [2011]; First Keystone Consultants, Inc. vDDR Constr. Servs., 74 AD3d 1135, 1137 [2010]; Fontanetta v John Doe 1, 73AD3d 78, 83 [2010]; Aymes v Gateway Demolition Inc., 30 AD3d 196, 196[2006]; Pile Found. Constr. Co. v Berger, Lehman Assoc., 253 AD2d 484, 486[1998]). In light of Medicon's transfer of its interests to Nanomedicon, it is clear that novalid and binding contract exists between the Research Foundation and Medicon. Whilea valid and binding contract exists between Research Foundation and Nanomedicon, anexamination of the licensing agreement demonstrates that it was not intended to benefitGouma. Accordingly, Gouma lacks standing to seek the relief requested (see 2470Cadillac Resources, Inc. v DHL Express [USA], Inc., 84 AD3d at 698; Amcan Holdings, Inc. v CanadianImperial Bank of Commerce, 70 AD3d 423, 426 [2010]; Contimortgage Corp. vGarrett, 32 AD3d 977, 978 [2006]).
For the same reasons, the Supreme Court also properly granted that branch of the[*3]motion of Nanomedicon and Rigas which was todismiss Gouma's counterclaim/cause of action alleging breach of a confidentialityagreement, asserted against only Nanomedicon. Gouma is not a party to theconfidentiality agreement, she did not allege third-party beneficiary status with respect tothat agreement, and, in any event, she cannot establish such status with respect to thatagreement.
The Supreme Court properly granted those branches of the motions which were todismiss Gouma's counterclaim/cause of action for a judgment declaring that she ownedcertain inventions and that various individuals did not contribute to her inventions.Gouma lacks standing to seek any declarations regarding ownership of inventions thatare the subject of the licensing agreement. As earlier noted, pursuant to SUNY's patentsand inventions policy, Gouma assigned to SUNY her rights to the relevant inventions. Tothe extent that the Research Foundation returned to Gouma her rights to any of herinventions, no actual controversy exists as to ownership, and thus no declaration on thatsubject is warranted (see American Ins. Assn. v Chu, 64 NY2d 379, 383 [1985],cert denied 474 US 803 [1985]; Matter of Guild of Administrative Officers ofSuffolk County Community Coll. v County of Suffolk, 126 AD2d 725, 728 [1987]).In any event, to the extent that Gouma seeks a declaration that certain individuals are notentitled to inventor status, her claims are premature in light of the fact that the relevantpatent applications remain pending (see 35 USC § 116; HIF Bio, Inc. vYung Shin Pharms. Indus. Co., Ltd., 600 F3d 1347, 1353-1354 [2010]; E.I. DuPont de Nemours & Co. v Okuley, 344 F3d 578, 584 [2003], cert denied 541US 1027 [2004]).
The Supreme Court correctly determined that dismissal of Gouma'scounterclaims/causes of action alleging tortious interference with prospective economicadvantage (see Carvel Corp. vNoonan, 3 NY3d 182, 192 [2004]; Ferrandino & Son, Inc. v Wheaton Bldrs., Inc., LLC, 82 AD3d1035, 1036 [2011]), conversion and/or misappropriation (see R.U.M.C. Realty Corp. v JCFAssoc., LLC, 51 AD3d 993, 995 [2008]; Barker v NYNEX Corp., 305AD2d 233, 234 [2003]), and unjust enrichment (see Mandarin Trading Ltd. v Wildenstein, 16 NY3d 173,182 [2011]; State of New York v Barclays Bank of N.Y., 76 NY2d 533, 540-541[1990]; Edelman v StarwoodCapital Group, LLC, 70 AD3d 246, 250 [2009]; Old Republic Natl. Tit. Ins. Co. vCardinal Abstract Corp., 14 AD3d 678, 680 [2005]; see also Chou vUniversity of Chicago, 254 F3d 1347, 1363-1364 [2001]) was warranted due toGouma's failure to state a cause of action.
However, the Supreme Court erred indenying that branch of Medicon's motion pursuant to CPLR 3211 (a) (7) which was todismiss Gouma's fraud counterclaim/cause of action insofar as asserted against it. "Theelements of a cause of action sounding in fraud are a material misrepresentation of anexisting fact, made with knowledge of the falsity, an intent to induce reliance thereon,justifiable reliance upon the misrepresentation, and damages" (Orchid Constr. Corp. vGonzalez, 89 AD3d 705, 707 [2011] [internal quotation marks omitted])."CPLR 3016 (b) requires that the circumstances underlying a cause of action based onfraud be stated 'in detail' " (Steinv Doukas, 98 AD3d 1024, 1025 [2012], quoting CPLR 3016 [b]). For the mostpart, Gouma failed to allege that Medicon or its principal made misstatements to herspecifically (see Manik vCitimortgage, Inc., 102 AD3d 929, 930 [2013]; Quinones v Schaap, 91 AD3d739, 741 [2012]; Moore vLiberty Power Corp., LLC, 72 AD3d 660, 661 [2010]), and failed to set forththe time and place of the alleged misrepresentations (see Orchid Constr. Corp. v Gottbetter, 89 AD3d 708, 708[2011]). The few allegations that satisfy either of these requirements are otherwiseinadequate, as there is no basis to infer that Gouma was damaged by the allegedmisrepresentations (see Lama Holding Co. v Smith Barney, 88 NY2d 413, 421[1996]; Glassman v Zoref, 291 AD2d 430, 431 [2002]; Williams v UpjohnHealth Care Servs., 119 AD2d 817, 819 [1986]).
In light of our determination, we need not address Gouma's remaining contentions.Mastro, J.P., Angiolillo, Leventhal and Chambers, JJ., concur.