Arcadia Biosciences, Inc. v. Vilmorin & Cie

• Decision Date: 25 January 2019
• Docket Number: 18-cv-8059 (JSR)
• Citation: 356 F.Supp.3d 379
• Court: U.S. District Court — Southern District of New York
• Parties: ARCADIA BIOSCIENCES, INC., Plaintiff, v. VILMORIN & CIE, Limagrain Cereales Ingredients SA, and Arista Cereal Technologies Pty Limited, Defendants.

356 F.Supp.3d 379

ARCADIA BIOSCIENCES, INC., Plaintiff,

v.VILMORIN & CIE, Limagrain Cereales Ingredients SA, and Arista Cereal Technologies Pty Limited, Defendants.

18-cv-8059 (JSR)

United States District Court, S.D. New York.

January 25, 2019

David William Phillips, LeClairRyan, New York, NY, Christina L. Shifton, Michael L. Goldman, Andrew Peter Zappia, LeClairRyan, Rochester, NY, Plaintiff.

Gabriel Herrmann, Joseph Evall, Timothy Sun, Gibson Dunn & Crutcher LLP, Norman H. Zivin, Gary J. Gershik, Tonia A. Sayour, Cooper & Dunham LLP, New York, NY, for Defendants.

OPINION AND ORDER

JED S. RAKOFF, U.S.D.J.

Contrary to popular superstition, there is no such thing as "natural" wheat, as farmers have been selectively breeding this staple since Neolithic times. But something of a race is now on to see who can develop genetically modified wheat with health benefits and commercial advantages. The instant case, arising from that competition, involves an international patent dispute over just such modified wheat. Specifically, plaintiff Arcadia Biosciences, Inc. ("Arcadia") alleges that it invented a kind of genetically modified wheat that has various health benefits and that, in the hope of fostering its commercial development, it shared this invention with defendants - who also develop agricultural products - in a series of meetings that were protected by a nondisclosure agreement. Defendants then allegedly used the information Arcadia shared, in violation of the nondisclosure agreement, to file three patents and develop other product lines. Arcadia now brings federal patent claims for correction of inventorship, as well as a welter of state contract and tort claims.

On September 4, 2018, Arcadia filed its initial complaint against defendants Vilmorin & Cie ("Vilmorin"), Limagrain Céréales Ingrédients SA ("LCI"), and Arista Cereal Technologies Pty Limited ("Arista"). ECF No. 1. On October 17, Arista moved to dismiss Arcadia's complaint for lack of personal jurisdiction, lack of subject matter jurisdiction, and failure to state a claim. ECF No. 23. On the same day, Vilmorin and LCI moved jointly to dismiss Arcadia's complaint for failure to state a claim. ECF No. 27. On October 26, Arcadia filed its First Amended Complaint ("FAC"), ECF No. 33, and on November 5, defendants filed supplemental briefs in support of their motions to dismiss, ECF Nos. 36, 37, which Arcadia opposed, ECF Nos. 40, 42.

After receiving full briefing from the respective parties, the Court held oral argument on January 7, 2019. Thereafter, upon careful consideration, the Court issued a "bottom-line" Order on January 11. ECF No. 53. The Order granted Arista's motion to dismiss for lack of personal jurisdiction, and it dismissed all of Arcadia's claims against Arista without prejudice. The Order also granted Vilmorin and LCI's motion to dismiss for failure to state a claim, and it dismissed all of Arcadia's claims against Vilmorin and LCI with prejudice. This Opinion sets forth the reasons for the Court's rulings and directs the Clerk of Court to enter final judgment dismissing the FAC.

Background

The following factual allegations are taken from the FAC and any documents incorporated there by reference. They are viewed in the light most favorable to Arcadia:

Arcadia is a Delaware corporation with its principal place of business in California. FAC ¶ 2, ECF No. 33. "Arcadia's business is the development of agricultural products, including crops with enhanced productivity and quality traits." Id. Defendant Vilmorin is a French company that, among other things, is "involved, either directly or indirectly through its affiliates [,] in ... researching, developing, and breeding plants." Id. ¶ 41. Defendant LCI is a French company that, along with Vilmorin, is a wholly owned subsidiary of Groupe Limagrain Holding SA. Id. ¶ 4. Defendant Arista is an Australian joint venture that was formed in 2006 by LCI and two Australian entities. Id. ¶ 5. At present, LCI has a majority interest in Arista. Id. ¶ 6.

In 2006, scientists at Arcadia began researching and developing a high amylose wheat technology. Id. ¶ 13. Amylose is one of two components of starch that – along with amylopectin – is present in the endosperm of wheat grains. Id. ¶ 22. Amylose is digested more slowly than amylopectin, thereby giving rise to various health benefits. Id. ¶¶ 22-23. To promote these benefits, scientists at Arcadia conceived of, and reduced to practice, genetic mutations of wheat grain with high amylose-to-amylopectin ratios. See id. ¶¶ 37-38.

Specifically, Arcadia's scientists caused mutations in a bread wheat gene called the SBEIIa gene, which produces a protein product that helps form amylopectin. Id. ¶ 35. Bread wheat has three genomes – A, B, and D – each of which has an SBEIIa gene – SBEIIa-A, SBEIIa-B, and SBEIIa-D - with two copies. Id. ¶ 34. By mutating each copy of the SBEIIa-A, SBEIIa-B, and SBEIIa-D genes so that they lost their protein-producing function, Arcadia was able to reduce the amount of amylopectin produced in the grain's endosperm, thereby increasing the amylose-to-amylopectin ratio. Id. ¶¶ 35-36.

On November 13, 2009 – after it had reduced its invention to practice – Arcadia entered into a Confidentiality and Nondisclosure Agreement ("NDA") with Vilmorin to promote potential collaborative opportunities between the parties. The NDA is binding on both Vilmorin and its "affiliates," where "affiliates" is defined to include "any existing or future corporation, firm, limited liability company, partnership, or other entity that directly or indirectly controls, or is controlled by, or is under common control with" Vilmorin. NDA §§ 1.1, 3.5, ECF No. 29, Ex. 1. Over the course of several years, and under the protections of the NDA, Arcadia shared details of its high amylose wheat technology with Vilmorin and LCI employees, including Elisabeth Marie-Anne Ida Chanliaud, who was employed by Vilmorin or LCI but is described in the FAC as an "Arista Project Manager." FAC ¶¶ 14, 55.

Between 2011 and 2013, Arista filed three U.S. patent applications that later issued as patents. Id. ¶ 15. The first application, the '884 Application, was filed on November 4, 2011 and issued on June 23, 2015 as a patent – the '533 Patent – entitled "High Amylose Wheat." Id. The second application, the '177 Application, was filed on November 2, 2012 and issued on June 7, 2016 as a patent – the '722 Patent – entitled "High Amylose Wheat-II." Id. The third application, the '456 Application, was filed on August 6, 2013 and issued on March 7, 2017 as a patent – the '413 Patent – entitled "Food Ingredients Produced from High Amylose Wheat." Id. All three patents were assigned to Arista and were issued to Ahmed Regina, Pierre Georges Louis Berbezy, Elisabeth Marie-Anne Ida Chanliaud, Bernard Duperrier, and Matthew Kennedy Morell. Id.

Arcadia alleges that some of the information it disclosed under the protections of the NDA is claimed in Arista's patents. Id. ¶ 59. Arcadia also alleges that other information it disclosed under the protections of the NDA, while not claimed in Arista's patents, is nevertheless likely being misused and misappropriated by defendants. Id. According to Arcadia, Arista made clear in a provisional patent application filed on November 4, 2010 – the '288 Provisional – that it had been unable to obtain a viable version of the mutated wheat grain that Arcadia had succeeded in developing. Id. ¶ 61. Arcadia alleges that Arista was able to overcome its failures only because of the confidential information that Arcadia disclosed to defendants. Id.

By filing Arista's patent applications, Arcadia alleges, defendants breached their obligations under the NDA. Id. ¶ 88. Furthermore, Arcadia alleges, by obtaining Arista's patents in violation of Arcadia's rights, and by using those improperly obtained patents, defendants have unfairly competed against and interfered with Arcadia. Id. ¶ 92. As a result, Arcadia alleges, "Defendants have injured and tarnished Arcadia's business, reputation, brand, and goodwill, and thereby have undermined and damaged Arcadia's business through improper conduct." Id. ¶ 96.

On September 4, 2018, Arcadia filed its initial complaint against Arista, Vilmorin, and LCI, ECF No. 1, and on October 26, Arcadia filed the FAC, ECF No. 33. In the FAC, Arcadia brings federal patent claims against Arista for correction of inventorship of the '533, '722, and '413 Patents. FAC ¶¶ 102-10, 175-83. Arcadia also brings state law claims against all defendants for breach of contract, breach of the implied covenant of good faith and fair dealing, unfair competition, misappropriation of confidential information, unjust enrichment, conversion, and tortious interference. Id. ¶¶ 111-74.

On October 17, Arista moved to dismiss Arcadia's initial compliant for lack of personal jurisdiction, lack of subject matter jurisdiction, and failure to state a claim. ECF No. 23. On the same day, Vilmorin and LCI jointly moved to dismiss for failure to state a claim. ECF No. 27. On November 5 - after Arcadia filed the FAC - the defendants filed supplemental letter briefs in support of their motions to dismiss. ECF Nos. 36, 37. Arcadia opposed. ECF Nos. 40, 42. For the following reasons, Arista's motion to dismiss for lack of personal jurisdiction is granted,¹ as is Vilmorin and LCI's motion to dismiss for failure to state a claim.

Discussion

I. Arista's Motion to Dismiss for Lack of Personal Jurisdiction

Arista moves to dismiss the FAC under Rule 12(b)(2) of the Federal Rules of Civil Procedure. "On a Rule 12(b)(2) motion, plaintiff carries the burden of demonstrating that jurisdiction exists, and where the district court did not conduct a full-blown evidentiary hearing on a motion, the plaintiff need make only a prima facie showing of jurisdiction." Penachio v. Benedict, 461 F. App'x 4, 5 (2d Cir. 2012).² In deciding a Rule 12(b)(2) motion, the Court will "construe the pleadings and affidavits in the light...