Nanomedicon, LLC v. Research Found. of State Univ. of N.Y.

• Decision Date: 28 March 2018
• Docket Number: Index No. 36815/10,2015–11758
• Citation: 159 A.D.3d 996,74 N.Y.S.3d 570
• Parties: NANOMEDICON, LLC, appellant, v. RESEARCH FOUNDATION OF STATE UNIVERSITY OF NEW YORK, et al., respondents; et al., additional counterclaim defendants.
• Court: New York Supreme Court — Appellate Division

159 A.D.3d 996
74 N.Y.S.3d 570

NANOMEDICON, LLC, appellant,
v.
RESEARCH FOUNDATION OF STATE UNIVERSITY OF NEW YORK, et al., respondents; et al., additional counterclaim defendants.

2015–11758
Index No. 36815/10

Supreme Court, Appellate Division, Second Department, New York.

Argued—November 30, 2017
March 28, 2018

74 N.Y.S.3d 571

Drinker Biddle & Reath LLP, New York, N.Y. (Richard J.L. Lomuscio of counsel), for appellant.

Scully, Scott, Murphy & Presser, P.C., Garden City, N.Y. (Peter I. Bernstein and Adam M. DeRosa of counsel), for respondent Research Foundation of State University of New York.

Sinnreich Kosakoff & Messina LLP, Central Islip, N.Y. (Jonathan Sinnreich and Lisa A. Perillo of counsel), for respondent Pelagia–Irene Gouma.

REINALDO E. RIVERA, J.P., JEFFREY A. COHEN, JOSEPH J. MALTESE, ANGELA G. IANNACCI, JJ.

DECISION & ORDER

In an action, inter alia, to recover damages for breach of contract, the plaintiff appeals, as limited by its brief, from so much of an order of the Supreme Court, Suffolk County (Denise F. Molia, J.), dated October 16, 2015, as granted the motion of the defendant Research Foundation of State University of New York for summary judgment dismissing the fourth cause of action insofar as asserted against it, granted the motion of the defendant Pelagia–Irene Gouma for summary judgment dismissing the complaint insofar as asserted against her, and denied both of its separate motions for leave to amend the complaint.

ORDERED that the order is affirmed insofar as appealed from, with one bill of costs.

This appeal centers around an invention of the defendant Pelagia–Irene Gouma, a faculty member of the State University of New York (hereinafter SUNY) at Stony Brook. Pursuant to 8 NYCRR 335.28, which sets forth SUNY's patents and inventions policy, SUNY owned the invention at issue on this appeal. The invention was the subject of three written agreements executed by the Research Foundation of State University of New York (hereinafter the Research Foundation), on SUNY's behalf, and Medicon, Inc. (hereinafter Medicon). A confidentiality agreement, dated October 9, 2006, provided, inter alia, that the Research Foundation and Medicon would not disclose any information exchanged regarding the invention to third parties for a period of three years from the date of the agreement. Pursuant to a research agreement dated March 15, 2007, Medicon agreed to sponsor a project supervised by Gouma to develop a marketable prototype of the invention. Finally, on November 15, 2007, the Research Foundation and Medicon entered into a licensing agreement pursuant to which Medicon was granted an exclusive option to a royalty-bearing, limited license to the

74 N.Y.S.3d 572

invention. The licensing agreement set forth, inter alia, that in exchange for the option, Medicon was required to obtain general liability insurance naming the Research Foundation as an additional insured. The licensing agreement also provided that the Research Foundation could terminate the agreement if Medicon committed a material breach of the agreement, and failed to cure that breach within 60 days of receiving written notice thereof. In February 2009, with the Research Foundation's consent, Medicon transferred its interests in...