356 F. Supp. 3d 379
S.D. Ill.2019Background
- Arcadia developed high-amylose wheat by mutating SBEIIa genes and entered a 2009 NDA with Vilmorin to discuss collaboration; the NDA covered Vilmorin and its "affiliates."
- Arcadia alleges it disclosed confidential technical information to Vilmorin/LCI (including an employee/project manager associated with Arista) under the NDA.
- Arista (an Australian joint venture connected to LCI/Vilmorin) filed a series of patent applications (2011–2013) that issued as three U.S. patents assigned to Arista and inventors including the former Vilmorin/LCI employee.
- Arcadia sued Arista, Vilmorin, and LCI for correction of inventorship (patent claim) and multiple state-law claims (breach of contract, implied covenant, misappropriation, unfair competition, unjust enrichment, conversion, tortious interference).
- Court dismissed all claims against Arista for lack of personal jurisdiction (forum-selection clause in NDA did not bind Arista), and dismissed all claims against Vilmorin and LCI with prejudice under Rule 12(b)(6) as time-barred or inadequately pled.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether forum-selection clause in NDA subjects non‑signatory Arista to jurisdiction in New York | NDA binds "affiliates," and Arista became an affiliate (common control), so clause applies | Arista is not a signatory or agent, was not an affiliate when NDA was signed, and has no New York contacts | Court: Clause does not bind Arista for personal jurisdiction; dismissed Arista without prejudice |
| Whether contract binds future affiliates/non‑signatories | NDA language purports to bind existing and future affiliates | Contract law bars binding non‑parties absent agency, assignment, alter‑ego, or affirmative assumption | Court: New York law requires more; Arcadia failed to show agency/assignment/alter‑ego or foreseeability; future affiliate theory rejected |
| Whether Arcadia's breach and related contract-based claims are timely | Some alleged misuse (e.g., commercial activities) occurred within limitations and discovery needed | Claims accrued with earlier provisional/PCT filings/publications; borrowing statute requires timeliness under CA law | Court: Claims are time barred (accrual tied to earlier filings/publications); dismissed breach and implied covenant claims with prejudice |
| Whether tort/Equitable claims (misappropriation, unfair competition, unjust enrichment, conversion, tortious interference) survive independent of contract | Defendants used confidential info beyond contract duties, harmed Arcadia, and interfered with a Bay State Milling deal in 2018 | Claims duplicate contract remedies, are time‑barred, or lack required factual specificity | Court: Claims are duplicative or untimely or inadequately pled (conversion fails as Intangible IP not convertible); all dismissed with prejudice except Arista dismissal without prejudice |
Key Cases Cited
- International Shoe Co. v. Washington, 326 U.S. 310 (minimum contacts due process test for personal jurisdiction)
- Walden v. Fiore, 571 U.S. 277 (contacts must be defendant's own ties to the forum)
- VKK Corp. v. National Football League, 244 F.3d 114 (non‑signatories not bound absent clear intent to include future parties)
- Ellington v. EMI Music, Inc., 24 N.Y.3d 239 (term "affiliate" generally includes affiliates in existence at contracting absent explicit language to bind future affiliates)
- Aguas Lenders Recovery Grp. v. Suez, S.A., 585 F.3d 696 (forum clauses may bind non‑signatories to the extent ordinary contract doctrines bind them)
- Marano Enters. of Kansas v. Z-Teca Rests., L.P., 254 F.3d 753 (non‑signatory enforcement where party is "closely related")
- Lombard v. Booz‑Allen & Hamilton, Inc., 280 F.3d 209 (elements of tortious interference with prospective economic advantage)
- Harris v. Provident Life & Acc. Ins. Co., 310 F.3d 73 (implied covenant duplicative of express contract claim)
- Thyroff v. Nationwide Mut. Ins. Co., 8 N.Y.3d 283 (limits on conversion for intangible property; electronic records may support conversion only in narrow circumstances)
- Ferring B.V. v. Allergan, Inc., 932 F. Supp. 2d 493 (misuse/accumulation of IP ideas can trigger accrual for statute‑of‑limitations analysis)