Branhaven, LLC v. BeefTek, Inc.
965 F. Supp. 2d 650
D. Maryland2013Background
- Branhaven sued BeefTek, BTS, and PML for declaratory judgment and injunction; defendants counterclaimed with Scidera as counterdefendant for declaratory judgment and specific performance.
- Cross-motions for summary judgment and the defendants’ motion for leave to file a surreply are pending; the court will deny the surreply motion.
- MMI and MMIG developed a DNA-based cattle trait technology; BTS and PML entered licensing and distribution agreements to commercialize the Technology.
- Licensing Agreement granted BTS exclusive use for an Integrated Beef Development System with minimum testing volumes and an escrow-based security structure; price terms governed by Schedule A.
- Amendments in 2010 adjusted trigger dates, escrow release provisions, and 365(n) rights; three-party escrow with Iron Mountain deposited the Technology for BTS and PML.
- Branhaven acquired MMI/MMIG assets in 2011, then transferred most assets to Scidera; the Technology and key contracts were not assigned to Scidera, leading to ongoing disputes over testing and escrow.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Enforceability of Licensing Agreement | Branhaven contends the license is unenforceable as an agreement to agree due to missing terms and ambiguity. | BeefTek argues the license is enforceable with price terms and intent to be bound. | Genuine disputes exist; summary judgment on enforceability denied. |
| entitlement to Technology under Distribution Agreement | Branhaven asserts no right to access or retain escrowed Technology absent breach. | Defendants contend escrow-release provisions permit access upon non-delivery or cure failures. | Distribution Agreement issues survive summary judgment; no as-a-matter-of-law entitlement established. |
| Subject-matter and supplemental jurisdiction over Scidera counterclaim | Plaintiffs challenge the scope of his jurisdiction and the relation to the main claims. | Defendants rely on supplemental jurisdiction under 28 U.S.C. § 1367(a) for the compulsory counterclaim against Scidera. | The court has diversity jurisdiction over Branhaven and defendants and supplemental jurisdiction over Scidera; all claims properly before the court. |
| Surreply motion | Branhaven seeks to address post-briefing development (sales of Scidera) in surreply. | Defendants oppose surreply as improper under Local Rule 105.2(a). | Surreply denied; not determinative to unresolved issues. |
Key Cases Cited
- Cent. W. Va. Energy Co. v. Mountain State Carbon, LLC, 636 F.3d 101 (4th Cir. 2011) (complete diversity required for §1332; supplemental jurisdiction otherwise invoked)
- Vaughan v. Recall Total Info. Mgmt, Inc., 217 Fed.Appx. 211 (4th Cir. 2007) (compulsory counterclaims arise out of the same transaction or occurrence)
- Barefoot Architect, Inc. v. Bunge, 632 F.3d 822 (3d Cir. 2011) (supplemental jurisdiction over related counterclaims)
- Painter v. Harvey, 863 F.2d 329 (4th Cir. 1988) (four-factor test for compulsory counterclaims and relatedness)
- Mellen v. Bunting, 327 F.3d 355 (4th Cir. 2003) (cross-motions for summary judgment must be considered separately)