Enzo Biochem, Inc. v. Amersham PLC
981 F. Supp. 2d 217
S.D.N.Y.2013Background
- In 1995, Enzo and Amersham entered a Distributorship Agreement, defining Products as those listed in Exhibit B.
- Exhibit B lists nine pages of Products and transfer prices; Contested Products were not listed.
- Contested Products include CyDye products, conjugated alkaline phosphatase products, and sequencing kits/components acquired or developed by Amersham.
- Enzo attempted to expand Exhibit B to cover Contested Products, but negotiations stalled and no amendment was adopted.
- Enzo filed suit in 2002 asserting patent and non-patent claims; the court later granted summary judgment on patent claims and now addresses non-patent claims.
- The court concludes there are no viable non-patent claims remaining for Enzo and grants Amersham summary judgment on those counts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Contested Products are within Exhibit B under the Agreement | Enzo contends Contested Products are encompassed by the Agreement. | Exhibit B only covers listed Products; no amendment was adopted. | Amersham wins; Contested Products are not covered by Exhibit B, so no breach. |
| Whether Enzo's breach-of-contract claim is timely and properly pleaded | Enzo argues broad breaches and preservation via catch-all pleadings. | Claims not pleaded or properly pleaded; cannot raise new grounds in briefing. | Amersham wins; breach claim barred for lack of pleadings and late amendment. |
| Whether Amersham tortiously interfered with Enzo's relationship with PerkinElmer | Amersham induced CyDye purchases from PerkinElmer in breach of agreements. | Claim is time-barred and lacks malice or improper means evidence. | Amersham wins; claim time-barred and merit insufficient. |
| Whether Enzo's state-law unfair competition claim related to Amersham's dealings with Applied Biosystems and PerkinElmer survives | Unfair competition protected Enzo against misappropriation and improper dealings. | Preempted by federal patent law and unsupported by record; untimely. | Amersham wins; preemption and lack of evidence sustain summary judgment. |
| Whether Enzo's Lanham Act claim for unfair competition can succeed | Amersham reverse-passed off Enzo's goods as Amersham's. | Enzo was not a producer of tangible goods; origin doctrine bars claim. | Amersham wins; Lanham Act claim dismissed. |
Key Cases Cited
- Goldhirsh Group, Inc. v. Alpert, 107 F.3d 105 (2d Cir.1997) (elements of tortious interference require malice or improper means)
- Kronos, Inc. v. AVX Corp., 81 N.Y.2d 90, 595 N.Y.S.2d 931 (1993) (accrual of tortious interference when all elements can be pleaded)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S. Ct. 2041 (2003) (origin of goods limits Lanham Act protections to producers of tangible goods)
- Silverstein v. Penguin Putnam, Inc., 522 F. Supp. 2d 579 (S.D.N.Y.2007) (author of ideas is not origin of goods for Lanham Act purposes)
- Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964) (patent preemption principles in unfair competition claims)
- Flexitized, Inc. v. Nat’l Flexitized Corp., 335 F.2d 774 (2d Cir.1964) (unfair competition does not override patent protection)
- Winston v. Mediafare Entm’t Corp., 777 F.2d 78 (2d Cir.1985) (no duty to negotiate absent a binding amendment)
- Sporn v. MCA Records, Inc., 88 A.D.2d 857, 451 N.Y.S.2d 750 (1982) (unfair competition is not a continuing tort)
- Avillan v. Donahoe, 483 F. App’x 637 (2d Cir.2012) (amendment of pleadings not allowed in summary judgment briefing)
- First Am. Commercial Bancorp, Inc. v. Saatchi & Saatchi Rowland, Inc., 55 A.D.3d 1264, 865 N.Y.S.2d 424 (2008) (catch-all allegations do not preserve contract claims)