St. John's University, New York v. Bolton
2010 U.S. Dist. LEXIS 136339
| E.D.N.Y | 2010Background
- St. John's University sues Bolton, Spireas, and Hygrosol for breach of IP agreements and related claims over Liquisolid patents derived from university research.
- Bolton (professor) directed Spireas (graduate student) in LIquisolid研究 conducted at St. John's, including off-campus work at Ciba-Geigy; patents later issued.
- Patent Policy required assignment of patentable inventions to St. John's; Bolton signed Bolton Research Agreement with 30/70 revenue split favoring Bolton.
- Spireas signed Spireas Fellowship Agreements binding assignment of patentable inventions to St. John's; Ciba-Geigy arrangement permitted off-campus work under Bolton's supervision.
- Four Liquisolid Patents were filed and issued (1998-2002); Bolton and Spireas allegedly assigned these to Hygrosol in 1998 and later recorded in 2006.
- Hygrosol licensed the Liquisolid Patents, generating substantial licensing revenues, with most proceeds allegedly reaching Bolton and Spireas; plaintiff seeks specific performance and accounting.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Did Bolton and Spireas breach assignment obligations? | St. John's rights to Liquisolid Patents rely on the Agreements. | No automatic assignment; alleged breaches not shown, especially for CIP patents. | Breach allegations survive; reasonable inference of duty to assign. |
| Did Bolton breach revenue-sharing obligations? | Royalties from Liquisolid Patents should be shared per Bolton Agreement. | Revenue sharing subsists only if St. John's owns the patents; may be derivative. | Revenue-sharing obligation adequately alleged; independent contractual duty to share royalties exists. |
| Whether a fiduciary duty to disclose existed and its scope? | Bolton/Spireas owed a duty to disclose patentability/value of inventions. | No fiduciary relationship between university and professors/students as a matter of law. | Fiduciary relationship exists under facts; duties extend beyond mere employment. |
| Proper accrual and tolling of statutes of limitations? | Equitable tolling and fraud discovery rule render claims timely. | Timeliness defenses apply; recordation/issuance may trigger notice. | Fraud discovery and tolling doctrines apply to timing; some claims timely, others time-barred absent tolling. |
| Are unjust enrichment and other quasi-contract claims duplicative or timely? | Claims may be pursued in the alternative; unjust enrichment viable. | Potential duplication with contract claims; need final contract interpretation. | Unjust enrichment pleaded in the alternative; not dismissed as duplicative at this stage. |
Key Cases Cited
- Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832 (Fed. Cir. 2009) (promises to assign are future obligations, not immediate transfers)
- Greenfield v. Philles Records, Inc., 98 N.Y.2d 562 (N.Y. 2002) (contract interpretation based on parties' intent; clear terms enforceable)
- FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991) (ownership and assignment timing considerations for patents)
- Ely-Cruikshank Co., Inc. v. Bank of Montreal, 81 N.Y.2d 399 (N.Y. 1993) (accrual of contract claims when breach occurs)
- Kaufman v. Cohen, 307 A.D.2d 113 (1st Dep't 2003) (fraud/discovery accrual; tolling in fiduciary context)
- Atlantic Information Technology, GmbH v. CA, Inc., 485 F. Supp. 2d 224 (E.D.N.Y. 2007) (fiduciary duties and corporate opportunities; reasoning cited)
- Advanced Cardiovascular Sys., Inc. v. SciMed Life Sys., Inc., 988 F.2d 1157 (Fed. Cir. 1993) (constructive notice and laches framework in inventorship context)