Overview
(May 10, 2021, New York) — Supreme Court Judge Richard M. Platkin ruled on May 6 that the inventors of cutting-edge computer chip technology can proceed with their lawsuit against the Research Foundation for the State University of New York (Research Foundation). The inventors declared in their complaint that the Research Foundation breached its contractual obligations to them by failing to commercialize this invention or release the invention to its inventors.
The court denied the Research Foundation’s motion to dismiss the lawsuit filed by Dr. Alain Kaloyeros (a former professor of physics at SUNY), Dr. Ana Londergan (a former graduate student at SUNY), and Gelest, Inc. (their industry partner). According to the complaint, Dr. Kaloyeros and Dr. Londergan invented a new process for making computer chips using cobalt and assigned their patent rights in this invention to the Research Foundation in exchange for the Research Foundation’s commitment to commercialize the patent and share the resulting licensing royalties with them. A third inventor assigned his interest in the patent to Gelest, which entered into an agreement with the Research Foundation to license the invention.
In ruling that the plaintiffs can proceed with their claims against the Research Foundation, Judge Platkin held that the mandatory provisions of the Patents and Inventions Policy adopted by SUNY and the Research Foundation could give rise to a contract with inventors. Judge Platkin cited language in the policy which could “giv[e] rise to affirmative, reciprocal obligations of a mandatory nature,” including a “contractual obligation” by the Research Foundation “to either pursue commercialization of the invention or relinquish ownership” to the inventors. Judge Platkin also found that Gelest had properly plead in its complaint that the Research Foundation breached its contractual obligations to Gelest.
The court’s decision follows a line of cases finding “the existence of implied contracts formed through language in handbooks and policy manuals that included express promises, established mandatory duties, or expressly limited the employer’s discretion,” and makes clear that the promises contained in the Patents and Inventions Policy used by SUNY and the Research Foundation can create binding, contractual obligations to faculty and student inventors.
“We are looking forward to moving ahead with the next stage of this important litigation, including obtaining relevant documents from SUNY and the Research Foundation and obtaining testimony from the key decision makers at those organizations,” stated Michael C. Miller, a partner at Steptoe & Johnson LLP and the lead attorney for the plaintiffs in this case.
Along with Miller, the plaintiffs are represented by Steptoe’s Jason Meade, also based in the firm’s New York office, and Paul DerOhannesian of the DerOhannesian & DerOhannesian law firm in Albany.
About Steptoe
In more than 100 years of practice, Steptoe has earned an international reputation for vigorous representation of clients before governmental agencies, successful advocacy in litigation and arbitration, and creative and practical advice in structuring business transactions. Steptoe has more than 500 lawyers and other professional staff across offices in Beijing, Brussels, Chicago, Hong Kong, London, Los Angeles, New York, San Francisco, and Washington. For more information, visit www.steptoe.com.
