Enzo Biochem, Inc. v. PLC

981 F.Supp.2d 217

ENZO BIOCHEM, INC., et al., Plaintiffs,

v.AMERSHAM PLC, et al., Defendants.

No. 02 CIV. 8448(RJS).

United States District Court, S.D. New York.

Oct. 22, 2013.

Michael Burrows, Scott J. Borenstein, Richard C. Pettus, Jeffrey R. Mann, and John J. Elliott, of Greenberg Traurig, LLP, Avenue, New York, NY, Victor H. Polk, Jr., of Greenberg Traurig, LLP, MA, for Plaintiffs.

Maxwell Preston of Arnold & Porter LLP, Avenue, New York, NY, Matthew M. Wolf of Arnold & Porter LLP, NW, Washington, DC, and Jennifer A. Sklenar of Arnold & Porter LLP, Los Angeles, CA, for Defendant.

MEMORANDUM AND ORDER

RICHARD J. SULLIVAN, District Judge.

Plaintiffs Enzo Biochem, Inc. and Enzo Life Sciences, Inc. (“Enzo”) bring this action for patent infringement, fraudulent inducement, breach of contract, unfair competition, and tortious interference against Defendants Amersham PLC and Amersham Biosciences (“Amersham”). On September 21, 2012, the Court granted summary judgment in favor of Amersham with respect to Enzo's patent infringement claims. Now before the Court is Amersham's motion for summary judgment as to Enzo's non-patent claims. For the reasons set forth below, the Court grants Amersham's motion in its entirety.

I. Background

A. Facts

On February 21, 1995, Enzo and Amersham entered into a Distributorship Agreement (the “Agreement”).¹ (56.1 Stmt. ¶ 1; Decl. of Matthew M. Wolf, dated Dec. 21, 2012, Doc. No. 296 (“Wolf Decl.”), Ex. 1.) The preamble to the Agreement explains:

Whereas[ ] Enzo owns rights to certain Patents listed in Exhibit A (“Patents”);

Whereas Enzo manufactures and/or sells certain Products (“Product(s)”) covered by claims of Patents;

Whereas Amersham wishes to market and distribute some of said Products as listed in Exhibit B;

Now, therefore, in consideration of the good and valuable mutual agreements hereinafter set forth, the parties hereto agree as follows[.]

(Wolf Decl. Ex. 1 at 1.) ² The Agreement goes on to define a “Product” as “an individual reagent or combination of reagents (kit) that are, individually or combined, covered by Enzo Patents (Exhibit A) as listed in Exhibit B.” ( Id.) The Agreement later reiterates that “Products covered by this Agreement are listed in Exhibit B,” but that Enzo or Amersham “may propose in writing to add, to modify or to delete a Product or Products in Exhibit B,” and proposals may be adopted if both parties agree. ( Id. Ex. 1 at 4.) Exhibit B is a nine-page document that lists the “Products and transfer price paid by Amersham” under the Agreement. ( Id. Ex. 1 at Ex. B.)

Since the mid–1990s, Amersham has been producing, selling, and buying several items that are not listed in Exhibit B to the Agreement—specifically, conjugated alkaline phosphatase products and detection systems; cyanine labeled nucleotides (“CyDye” products); and sequencing kits and sequencing kit components (collectively, the “Contested Products”). (56.1 Stmt. ¶ 10.) For example, shortly before Enzo and Amersham finalized the Agreement, Amersham licensed alkaline phosphatase products and sequencing kits and components from Harvard University and began to develop products from these items. (Decl. of John Burczak, dated Dec. 22, 2006, Doc. No. 161 (“Burczak Decl.”), ¶ 25; Mem. at 3.) Then, several months after signing the Agreement, Amersham acquired Biological Detection Systems—a CyDye product distributor (Wolf Decl. Ex. 11)—and Amersham soon began distributing CyDye products in its own name (Decl. of John J. Elliott, dated May 1, 2013, Doc. No. 312 (“Elliott Decl.”), Ex. 159 at 4, 5 n. 1). Additionally, sometime prior to October 7, 1999, Amersham started acquiring CyDye products from PerkinElmer, a developer, manufacturer, and distributor of life-science products and technologies. ³ (Elliott Decl. Ex. 159 at 3; SAC ¶ 12.)

By 1995, Enzo had caught wind that Amersham was selling products not listed in the Agreement (Elliott Decl. Exs. 11, 159 at 5 n. 1), and almost immediately after Enzo and Amersham signed the Agreement, they began to negotiate expansion of the list of Products set forth in Exhibit B (Wolf Decl. Ex. 13 at 221:5–222:10). By July 2001, however, Enzo and Amersham's negotiations came to an impasse ( id. Ex. 19), at least in part because Amersham was concerned that some of the proposed amendments might be in tension with its potential obligation to provide CyDye products to Applied Biosystems (Elliott Decl. Ex. 142 at 311:10–313:25). Ultimately, the parties never agreed to add new products to the list of covered Products. (Wolf Decl. Exs. 17–19; 56.1 Stmt. ¶ 14.)

B. Procedural History

Enzo commenced this action by filing the Complaint on October 23, 2002. ⁴ (Doc. No. 1.) Nearly three months later, on January 15, 2003, Enzo filed the Amended Complaint (Doc. No. 36), and on May 29, 2003, it filed the Second Amended Complaint (the “SAC”), which—a decade later—is still the operative pleading document. (Doc. No. 70.) Enzo alleges five substantive causes of action. The Court's September 24, 2012 summary judgment order disposed of Count 2 of the SAC, which alleges patent infringement. (Doc. No. 280.) The instant motion addresses the four remaining Counts.⁵

Count 1 alleges breach of contract. Enzo claims that Amersham breached the Agreement by “selling and/or distributing Products, without Enzo's authorization, that are not listed in Exhibit B ..., including without limitation” the Contested Products. (SAC ¶ 58(a); 56.1 Stmt. ¶¶ 9–10.) Enzo further alleges that Amersham breached the Agreement by selling, using, distributing, and/or manufacturing the Contested Products or manufacturing new products that utilize them. (SAC ¶ 58(b)-(c).) Finally, Enzo accuses Amersham of purchasing Contested Products from PerkinElmer in contravention of the Agreement. ( Id. ¶ 58(d).)

In Counts 3 and 4, Enzo claims that Amersham engaged in unfair competition. Count 3 asserts state-law claims, namely, that in 2001 Applied Biosystems “conspired with Amersham or otherwise restrained unlawfully Amersham's dealings with Enzo, thereby causing Amersham” (1)to cease further dealings with Enzo; (2) to “misappropriate ... Enzo's intellectual property”; and (3) “to refuse to negotiate with Enzo” with respect to the negotiated amendments to expand the number of the Exhibit B Products. ( Id. ¶ 74(a).) Moreover, Enzo alleges that Amersham tortiously misappropriated goods that Enzo had produced when Amersham purchased CyDye products from PerkinElmer and used them to engage in commercial development, in breach of a separate distribution agreement between PerkinElmer and Enzo. ( Id. ¶ 74(b).) Enzo's federal claim in Count 4 generally alleges that Amersham engaged in unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), although it does not specify what product or products sit at the center of this claim. ( Id. ¶¶ 78, 80.)

In Count 5, Enzo alleges tortious interference by Amersham. This state-law claim is based on CyDye-product transactions between Amersham and PerkinElmer that allegedly interfered with Enzo's separate distribution agreement with PerkinElmer. ( Id. ¶¶ 85–87.)

II. Legal Standard

Pursuant to Federal Rule of Civil Procedure 56(a), a court may not grant a motion for summary judgment unless “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party bears the burden of showing that it is entitled to summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The Court “is not to weigh evidence but is instead required to view the evidence in the light most favorable to the party opposing summary judgment, to draw all reasonable inferences in favor of that party, and to eschew credibility assessments.” Amnesty Am. v. Town of W. Hartford, 361 F.3d 113, 122 (2d Cir.2004) (internal quotation marks omitted); accord Anderson, 477 U.S. at 249, 106 S.Ct. 2505. As such, “if there is any evidence in the record from any source from which a reasonable inference in the [nonmoving party's] favor may be drawn, the moving party simply cannot obtain a summary judgment.” Binder & Binder PC v. Barnhart, 481 F.3d 141, 148 (2d Cir.2007) (internal quotation marks omitted).

III. Discussion

The Court will first address Enzo's claim for breach of contract. It will then turn to Enzo's tortious interference claims and its state and federal claims for unfair competition.

A. Breach of Contract

Enzo alleges that Amersham breached the Agreement by selling, purchasing, distributing, using, and/or manufacturing some or all of the Contested Products. (SAC ¶ 58; 56.1 Stmt. ¶ 9.) Breach-of-contract claims are susceptible to summary judgment if the underlying contract's clear and unambiguous language excludes the plaintiff's claim. See, e.g., Advanced Mktg. Group, Inc. v. Bus. Payment Sys., LLC, 300 Fed.Appx. 48, 49 (2d Cir.2008). Here, the plain language of the contract does just that. The Agreement states unambiguously that “Products covered by [the] Agreement are listed in Exhibit B” (Wolf Decl. Ex. 1 at 4), and critically, Exhibit B makes no reference to the Contested Products that underlie each breach alleged in the SAC ( id. Ex. 1 at Ex. B; Enzo Opp. 56.1 ¶ 10). The Agreement does allow that Enzo or Amersham may “propose in writing to add, to modify or to delete a Product or Products in Exhibit B” and that a proposal may in turn be adopted on consent of both parties, but the parties agree that no amendment was ever adopted. (Wolf Decl. Ex. 1 at 4.)

Enzo nevertheless insists that the Agreement “encompassed” the Contested Products “by proper interpretation of its terms” (Enzo Opp. 56.1 ¶ 10) and that “the products listed in Exhibit B are merely non-limiting examples of products covered by the Agreement” (Opp. at 2–3). Unfortunately for Enzo, this...