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Rushing v. Nexpress Solutions

January 13, 2009

ALAN J. RUSHING, PH.D., PLAINTIFF,
v.
NEXPRESS SOLUTIONS, INC., AND EASTMAN KODAK CO., DEFENDANTS.



The opinion of the court was delivered by: Siragusa, J.

DECISION AND ORDER

Plaintiff was granted leave by U.S. Magistrate Judge Jonathan Feldman to file a second amended complaint, which he did on September 28, 2007. (Docket No. 69.) The latest complaint raises patent infringement, breach of contract and tort claims with regard to the settlement of a prior state lawsuit involving Plaintiff and one of the predecessors to Defendants in this case. Now before the Court is Defendants' motion (Docket No. 71) to dismiss claims four through eight in Plaintiff's second amended complaint, as well as most of claim three. For the reasons stated below, the Court grants the motion.

BACKGROUND

In 2002, Defendants' predecessor, Heidelberg Digital L.L.C. ("HDI"), commenced an action against Plaintiff in this Court under Civil Action No. 02-CV-633L(F) (the "2002 Federal Action"). Decision and Order, Rushing v. Nexpress Solutions, Inc., No. 05-CV-6243 CJS (W.D.N.Y. Sep. 14, 2006), at 2. On June 6, 2003, HDI voluntarily dismissed the 2002 Federal action without prejudice by filing a notice of dismissal pursuant to Federal Rule of Civil Procedure 41(a)(1)(i). On the same day, HDI commenced an action against Plaintiff in New York State Supreme Court, Seventh Judicial District, Monroe County (the "State Action"). In the State Action complaint, HDI alleged claims under a 1973 Eastman Kodak Company ("Kodak") Employment Agreement between Plaintiff and Kodak, and claims under a 1999 employment agreement between Plaintiff and HDI. HDI alleged that Plaintiff was obligated to assign his rights under the '832 patent and the '972 patent to HDI. Id. On May 19, 2004, counsel for all parties in the State Action signed a stipulation discontinuing the action with prejudice, and the stipulation was filed with the Monroe County Clerk on May 25, 2004. In the section of the Settlement Agreement entitled, "Grant of Rights," Plaintiff and HDI agreed as follows:

2.3 This Settlement Agreement, Assignment and License Agreement ([]collectively referred to as "Agreements") confer no assignment, license, or rights to HDI by implication, estoppel, or otherwise under any patent applications or patents of Rushing other than Rushing's Patent Rights. Specifically, HDI has no rights, ownership or other interests in Rushing: U.S. Application No. 09/873465 (now U.S. Patent No. 6,671,052) and U.S. Patent Application No. 10/095166. (Settlement Agreement ¶ 2.3.) In the second amended complaint, Plaintiff raises the following claims:

CLAIM 1, '052 PATENT INFRINGEMENT (Under 35 U.S.C. § 271 of the '052 Patent);

CLAIM 2, '171 PATENT INFRINGEMENT (Under 35 U.S.C. § 271 of the '171 Patent);

CLAIM 3, BREACH OF SETTLEMENT AGREEMENT;

CLAIM 4, FRAUDULENT INDUCEMENT;

CLAIM 5, BREACH OF FIDUCIARY DUTY;

CLAIM 6, CONVERSION;

CLAIM 7, SLANDER OF TITLE; and

CLAIM 8, ABUSE OF PROCESS.

(2d Am. Compl., Docket No. 69, at 30-38.) Plaintiff seeks compensatory and punitive damages, attorney's fees, and equitable relief. As indicated previously, Defendants have moved to dismiss claims four through eight in their entirety, as well as most of claim three.

In its prior decision pertaining to Plaintiff's motion to dismiss counterclaims raised by Defendants in response to the first amended complaint, the Court determined that in the context in which it is presented, the language in Settlement Agreement paragraph 2.3 does not clearly establish that HDI relinquished any rights to '052, but, instead, shows only that the Settlement Agreement itself did not purport to create any right in HDI to '052. Therefore, plaintiff's motion to dismiss the fifth counterclaim on this basis is denied. Plaintiff has failed to show that defendant will be unable to prove any set of facts in support of its claim that would entitle it to relief.

Rushing v. Nexpress Solutions, Inc., No. 05-CV-6243 CJS, 2006 U.S. Dist. LEXIS 65598, *10 (W.D.N.Y. Sep. 14, 2006).*fn1 In addition, the Court determined that ownership rights ...


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