Recently (12/10/10), Judge Garaufis of the U.S. District Court for the Eastern District of New York denied a motion to dismiss the case brought by St. John’s University against a former professor, Sanford Bolton, his PhD student, Spiridon Spireas, and the company they formed to commercialize four patents (allegedly) improperly concealed from the University.
The opinion notes that, under New York law, St. John’s had sufficiently alleged that Bolton and Spireas breached their contractual obligations to assign patentable inventions to it.
A notable fact in this case is that Bolton retired in 1994 and Spireas completed his PhD in 1993. Their first patent application was filed two years after Bolton’s retirement and their research at the University allegedly resulted in inventions which are the subjects of at least three additional patents. Liability in this case is being argued on the basis of contracts used by the University to protect intellectual property rights.
As James DeGiulio observes on the Patent Docs Blog; “…One piece of evidence that Judge Garaufis pointed to was Spireas’s dissertation, which contains sections literally copied into one of the patents. The judge also found that Bolton and Spireas were fiduciaries of St. John’s, and owed it a duty to fully disclose material facts relating to their research…”
Bolstering the University’s interest in enforcing the agreements with the researchers is the commercial success of the venture. Hygrosol has received at least $100 million in revenue from the licensing agreements, which has been transferred to Bolton and Spireas, according to court documents.
We shall continue to follow this case to draw conclusions about the current case law on the enforcement of invention assignments.
(Thanks to Patent Docs, you can download the memorandum and order here.)