benedetti v. University of Connecticut et. al.

8/12/2019 benedetti v. University of Connecticut et. al.

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IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT COURT OF CONNECTICUT

GEORGE W. BENEDETTIPlaintiff, CIVIL ACTION NO.

vs.UNIVERSITY OF CONNECTICUT

and JURY TRIAL DEMANDEDCENTER FOR SCIENCE AND

TECHNOLOGYCOMMERCIALIZATION AN AGENCY ECF CASEOF UNIVERSITY OF CONNECTICUT

andMICHAEL F. NEWBORG EXECUTIVEDIRECTOR CENTER FOR SCIENCEAND TECHNOLOGYCOMMERCIALIZATION AN AGENCYOF UNIVERSITY OF CONNECTICUT.

Defendants

George W. Benedetti ( Plaintiff' ) by his attorney, files this Complaint against DefendantsUniversity of Connecticut ( UCONN ); Center for Science and Technology Commercialization,an agency ofUCONN ( Center ); and Michael F Newborg as Executive Director for Center forScience and Technology Commercialization an agency ofUCONN ( Newborg ).


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N TURE OF THE CTIONThe Defendants individually, or collectively caused the Plaintif f to lose his rightsFederal Rights in U.S. Patent Number 6,053,207 ) '207 Patent ) which had beenduly issued to the Plaintiff on April 25, 2000.Breach of Contract under Connecticut Law under the doctrine of pendant andsupplemental jurisdiction and under 28 U.S.C. 1367.

P RTIESPlaintiff is an individual residing in Connecticut at 260 Wooding Hill Road,Bethany, CT 06524.On information and belief, all of the Defendants maintain a business office at 263Farmington Avenue, Farmington, CT 06030-6400

JURISDICTION ND VENUEThe negotiations and the Contract between the Plaintiff and the Defendants wasnegotiated and executed in the State of Connecticut.The actions by the Defendants causing the Plaintif f to lose his Federal Rights inthe '207 Patent occurred in Connecticut.Plaintiff lost his Federal Rights in a valid and enforceable '207 Patent due to abreach of Contract with the Defendant.

B CKGROUND INFORM TIONPlaintiff met with a duly authorized representative of the Defendant Center, andthe Defendant Newborg from the Defendant Center which is an agency of theDefendant UCONN induced the Plaintif f to enter into a Contract titled as anASSIGNMENT to enable the Defendant UCONN to endeavor to secure

research funds to develop the inventions covered by the '207 Patent, and to enablethe Defendant UCONN to license and commercialize the '207 Patent; however,the ASSIGNMENT was actually a Contract because it was a Conditional

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Assignment with conditions subsequent. See Ex. A Breach of the criticalcondition subsequent terminated the assignment .The Plaintiff was and continues to be employed as a highly respected physicsteacher in a public school in Connecticut, and was induced by what he thought atthat time to be a great opportunity to have the Defendants assist in licensing andcommercializing his 207 Patent, but he hesitated. The Plaintiff had the problemof a maintenance fee to maintain the 207 Patent due soon, and the Plaintiffinformed the Defendants. Timely payment of a maintenance fee is necessary toavoid having a patent expire.The aforementioned Contract for the 207 Patent was prepared by the Defendantsand added two critical conditions subsequent to induce the Plaintiff: The Plaintiffwould receive a share of revenues resulting in the licensing and commercializationof the 207 Patent by the Defendant UCONN, and, most important, the DefendantUCONN would pay the maintenance fee required by the U.S. Patent andTrademark Office to avoid having the 207 Patent expire. As a public schoolteacher, the requirement that the Defendants pay the maintenance fee was acritical component to induce the Plaintiffto execute the Assignment because ofthe economic situation of public school teacher being relatively low. Thecondition subsequent to pay the maintenance fee was set as a separate paragraphbecause of its importance to the Plaintiff, and as an acknowledgment by theDefendants. Thus, the requirement for paying the maintenance fee made theContract a conditional assignment.The Assignment was executed by the Defendant Michael F. Newborg asExecutive Director of the Center for Science and Technology Commercializationon behalfof the Defendant UCONN. It appears that the Defendants areinextricably combined.

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On information and belief the Defendant Michael F. Newborg had directresponsibility for complying with the Assigmnent on behalf of the DefendantsUCONN and Center.Thus the Contract negotiated between the Defendants and the Plaintiff andprepared by the Defendants provided for the Pla intiff to assign his rights in his207 Patent conditionally in return for the Defendants to develop the inventions

covered by the 207 Patent pay the maintenance fee due in the U.S. Patent andTrademark Office to avoid expiration of the 207 Patent and to pay the Plaint iff aportion oflicensing and commercialization due to the 207 Patent.The Defendants however failed to pay the maintenance fee for the 207 Patent ontime or within the grace period set by the U.S. Patent and Trademark Office andthe 207 Patent expired even though the Contract particularly pointed out that amaintenance fee was due on or about October 25 2007 a relatively short timeafter the execution date of the Assignment August 15,2007.When the Defendants failed to perform the condition subsequent the Contractwas breached and the 207 Patent returned return to the Plaintiff because theassigmnent was null and void. Alternatively upon learning of the breach ofContract in a timely manner the Plaintiff could have sued for the return of the207 Patent if the Defendants would not cooperate in the return of the 207 Patent.

The Defendants instead of admitting the failure to pay the maintenance feetimely hid the information from the Plaintiff.The Plaintiff waited patiently because he assumed that the Defendants weresincere and reliable entities and in December 20 II, the Plaintiff asked a friendemployed at the Defendant UCONN as to how the development andcommercialization of the 207 Patent was going. The Plaintiff was shocked todiscover that the Defendants allowed the 207 Patent to expire. Moreover the

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Defendants failed act reasonably and to inform the Plaintiff that the 207 Patenthad expired.If the Plaintiff had been informed of the failure of the Defendants to pay themaintenance fee for the 207 Patent the Plaintiff could have Petitioned the U.S.Patent and Trademark Office to revive the 207 Patent on the basis that it was nofault of his own because he had relied on the Defendants to fulfill the conditionsubsequent. That is the failure to pay the maintenance fee was not due to anyintention by the Plaintiff and it was inadvertent because he did not reasonablyexpect the Defendants to fail their duty under the Contract.Upon inquiring the Plaintiff had discovered that according to the records in theU.S. Patent and Trademark Office the Defendants failed to pay the requiredmaintenance fee and after the 207 Patent expired on May 26 2008 theDefendants engaged a Law Firm to file a Petition in the U.S. Patent andTrademark Office on April29, 2011 to pay the maintenance fee late but thePetition was dismissed on June 10 2011.None of the Defendants or any representative of the Defendants informed thePlaintiff that the maintenance fee had not been paid and that the 207 Patentexpired on May 26 2005. The Plaintiff had to discover the terrible news withoutany of the Defendants helping him.In addition none of the Defendants or any representative of the Defendantsinformed the Plaintiff that a Petition had been filed and dismissed.As a result of the breach of the conditional Contract the Plaintiff has lost allpossibilities of obtaining income from the 207 Patent.The 207 Patent covers a novel approach for identifYing valve covers such asmanhole covers and this is extremely important for emergencies in which it isnecessary to turn off services such as gas to a burning building. Reports of

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difficulties in turning off gas to a burning building in good time emphasizes theimportance of the 207 Patent.On information and belief the Plaintiff believes that he has lost a potential ofmillions of dollars due to the loss of the 207 Patent; however it is expected thatan expert will be used to place a value on the losses to the Plaintiff.

OUNT ONEThe Plaintiff repeats andre-alleges each and every allegation in paragraphs 1-23.The Defendants caused the Plaintiff to lose his Federal Rights in the 207 Patentdue to a breach of a condition subsequent of the Contract compounded by thefailure of the Defendants to inform the Plaintiffto enable him to make a timelyPetition to revive the 207 Patent.On information and belief the Defendants had a duty to inform the Plaintiff thatthe maintenance fee had not been paid so that the 207 Patent would return to thePlaintiff and the Plaintiff could take steps to Petition for the 207 Patent to berevived.If the Defendants had acted reasonably and provided the Plaintiff with a timelynotice of the failure to pay the maintenance fee it is reasonably expected that thePlaintiff would be enjoying his Federal Rights under the 207 Patent because theU.S. Patent and Trademark Office would agree that the failure to pay themaintenance fee was not due to the Plaintiff.

OUNT TWOThe Plaintiff repeats andre-alleges each and every allegation in paragraphs 1-23.The Defendants caused the Plaintif f to lose his Federal Rights in the 207 Patentdue to a breach of a condition subsequent of the Contract compounded by thefailure of the Defendants to inform the Plaintiff to enable him to make a timelyPetition to revive the 207 Patent.

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If the Defendants had acted reasonably and provided the Plaintiff with a timelynotice of the failure to pay the maintenance fee it is reasonably expected that thePlaintiff would be enjoying his Federal Rights under the 207 Patent.Thus the Defendants are liable for the reasonable damages flowing from thebreach of the conditional Contract and all reasonable attorney fees and costs.

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DEM ND OR JURY TRI L2 Plaintiff hereby demands a trial by ury for all claims properly heard by a jury.3456789

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PR YER OR RELIEF

WHEREFORE, the Plaintiff demands judgment and relief against the Defendants andrespectfully aks that this Court:

a. Find that the Defendants caused the Plaintiff to lose his Federal Rights in the 207Patent.

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Find that the Defendants should have informed the Plaintiffthat the Defendantshad violated a condition subsequent in the Contract and returned all rights in the207 Patent to the Plaintiff.

. Find that the Defendants are liable for reasonable damages of lost profits due tothe failure of the Defendants to fulfill the condition subsequent to keep the 207Patent valid and enforceable.Find that by the Defendants withholding information about the status of the 207Patent from the Plaintiff it was fraud on the Plaintiff.Find that the Defendants breached the Contract assigning the 207 Patent and thatthe Defendants are liable for the reasonable loss of profits and reasonableattorney fees and costs.Find that the conduct of the Defendants was egregious and sanctions are necessary

to discourage such conduct in the future.

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Award such other and additional relief, at law or equity, as may be justified by thefacts and the law.

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Respectfully submitted,GEORGE W. BENEDETTIBy his attorney

J ~ct14059Fink Johnson7519 Apache PlumeHouston, X 77071Tel. 713) 729-4991Fax. 713) 729-4951texascowboy61iilgmail.com


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EX A

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SSIGNMENTWHEREAS I, George W. Benedetti of260 Wooding Hill Road, in the town of Bethany, in the county of

New Haven and the State ofConnecticut 06524-3130 (hereinafter ASSIGNOR ) have invented certain n w anduseful improvements in:

Valve Cover md Its Related Systemfor which I filed an application for Letters atent of he United States at my own expense on November 2, I 998,which issued as U.S. atent Nmnber 6,053,207 on April25, 2000, and for which I am the sole owner ofall right,title and interest;

WHEREAS TIIE UNIVERSITY OF CONNECTICUT, a public institution ofhigheedncation of heState ofConnecticut, having a business address at 263 Farmington Avenue, Farmington, Connecticut 06030-6207 (hereinafter UNIVERSITY ), and the ASSIGNOR have mutual interest in said invention being furtherdeveloped, licensed, and commercialized;

WHEREAS ASSIGNOR desires to transfer and assign all right, title and interest in and to said LettersPatent to the UNIVERSITY, and the UNIVERSITY is willing to accept such transfer and assignment, so thatthe UNIVERSITY may attempt to secure research funding in order to build and tes t a prototype ao that theinvention may he licensed and commercialized, and the UNIVERSITY is willing to compensate theASSIGNOR by providing him, ifand only if he invention is successfully licensed and commercialized andresults in net revenues to the UNIVERSITY, a portion of he Inventor's Personal Share of revenue according to.the UNIVERSITY s policy for sharing invention-related income with its employee inventors; and

WHEREAS after the said Letters Patent is assigned to the UNIVERSITY, the UNIVERSITY shallassume responsibility for maintaining said Letters atent beginning with payment of he second maintenance feedue before October 25, 2007;

NOW TIIEREFORE, TO ALL WHOM IT MAY CONCERN, he it known that, for good and sufficientconsideration, the receipt and sufficiency ofwhich is hereby acknowledged, I, the said ASSIGNOR haveassigned and transferred, and by these presents do hereby assign and transfer unto the said UNIVERSITY, theentire right, title and interest in and to said invention in the United States, including priority rights, as fully setforth and described in said application; and I do hereby authorize and request the Commissioner of atents toissue said Letters Patent on said application, and any and all Letters Patent that may he issued upon any and allrevivals, refilings, continuations, continuations-in-part, divisions and reissues thereof, to the saidUNIVERSITY, the assignee of he entire right, title and interest in and to the same, for the sole use and behoofof he UNIVERSITY, its successors and assigns; and that I agree that I wtll execute all papers necessary in


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connection with the application fur United Slates Letters Parent when c:alled upon to do so by the saidUNIVERSITY, its successors or assigns, and that wilt, at the cost and expense of he said UNIVERS TY,fully assist and cooperate in all matters in oonnection with the application for United States Letters Patent andany patents issuing thereon.

The ASSIGNOR declares that all statements made herein ofhis own knowledge are true, and that allstatements made on infonnation and belief are believed to be true; and further that these statements were madewith the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, orboth, UDder Section 1001 ofTitle 18 of he United States Code and that such willful fulse statements mayjeopard.i2e the validity of he application or any patent issning thereon.

STATE OF onnh'c . .kCOUNTY OF \t ' ' l i4J?>

~ d ~ uw Benedetti

) SS:

On this I day of A rr '2007, before me personally appeared George w enedetti to me knownto be the personnamed in n ~ h o executed the above instrument, and acknowledged to me that he executed thesame for the uses and purposes therein set forth.

SEAL

AGREED and ACCEPTED for UNIVERSITY by:

Date: ?/0 ~ ~ L SM ~ -Executive DiNCtorCenter for Science andTechnology Comme

benedetti v. University of Connecticut et. al.

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