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SYNDIA v LEMELSON Click to find out why . . .



Keywords & Phrases
CaseNo: SVL90733, Plaintiff: SYNDIA, State: IL Illinois, UniqueCaseRef: LCD>SVL90733, CourtName: ON FEBRUARY 14,2001, THIS COURT GRANTED SUMMARY JUDGMENT TO DEFENDANTS LEMELSON MEDICAL, EDUCATION, Syndia, Lemelson, Patent, Hickey, Agreement, License, Syndia Patents, Licensing, Conley, Gillette, Warner-lambert, Rights, Lmerf, Summary Judgment, Jerome Lemelson, Third Parties, United States, Licensing Program, Management Agreement, Estate, Licensing Agreement, Exclusive License, Patent Portfolio, Nevada, Patent Prosecution, First-amended Complaint, Third-party Licenses, Letter Agreement, Infringement, Synthetic Diamond, Dorothy Lemelson, Grant Licenses, Stand-alone License , ContentID: 120250233

Case Documents
1 2001-04-18 SUMMARY JUDGMENT ORDER
[ see first page and extracted highlights below  ] ItemID: 124112
2 pages
PDF
2 2001-02-14 SUMMARY JUDGMENT ORDER
[ see first page and extracted highlights below  ] ItemID: 124111
42 pages
PDF
3 2000-05 COMPLAINT
[ see first page and extracted highlights below  ] ItemID: 124110
35 pages
PDF
Total Documents: 3 documents , 79 pages
Price: $ 29.95


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1 . SUMMARY JUDGMENT ORDER

EXTRACTED KEY WORDS
DEFENDANTS
LICENSING
MOTION
SUMMARY JUDGMENT
COURT
PATENT
GILLETTE
RULING
BASIS
OPINION
RESPONSE
PARTY
EVIDENCE
LITIGATION
WITHHOLD CONSENT
POWER
SYNDIA
LMERF
ALLEGEDLY UNLAWFUL LICENSING
RIGHTS
SUPPLEMENTAL MOTION
REMAINDER
PRIOR
PLEADINGS
GENUINE
MATERIAL FACT
MATTER
NONMOVANT
ANDERSON
                                                                                                 
party  plaintiff, and  (b)  state  briefly  the





(1)          q             Filed  motion  of [ use listing  in  "Motion"  box  above.]
(7-l         q             Brief  in  support  of motion  due                   ,-;.+L@?ilMfs~     
                                                                   -'
(3)          0             Answer  brief  to motion  due __.,             Reply  tq,:~~~_briefdue-.
(4)          0             Ruling/Hearing  on -             set for             ~`t~".`!-wy`y
(5)          0             Status hearing[held/continued  to] [set for/ws                         
(6)          0             Pretrial  conference[held/continued  to]  [set for/re+Stfor]  on __     
(7)          0             Trial[set  for/wset  for]  on -at-.
(8)          0             [Bench/July  trial]  [Hearing]  heldkontinyed to                       
_i .
(9)          0             This  case is dismissed  [with/with&t]  prejudice  &%%hout 
                           0  FRCP4(m)            0  General  Rule  21  Cl FRC,                    
                                                                              ,,.:"                
          is;iraiikd,  ,&  case
(10)         n         [Other  docket  entry]  Defendants' supple$
             is dismissed in its entirety.  All  pending motions  are moot.





         No  notices  required.

         Notices  mailed  by  judge's  staff.

         Notified  counsel  by  telephone.

         Docketing     10 mail  "OliCCS.

         Mail  A0  450  form.



                                                             99  C `8241

        On  February  14,2001,  this  court  granted  summary  judgment  to  defendants  Lemelson 
&  Research  Foundation,  L.P.  ("LMERF"),  6  &`s  on plaintiffs'  claims  relating  to 
licensing  of  plaintiffs  Syndia  Corporation,  &. &.  patent rights  to Gillette  and 
court  addressed  and decided  in favor  of  defendants  regarding  several  issues which  affect 
defendants'  alleged  unlawful  licensing  to,other  companies;  as well.  Defendants  have  now 
motion  for  summary  judgment  as to  the  remainder  of  plaintiffs'  claims  on  the  basis of 
Opinion.  Plaintiffs  responded  to this motion  largely  by m-hashing  arguments  this court 
SNIPPETS:
  • On February 14,2001, this court granted summary judgment to defendants Lemelson Medical,
  • In that ruling, this court addressed and decided in favor of defendants regarding several
  • Defendants have now filed a supplemental motion for summary judgment as to the remainder of
  • This courtaddresses only two issues here which were not explicitly addressed in this court's
  • In ruling on a motion for summary judgment, the evidence ofthe nonmovant must be believed and
  • A party who bears the burden of proof on a particular issue, however, may not rest on its
  • Anderson, 477 U.S. at 249, 106 S. Ct.
  • In their response brief, plaintiffs note that their hcences were mistakenly not excluded from
  • this court has already ruled that LMERF did not have the legal power to license the Syndia
  • Accordingly, any alleged licenses to Star Micronics or others are without legal effect, and
  • Plaintiffs also argue that they have been injured by defendants interference and delay in
  • This argument, like plaintiffs' response to the first motion for summary judgement, ignores
  • Plaintiffs argued in their response that since the date of this court's February 14 ruling,

  • 2 . SUMMARY JUDGMENT ORDER

    EXTRACTED KEY WORDS
    PLAINTIFFS
    DEFENDANTS
    LEMELSON
    SYNDIA PATENTS
    LICENSE
    WARNER-LAMBERT
    GILLETTE
    COURT
    AGREEMENT
    RIGHTS
    HICKEY
    LMERF
    JEROME LEMELSON
    THIRD PARTIES
    SUMMARY JUDGMENT
    UNITED STATES
    LICENSING AGREEMENT
    EXCLUSIVE LICENSE
    MANAGEMENT AGREEMENT
    FIRST-AMENDED COMPLAINT
    THIRD-PARTY LICENSES
    INFRINGEMENT
    DOROTHY LEMELSON
    LITIGATION
    LETTER AGREEMENT
    GRANT LICENSES
    STAND-ALONE LICENSE
    PLAINTIFFS ARGUE
    SUB-LICENSE
    
     6  +Lo!-&i  Fmt (O&9197,
                     6                         United  States District  Court,  Northern  District  of
    -'
                 Name  of&signed  Judge                                                                
                                                                                                       
                    or                                     James F. Holderman
                       Magistrate  Judge                                                               
           CASE  NUMBER                                           99 C 8241                            
              2/14/2001
                       CASE                     SYNDIA  CORP  et al vs. LEMELSON  MEDICAL,  EDUCATION, 
                      TITLE                                                                            
    
                                                [In  the  following  box  (a)  indicate  the party
    patty plaintiff,  and  (b)  state briefly the
                                                nature  ofthe  motion  being  presented.]
           MOTION:
    
    
    
           DOCKET  ENTRY:
           3)              0         Filed  motion  of [ use listing  in  "Motion"  box  above.]
           7.1             0         Brief  in  support  of motion  due L
           :3)             0         Answer  brief  to motion  due L                         Reply  to
           :4)             0         Ruling/Hearing  on -setfor                                   at
           :5)             0         Stams  hearing[held/continued  to]  [set for/wset  for]  on -     
           :6)             0         Pretrial  conference[held/continued  to]  [set for/w-set  for]  on
       at
           :7)             q         Trial[set  forlre-set  for]  on                  at             .
           3)              0         [BencWJwy  trial]  [Hearing]  held/continued  to                  
           3               0         This  cake is dismissed  [with/without]  prejudice  and without 
                                     0  FRCP4(m)             0  General  Rule  21  0  FRCP4l(a)(l)     
           [lo)            w         [Other  docket  entry]             Pursuant to Memorandum  Opinion
                           motion  for  summary judgment  as to Gillette  and Warner-Lambert  on Counts
                           amended complaint  is  denied.  Defendants'  cross-motion  for  summary 
                           Warner-Lambert  on Counts I  through  IV  is granted.  Defendants'  motion 
                           Count V  is granted.  Count V  is dismissed  in its  entirety.  Status
                           9:OOam.
    
           111`)  w                  lFor  further  detail  see order  attached to the oriainal  minute
           \  ,
    
                                                                                                       
           4          Notices mailed  by judge's  staff.
                      Notified  counsel by telephone.
                      Docketing  to mail  notices.
                      Mail  A0  450  form.
                      Copy to judge/magistrate  judge.
    
    
    
    SNIPPETS:
  • motion for summary judgment as to Gillette and Warner-Lambert on Counts I through IV of the
  • Warner-Lambert on Counts I through IV is granted.
  • Defendants' motion for summary judgment on
  • IN THE UNITED STATES DISTRICT COURT
  • LEMELSON MARITAL TRUST,
  • Dorothy Lemelson, the Jerome Lemelson Marital Trust, and John Does l-10 (unknown
  • persons whom plaintiffs allege directed, aided, collaborated and joined with the named
  • Plaintiffs' five-count first-amended complaint alleges: breach of fiduciary obligations,
  • breach of Management Agreement, breach of Letter Agreement, accounting
  • rights in a stock repurchase agreement.
  • Plaintiff Syndia Corporation is an Illinois corporation.
  • Plaintiffs Roger Hickey
  • United States patents, the president of defendant LERC, and the managing partner of defendant
  • Defendant LMERF is a Nevada limited partnership created in 1993 to "receive and own,
  • or to license others to do so.
  • Agreement, "Syndia shall enter into a written licensing agreement with, and Lemelson
  • "stand-alone license agreement," or "licensing agreement"] with Syndia, effective as of
  • Syndia shall be permitted to sublicense the Syndia patents to sublicensees,
  • counsel that he wanted the absolute prerogative to decide for or against litigation.
  • defendants have the right to withhold consent for infringement
  • assure the third parties that they would never be sued for infringement by Lemelson, LMERF,
  • the right to grant licenses and covenants not to sue as contemplated hereunder, such
  • The third-party licenses also contain a "covenant not to sue" clause,
  • admissions, received exactly what they were promised -- an exclusive license in, but not
  • Plaintiffs argue that they have been deprived of the rights they were promised in two ways.
  • which includes Syndia's right to sub-license the patents in their sole discretion.

  • 3 . COMPLAINT

    EXTRACTED KEY WORDS
    LEMELSON
    SYNDIA
    HICKEY
    CONLEY
    LICENSING
    AGREEMENT
    PLAINTIFFS
    DEFENDANTS
    LICENSING PROGRAM
    BUSINESS
    ESTATE
    PATENT PORTFOLIO
    NEVADA
    PATENT PROSECUTION
    LICENSE
    SYNTHETIC DIAMOND
    LIMITED PARTNERSHIP
    TECHNOLOGY
    ENTREPRENEURS
    UNITED STATES
    OPTION AGREEMENT
    LETTER AGREEMENT
    MANAGEMENT AGREEMENT
    PARAGRAPHS
    LITIGATION
    PRINCIPALS
    OBLIGATIONS
    REPRESENTATIVES
    PROPERTY BUSINESS VENTURES
    
                                         IS  THE  UNITED  STATES  DISTRICT  COURT-  .y
                                      FOR  THE  NORTHERK  DISTRICT                   OF  ILLINOIS      
                                                             E.4STERS  Dl\`lSION
    
    
    SYXD1.4  CORPOR4TION~                       an Illinois
             C01pxati011,
    ROGER  P. HICKEY  and  JAMES  G. COXLEY,
    
                                      Plaintiffs,
    
             1-s.
    
    THE  ESTATE  OF  JERO>lE  H.  LE\,IELSON,
    LEMELSON  MEDICAL,  EDCCATION                                   &
    RESEARCH  FOUNDATION,                             LIMITED
    PARTh'ERSHIP,  a Nevada  Limited  Pamcrship.
    LEMELSOX             EDUCATIONAL                   &
    RESE,4RCH  CORPORATION,                            a Yevada
    Corporation,  and  DOES  l-  10,
    
                                      Defendants.
    
    
                                                                  CO\IPI,.AIST
    
                              Plaintiffs  Syndia  Corporation.  Roger  P. Hikey  and  James  G. Conley,
    
    through  their  attonqs,  Winston  S: Strawn,  complairl  of  Defendants  The  Estate  of  Jerome 
    
    Lemelson,  Lemelson  Medical  Education  `PL Reszarch  Foundation,  Limited  Partnership,  I.CnlCkOn
    
    Educational  &  Research  Corporation,  and  Does  1 -I  0 and  state  as hollows:
    
    
                                      INTRODUCTION                   AND  NATURE     OF  ACTION
    
             1.               This  an action  seeking  illjunctiw  relief  and  damayes  for  breach 
    
    and  breach  of  contract.  among  other  causes of  action.  Plaintiffs  seek relief  in  this 
    
    diversity  jtlrisdiction.
    
    
    
    Edison's  Lemelson  vigorously  and  aggl-essi\~cly pwsued  his patent  riyhts  against  a
    
    cornpanics.  In  the  process.  he obtained  inkin~cmwt  se;:lemcnts  and  licensing  agreements 
    
    
    SNIPPETS:
  • Plaintiffs Syndia Corporation.
  • Strawn, complairl of Defendants The Estate of Jerome H.
  • Lemelson, Lemelson Medical Education `PL Reszarch Foundation, Limited Partnership, I.CnlCkOn
  • Having himself benefited from patent prosecution and
  • licensing programs to gcnuate considerable wealth, Lemelson focused attention late ill his
  • fosterin:: intellectual property business ventures by young entrepreneurs.
  • of new technology businesses by young engineers and cntl-epreneurs in the context of a strong
  • Both Hickey
  • S>-udia Corporation, with Hickey and Conley as managing principals, aimed at developing neu
  • synthetic diamond and matrlials science technologies and a patent licensing program
  • leading to a near doubling of Syndia's patent portfolio.
  • of their fiduciary obligations to Plaintiffs; damages based upon Defendants' breach of their
  • State of Nevada where he owned real property and maintained his principal residence in Washoe
  • Limited Partnership and the president and sole director ofthe L.emelson
  • Thsse "Doe" Defendants include attorneys and other representatives and agents of Lcmelson,
  • Jerome Lemelson is listed as the inventor of over 500 United States patents.
  • Lemelson Foundation announced that it had entcrcd into its four hundl-edth licensing agreement
  • his consulting firm in support of the litigation and licensing program under the Lemelson
  • and operating principles of their synthetic diamond-based patent prosecution and patent
  • Syndia's euclusivc license under Article 1.1 of the Management -4yreement
  • By a Stock Purchase and Option Agreement dated
  • execution of the Management Agreement directly benefited from Conley's prototype
  • April 14, 1995 Letter Agreement
  • Plaintiffs incorporate by reference the allegations of paragraphs 1 through 101 as
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