Judge Arthur Spatt
Genometrica Research developed a biomedical device known as a DNA analyzer and sequencer. It entered a license agreement with the Research Foundation of the State University of New York. Under the agreement, the Foundation owned the device, while Genometrica was granted an exclusive worldwide license to use any related technology, discovery, and process, whether patentable or not. Under the agreement Genometrica informed the Foundation of a license infringement by defendants, and provided a memorandum which set forth evidence of defendants’ alleged infringement. The Foundation sent Genometrica an email stating it was not in the position to pursue infringement or other claims against defendants. Thus, Genometrica sued defendants for patent infringement and unfair competition. Defendants sought dismissal, arguing that only the Foundation could decide if infringement occurred. The court disagreed, finding nothing in the agreement stating that the Foundation’s assessment of potential infringement was conclusive and binding on Genometrica or the court. The court concluded the agreement explicitly permitted Genometrica to bring suit if the Foundation did not diligently prosecute an infringement action.