Dechert IP Litigation Team Victory

On July 18, 2022, following a bench trial of two consolidated actions in the Southern District of New York, a Dechert team led by Marty Black (IP-PHL) and Kassie Helm (IP-NYC) won a judgment that synthetic biology clients Conagen Inc. and Phyto Tech Corp., d/b/a Blue California, were not liable for claims brought by Givaudan SA including breach of contract, promissory estoppel and unjust enrichment. The same team won a complete victory as in a second related action as plaintiffs – obtaining a judgment that Givaudan SA was liable for a breach of contract claim based on disclosing confidential information belonging to Conagen and Blue California. 

Givaudan is a Swiss multinational company and one of the world’s largest manufacturers of flavors, fragrances and active cosmetic ingredients. Client Conagen is a Boston-based biology company in the business of researching and developing synthetic biomanufacturing processes and techniques. Client Blue California is a Southern California-based company involved in the research, development and manufacturing of natural ingredients including sweetener products.   

The SDNY trials formed part of a long-running dispute between the parties over the operation of a joint venture named BGN Tech LLC. Blue California and Givaudan formed BGN in 2014 to arrange for the sharing of intellectual property (IP) and the sale of ingredients for flavors and fragrances from Blue California and its affiliate, Conagen, to Givaudan. Blue California and Conagen brought suit against Givaudan, claiming that Givaudan had taken confidential information from that joint venture related to the joint venture’s research projects and given it to a third party business rival. The Court agreed that Givaudan’s activities breached the confidentiality provisions of the joint venture agreement, and ruled in favor of Conagen and Blue California. In the related action, Givaudan had brought suit against Conagen seeking return of its multi-million dollar investment in the company. Givaudan argued that Conagen had failed to negotiate in good faith regarding a term sheet concerning IP licensing rights between the parties, and that Givaudan’s investment had been an “advance” contingent on the completion of those negotiations. The Court ruled in favor of Conagen and found that Givaudan SA was entitled to no relief on its contractual and equitable claims.

The trial was the culmination of several years of multifaceted litigation that encompassed: six cases, five parties, four years, three courts, two states and one trial. IP Litigation partners Martin Black and Katherine A. Helm led the lean trial team, with associates Luke Reilly and Charles Hsu, senior paralegal Sarah Rattle, and legal assistants Diana Melegrito and Morgan Wilde.

About Dechert

Dechert is a leading global law firm with 22 offices around the world. The firm advises on matters and transactions of the greatest complexity, bringing energy, creativity and efficient management of legal issues to deliver commercial and practical advice for clients.