United States District Court, S.D. Florida
INSPIRED DEVELOPMENT GROUP, LLC, a Florida limited liability company, Plaintiff,
INSPIRED PRODUCTS GROUP, LLC, d/b/a KIDSEMBRACE, LLC, a California limited liability company, Defendant. INSPIRED PRODUCTS GROUP, LLC, d/b/a KIDSEMBRACE, LLC, a California limited liability company, Counter-Plaintiff,
INSPIRED DEVELOPMENT GROUP, LLC, a Florida limited liability company, and MITCHELL PRINE, individually, Counter-Defendants.
AMENDED  ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANT INSPIRED PRODUCTS GROUP'S
MOTION FOR SUMMARY JUDGMENT AND DENYING PLAINTIFF INSPIRED
DEVELOPMENT GROUP'S MOTION FOR SUMMARY JUDGMENT
L. ROSENBERG UNITED STATES DISTRICT JUDGE.
matter is before the Court on Defendant Inspired Products
Group's (“IPG”) Motion for Summary Judgment
[DE 74] and Plaintiff Inspired Development Group's
(“IDG”) Motion for Summary Judgment [DE 77]. Both
motions have been fully briefed. For the reasons set forth
below Defendant IPG's Motion for Summary Judgment is
granted in part and denied in part and Plaintiff IDG's
Motion for Summary Judgment is denied.
UNDISPUTED FACTS 
background information purposes, the Court sets forth below
the undisputed history of this case. To the extent there are
disputed facts relevant to the Court's decision, the
Court addresses the dispute in its analysis, infra.
case is about one company that produced products, the
Defendant, one company that owned the patents for those
products, the Plaintiff, and the Defendant's eventual
termination of its relationship with Plaintiff. The Plaintiff
in this case, IDG, was founded in 2005. DE 75 at 2. IDG was
founded by Mr. Mitch Prine (who became the CEO) because Mr.
Prine wanted to commercialize the idea of making child car
seats that incorporated famous cartoon and comic book
characters. Id. Mr. Prine succeeded in obtaining
patents for his idea, however, at that time, neither Mr.
Prine nor IDG obtained any rights or permissions to use the
intellectual property of the characters the car seats were
patterned after, such as Batman. Id. at 3. In 2006
and 2007, Mr. Prine was able to convince investors to form a
company to manufacture the car seats and, as a result, the
Defendant in this case, IPG, was formed. Id. The
design of the business was such that IPG would manufacture
the car seats and pay a royalty to IDG for the use of its
patents. Id. In 2007, a formal Exclusive Patent
Licensing Agreement was entered into between IPG and IDG that
memorialized this arrangement wherein IPG would pay royalties
to IDG. Id. at 4.
January of 2008, IPG signed a non-exclusive license agreement
with Marvel to put a Spiderman character on children's
car seats. Id. at 15. The terms of that
license agreement (as well as others) would eventually
fracture the relationship between IPG and IDG, as explained
below. In 2009, IPG sought investment from Boliari, EAD, a
Bulgarian corporation. Id. at 5. As a condition for
its investment, Boliari required both IDG and IPG to execute
a Binding Letter of Agreement. Id. at 6. The terms
of the Binding Letter Agreement were varied, but the terms
included a provision that stated that IDG would be entitled
to a certain amount of funds if IPG were ever to be sold.
the Boliari investment, in early 2010, Mr. Prine was removed
as CEO of IPG. Id. at 8. After Mr. Prine's
removal, the new leadership at IPG began to question the
value of IDG's patents and the value of IPG's
payments for the use of those patents. See Id. at 8.
IPG's concerns were focused on the terms of its
non-exclusive licensing agreements with the owners of the
fictional characters the car seats resembled. See
Id. at 7-8. More specifically, the terms of IPG's
various non-exclusive licensing agreements for the fictional
characters required, in various ways, that IPG would
“not use . . . the [images] in any manner likely to
cause confusion or doubt in the mind of the public as to the
ownership and control thereof or in any manner that does not
make clear that the [image] is owned and controlled
exclusively by [the licensor.]” See DE 75-15
at 11. IPG's concern was its requirement, pursuant to its
non-exclusive licensing agreements, not to assert any sort of
exclusivity over the character images, juxtaposed to the
patents it was paying for, which in turn facially appeared to
exercise exclusivity over the character images, once they
were affixed to the car seat that was the subject of the
patent. See DE 75 at 22 (“[T]he licensed
rights to the specific characters in combination with the
Design Patent protection for the seat utilizing that
character design, effectively precludes the licensor from
granting a character license for a similar (i.e. infringing)
seat.”). Stated succinctly, IPG was concerned the
patents it was paying for had no value, conflicted with its
license agreements, or both. See id.
light of its concerns, IPG requested extensive information
from IDG pertaining to the patents. See Id. at 9.
IDG did not respond to IPG's satisfaction. See
Id. IPG terminated its relationship with IDG by
terminating the Patent License Agreement. Id. This
lawsuit followed, with IDG asserting it was owed outstanding
royalties under the Patent License Agreement and a lump-sum
payment under the Binding Letter of Agreement. DE 1. IPG
answered by filing counterclaims, however, those
counterclaims were subsequently dismissed without prejudice.
Only IDG's claims remain before this Court.
SUMMARY JUDGMENT STANDARD
judgment is appropriate if “the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). The existence of a factual dispute is not
by itself sufficient grounds to defeat a motion for summary
judgment; rather, “the requirement is that there be no
genuine issue of material fact.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247-48 (1986). A dispute is genuine if “a reasonable
trier of fact could return judgment for the non-moving
party.” Miccosukee Tribe of Indians of Fla. v.
United States, 516 F.3d 1235, 1243 (11th Cir. 2008)
(citing Anderson, 477 U.S. at 247-48). A fact is
material if “it would affect the outcome of the suit
under the governing law.” Id. (citing
Anderson, 477 U.S. at 247-48).
deciding a summary judgment motion, the Court views the facts
in the light most favorable to the non-moving party and draws
all reasonable inferences in that party's favor. See
Davis v. Williams, 451 F.3d 759, 763 (11th Cir. 2006).
The Court does not weigh conflicting evidence. See Skop
v. City of Atlanta, 485 F.3d 1130, 1140 (11th Cir.
2007). Thus, upon discovering a genuine dispute of material
fact, the Court must deny summary judgment. See id.
moving party bears the initial burden of showing the absence
of a genuine dispute of material fact. See Shiver v.
Chertoff 549 F.3d 1342, 1343 (11th Cir. 2008). Once the
moving party satisfies this burden, “the nonmoving
party ‘must do more than simply show that there is some
metaphysical doubt as to the material facts.'”
Ray v. Equifax Info. Servs., LLC, 327 F. App'x
819, 825 (11th Cir. 2009) (quoting Matsushita Elec.
Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574,
586 (1986)). Instead, “[t]he non-moving party must make
a sufficient showing on each essential element of the case
for which he has the burden of proof.” Id.
(citing Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986)). Accordingly, the non-moving party must
produce evidence, going beyond the pleadings, to show that a
reasonable jury could find in favor of that party. See
Shiver, 549 F.3d at 1343.
moved for summary judgment as to each count against it: Count
I (Breach of Patent License Agreement), Count II (Breach of
Binding Letter of Agreement), Count III (Unjust Enrichment),
and Count IV (Promissory Estoppel). IDG has moved for summary
judgment as to Count II. For the reasons set forth below, the
Court grants summary judgment in IPG's favor on each
count except for Count I and denies summary judgment in
IDG's favor on Count II
I - Breach of Patent License Agreement
argues that it is entitled to summary judgment as to
IDG's Count I, which is a breach of contract claim
premised on the parties' Patent License Agreement.
IDG's breach of contract claim is based upon the
allegation that during the fourth quarter of 2012 and all of
2013 IPG did not pay IDG royalties as the Patent License
Agreement required. IPG's contention on summary judgment
is that it was excused from any such obligation to pay
royalties because, prior to its alleged obligation to do so,
IDG materially breached the Patent License Agreement.
IPG's position is premised upon the following provision
in the Patent License Agreement:
6. Obligations of Licensee. In addition to the obligations
set forth hereinabove, IPG shall fulfill the following
a. Marking. Licensee agrees to mark or have marked all
Licensed Products manufactured, used or leased by it or its
sub licensees as such may be desirable or required by
applicable patent laws.
b. Diligent Exploitation. Licensee shall use its commercially
reasonable efforts to bring Licensed Patent Rights to market
through a thorough, vigorous and diligent program and to
continue active, diligent marketing efforts throughout the
life of this agreement.
c. Protection Against Infringement. Licensee shall use its
commercially reasonable best efforts to vigorously protect
and guard against infringement of the Licensed Patent Rights
incorporated in the Licensed Products throughout the life of
d. Patent Prosecution and Maintenance. IDG and IPG shall
cooperate with respect to all future patent prosecution and
patent maintenance. IPG shall pay future costs of
preparation, filling, prosecuting and maintenance of patents
and applications on patentable improvements included in the
Licensed Patent Rights, however, in the event that IPG
refuses to file patent applications on such patentable
improvements in the United States and selected foreign
countries when requested by IDG, the rights to such
patentable improvements for said countries shall be returned
i. Preparation and maintenance of patent applications and
patents undertaken at IPG's cost shall be performed by
patent attorneys selected by IPG (with the advance written
consent of IDG, such consent not to be unreasonably
withheld); and due diligence and care shall be used in
preparing, filling, prosecuting, and maintaining such
applications on patentable subject matter. Both parties shall
review and approve any and all patent related documents.
ii. IPG shall have the right to, on thirty (30) days written
notice to IDG, discontinue payment of its share of the
prosecution and/or maintenance costs of any of said patents
and Vor patent applications. Upon receipt of such written
notice, IDG shall have the right to continue such prosecution
and/or maintenance in its own name at its own expense in
which event the License shall be ...