MEMORANDUM DECISION and ORDER I. INTRODUCTION Plaintiff AgroSci, Inc. (“AgroSci,” the “Company,” or “plaintiff”) brings this action against defendants Mark Prescott (“Prescott”) and Air8Green, LLC (“Air8Green” and, together with Prescott, “defendants”). Plaintiff asserts claims for breach of various contracts against both defendants, breach of fiduciary duty against Prescott, tortious interference against Air8Green, and unjust enrichment against Air8Green. Defendants have each moved to dismiss AgroSci’s amended complaint pursuant to Federal Rule of Civil Procedure (“Rule”) 12(b)(6) and the motions have been fully briefed. The Court will now consider the parties’ motions on the basis of the submissions without oral argument. II. BACKGROUND1 Founded in May 2011, AgroSci designs and installs premium green walls and “plantscapes” across various architectural features, such as interior and exterior walls. Dkt. 31 (“AC”) 8. Prescott served as an officer of the Company from its founding until November 2018. Id. 9-11. On July 24, 2011, AgroSci and Prescott entered into a Non-Disclosure, Non-Competition and Assignment of Intellectual Property Agreement (“Assignment and NDA”), which imposed certain obligations on Prescott “as a condition of his continued association with AgroSci” as “an employee, director, officer, consultant, advisor or independent contractor.” AC 13; id., Ex. A (attaching copy of Assignment and NDA), p. 1.2 One such obligation was that Prescott would not “engage in any other business activity that conflicts with [his] duties to the Company.” Assignment and NDA §5. Moreover, Prescott agreed to avoid conflicts of interest, to disclose potential conflicts to plaintiff’s board of directors, and to not compete with the Company during his association and for one year thereafter. Id. §§5, 9. Prescott further agreed that he would “make full and prompt disclosure to the Company” of his inventions in the course of his association with the Company, and agreed to assign and transfer to the Company all rights in any such invention. Id. §6. One of Prescott’s inventions was a pressurized growing air system for vertical and horizontal plant systems (the “Aerogation IP”). AC 14. AgroSci alleges that, despite his obligation to assign the rights to the Aerogation IP to the Company pursuant to §6 of the Assignment and NDA, Prescott instead pursued patent protection in his own name and used Company funds to do so — all while keeping his efforts secret from the Company. Id. 15. On February 1, 2013, Prescott and AgroSci entered into the Intellectual Property Retention Agreement (“IPRA”) whereby the parties agreed that, despite Prescott’s alleged breach of his obligation to assign all rights to the Aerogation IP to plaintiff pursuant to the Assignment and NDA, Prescott would retain the rights to the Aerogation IP. AC 16; see generally id., Ex. B (attaching copy of IPRA). The IPRA provided that “[n]otwithstanding anything to the contrary contained in the [Assignment and NDA], Prescott shall retain all right, title and interest to” the Aerogation IP, while AgroSci “shall have no rights in or to” the Aerogation IP. IPRA §1. The IPRA also provided a right of first refusal for AgroSci to obtain the Aerogation IP (referred to in that agreement as the “Excluded IP”) should Prescott “at any time…desire[] to assign, sell, license or otherwise transfer” the Aerogation IP. IPRA §2. This right of first refusal required Prescott to provide notice to plaintiff of any proposed transfer of the Aerogation IP. Id. Per the IPRA, Prescott could only transfer the Aerogation IP to a third party in the event that he and plaintiff could not agree on terms for the Company’s purchase of the Aerogation IP, and then “only on terms no more favorable than the terms offered to” plaintiff. Id. On October 19, 2015, Prescott and AgroSci entered into a licensing agreement with respect to the Aerogation IP (the “2015 Licensing Agreement”). AC 18; see generally id., Ex. C (attaching copy of 2015 Licensing Agreement). The 2015 Licensing Agreement granted plaintiff an exclusive, worldwide license to “research, develop, manufacture, have manufactured, use, import, export, sell and offer to sell products relating to” the Aerogation IP. 2015 Licensing Agreement §2.1. In exchange for the license, the Company agreed to pay Prescott, among other things, a monthly licensing fee and a 10 percent royalty fee on products shipped outside the United States. Id. §2.2. The 2015 Licensing Agreement had a term of 20 years and could be terminated upon an uncorrected breach. Id. §§4.1, 4.3. The 2015 Licensing Agreement made no reference of the Assignment and NDA or the IPRA. The 2015 Licensing Agreement was not the only licensing agreement that the parties executed. On March 15, 2018, Prescott and AgroSci signed the Superseding Licensing Agreement (“SLA”). AC 19; see generally id., Ex. D (attaching copy of SLA). The SLA’s first page indicated that its purpose was to “terminate the [2015 Licensing Agreement] and replace it with [the SLA]” and for the Company “ to obtain rights to use [Prescott's] apparatus, system and method for pressurized vertical and horizontal planting systems and a license to [Prescott's] Technology.” SLA, p. 1. Through the SLA, Prescott granted plaintiff an “exclusive, personal, royalty-bearing license” to “make, manufacture, have manufactured, use, import, export, sell, and offer to sell” the Aerogation IP in the United States and Canada. Id. §3.1. Prescott also granted plaintiff a limited license to use the Aerogation IP in Europe. Id. §3.2. In exchange for these licenses, plaintiff agreed to pay Prescott an annual licensing fee and certain royalty fees. Id. §§3.6(b), 3.6(c). The SLA also contained an integration clause, which provided that the SLA “[embodied] the entire understanding of [Prescott] and [AgroSci] with respect to the subject matter herein and [replaced] any and all prior agreements regarding same.” SLA §14.1. As with the 2015 Licensing Agreement, the SLA did not reference the Assignment and NDA or the IPRA. Moreover, the SLA contained mutual releases of claims between AgroSci and Prescott. According to plaintiff, Prescott agreed to release the Company from “any and all existing claims arising out of” the 2015 Licensing Agreement, and the Company agreed to release Prescott from “any and all claims arising out of” the 2015 Licensing Agreement and/or Prescott’s “duties, obligations, and responsibilities as an officer, director and/or shareholder of” the Company. SLA §§11.3, 11.4. Relatedly, the SLA noted that the parties intended the SLA “to be a final resolution of all claims.” SLA §11.1. To that end, the SLA included a general mutual release, whereby Prescott and AgroSci agreed to “irrevocably waive[], release[], and discharge[], absolutely and forever, [the other party] from any and all liabilities [to the other party] of any kind and nature whatsoever….” Id. §§11.5, 11.6. In the event that Prescott sold rights to the Aerogation IP to a third party, the SLA provided that he “assign and transfer the obligations imposed on [him]” under the SLA to the third-party purchaser. SLA §4.4. Lastly, the SLA noted that AgroSci funded research studies by the University of Staffordshire and ECO Advisors, LLC. SLA §3.10. Prescott agreed that “the data collected during that research [would] not be distributed to third parties without [plaintiff's] permission.” Id. On July 11, 2018, Prescott entered into an assignment agreement (the “Air8Green Assignment”) with Air8Green. AC
21, 24. Through the Air8Green Assignment, Prescott purported to transfer the Aerogation IP to Air8Green in exchange for becoming a part owner of Air8Greeen. Id. According to plaintiff, Air8Green’s only member other than Prescott is RSGreenstreet, LLC (“Greenstreet”). Id. 3. AgroSci alleges that when Prescott assigned the Aerogation IP to Air8Green, he also purported to assign the SLA to Air8Green, meaning that Air8Green would step into the shoes of the licensor. Id. 35. Prescott did not notify plaintiff of his desire to assign the Aerogation IP or the SLA to Air8Green, and the Company did not learn about these purported assignments until around November of 2019. Id.
