GORDON J. HARRIS & Another v. IMAGING ADVANTAGE LLC.

CourtMassachusetts Appeals Court
DecidedJanuary 17, 2024
Docket22-P-1249
StatusUnpublished

This text of GORDON J. HARRIS & Another v. IMAGING ADVANTAGE LLC. (GORDON J. HARRIS & Another v. IMAGING ADVANTAGE LLC.) is published on Counsel Stack Legal Research, covering Massachusetts Appeals Court primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
GORDON J. HARRIS & Another v. IMAGING ADVANTAGE LLC., (Mass. Ct. App. 2024).

Opinion

NOTICE: Summary decisions issued by the Appeals Court pursuant to M.A.C. Rule 23.0, as appearing in 97 Mass. App. Ct. 1017 (2020) (formerly known as rule 1:28, as amended by 73 Mass. App. Ct. 1001 [2009]), are primarily directed to the parties and, therefore, may not fully address the facts of the case or the panel's decisional rationale. Moreover, such decisions are not circulated to the entire court and, therefore, represent only the views of the panel that decided the case. A summary decision pursuant to rule 23.0 or rule 1:28 issued after February 25, 2008, may be cited for its persuasive value but, because of the limitations noted above, not as binding precedent. See Chace v. Curran, 71 Mass. App. Ct. 258, 260 n.4 (2008).

COMMONWEALTH OF MASSACHUSETTS

APPEALS COURT

22-P-1249

GORDON J. HARRIS & another 1

vs.

IMAGING ADVANTAGE LLC.

MEMORANDUM AND ORDER PURSUANT TO RULE 23.0

In 2008, plaintiff Massachusetts General Physicians

Organization, Inc. (MGPO), agreed to license its intellectual

property to Tele3D Advantage LLC (Tele3D Advantage), a

subsidiary of the defendant, Imaging Advantage LLC (Imaging

Advantage). 2 In exchange, Imaging Advantage and Tele3D Advantage

agreed to pay MGPO royalties. This lawsuit concerns an exit

royalty that Imaging Advantage and Tele3D Advantage agreed to

pay "[w]ithin thirty days (30) following the first Liquidity

Event," as that term was defined in an agreement into which the

parties entered. Tele3D Advantage separately agreed to make a

1 Massachusetts General Physicians Organization, Inc.

2 By the time of this lawsuit, Tele3D Advantage had dissolved, and this lawsuit does not involve any claims against Tele3D Advantage. cash payment to plaintiff Gordon J. Harris, an employee of MGPO,

"[u]pon a Liquidity Event." Imaging Advantage was not a party

to that agreement, but Harris claims that Imaging Advantage

guaranteed Tele3D Advantage's obligations under the agreement

and was Tele3D Advantage's alter ego and successor in interest.

MGPO and Harris claim that three different liquidity events

occurred and that any one of those events triggered Imaging

Advantage's payment obligations. A summary judgment entered in

favor of MGPO and Harris on their claims for breach of contract

and all parties appealed. Concluding that there are genuine

issues of material fact, we vacate the summary judgment and

remand for further proceedings. 3

Background. 4 Effective November 19, 2008, MGPO, Imaging

Advantage, and Tele3D Advantage entered into a licensing and

servicing agreement (LSA) that set forth the following

background. "MGPO is a charitable corporation and an Affiliate

of the General Hospital Corporation d/b/a Massachusetts General

3 In a cross appeal, MGPO argues that it should have been awarded attorney's fees as the prevailing party under the terms of its agreement with Imaging Advantage and Tele3D Advantage. Given our resolution of this case, where MGPO is not yet and may never be a prevailing party, it would be premature for us to address the issue of fees.

4 "We recite the material facts in the light most favorable to the nonmoving party," Imaging Advantage. Matter of the Estate of Urban, 102 Mass. App. Ct. 284, 285 (2023), quoting Docos v. John Moriarty & Assocs., 78 Mass. App. Ct. 638, 639 (2011).

2 Hospital." "MGPO has developed intellectual property and

expertise in three-dimensional ('3D') volumetric image

reconstruction techniques and post-processing technologies

(collectively '3D Techniques and Technologies') applicable to

radiological images." "Imaging Advantage has formed Tele3D

Advantage to improve patient outcomes by increasing diagnostic

knowledge through delivering excellent 3D volumetric image

reconstruction and post-processing services that are universally

available and cost effective for Clients in the United States

and internationally (the 'Tele3D Advantage Purpose')." "MGPO

desires to license the 3D Techniques and Technologies to Tele3D

Advantage and to commit to render to Tele3D Advantage services

related thereto, and Tele3D Advantage wishes to obtain such

license and the benefit of such services."

To that end, the parties agreed as follows. MGPO agreed to

"grant to Tele3D Advantage a non-assignable, perpetual, royalty-

bearing license" to use intellectual property described as the

"Licensed IP." 5 Imaging Advantage and Tele3D Advantage agreed to

pay three different types of royalties to MGPO. This lawsuit

concerns the exit royalty, which Imaging Advantage and Tele3D

5 The license was to be used "solely for the Tele3D Advantage Purpose." In addition, while the license was described as "non- assignable," the LSA stated that the license could "be assigned by Tele3D Advantage in connection with a sale of substantially all of its assets."

3 Advantage had to pay only "if all or a material component of the

assets associated with the 3D Services (such assets are the '3D

Assets') [were] disposed of in a Liquidity Event." 6 The LSA

defined "3D Services" to mean "the post-processing of any 2D

radiological image or images by Tele3D Advantage, Imaging

Advantage or any Affiliate(s) thereof . . . for the benefit of

MGPO or any third party that produces or is intended to produce

one or more 3D images."

Section 3.3.2 of the LSA described three different kinds of

liquidity events:

"(i) an initial public offering ('IPO') of securities of Tele3D Advantage or an IPO of Imaging Advantage that includes the 3D Assets;

"(ii) a single transaction or a series of transactions pursuant to which any person . . . acquires the beneficial ownership, directly or indirectly, of greater than 50% of the combined voting power of the then-outstanding securities of any entity retaining the 3D Assets . . . entitled to vote generally in the election of directors (or limited liability company managers, if applicable) immediately after the consummation of the transaction or transactions, except that any acquisition of securities directly from Imaging Advantage or Tele3D Advantage shall be disregarded for purposes of this clause (ii); or

"(iii) the sale, lease, license or other transfer of ownership or material control rights relating to the 3D Assets, including any such transaction involving Imaging Advantage or Tele3D Advantage that includes the 3D Assets."

6 The amount of the exit royalty was, at a minimum, five million dollars.

4 Also pertinent to this appeal is section 7.6, which set

forth the provisions that would survive termination of the LSA.

Section 7.6 stated, "The provisions of Sections 1, 2 (subject to

Section 7.3), 3, 4.4.1, 5.1, 5.2 and 5.3 (to the extent of

Royalties, Fees and Expenses accrued through such time), 6, 7,

and 9 through 18 shall survive any termination or expiration of

the Term of this Agreement."

As part of the overall 2008 transaction, Tele3D Advantage

and Harris entered into a consulting agreement, effective

November 19, 2008, in which Harris agreed to serve as a

consultant to Tele3D Advantage and Tele3D Advantage agreed to

compensate Harris as set forth in an attached schedule. Imaging

Advantage was not a party to the consulting agreement but

executed an attached guaranty stating that it "unconditionally

and irrevocably guarantee[d] to [Harris] . . . the full and

timely performance of all obligations of [Tele3D Advantage]

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GORDON J. HARRIS & Another v. IMAGING ADVANTAGE LLC., Counsel Stack Legal Research, https://law.counselstack.com/opinion/gordon-j-harris-another-v-imaging-advantage-llc-massappct-2024.