In re: AH Liquidation, Inc.

CourtDistrict Court, D. Delaware
DecidedFebruary 12, 2025
Docket1:23-cv-00329
StatusUnknown

This text of In re: AH Liquidation, Inc. (In re: AH Liquidation, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re: AH Liquidation, Inc., (D. Del. 2025).

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

IN RE: : Chapter 11 : AH LIQUIDATION, INC., : Case No. 21-10883 (CTG) : Debtor. : (Jointly Administered) ______________________________________________ : : HE, INC., : Appellant, : v. : Civ. No. 23-329-JLH : AVADIM HOLDINGS INC., and : RELION HOLDINGS LLC, : : Appellees. : ______________________________________________________________________________ Thomas G. Macauley, Macauley LLC, Wilmington, DE

Counsel for Appellant HE, Inc.

David M. Griffiths, Rachel L. Foust, Weil Gotshal & Manges LLP, New York, NY; Paul N. Heath, Zachary I. Shapiro, Corey D. Kandestin, Robert C. Maddox, Alexander R. Steiger, Richards Layton & Finger, P.A., Wilmington, DE

Counsel for Appellees Avadim Holdings, Inc. and Relion Holdings LLC

OPINION

February 12, 2025 ich ISTRICT JUDGE I. INTRODUCTION This appeal arises from the chapter 11 cases of the above-captioned debtors (“Debtors”) in connection with the Bankruptcy Court’s construction and enforcement of its order (A-077—A- 115)! (’Sale Order’) approving the sale of the Debtors’ assets to appellees Avadim Holdings, Inc. and Relion Holdings LLC (“Buyer”). Prior to their bankruptcy, the Debtors bought from appellant HE, Inc. (“HE”) U.S. Patent No. 6,358,516 (the “Patent’’), as well as all of the intellectual property associated with the Patent that was not already included in the Patent (the “Proprietary Technical Information” or “PTI,” and together with the Patent, the “Patent IP”). When the Debtors filed for bankruptcy, the Patent IP became property of the estate. The Debtors then sold substantially all of their assets to the Buyer, including all of their intellectual property. The Sale Order approved this sale free and clear of any claims or encumbrances. One year later, HE sued the Buyer in the Southern District of Georgia for using the Patent IP. Buyer moved the Bankruptcy Court to enforce the Sale Order and determine that the Buyer owned the Patent IP free and clear of HE’s lawsuit. On March 9, 2023, the Bankruptcy Court entered an order (B.D.I. 555)’ (“Enforcement Order’) enforcing the Sale Order, and HE has appealed. For the reasons set forth below, the Court will affirm the Enforcement Order. Il. BACKGROUND A. Pre-Bankruptcy Transfer of the Patent IP In 2002, HE obtained the Patent. A-336. Referred to as the “One-Step System for

' The appendix (D.I. 8-1) to HE’s opening brief is cited herein as “A-_,” and the appendix (D.I. 10) to Buyer’s answering brief is cited herein as “SA-_.” ? The docket of the chapter 11 cases, captioned Jn re AH Liquidation, Inc., No. 21-10883 (CTG) (Bankr. D. Del.), is cited herein as “B.D.I. _.”

Cleansing, Conditioning, and Treating the Skin,” the Patent relates to a wet wipe product used to clean the skin of patients in a hospital setting in lieu of other bathing methods such as a wash basin. A-28 (First Whereas Clause); B.D.I. 547 (“1/19/23 Hr’g Tr.” at 7:21-23). In 2007, HE licensed the Patent to the Debtors.3 A-28 (Settlement Agreement at Second Whereas Clause). Then in 2013, HE outright sold the Patent to the Debtors. A-28 (Settlement Agreement at Fourth Whereas Clause). Three years later, following a series of disputes, the Debtors and HE entered into three

contracts: (1) a Settlement Agreement, dated July 15, 2016 (A-28–A-50) (the “Settlement Agreement”); (2) a Confidentiality Non-Use and Non-Disclosure Agreement, dated July 15, 2016 (A-52–A-67) (the “Confidentiality Agreement”); and (3) the Assignments and Confirmation of Previous Assignments, dated July 18, 2016 (A-69–A-75) (the “Assignment”). 1. The Settlement Agreement The Settlement Agreement superseded all prior agreements and became the operative agreement governing the Debtors’ and HE’s relationship. See A-29 (Settlement Agreement at Ninth Whereas Clause) (reciting that the parties entered into the Settlement Agreement to “successfully conclude their business dealings in accord and satisfaction, substituting this Settlement Agreement for the Prior Agreements”).

The Settlement Agreement reaffirmed the sale and transfer to the Debtors of HE’s “entire right, title, and interest in and to” the Patent, and further conveyed to the Debtors all of the Patent IP. A-28 (Settlement Agreement at Fourth Whereas Clause). HE thus broadly assigned to the Debtors everything it owned associated with topically applied formulations, “including, but not limited to, patents, trademarks, copyrights, domain names, web addresses, websites, personal

3 The party at the time was the predecessor to the Debtors, Avadim, LLC. For ease of reference, I refer to the Debtors and their predecessors collectively as “the Debtors.” sales, equipment, and proprietary business and technical information … reasonably related to topically applied formulations that may be used on people, other mammals, surfaces, and the like.” A-29 (Settlement Agreement § 1) (emphasis added).4 HE also relinquished all rights in the Patent IP: Neither HE, Inc. nor N.R. Harod shall retain any rights whatsoever in the assets of HE, Inc. that are assigned under this Section 1 … or any rights or ownership whatsoever in the subject matter of this Settlement Agreement.

A-29 (Settlement Agreement § 1); see also A-30 (Settlement Agreement § 1) (HE “retain[s] no ownership interest whatsoever in any subject matter reasonably related to topically applied formulations[.]”); A-33 (Settlement Agreement § 10) (“[T]he parties confirm that HE, Inc. has retained under this Settlement Agreement ownership of no rights or property whatsoever, other than with respect to any liabilities associated therewith, in any subject matter reasonably related to topically applied formulations[.]”). In exchange, the Debtors agreed to pay consideration to HE, including cash in monthly installments. A-32–A-33 (Settlement Agreement § 9(b)). The Settlement Agreement provided that if the Debtors breached this obligation, the breach would “not result in termination of this Settlement Agreement, and the sole remedy of HE, Inc. and N.R. Harod [would] be in monetary damages.” A-38 (Settlement Agreement § 23). 2. The Confidentiality Agreement The Debtors and HE also entered into the Confidentiality Agreement. Under that agreement, HE and its principals agreed not to disclose any confidential information, trade secrets,

4 HE did not sell any “Excluded Assets,” which was defined as securities, cash, and assets unrelated to the Patent IP. A-30 (Settlement Agreement § 1) (assets “not associated directly or indirectly with assets reasonably related to topically applied formulations … (including, without limitation, U.S. Patent No. 6,358,516)”). or other proprietary information relating to the Patent IP—that is, “relating to topically applied formulations that may be used on people, other mammals, surfaces, and the like, including but not limited to formulations coming within the scope of … U.S. Patent No. 6,358,516, and that may not be specifically enumerated in U.S. Patent No. 6,358,516.” A-53 (Confidentiality Agreement § 1). The Confidentiality Agreement signatories also transferred to the Debtors “all ownership interest that any of them may possess, individually or collectively with HE, Inc., in the HE, Inc. Proprietary Information [and] . . . acknowledge[d] that none of them . . . retain[] any interest

whatsoever in the HE, Inc. Proprietary Information” going forward. A-54 (Confidentiality Agreement § 4). 3. The Assignment Finally, HE formally transferred the Patent IP by executing the Assignment. The Assignment relates to both the Patent and the Proprietary Technical Information, which the Assignment defines as: proprietary technical information associated with the said Harod U.S. Patent No.

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