Valvetech, Inc. v. OHB System AG

CourtDistrict Court, W.D. New York
DecidedJanuary 3, 2023
Docket6:19-cv-06829
StatusUnknown

This text of Valvetech, Inc. v. OHB System AG (Valvetech, Inc. v. OHB System AG) is published on Counsel Stack Legal Research, covering District Court, W.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Valvetech, Inc. v. OHB System AG, (W.D.N.Y. 2023).

Opinion

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF NEW YORK __________________________________________

VALVETECH, INC.,

Plaintiff, DECISION AND ORDER vs. 19-CV-6829 (CJS) OHB SYSTEM AG,

Defendant. __________________________________________

I. INTRODUCTION Plaintiff ValveTech, Inc. (“ValveTech”) filed this action against Defendant OHB System AG (“OHB”) for breach of contract, a declaratory judgment, and replevin. Am. Compl., Dec. 3, 2019, ECF No. 9. OHB has since filed counterclaims for tortious interference with contract, tortious interference with business relations, breach of contract, and promissory estoppel. Answer and Countercl., Jan. 15, 2021, ECF No. 49. The matter is presently before the Court on the parties’ respective cross-motions for summary judgment. Def. Mot. for Summ. J., Feb. 24, 2022, ECF No. 61; Pl. Mot. for Summ. J., Apr. 4, 2022, ECF No. 72. For the reasons stated below, Defendant OHB’s motion for summary judgment [ECF No. 61] is granted with respect to ValveTech’s causes of action for declaratory judgment and replevin, and denied with respect to ValveTech’s breach of contract claims and OHB’s alternative argument requesting dismissal under Rule 41(b) of the Federal Rules of Civil Procedure. Plaintiff ValveTech’s motion for summary judgment [ECF No. 72] is granted with respect to OHB’s counterclaims for tortious interference with contract and tortious interference with business relations, and denied with respect to ValveTech’s breach of contract claim and OHB’s counterclaims for breach of contract and promissory estoppel. The Court will contact the parties at its earliest opportunity to schedule a pre-trial conference regarding the remaining claims.

II. BACKGROUND The following background has been drawn from the parties’ respective statements of material fact and opposing statements, as well as the multitude of supporting exhibits, submitted pursuant to Rule 56(a) of the Local Rules of Civil Procedure of the Western District of New York. Def. Statement of Fact, Feb. 24, 2022, ECF No. 61-29; Pl. Statement of Fact, Apr. 13, 2022, ECF No. 78-1. Plaintiff ValveTech is a developer and manufacturer of custom valves located in Phelps, New York. In 2013, ValveTech was doing business with a company named Kayser-Threde GmbH, which was working with the European Space Agency on a program to determine whether life ever existed on the planet Mars. As part of that

relationship, ValveTech sent an email to Kayser-Threde with cost information on “the ExoMars Pressure Relief Valve,” which included costs for qualification valves, test valves, flight valves, and flight spare valves, and indicated that a development valve would be provided at no cost. The email also included cost information on engineering, tooling, and testing. In 2014, Kayser-Threde merged with Defendant OHB, a European space company engaged in developing flight systems. Following the merger, ValveTech and OHB entered into a non-disclosure agreement (“2014 NDA”) to remain in effect for a term of 20 years,

2 and in which Valvetech was identified as the “Disclosing Party,” and OHB agreed “to use [ValveTech’s] Confidential Information solely in connection with the[ir] contemplated business relationship, and . . . that the Confidential Information shall not be used for any other purpose or disclosed to any third party under any circumstances whatsoever, unless

specifically agreed to by [ValveTech] in writing.” See, e.g., Def. Ex. B, Feb. 24, 2022, ECF No. 61-4. Based on ValveTech’s prior indication that it was willing to provide a development valve at no cost, OHB submitted a “Zero Value” purchase order to ValveTech on September 8, 2015. After exchanging emails with the OHB project manager to ensure that OHB agreed that ValveTech retained ownership of the “design and technology,” ValveTech shipped the development valve on September 21, 2015. The development valve was compromised during OHB’s testing, and was returned to ValveTech for repair on or about April 20, 2016. In the meantime, on November 13, 2015, OHB submitted Purchase Order No.

4552785 (“PO 4552785”) to ValveTech for a qualification model, a flight model, and a spare model of the ExoMars Relief Valve with a net value totaling $25,908 ($8,636 each). The purchase order also listed qualification testing at no cost, and acceptance testing totaling $13,200. On December 22, 2015, OHB submitted an “Amendment of Purchase Order” indicating that the cost of the qualification testing would be $32,000. The parties disagree both as to whether ValveTech agreed to fulfill PO 4552785, and to the nature and the scope of work the purchase order contained.

3 In 2016, ValveTech, OHB, and an Italian space company, Thales Alenia Space S.p.A. (“TAS”), attempted to negotiate a three-way non-disclosure agreement (“2016 NDA”). TAS was the “prime contractor” in the building of the “ExoMars Rover,” and the products that ValveTech was developing for OHB were to be used in OHB’s capacity as

a sub-contractor on the ExoMars Rover project. The 2016 NDA identifies ValveTech as the “Disclosing Party,” is for a term of five years, and again provides that the recipients agree “to use [ValveTech’s] Confidential Information solely in connection with the[ir] contemplated business relationship, and . . . that the Confidential Information shall not be used for any other purpose or disclosed to any third party under any circumstances whatsoever, unless specifically agreed to by [ValveTech] in writing.” ValveTech signed the 2016 NDA in June 2016 and OHB signed it in July 2016, but TAS never signed. In March 2017, OHB asked ValveTech if it could send the development valve to TAS, but ValveTech refused consent because TAS had not signed the 2016 NDA. In the Spring of 2018, ValveTech and OHB entered into a third non-disclosure

agreement (“2018 NDA”), “for the purpose of evaluating a possible business arrangement between them related to the purchase and sale of certain products designed and manufactured by [ValveTech] . . . and during the pendency of any business transactions subsequently agreed upon by” the parties. Whereas the 2014 NDA and the 2016 NDA protected ValveTech’s “Confidential Information,” the 2018 NDA was for the protection of the parties’ “Proprietary Information,” and provided that “[a]ll Proprietary Information disclosed will not be used or duplicated . . . by the Receiving Party, for any purpose other than the Purpose of this Agreement, and will be protected and kept in confidence by the

4 Receiving Party . . . .” On July 25, 2018, representatives from both ValveTech and OHB met at ValveTech’s facility in Phelps, New York. Minutes generated from this meeting by OHB indicate that ValveTech successfully completed the acceptance testing on valve S/N

0001, and was authorized by OHB to ship the valve (the “spare valve”) and invoice OHB “the proportionate costs.” ValveTech shipped the valve on August 1, 2018, along with a packing slip referencing PO 4552785 and a certificate of conformance which stated that “all programs, proposals, bilateral efforts, transactions and agreements between the parties hereto are subject to terms contained in the ValveTech, Inc., Terms & Conditions1 . . . located at www.valvetech.net [and] are incorporated into this transaction as if fully set forth herein.” At the same time, ValveTech generated an invoice for $8,636, which also referenced PO 4552785. OHB continued to seek ValveTech’s permission to ship the spare valve to TAS for use in the ExoMars Rover, but ValveTech never agreed in writing to allow OHB to disclose

the spare valve to TAS. Nevertheless, on September 3, 2018, OHB delivered the spare valve to TAS’ facility in Torino, Italy. The valve was installed in the ExoMars Rover, where it remains today.

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Valvetech, Inc. v. OHB System AG, Counsel Stack Legal Research, https://law.counselstack.com/opinion/valvetech-inc-v-ohb-system-ag-nywd-2023.