Ecore Int'l, Inc. v. Downey (343 F. Supp. 3d 459, 2018)

(Confidentiality Agmt. Background.) The Confidentiality Agreement defined "Proprietary Information" as:

(a) all technology, know how, plans, designs, specifications, formulas, technical information, drawings, and other information related to the Company's products, production equipment, and manufacturing processes,

(b) audited and internally prepared financial statements and related supplementary information, and other financial information of the Company which may include information about revenue, expenses, prices, and profits, and

(c) all other information owned by or related to the Company which is not generally known within the industry in which the Company is engaged.

(Confidentiality Agmt. § 1.)

Under Section 2 of the Agreement, Downey agreed: (a) to treat Proprietary Information as "secret and confidential"; (b) to use Proprietary Information only for Ecore's benefit and not for his own benefit; (c) to not directly or indirectly disclose or communicate any Proprietary Information to anyone except as authorized by Ecore; and (d) to promptly return to Ecore all Proprietary Information, without retaining any copies, summaries, or excerpts, upon termination of his employment. (Id. § 2.) The Confidentiality Agreement also declared Ecore's "exclusive rights" to intellectual property relating to its Proprietary Information, stating:

All inventions or discoveries which relate to the Proprietary Information shall be the exclusive property of the Company. Whenever requested by the Company, either during or subsequent to employment, Employee shall execute such instruments as Company deems necessary for the purpose of confirming Company's exclusive rights to any such invention or discovery under applicable intellectual property law, including but not limited to any application for Letters patent and assignments thereof.

(Id. § 4.) The Agreement further provided that its terms "shall apply during and after the Employee's employment with Employer." (Id. § 5.) According to Dodge, confidentiality and intellectual property protections were an essential prerequisite to Ecore's willingness to work with Downey. Dodge testified:

Downey was retained by Ecore having worked for a competitor. One of the initial conversations I had with [Downey] was under no circumstances would we consider extending any relationship or employment or any other relationship with [Downey] unless he entered into a confidentiality and intellectual property protection and assignment agreement. That was absolutely sacred. We would never have hired somebody from a direct competitor and allowed them to pursue any alternative lines of business. It would have been foolhardy, foolish, never would have done it.

(Dodge 8/22/16 Dep. 89-90.) Downey has acknowledged that he agreed to the provisions of the Confidentiality Agreement. (Downey 8/29/16 Dep. 118-119.)

In 2008, Ecore asked Downey to sign an "Amended and Restated Confidentiality Agreement" that sought to: (1) refer to Downey as a "Key Person" of the Consultant instead of an "Employee"; and (2) create joint and several obligations on the part of Downey and CSR. (Defs.' SJ Opp. 8, Ex. 2; Ont. Ct. App. Op. ¶ 24.) Downey declined to sign the amended agreement. (Downey 1/3/17 Decl. ¶ 3, ECF No. 91-2.)

3. The Disputed Intellectual Property

a. The Impact Sound Isolation Invention and Assignment

As noted above, Downey began working as Ecore's business development manager for industrial products in October 1999. (Downey 6/27/07 Dep. 64; Downey 8/29/16 Dep. 65, 70.) In January 2000, Dodge told Downey that Ecore wanted to pursue business in the sound and vibration mitigation product market, and he asked Downey to investigate and develop opportunities in that market. (Downey 6/27/07 Dep. 84; Downey 8/29/16 Dep. 70.) To identify potential opportunities, Downey consulted with Ecore's engineers and decided to focus on flooring system products that could mitigate impact sound. (Downey 6/27/07 Dep. 87, 90-91.) At that time, Downey had no background in the sound and vibration flooring market, but he and Dodge knew that rubber was a good material with which to "build products ... that had sound and vibration qualities." (Downey 6/27/07 Dep. 85, 90.)

Downey considered the sound and vibration products already on the market and explored whether Ecore's existing rubber products might have a sound and vibration application. (Downey 8/29/16 Dep. 70-71; Downey 6/27/07 Dep. 106.) He examined Ecore products from its sample room and reviewed Ecore's formulas and specification sheets for its rubber products. (Downey 6/27/07 Dep. 87, 90-91; Downey 4/1/11 Dep. 22-23, 62; Downey 4/24/08 Dep. 217, Pl.'s SJ Ex. I.) Downey also consulted with employees of Ecore's joint venture partner, BSW, who informed him that the material used in Ecore's 6010 and 6510 formulations was "suitable for absorbing vibration." (Downey 4/1/11 Dep. 23.) BSW personnel also provided literature, including a binder, with test results and other information regarding the vibration isolation properties of the 6010 and 6510 formulations. (Id. at 22-27.)

Downey ultimately decided to modify Ecore's 6510-LC formulation so that it would be suitable for use as substrate between a subfloor and a decorative top floor covering, such as ceramic tile. (Downey 6/27/07 Dep. 106; Downey 4/1/11 Dep. 57, 62.) Downey asked Ecore employee Dierk Heinbach "to add some more regrind" to the 6510-LC formula in order to make the product "slightly more porous for the adhesive" and to give it a "slightly higher dynamic stiffness." (Downey 4/1/11 Dep. 57, 62, 73.) With this one modification, the resulting formulation - designated 6510-LC-2 - could be used as a flooring substrate that "could support the decorative floor covering and still perform acoustically." (Downey 4/1/11 Dep. 57, 73.) This new flooring system design became known as the Impact Sound Insulation ("ISI") invention.

On August 16, 2001, Ecore filed patent application No. 09/931,320 (the " '320 Application") for the ISI invention. (Downey 11/29/16 Decl. ¶ 14; Defs.' SJ Opp. Ex. 4.) The '320 Application named Downey as its sole inventor. (Downey 11/29/16 Decl. ¶ 15.) On October 10, 2001, Downey executed an Assignment to Ecore of the ISI invention set forth in the '320 Application (the "Assignment"). Pursuant to the Assignment, Downey agreed to, inter alia :

1. Assign and convey to and confirm in the Assignee the entire right, title and interest in and to said inventions and discoveries, said ['320 Application], and any and all other applications for Letters Patent on said inventions and discoveries in whatsoever countries, including all divisional, renewal, substitute, continuation and Convention applications based in whole or in part upon said inventions or discoveries or upon said applications, and any and all Letters Patent and reissues and extensions of Letters Patent granted for said inventions and discoveries or upon said applications, and every priority right that is or may be predicated upon or arise from said inventions, said discoveries, said applications and said Letters Patent;

* * *

5. Bind my/our heirs and legal representatives, as well as myself/ourselves, to do, upon Assignee's request and at its expense, but without additional consideration to me/us or them, all acts reasonably serving to assure that the said inventions and discoveries, the said patent applications and the said Letters Patent shall be held and enjoyed by Assignee as fully and entirely as the same could have been held and enjoyed by me/us or my/our heirs or representatives if this assignment had not been made; and particularly to execute and deliver to Assignee all lawful application documents including petitions, specifications, and oaths, and all assignments, disclaimers, and lawful affidavits in form and substance as may be requested by Assignee; ...

(Assignment ¶¶ 1, 5.) In the Assignment, Downey acknowledged his receipt, and the sufficiency, of "valuable consideration" from Ecore for his execution of the Assignment. (Assignment Pmbl.)

On July 26, 2005, the '320 Application issued as U.S. Patent No. 6,920,723 (the " '723 Patent"). The ISI invention detailed in the '723 Patent comprises a flooring system and a substrate for use therein, wherein the flooring system has a subfloor and a decorative top layer. On July 25, 2007, Ecore filed an application to reissue the '723 Patent (the "Reissue Application"). (Defs.' SJ Ex. E.) At Ecore's request, Downey signed the inventor declaration required with the Reissue Application. (Defs.' SJ Br. 11.) On November 23, 2010, the '723 Patent was reissued as Patent No. RE41,945 (the "Reissued Patent"). The ISI invention covered by the '723 and Reissue Patents is incorporated in Ecore's "QTscu" product line. (Downey 6/27/07 Dep. 65; Downey 8/29/16 Dep. 293-94.)

(b) The Noise and Vibration Mitigation Mat Invention and Patents

While working at Ecore, Downey developed a rubber product for use with concrete, which the parties refer to as the "QTrbm" product or the Noise and Vibration Mitigation Mat ("NVMM") invention. (Pl.'s SJ Br. 7; Downey 1/3/17 Decl. ¶ 26; Downey 8/29/16 Dep. 291.) Initially, Downey worked with Dodge and Ecore's counsel, Barley Snyder, LLC, to pursue a patent for the NVMM invention. (Pl.'s SJ Br. 7; Downey 8/29/16 Dep. 291-292.) On October 1, 2002, Ecore filed provisional patent application No. 60/415,054 (the " '054 Application") for the NVMM invention. (Downey 1/3/17 Decl. ¶ 25.) On October 1, 2003, Ecore filed patent application No. PCT/US03/31348 (the " '348 Application"), claiming priority to the '054 Application. (Id. ) On April 1, 2005, Ecore filed application No. 11/096,589 (the " '589 Application"), which was a continuation in part of the '348 Application. (Id. ) Subsequently, the '589 Application was abandoned. (Defs. SJ Ex. LL; Defs.' SJ Opp. Ex. 13.)

On September 1, 2011, through his own attorneys, Downey filed patent application No. 13/223,339 (the " '339 Application"), which was a continuation of the '589 Application for the NVMM invention. (Downey 1/3/17 Decl. ¶¶ 28-29; Defs.' SJ Ex. MM.) On July 24, 2012, Downey filed patent application No. 13/556,731 (the " '731 Application"), which was a continuation of the '339 Application. (Defs.' SJ Exs. D, LL.) On August, 14, 2012, the '339 Application issued as U.S. Patent No. 8,240,430 (the " '430 Patent"), and on October 15, 2013, the '731 Application issued as U.S. Patent No. 8, 556,029 (the " '029 Patent"). The '430 and '029 Patents are both titled "Noise and Vibration Mitigating Mat." (Defs.' SJ Exs. D, MM.)

Defendants contend that Ecore abandoned the NVMM invention patent applications, and that Dodge told Downey he could pursue patenting of the invention on his own. (Downey 8/29/16 Dep. 294-95; Downey 1/3/17 Decl. ¶¶ 25, 27.) According to Ecore, however, it did not abandon the NVMM invention and did not give Downey permission to pursue the related patents on his own behalf. (Dodge Decl. ¶¶ 5-6; Pl.'s SJ Opp. 5.) Ecore further asserts that it did not know the '029 Patent existed until Defendants disclosed it in their Answer and Counterclaims to Plaintiff's Amended Complaint in Case No. 11-6843. (Pl.'s SJ Opp. 5-6.)

4. Downey/CSR Compensation Disputes

The record indicates that from late 2000 through the end of the parties' business relationship, Downey and Dodge engaged in a number of communications and negotiations relating to the compensation issues in dispute in the parties' summary judgment motions. These disputes involve: (1) Downey's claimed entitlement to compensation for the ISI invention and Assignment, and (2) CSR's claim for allegedly unpaid bonus compensation.

As noted above, the Consulting Agreement originally obligated Ecore to pay CSR $132,000 (CDN) per year, plus a $20,000 (CDN) bonus if Ecore realized $1 million (USD) in new revenue in fiscal year 2000, and an additional 2.5 percent of all revenue over $1 million (USD) in that year. (Consulting Agmt. § 3(a), (c).) By early to mid December 2000, it was evident that Ecore would not realize $1 million (USD) in new revenue in 2000. (Pl.'s SJ Exs. M, O.) Nevertheless, by letter dated December 8, 2000, Dodge offered to pay CSR/Downey a bonus of $10,000 (CDN) for 2000. (Pl's SJ Ex. M.) Dodge also proposed a 4.5 percent increase in base compensation and a target bonus of $20,000 (CDN) for 2001. (Id. ) Downey counteroffered for a $15,000 (USD) bonus for 2000, plus an incentive bonus of 3.33 percent of new, profitable revenues in 2001, rather than the 2.5 percent over $1 million specified in the Consulting Agreement. (Pl.'s SJ Ex. N.) Ultimately, it appears that the parties agreed on a bonus of $10,000 (CDN) for 2000 and a modified incentive bonus of 6 percent of the gross margin on Ecore's sound and vibration-related revenues for 2001 and going forward. (Pl.'s SJ Ex. O.)

Defendants contend that in early October 2001, when Downey agreed to assign his rights in the '320 Application to Ecore, Dodge told Downey that, in return, Ecore would reasonably compensate him for the ISI invention and Assignment. (Downey 11/29/16 Decl. ¶ 16; Downey 8/29/16 Dep. 225-26.) Downey asserts that he "accepted [this] offer," which he claims resulted in an enforceable oral agreement (the "October 2001 'Agreement' ") under which Ecore was obligated to pay him "reasonable compensation" for the Assignment. (Id. ¶¶ 16-17; Downey 1/3/17 Decl. ¶¶ 8-12.) The alleged October 2001 "Agreement"-the existence of which is disputed-did not specify what would constitute "reasonable compensation," how that compensation would be calculated or determined, when the compensation was to be paid, or whether and to what extent Downey would share the costs of defending or enforcing the ISI invention patents. Defendants contend that the alleged October 2001 "Agreement" supersedes the Confidentiality Agreement and controls the Assignment of the ISI invention. (Defs.' SJ Opp. 26, 28, 33-34; Defs.' SJ Reply 5, 10-11, ECF No. 94.)

Ecore denies that any such agreement existed. Dodge testified that Ecore "never" agreed to compensate Downey for the Assignment (Dodge 8/22/16 Dep. 88.) According to Dodge, "[Ecore] had no duty or obligation to compensate Mr. Downey for something that he was legally obligated to do pursuant to his employment agreement." (Dodge 8/22/16 Dep. 88.) Dodge further testified that Downey "was compensated at the time he entered into his employment agreement.... The consideration he received was his salary and bonuses to that point in time." (Id. at 90.)

Downey claims that between October 2001 and the July 2005 issuance of the '723 Patent, Dodge repeatedly told him that Ecore would reasonably compensate him for the Assignment under the October 2001 "Agreement" as soon as the patent was issued and could be successfully asserted by Ecore. (Downey 1/3/17 Decl. ¶¶ 14-15.) However, for most of that period, the parties' written communications contain no reference to the allegedly promised Assignment compensation. For example, on January 2, 2002, Dodge sent Downey an email confirming their agreement that "your bonus will continue to be based upon our current formula: namely, 6% of the gross margin for all identified sound and vibration customers.... This formula shall remain in effect for FY 2002-2004," (Pl.'s SJ Ex. P; Dodge 8/22/16 Dep. 63-64.) Similarly, between May and December 2004, Dodge and Downey exchanged correspondence regarding the CSR/Downey compensation and bonus calculation, and Downey indicated that he wished to enter into negotiations for a new consulting agreement between Ecore and CSR. (Pl.'s SJ Exs. S, T.) This correspondence contains no reference-by either Dodge or Downey-to compensation for the Assignment, generally, or to the alleged October 2001 "Agreement," specifically.

The record reflects that in early 2005, Dodge and Downey were negotiating the terms of future base and bonus compensation to be paid to CSR/Downey, and Downey was requesting compensation for the Assignment. However, the negotiations contain no express reference to the alleged October 2001 "Agreement." (Pl.'s SJ Ex. T.) In a May 2, 2005 letter to Dodge, Downey stated, inter alia :

My compensation was supposed to be designed to reflect additional remuneration for the impact sound patent I had assigned to DRI, which your proposal does not address.

* * *

Building upon these points, and on a basis that I wish to continue my relationship with DRI, any proposal for my future remuneration must reflect the fact that I am to be compensated for my development of the patent and inauguration of the [Sound & Vibration] Product line. I would propose that I be compensated on a percentage basis (exact amount to be agreed subsequent to negotiations) of the gross revenue based upon sales of the [ISI], the patent for which I had previously assigned to DRI, in consideration for that assignment from me.

(Id. )

The parties' negotiations continued in 2006, and in early May of that year, Dodge faxed Downey three proposed agreements: an Independent Contractor Agreement, a Special Commission Agreement, and a Confidential Information and Invention Assignment Agreement. (Id. ) Between May 5, 2006 and early November 2006, Downey and Dodge exchanged a series of emails regarding the terms of the proposed agreements, including the provisions relating to patents and intellectual property. (Id. ) In the first of three May 5 emails, Downey stated: "I have reviewed the proposed agreements you faxed to me. There is much work to be done and unfortunately not much time left in which to do it." (Id. ) Downey then proposed some revisions to the agreements, including to the terms of the "special commissions agreement ie. patent licensing agreement," which Downey said would apply to the ISI, NVMM, and other inventions. (Id. ) Downey further proposed:

If the Consulting Agreement is terminated I will have the sole option of having the patents assigned back to me or revoking the [license], as the case may be. This will allow DRI to continue to market and sell the products manufactured using the patents at the same remuneration rate, or having DRI take permanent assignment of the patents, upon an agreed upon compensation, which would [be] based upon a valuation at the time. Additionally, termination of the Licensing Agreement would not automatically occur upon termination of the Consulting Agreement.

(Id. ) In the second May 5 email, Dodge responded to Downey's revisions and, regarding Downey's patent-related proposal, Dodge stated:

[A]ll intellectual property, patents and copyrights developed during the course of employment with DRI by any employee must be assigned to the Company....

Paul, let's be clear. At no time, did I or any member of the DRI Board or management represent that you or companies owned by you could claim ownership of patentable Regupol product applications technology developed by the Company during your employment. What we did discuss was the form and duration of appropriate compensation for unique, new, patentable applications of Regupol, which we encourage. The Special Commission Agreement addresses this issue, which you and I discussed previously. The Special Commission Agreement can be with CSR Tech Holdings Inc, or whatever entity you prefer, but DRI funded patents must remain irrevocably with DRI.

* * *

While [I] understand and appreciate that time is of the essence for you, any modification of our current offer will require the consent of the Board.

(Id. ) Downey then responded in a third email, stating: "The agreements aren't much use unless we have the basics in place. When we met in Toronto in July 2005 and again in Lancaster in March 2006 we discussed and consented to three general principles[.]" (Id. ) According to Downey's email, one of these principles was "[t]o provide compensation for patent assignment." (Id. ) In his email, Downey told Dodge: "None of this is news to you. If you need to have those discussions with the Board, you should have them now." (Id. )

The negotiations continued, and in a November 8, 2006 email to Downey, Dodge noted that Ecore had borne all the costs of defending the patents - a sum Dodge said was between $750,000 and $1 million. (Id. ) Downey responded the next day, stating, in part: "I think we have already outlined what is close to an agreement. We actually need to have something written down that makes sense to both of us. The Board needs to review the agreement for patent licensing that I tabled in August." (Id. ) Dodge responded later that day, stating:

Again, let's be straight. We've kicked around a lot of scenarios, but agreed on nothing.

Your answer does not address the issues I put to you yesterday.

What specifically do you want as a fair and reasonable compensation package.

[I] understand what is in the proposed Licensing Agreement, but what more do you expect."

Please be very clear and unambiguous here.

(Id. ) Downey subsequently sent a detailed response outlining "[t]he specifics of the new proposed agreement," which Downey stated "are consistent with our verbal discussions and are based on a continuation of the current consulting agreement with the following changes." (Id. ) The changes outlined in Downey's email related to his position and title with the company, his compensation, and "Patent Licensing: as proposed." (Id. ) Downey closed the email by stating: Please review so that we can formalize the agreement and get going towards taking on our continued business growth." (Id. )

It is undisputed that beginning in 2007, the CSR/Downey incentive bonus was increased to 12 percent of the sound and vibration unit operating profit. (Defs.' SJ Ex. W, X; Downey 8/29/16 Dep. 140.) However, the issue of patent compensation remained unresolved. Defendants contend that during the time Ecore was pursuing the Reissue Application, Dodge repeatedly assured Downey that he would be reasonably compensated under the October 2001 "Agreement." (Downey 1/3/2017 Decl. ¶¶ 17-18.) On October 1, 2007, Dodge sent Downey an email stating:

This confirms our understanding that your agreement to sign the authorization for the reissue of the '723 patent does not negate DRI's responsibility to reasonably compensate you thereunder.

(Defs.' SJ Ex. I; Defs.' SJ Opp. Ex. 11.) According to Dodge, this email did not acknowledge the alleged October 2001 "Agreement," but, rather, referred only to "[t]he bonus compensation that [Downey] was and had historically been receiving." (Dodge 8/22/16 Dep. 93.)

In early 2008, the independent members of Ecore's Board of Directors rejected Downey's demand for additional compensation for the ISI invention patents, and instead proposed potential future long-term compensation conditioned on Downey staying with Ecore for at least ten years. (Defs.' SJ Ex. W.) In a January 11, 2008 email to Downey forwarding the Board of Directors' decision, Dodge stated: "We agreed that we would all be bound by the decision of the independent directors, hence I believe that [the patent compensation] issue is now resolved." (Id. ) The issue, however, was not resolved and, in his May 22, 2010 letter to Dodge enclosing the executed inventor declaration for the Reissue Application, Downey stated that he "[was] not waiving any of my claims relating to the [ '723 Patent], or any reissued patent, including claims to compensation." (Defs.' SJ Ex. J.)

On March 10, 2011, Dodge sent an email to Ecore's CFO, stating: "[Downey] wants comp for coming up with the patent concept in the event he's terminated, quits or dies. Told him I'd think about it as soon as the patent is enforceable. Quasi golden handcuffs." (Defs.' SJ Ex. L.) Shortly thereafter, in a March 22, 2011 email to Dodge about other business issues, Downey asked Dodge: "What is your status on the proposal for Ecore compensating me for my patent?" (Pl's SJ Reply Ex. D.) Finally, in a letter to Dodge dated June 29, 2011, Downey stated that Dodge was "ignor[ing]" and "stonewall[ing]" his "10-year-old claim to compensation from our agreement on the reissued patent." (Pl.'s SJ Ex. U; Defs.' SJ Ex. O.) Downey later testified in his deposition that despite negotiations with Dodge "over the course of several years," Dodge "never fulfilled his promise" to reasonably compensate Downey for the Assignment. (Downey 8/29/16 Dep. 190-91, 225-26.) Ecore asserts that it paid CSR a total of almost $1.9 million in fees and expenses between 2000 and 2010, and that it paid Downey a total of more than $1.5 million in commissions between 2003 and 2010. (Pl.'s SJ Ex. Q.)

5. Downey's Formation and Operation Of Pliteq

In 2006, Downey formed Pliteq, Inc. "[f]or the production and sale of treadmill pad products and an acoustical isolation clip." (Downey 8/29/16 Dep. 11.) Initially, Pliteq sold products that did not compete with Ecore's. (Id. at 11-13.) However, in approximately 2009, Downey began buying the QTscu product from Ecore, re-labeling it, and re-selling it as a competing Pliteq product called GenieMat. (Id. at 13, 42-43; Freidkes Dep. 33-34.)

Defendants claim that Dodge knew of and approved Pliteq's sale of its GenieMat as a "private label" version of Ecore's QTscu product. (Downey 8/29/16 Dep. 42-43.) Defendants point to a chain of email messages Downey forwarded to Dodge on September 29, 2010. (Defs.' SJ Ex. U; Defs.' SJ Opp. Ex. 5.) The forwarded messages appear to contain Downey's discussions with a third party named John LoVerde about Ecore competitors' products and price comparisons. (Id. ) In his message to Dodge forwarding the email chain, Downey stated: "This is what I'm dealing with - note the last paragraph." (Id. ) In the last paragraph of the most recent forwarded email, LoVerde appears to be recounting to Downey that a potential Ecore customer was considering buying a competitor's comparable product - called Regupol-Impacta - at prices and terms that were better than Ecore's. (Id. ) In the last paragraph of the earliest email in the chain, Downey told LoVerde that he had informed the potential customer that:

[W]e will sell a private label of QT, called Pliteq GenieMat, through our distributor ... It won't have the same level of testing, or say QT on it, but at least is comparable with the SoundSeal testing, and we can provide a letter saying it is a private label as manufactured by Ecore.

(Id. )

In response to the forwarded email chain, Dodge replied to Downey, stating: "F*** them ... cut their throat on price.... Take no prisoners ... we'll clean up the market mess once we have the reissue in hand." (Id. ) According to Defendants, the forwarded email chain represented Downey's "proposal" to Dodge for Pliteq to sell a private label version of Ecore's QT product, and Dodge's response represented his "emphatic" agreement to that "proposal." (Defs.' SJ Opp. 49-51; see also Downey 8/29/16 Dep. 42-43.) Defendants contend that Dodge's approval of Pliteq's activities is confirmed by independent sales representative John Freidkes, who testified that he overheard Downey's side of a telephone call in which Downey told Dodge: "We need to sell an inexpensive mat without destroying the QT brand." (Freidkes Dep. 44-45.) Freidkes, who did not hear Dodge's side of the conversation, testified that Downey told him "he had Art's approval to sell a competitive mat." (Id. )

In contrast to Defendants' account of these events, Ecore asserts that Downey never had permission to disclose Ecore's proprietary information to Pliteq or to use that information to sell Pliteq's GenieMat product in competition with Ecore. (Pl.'s SJ Br. 14-15; Pl.'s SJ Reply 9-12; Dodge 8/22/16 Dep. 111-116.) Regarding the email chain Downey forwarded on September 29, 2010, Dodge testified that at the time, he did not even read the last paragraph of the earliest forwarded email. (Dodge 8/22/2016 Dep. 114-16.) Dodge further testified that his response to Downey referred to the competing Regupol-Impacta product referenced in the most recent forwarded email. (Id. at 117.) According to Ecore, it did not know that Pliteq existed until mid-July 2011. (Dodge 10/25/2012 Dep. 112, Pl.'s SJ Reply Ex. B.) Specifically, on July 13, 2011, Ecore's vice president of operations sent Dodge an email asking: "Do you know anything about a company called Pliteq? They sell sound underlayment under the name GenieMat™ RST02." (Pl's SJ Reply Ex. C.) The same day, Dodge forwarded this inquiry to another Ecore employee and asked: "Who is this?" (Id. ) In response, the employee told Dodge: "We have never heard of them. They are out of Toronto. Here is the website...." (Id. ) Dodge then replied: "See if we can do a background check to see who owns this Co.?" (Id. )

According to Ecore, as soon as Dodge learned of Downey's activities through Pliteq, he immediately terminated the Consulting Agreement and "any actual or apparent authority of [Downey] and CSR to act on behalf of Ecore." (Pl.'s SJ Reply 12, Exs. C.)

6. The Related Litigation

a. The Ontario Proceedings

In February 2011, Downey filed an action against Ecore in Ontario, Canada (the "Ontario Proceedings"), alleging that Ecore "failed to honour an oral promise [the alleged October 2001 'Agreement'] to 'reasonably compensate' him for his assignment of the [ISI invention." (Ontario Ct. App. Op. ¶ 25; Downey Stmt. of Claim 8, Defs.' SJ Ex. P.) In the Ontario Proceedings, Downey sought "damages, or in the alternative, rescission of his assignment of the invention[ ] and an accounting of profits by Ecore." (Ontario Ct. App. Op. ¶ 25.)

Ecore filed a motion to stay or dismiss the Ontario Proceedings on the ground that under the forum selection clause of the Confidentiality Agreement, the courts of Pennsylvania had exclusive jurisdiction over the action. (Id. ¶ 26.) The motion judge denied Ecore's motion, finding that although Downey's claims arose out of and related to his business relations with Ecore, and would otherwise fall within the scope of the Confidentiality Agreement, "Downey never received consideration for executing the Confidentiality Agreement and is not personally bound by its terms, including the [forum selection clause] contained therein." (Ontario Sup. Ct. Op. ¶¶ 37, 41.) The motion judge rejected Ecore's argument that Downey's consideration for the Confidentiality Agreement was the access to proprietary information and the compensation that he received, through CSR, under the Consulting Agreement, (Id. ¶¶ 34-37.) According to the motion judge, "CSR, not Downey, [was] the party to the Consulting Agreement," and pursuant to that agreement, the confidential information and compensation was to flow to CSR. (Id. ¶ 35.)

On Ecore's appeal, the Ontario Court of Appeal reversed, ruling that the Confidentiality Agreement was supported by valid consideration and was binding upon Downey. (Ontario Ct. App. Op. 36, 59.) Construing the Consulting and Confidentiality Agreements together, and considering the factual circumstances under which they were executed, the Ontario Court of Appeals reasoned:

The motion judge erred in finding that Ecore accepted that CSR would receive both the Proprietary Information and the benefits flowing from Downey's relationship with Ecore. The wording of the agreements and the overall factual matrix reveals that the de facto relationship between the parties was between Ecore and Downey. It was Downey, not CSR, who committed to perform the consulting services. And it was Downey who would receive the benefits arising from the relationship with Ecore, whether directly or through the corporate vehicle of CSR.

(Id. ¶ 47.) The court further noted that the interpretation adopted by the motion judge would render the Confidentiality Agreement meaningless and lead to a commercially absurd result. (Id. ¶ 51.)

[O]n the motion judge's findings, neither Downey nor CSR is bound by the Confidentiality Agreement. Downey is not bound because, in the motion judge's view, there was no consideration for the agreement. And CSR is not bound because it is not a party to the agreement. On this interpretation, Ecore is deprived of the very protection of its intellectual property for which it bargained.

(Id. ¶ 52.)

b. The Re-labeling Case

On May 18, 2012, Ecore filed a separate action in this District against Downey, Pliteq, and Dart Advantage Warehousing, Inc. ("Dart"), alleging claims of reverse passing off and false advertising in violation of the Lanham Act, 15 U.S.C. § 1125(a), and a claim of common law unfair competition. (Compl., Ecore Int'l, Inc. v. Downey , No. 12-2729 (E.D. Pa.) (the "Re-labeling Case"), ECF No. 1, Defs' SJ Ex. Z.) The Re-labeling Case centered on Ecore's allegations that Pliteq and Downey, using Dart's employees and warehouse, obtained shipments of Ecore's rubber underlayment products, removed the Ecore labels and re-labeled the products as Pliteq's, then re-packaged the products for shipment to Pliteq's customers. (Id. ¶¶ 11, 34, 39.) Ecore's complaint and accompanying motion in the Re-labeling Case sought, inter alia , damages, a temporary restraining order, and preliminary and permanent injunctive relief. (Re-labeling Case, ECF Nos. 1, 2.).

Ultimately, Ecore, Downey, and Pliteq entered into a settlement agreement, effective July 2, 2015, resolving "all Claims asserted in the Action, including the Remaining Claims" (the "July 2, 2015 Agreement").

(July 2, 2015 Agmt. 2.) The July 2, 2015 Agreement defines the "Claims" as "Ecore's claims asserted in the Action." (Id. at 1.) The "Action" is defined as Ecore's lawsuit "alleging reverse passing off and false advertising under [the Lanham Act] and common law unfair competition, for, among other things, the rebranding of Ecore's QT - Resilient Base Mat ... as the Downey Defendants' goods and additional statements relating to the Downey Defendants' sales of goods." (Id. at 1.) Ecore's "Injunctive Claims" are defined as those seeking to restrain Defendants from "(1) using, offering for use, displaying the content of, or engaging in any act likely to cause confusion, mistake, or (2) misleading as to the origin and source of Plaintiff's goods, or (3) misrepresenting the nature, characteristics, or qualities thereof, or (4) otherwise reverse passing off Plaintiff's goods as the Downey Defendants' goods." (Id. at 1-2.) Ecore's "Remaining Claims" refer to the additional relief sought, including disgorgement, damages, and attorneys' fees. (Id. at 2.)

Pursuant to the July 2, 2015 Agreement, Downey and Pliteq agreed to permanently refrain from re-labeling Ecore's products, unless permitted by a future written agreement, and the parties agreed to a dismissal of the Re-labeling Case with prejudice. (Id. ) The parties' Joint Stipulation of Dismissal With Prejudice was filed with the court on July 7, 2015. (Re-labeling Case, ECF No. 82.) Both the July 2, 2015 Agreement and the Joint Stipulation include language stating that nothing therein "shall affect the claims and counterclaims pending in [Case No. 11-6843]." (July 2, 2015 Agmt. ¶ 3; Re-labeling Case, ECF No. 82.)

B. Relevant Procedural History

Ecore filed its initial Complaint in Case No. 11-6843 on November 1, 2011. (ECF No. 1.) Defendants filed an Answer to the Complaint on February 6, 2012. (ECF No. 18.) On March 2, 2012, Defendants filed a Motion to Dismiss Or, In the Alternative, Stay Case No. 11-6843 pursuant to principles of comity pending a decision by the Ontario Court of Appeal in the Ontario Proceedings. (ECF No. 20.) On March 30, 2012, Case No. 11-6843 was stayed and placed in civil suspense pending a decision by the appellate court in the Ontario Proceedings. (ECF No. 23.)

On September 7, 2012, after the Ontario Court of Appeal issued its decision, the parties filed a Joint Motion To Remove From Civil Suspense. (ECF No. 24.) Case No. 11-6843 was restored to the active docket on September 19, 2012. (Sept. 19, 2012 ECF Entry (Court only).) On October 11, 2012, Defendants filed Counterclaims against Ecore and Dodge. (ECF No. 31.) Ecore and Dodge then filed a Motion to Dismiss certain of the Counterclaims pursuant to Federal Rules of Civil Procedure 12(b)(6) and 12(b)(1). (ECF No. 35.) Defendants filed an opposition to the Motion to Dismiss on December 12, 2012; Ecore and Dodge filed a Reply on January 4, 2013. (ECF Nos. 37, 38.) On June 5, 2014, Case No. 11-6843 and the Re-labeling Case were jointly referred to Magistrate Judge Richard A. Lloret for settlement purposes. (ECF No. 41.)

On July 14, 2015, we approved the parties' Stipulation permitting Ecore to file an Amended Complaint and withdrawing Ecore's Motion to Dismiss Defendants' Counterclaims. (ECF No. 48.) Ecore filed its Amended Complaint the same day, asserting claims against all Defendants for violation the Lanham Act, 15 U.S.C. § 1125 (Count I), common law unfair competition (Count II), and misappropriation of trade secrets (Count III); against Downey and CSR for breach of the Consulting and Confidentiality Agreements (Count IV) and breach of restrictive covenant (Count VI); and against Downey for interference with actual and prospective contractual relations (Count V). The Amended Complaint added new allegations in support of Ecore's Lanham Act claim that were not alleged in the original Complaint. (Compare Am. Compl. ¶¶ 38-69, 80-89, with Compl. ¶ 38-65, ECF No. 1.) The new allegations allege that Defendants "doctored" reports of tests conducted on Ecore's products, by changing the names of the tested products, the manufacturers, and the report dates, to make it appear that the test reports applied to Pliteq products. (Am. Compl. ¶¶ 61-69, 86-88.)

On August 13, 2015, Defendants filed their Answer to the Amended Complaint, asserting the following Counterclaims:

• by Downey against Ecore for breach of the October 2001 "Agreement" (Countercl. I), quantum meruit/unjust enrichment (in the alternative to Countercl. I) (Countercl. II), infringement of the '430 Patent (Countercl. XII), and infringement of the '029 Patent (Countercl. XIII);

• by CSR against Ecore for breach of the Consulting Agreement (Countercl. III) and quantum meruit/unjust enrichment (in the alternative to Countercl. III) (Countercl. IV);

• by Downey and CSR against Ecore for promissory estoppel (Countercl. V), and against Ecore and Dodge for fraudulent inducement (Countercl. VI);

• by Pliteq against Ecore and Dodge for tortious interference with contract (Countercl. VII) and tortious interference with prospective contract (Countercl. VIII); and

• by Pliteq against Ecore for false advertising in violation of the Lanham Act (Countercls. IX, X), common law unfair competition (Countercl. XI), and false marketing (Countercl. XIV).

(ECF No. 50.)

On April 8, 2016, Ecore filed a Motion for Leave to File a Second Amended Complaint (ECF No. 58); Defendants filed an opposition to the Motion on April 18, 2016. (ECF No. 60.) On April 19, 2016, after conducting a status conference with the parties, the Court issued an Order denying Ecore's Motion for Leave to File a Second Amended Complaint. (ECF No. 62.) On April 26, 2016, Ecore filed Case No. 16-1993, alleging in its Complaint claims against Downey for conversion of the '029 Patent and underlying intellectual property (Count I), and against Pliteq for infringement of the Reissue Patent (Count II). On May 23, 2016, Ecore filed a Motion to Consolidate Case Nos. 16-1993 and 11-6843. (ECF No. 63.) The cases were consolidated by Order dated June 15, 2016. (ECF No. 64.)

On August 11, 2016, Downey and Pliteq filed a Motion, pursuant to Rule 12(b)(6), to Dismiss Ecore's conversion and patent infringement claims asserted as Counts I and II in Case No. 16-1993. (ECF No. 70.) Subsequently, Defendants filed a Motion for Judgment on the Pleadings as to portions of Ecore's Lanham Act and unfair competition claims asserted in Case No. 11-6843. (ECF No. 86.) Defendants' Motion to Dismiss and Motion for Judgment on the Pleadings were both denied. (ECF Nos. 132, 131.)

II. LEGAL STANDARD

Under Federal Rule of Civil Procedure 56(a), summary judgment is proper "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." A dispute is "genuine" if there is a sufficient evidentiary basis on which a reasonable jury could return a verdict for the non-moving party. See Kaucher v. County of Bucks , 455 F.3d 418, 423 (3d Cir. 2006) (citing Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). "[A] factual dispute is material only if it might affect the outcome of the suit under governing law." Id.

Where the nonmoving party bears the burden of proof at trial, the moving party may identify an absence of a genuine issue of material fact by showing the court that there is no evidence in the record supporting the nonmoving party's case. Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; UPMC Health Sys. v. Metro. Life Ins. Co. , 391 F.3d 497, 502 (3d Cir. 2004). If the moving party carries this initial burden, the nonmoving party must set forth specific facts showing that there is a genuine issue for trial. See Fed. R. Civ. P. 56(c) ("A party asserting that a fact ... is genuinely disputed must support the assertion by ... citing to particular parts of materials in the record...."); see also Matsushita Elec. Indus. Co., v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (noting that nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts" (citation omitted) ). "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no 'genuine issue for trial,' " Matsushita , 475 U.S. at 587, 106 S.Ct. 1348 (citation omitted).

When deciding a motion for summary judgment, the court must view the facts and inferences in the light most favorable to the nonmoving party, and must not resolve factual disputes or make credibility determinations. See Big Apple BMW, Inc. v. BMW of North America, Inc. , 974 F.2d 1358, 1363 (3d Cir. 1992), cert. denied , 507 U.S. 912, 113 S.Ct. 1262, 122 L.Ed.2d 659 (1993). However, "unsupported assertions, conclusory allegations, or mere suspicions" are insufficient to overcome a motion for summary judgment. Schaar v. Lehigh Valley Health Servs., Inc. , 732 F. Supp. 2d 490, 493 (E.D. Pa. 2010) (citing Williams v. Borough of W. Chester , 891 F.2d 458, 460 (3d Cir. 1989) ). "[A] mere 'scintilla of evidence' in the nonmovant's favor does not create a genuine issue of fact and the non-movant may not rest on speculation and conjecture in opposing a motion for summary judgment." Ramara, Inc. v. Westfield Ins. Co. , 814 F.3d 660, 666 (3d Cir. 2016) (internal quotation marks and citations omitted). Courts must not resolve factual disputes or make credibility determinations. Siegel v. Transfer, Inc. v. Carrier Express, Inc. , 54 F.3d 1125, 1127 (3d Cir. 1995). "The same standards and burdens apply on cross-motions for summary judgment." Allah v. Ricci , 532 F. App'x 48, 50 (3d Cir. 2013) (citing Appelmans v. City of Phila. , 826 F.2d 214, 216 (3d Cir. 1987) ). "When both parties move for summary judgment, '[t]he court must rule on each party's motion on an individual and separate basis, determining, for each side, whether a judgment may be entered in accordance with the Rule 56 standard.' " Auto-Owners Ins. Co. v. Stevens & Ricci Inc. , 835 F.3d 388, 402 (3d Cir. 2016) (quoting 10A CHARLES ALAN WRIGHT ET AL., FEDERAL PRACTICE & PROCEDURE § 2720 (3d ed. 2016) ).

III. DISCUSSION

A. Downey's Breach of Contract Claim (Countercl. I)

Under Pennsylvania law, a party alleging breach of contract "must establish '(1) the existence of a contract, including its essential terms, (2) a breach of a duty imposed by the contract, and (3) resultant damages.' " Ware v. Rodale Press, Inc. , 322 F.3d 218, 225 (3d Cir, 2003) (quoting CoreStates Bank, N.A. v. Cutillo , 723 A.2d 1053, 1058 (Pa. Super. Ct. 1999) ).

Ecore and Downey both seek summary judgment on Downey's counterclaim for breach of the alleged October 2001 "Agreement." In their competing Motions, the parties dispute: (1) whether an oral agreement existed, with sufficiently definite terms, obligating Ecore to separately compensate Downey for the ISI invention and Assignment; (2) whether the alleged oral agreement is supported by consideration; and (2) whether the statute of limitations bars Downey's claim under the alleged agreement.

Defendants contend that there are no genuine issues of material fact regarding the existence of the October 2001 "Agreement," which, according to Defendants, "supersede[d] the Confidentiality Agreement with respect to the assignment of the ISI invention." (Defs.' SJ Opp. 28.) In support of their position, Defendants cite to Downey's assertion that his execution of the Assignment constituted acceptance of Dodge's offer (on behalf of Ecore) to reasonably compensate Downey for the invention and Assignment. (Id. at 29.) Defendants contend that Dodge repeatedly reaffirmed the alleged agreement, including in writing in his October 1, 2007 email, which stated: "This confirms our understanding that your agreement to sign the authorization for the reissue of the '723 patent does not negate DRI's responsibility to reasonably compensate you thereunder."

(Defs.' SJ Ex. I; Downey 1/3/17 Decl. ¶¶ 14-15, 17-19.)

According to Defendants, "Ecore's promise to provide reasonable compensation for the assignment is valid consideration, as evidenced by the fact that both parties manifested their mutual assent to be bound by the terms of the October 2001 Agreement, as well as their understanding of such terms." (Defs.' SJ Opp. 29.) Defendants argue that "Ecore received as consideration clear title to the ISI invention as a result of the parties entering into the October 2001 Agreement." (Id. at 30.) Defendants contend that the alleged agreement "is a valid, enforceable contract" under Pennsylvania law even though it omits the amount of the compensation. (Defs.' SJ Opp. 28-29.) Defendants also contend that "it is disputed that the term "Proprietary Information" in the Confidentiality Agreement covers the ISI invention"; that "the agreement ... on its face does not bind Downey himself, only CSR"; that the Confidentiality Agreement only applied during Downey's employment; and that "Downey was never employed by DRI or Ecore because the [Consulting Agreement] was between Ecore and CSR." (Id. ) Finally, Defendants argue that Downey's claim is timely under several tolling doctrines.

Ecore argues that Downey cannot establish the existence of the alleged contract "because there was never an agreement to compensate him for the Assignment above and beyond the funds he received ... under the Consulting Agreement." (Pl.'s SJ Opp. 9.) Ecore points to Dodge's testimony that Ecore "never" agreed to separately compensate Downey for the ISI invention and assignment, and "had no duty or obligation to compensate Mr. Downey for something he was legally obligated to do pursuant to his employment agreement." (Dodge 8/22/16 Dep. 88.) Ecore disputes Defendants' characterization of Dodge's October 1, 2007 email, which, according to Dodge, referred only to "[t]he bonus compensation that [Downey] was and had historically been receiving." (Id. at 93.) Moreover, Ecore argues, Downey confirmed the absence of any agreement when he referred, in his March 22, 2011 email, to "the proposal for Ecore compensating me for my patent." (Pl.'s SJ Reply Ex. D.) Ecore argues that the alleged oral agreement is, at most, an unenforceable "agreement to agree" because it omits essential terms, namely, the amount and timing of Downey's compensation. (Pl.'s SJ Opp. 11.) Ecore further argues that the alleged agreement is unsupported by consideration because Downey was already required to assign the ISI invention and Patents under the Confidentiality Agreement, which the Ontario Proceedings determined is enforceable against Downey. Finally, Ecore contends that Downey's claim is time-barred, and that none of the equitable doctrines cited by Defendants are applicable in this case to toll the four-year statute of limitations.

For the reasons discussed below, we find that the alleged October 2001 "Agreement" is not a valid, enforceable contract. We further find that even if the alleged oral contract existed and was enforceable, Downey's claims are barred by the statute of limitations. Accordingly, summary judgment will be granted in favor of Ecore and against Downey with respect to Counterclaim I.

1. Existence and Terms of the Alleged Oral Agreement

The party relying on an alleged oral contract-in this case, Downey-has the burden of proving its existence. See Edmondson v. Zetusky , 674 A.2d 760, 764 (Pa. Commw. Ct. 1996). "To establish the existence of an agreement one must show that: (1) both parties have manifested an intention to be bound by the terms of the agreement; (2) the terms of the agreement are sufficiently definite to be specifically enforced; and, (3) there is mutuality of consideration." Redick v. Kraft, Inc. , 745 F. Supp. 296, 300 (E.D. Pa. 1990) (citing Channel Home Ctrs. v. Grossman , 795 F.2d 291, 298-99 (3d Cir. 1986) ); see also Szymanski v. Sacchetta , No. 10-2336, 2012 WL 246249, at *4 (E.D. Pa. Jan. 26, 2012) (setting forth elements of enforceable contract). "For a contract to be enforceable, the nature and extent of the mutual obligations must be certain, and the parties must have agreed on the material and necessary details of their bargain." Lackner v. Glosser , 892 A.2d 21, 30 (Pa. Super. Ct. 2006). "[A] contract may be manifest orally, in writing, or as an inference from the acts and conduct of the parties." Meyer, Darragh, Buckler, Bebenek & Eck, P.L.L.C. v. Law Firm of Malone Middleman, P.C. , 635 Pa. 427, 137 A.3d 1247, 1258 (2016) (quoting J.F. Walker Co., Inc. v. Excalibur Oil Grp., Inc. , 792 A.2d 1269, 1272 (Pa. Super. Ct. 2002) ); see also Orta v. Con-Way Transp. , No. 02-1673, 2002 WL 31262063, at *1 (E.D. Pa. Oct. 8, 2002) ("Pennsylvania recognizes and enforces oral agreements." (citation omitted) ).

"Under Pennsylvania law, 'where the facts are in dispute, the question of whether a contract was formed is for the jury to decide.' " Quandry Sols. Inc. v. Verifone Inc. , No. 07-097, 2009 WL 997041, at *5 (E.D. Pa. Apr. 13, 2009) (quoting Ingrassia Constr. Co. v. Walsh , 337 Pa.Super. 58, 486 A.2d 478, 482 (1984) ). "However, '[t]he question of whether an undisputed set of facts establishes a contract is a matter of law.' " Id. (quoting Mountain Props., Inc. v. Tyler Hill Realty Corp. , 767 A.2d 1096, 1101 (Pa. Super. Ct. 2001) ); see also Legendary Art, LLC v. Godard , 888 F. Supp. 2d 577, 585 (E.D. Pa. 2012) ("The question of whether an undisputed set of facts establishes a contract is typically one of law, but where the facts are in dispute, the question is for the jury to decide." (citing Szymanski , 2012 WL 246249, at *4 ) ).

"Given that the intent of the parties to be bound is a requisite element of contract formation, 'oral contracts make it particularly difficult to extricate the matters of law from the questions of fact. Nevertheless, the allegation that an oral contract exists does not automatically entitle a plaintiff to a jury trial.' " Bennett v. Itochu Int'l, Inc. , Nos. 09-1819, 09-4123, 2012 WL 3627404, at *15 (E.D. Pa. Aug. 23, 2012) (quoting Quandry , 2009 WL 997041, at *5-6 ), aff'd 572 F. App'x 80 (3d Cir. 2014). "Contract formation is a matter of law ripe for determination by the Court if a binding contract could not exist under the undisputed set of facts." Id. (citing Quandry , 2009 WL 997041, at *5 ). "The [c]ourt must determine whether a reasonable jury, considering the parties' undisputed actions and words, could find that they formed a binding oral contract. That inquiry may be resolved at the summary judgment stage." Id. ; see also Quandry , 2009 WL 997041, at *6 (noting that court can determine, based on undisputed facts, whether oral contract was formed as a matter of law); Landan v. Wal-Mart Real Est. Bus. Trust , No. 12-926, 2015 WL 1491257, at *8 (W.D. Pa. Mar. 31, 2015) (finding that the undisputed evidence compelled the conclusion that the parties did not manifest the intent to be bound).

In determining the existence of an alleged oral contract, the threshold inquiry is whether the parties manifested mutual intent to be bound by the terms of the agreement, Guzzi v. Morano , No. 10-1112, 2013 WL 4042511, at *10 (E.D. Pa. Aug. 8, 2013) ; see also ATACS Corp. v. Trans World Commc'ns, Inc. , 155 F.3d 659, 665-66 (3d Cir. 1998) ("While typically analyzed in terms of offer and acceptance, the decisive inquiry in contract formation is the manifestation of the parties to the terms of the promise and to the consideration for it." (internal quotation and citation omitted) ). " 'In assessing intent, the object of the inquiry is not the inner, subjective intent of the parties, but rather the intent a reasonable person would apprehend in considering the parties' behavior.' " Landan , 2015 WL 1491257, at *6 (quoting Am. Eagle Outfitters v. Lyle & Scott Ltd. , 584 F.3d 575, 582 (3d Cir. 2009) ); see also Legendary Art , 888 F. Supp. 2d at 585 (same). In cases involving oral contracts, " 'courts must look to surrounding circumstances and course of dealing between the parties in order to ascertain their intent.' " Legendary Art , 888 F. Supp. 2d at 585 (quoting Szymanski , 2012 WL 246249, at *4 ); see also Bennett , 2012 WL 3627404, at *16 (noting that where an alleged contract is " 'wholly or partially composed of oral communications, the precise content of which are not of record, courts must look to the surrounding circumstances and course of dealing between the parties in order to ascertain their intent.' " (quoting Mountain Props. , 767 A.2d at 1101 ) ).

"While in some instances an exchange of e-mails, and other oral communications between parties, may be sufficient to establish a contract, such exchanges do not always rise to the level of enforceable agreements." Reynolds Packaging KAMA, Inc. v. Inline Plastics Corp. , No. 08-1902, 2011 WL 5089500, at *8 (M.D. Pa. Oct. 25, 2011) (internal citation omitted). The party relying upon an alleged oral contract must do more than show "preliminary negotiations or an agreement to enter into a binding contract in the future; to succeed, the party must prove that a mutual intent to be bound manifested, even though it was not memorialized in writing." Bennett , 2012 WL 3627404, at *16 ; see also Reynolds , 2011 WL 5089500, at *8 ("Pennsylvania courts agree that '[a]n agreement to agree is incapable of enforcement.' " (quoting Highland Sewer and Water Auth. v. Forest Hills Municipal Auth. , 797 A.2d 385, 390 (Pa. Commw. Ct. 2002) ) ). "Thus, the mere statement of an aspirational goal to reach some future agreement is not an enforceable contract in Pennsylvania." Reynolds , 2011 WL 5089500, at *8 (citing Channel Home Ctrs. , 795 F.2d at 298 ; see also ATACS Corp. , 155 F.3d at 666 ("[I]t is well established that evidence of preliminary negotiations or a general agreement to enter a binding contract in the future fail as enforceable contracts because the parties themselves have not come to an agreement on the essential terms of the bargain and therefore there is nothing for the court to enforce.").

As to the second element of contract formation - sufficiently definite terms - Pennsylvania has adopted the Restatement (Second) of Contracts. Reed v. Pittsburgh Bd. of Pub. Educ. , 862 A.2d 131, 135 (Pa. Commw. Ct. 2004). The Restatement provides:

(1) Even though a manifestation of intention is intended to be understood as an offer, it cannot be accepted so as to form a contract unless the terms of the contract are reasonably certain.

(2) The terms of a contract are reasonably certain if they provide a basis for determining the existence of a breach and for giving an appropriate remedy.

(3) The fact that one or more terms of a proposed bargain are left open or uncertain may show that a manifestation of intention is not intended to be understood as an offer or as an acceptance.

Restatement (Second) of Contracts § 33 (1981) ; see also Lackner , 892 A.2d at 30 ("An enforceable contract requires, among other things, that the terms of the bargain be set forth with sufficient clarity." (citation omitted) ). "Incompleteness of terms is one of the primary reasons statements of preliminary negotiations are not deemed offers." Legendary Art , 888 F. Supp. 2d at 586 (quoting Reed , 862 A.2d at 135 ). Moreover, "in oral agreements, vague statements that fail to include material terms, are indicia that agreements are too uncertain to be enforced." Sloan v. Frascella , No. 12-3609, 2013 WL 4433366, at *3 (E.D. Pa. Aug. 16, 2013) (collecting cases finding agreements too indefinite to be enforced). "The more important the uncertainty, the stronger the indication is that the parties do not intend to be bound." Restatement (Second) of Contracts § 33, cmt. f (1981).

The fact that an agreement omits an essential term, such as price, "does not vitiate contract formation if the parties otherwise manifested their mutual assent to the agreement and the terms of that agreement are sufficiently definite," ATACS Corp. , 155 F.3d at 667 (citations omitted). However, "[w]here ... there is no agreement or even a discussion as to any of the essential terms of an alleged bargain, such as time or manner of performance, or price or consideration, the 'agreement' is too indefinite for a party to reasonably believe that it could be enforceable in an action at law." Lackner , 892 A.2d at 31 (italics in original). Moreover, as a matter of law, courts "may not provide a reasonable term where an essential term is left open." Sloan , 2013 WL 4433366, at *3 (citing Morris v. Ace Med. Co. , No. 95-1271, 1996 WL 69400, at *6 (E.D. Pa. Feb. 16, 1996)aff'd , 96 F.3d 1433 (3d Cir. 1996) ).

Applying the foregoing principles to the undisputed evidence in this case, we find that the alleged October 2001 "Agreement" is not an enforceable contract. First, no reasonable fact finder could conclude that the parties manifested the intent to be bound by the alleged agreement. In reaching this conclusion, we accept Downey's assertion that at the time of the Assignment, Dodge told him he would be "reasonably compensated" for assigning the ISI invention to Ecore. However, Dodge's October 2001 statement-construed in context with the circumstances and content of the parties' previous and subsequent course of dealings and communications-establishes, at most , that the parties' expected future negotiations for adjustments to Downey's compensation under the Consulting Agreement to consider his contributions to the ISI invention. The parties' October 2001 communications, assuming they occurred as Downey claims, fall far short of what would be necessary for a jury to find the existence of an enforceable contract. See Lackner , 892 A.2d at 31-32 (affirming trial court's grant of summary judgment to defendant where evidence of record was "woefully inadequate" to establish that alleged promise of future compensation for patent assignment constituted an enforceable oral agreement). Moreover, the existence of the alleged oral agreement is belied by the rather extensive written - and undisputed - evidence of the parties' communications and course of dealing.

The evidence, which is exhaustively recounted above, reflects that when the parties intended to enter into binding agreements-such as the Consulting and Confidentiality Agreements-they did so in writing. For example, during their November 2006 compensation negotiations, Downey stated: "I think we have already outlined what is close to an agreement. We actually need to have something written down that makes sense to both of us." (Pl.'s SJ Ex. T.) It was also the practice of both parties to even memorialize the ter