04-1291
ON-LINE TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
BODENSEEWERK PERKIN-ELMER GMBH,
PERKIN-ELMER CORP., PERKIN-ELMER INC.,
SICK UPA GMBH, and SICK, A.G.,
Defendants-Appellees.
Gabriel Berg, Berg & Androphy,
of
Edward
T. Colbert, Kenyon & Kenyon, of
Appealed
from:
Judge Janet
Bond Arterton
04-1291
ON-LINE TECHNOLOGIES, INC.,
Plaintiff-Appellant,
v.
BODENSEEWERK PERKIN-ELMER GMBH,
PERKIN-ELMER CORP., PERKIN-ELMER
INC.,
SICK UPA GMBH, and SICK, A.G.,
Defendants-Appellees.
___________________________
DECIDED:
___________________________
Before MICHEL, Circuit Judge,
ARCHER, Senior Circuit Judge, and BRYSON, Circuit Judge.
BRYSON, Circuit
Judge.
The dispute in this
case involves a device known as a long-path gas cell, which is used in an
infrared spectrometer to determine the composition of gases such as emissions
from industrial plants. The spectrometer
captures the gas to be tested and directs a beam of infrared light through the
chamber containing the gas. After the
light has passed through the chamber, a detector measures the absorption of the
light, from which the properties of the gas can be determined.
It has long been
understood in the art that lengthening the light path in the gas cell chamber
can result in a more accurate absorption reading. One problem encountered in long-path gas
cells, however, was that over the long path created by multiple reflections of
the light beam within the chamber, the quality of the beam would become
degraded, primarily because of astigmatism induced by the mirrors used in the
system. Astigmatism is an optical
aberration created when an optical element or system has a different focal
length in each of two orthogonal planes.
K.D. Moeller, Optics 448 (1988); H.P. Brueggemann,
Conic Mirrors 15 (1968).
In 1995, appellant
On-Line Technologies, Inc., obtained a patent, U.S. Patent No. 5,440,143 (“the
’143 patent”), on a method for increasing the length of the light path in a gas
cell while correcting for astigmatism and thereby reducing the diffusion of the
beam of light. On-Line subsequently
brought an action in the United States District Court for the District of
Connecticut against a group of related parties, Bodenseewerk
Perkin-Elmer GmbH; Perkin-Elmer Corp.; Perkin-Elmer Inc.; Sick UPA GmbH; and
Sick, A.G. (collectively, “Perkin-Elmer”).
On-Line Techs., Inc. v. Bodenseewerk
Perkin-Elmer GmbH,
No. 3:99CV2146 (D. Conn. filed
In its complaint,
On-Line alleged that Perkin-Elmer had made, used, and sold a device that
infringed the ’143 patent. In addition,
On-Line asserted several state law claims, including misappropriation of trade
secrets, violation of the state law of unfair competition, breach of contract,
and fraud. In support
of the state law claims, On-Line alleged that, pursuant to a nondisclosure
agreement, it had revealed its gas cell design to Perkin-Elmer scientists in
anticipation of a possible business arrangement between the companies relating
to On-Line’s device. Rather than
pursuing a joint enterprise, however, Perkin-Elmer allegedly copied what it had
learned from On-Line and incorporated the disclosed technology into its
commercial product, thus breaching the nondisclosure agreement and violating
the state law prohibitions against unfair competition, theft of trade secrets,
and fraud.
After discovery, the district court
disposed of the patent infringement claim by granting summary judgment of noninfringement. The
court also granted summary judgment in favor of Perkin-Elmer on all of
On-Line’s state law claims, finding that On-Line had failed to show that there
was a disputed issue of material fact with respect to any of those claims. Finally, the court dismissed one of the
defendants, Sick, A.G., for lack of personal jurisdiction. On-Line appeals all three aspects of the judgment.
I
The district
court’s grant of summary judgment of noninfringement
as to claim 1 of the ’143 patent was premised on the court’s claim
construction. On-Line contends that the
district court erred in construing the claim and therefore erred in entering
summary judgment.
Claim 1 of the ’143
patent recites as follows (emphasis added):
A folded-path radiation absorption
gas cell comprising: an enclosure having first and second ends, and defining a
substantially closed chamber therewithin; spaced input
radiation and output radiation windows formed through said first end of said
enclosure and aligned on a first axis; a concave reflective field surface
extending at least partially between said windows at said first end of said
enclosure; a pair of substantially spherical, concave reflective objective
surfaces at said second end of said enclosure disposed in confronting
relationship to said field surface, said objective surfaces being aligned
side-by-side on an axis parallel to said first axis and in optical registry
with said windows, at least one of said objective surfaces having a
cylindrical component added thereto to increase coincidence of focii in two orthogonal planes, thereby to maximize the
energy throughput characteristic of said cell; and means for the introduction
and withdrawal of gas into and from said chamber of said enclosure.
The invention to
which claim 1 is directed is an improvement on a type of gas cell known as a
“White cell.” A White cell uses several
mirrors that are aligned to make the light follow a long path as it passes
through the test chamber. In the
invention, two mirrors are placed side by side at the opposite end of the main
chamber from a third mirror. A beam of
light enters the chamber and is repeatedly reflected off the three mirrors
until it reaches an exit point. Because
the mirrors reflect the light beam back and forth across the chamber multiple
times, the path of the beam is much longer than the distance from one end of the
chamber to the other.
The ’143 patent
sought to address the problem of astigmatic diffusion of the light beam passing
through the cell. The solution proposed
by the ’143 patent was to shape the secondary mirrors in a manner that would
counteract the astigmatism induced by reflections from the spherical mirrors
used in White cells and thus keep the beam of light focused during its passage
through the cell. ’143 patent, col. 4,
ll. 52-62. To achieve that purpose, each
claim of the ’143 patent required the mirrors to have “substantially spherical,
concave reflective objective surfaces . . . at least one of said objective
surfaces having a cylindrical component added thereto to increase coincidence
of focii in two orthogonal planes . . . .”
On-Line asserted
that Perkin-Elmer’s commercial long-path gas cells infringed claim 1 of the
’143 patent. In
particular, On-Line contended that Perkin-Elmer’s cells used objective mirrors
of the sort recited in the claim to correct for astigmatism. In the district court, Perkin-Elmer did not
dispute that its accused gas cells used objective mirrors shaped to correct for
astigmatism. Perkin-Elmer argued,
however, that its objective mirrors had toroidal
surfaces, not “substantially spherical” surfaces “having a cylindrical
component added thereto,” as required by claim 1 of the ’143 patent. For that reason, Perkin-Elmer argued, its gas
cells were not within the scope of the patent, either literally or under the
doctrine of equivalents. In essence,
Perkin-Elmer’s argument was that a toroidal surface
is different from a substantially spherical surface with a cylindrical
component added to it. Because On-Line
not only did not claim toroidal mirror surfaces but
specifically omitted them from its claims, Perkin-Elmer contended that On-Line
had dedicated surfaces of that shape to the public. The district court agreed with Perkin-Elmer
and held that Perkin-Elmer’s toroidal surface was not
covered by the ’143 patent.
In explaining its
claim construction ruling, the district court noted that the specification
described the contour of the spherical objective mirrors as “approach[ing] toroidal.” ’143 patent, col. 4, ll. 8-12. The court stated that “[b]ecause
mirrors with a contour which only ‘approaches toroidal’
cannot be said to be actual toroidal mirrors, toroidal objective mirrors are not spherical objective
mirrors with cylindrical corrections.”
In support of that conclusion, the court cited extrinsic evidence,
including testimony from the inventors, which the court characterized as
establishing that “spherical objective mirrors with cylindrical corrections are
not the same as toroidal objective mirrors.” Because the court concluded that the claim
language excluded toroidal surfaces, the court held
that Perkin-Elmer’s gas cells did not literally infringe claim 1 of the ’143
patent. Moreover, because the court
concluded that toroidal surfaces were disclosed but
not claimed in the ’143 patent, the court invoked the principle that a
patentee’s disclosure of unclaimed subject matter bars application of the
doctrine of equivalents to that subject matter and held that On-Line could not
rely on the doctrine of equivalents to reach toroidal
mirrors such as Perkin-Elmer’s.
On appeal, On-Line contends that the
district court erred in ruling that objective mirrors having a toroidal surface are not within the scope of claim 1 of the
’143 patent. We agree with On-Line that,
properly construed, the reference to a “substantially spherical, concave
reflective surface . . . having a cylindrical component added thereto to
increase coincidence of focii in two orthogonal
planes” defines a set of curved surfaces that includes a toroidal
surface. We reach that conclusion
because the specification makes clear that the claim language referring to
spherical surfaces with cylindrical components includes toroidal
surfaces.
A toroidal
(or toric) surface is defined as a surface that is
“generated if an arc is rotated about an axis which lies in
the same plane as the arc, but which does not pass through its centre of
curvature.” M. Jolie,
The Principles of Ophthalmic Lenses 31
(3d ed. 1977). The classic example of a toroid is the shape generated when a circle is rotated
about a line that does not intersect the circle, which describes a torus, a figure resembling a doughnut or tire. A toroidal surface
is the shape of a segment of the surface of a toroid.
Although the parties agree that the
term “toroidal” has a well-understood definition,
neither party suggests that the term “substantially spherical, concave
reflective surface . . . having a cylindrical component added thereto,” used in
the claims of the ’143 patent, has a precise and well-established meaning in
the art. Rather, the evidence before the
trial court indicates that the reference to spheres and cylinders is borrowed
from thin lens theory, and that a lens characterized as spherical with a
cylindrical component is one with an optical function achieved by “stacking”
spherical and cylindrical lenses. The
evidence shows that the same nomenclature is sometimes used, albeit with some
lack of precision, to refer to reflective surfaces having similar optical
properties to such stacked lenses, even though reflective surfaces cannot be
stacked in the same manner as lenses.
Because the phrase
“substantially spherical . . . having a cylindrical component added thereto”
has no precise and generally understood meaning in the art as applied to
reflective surfaces, we look to the intrinsic evidence, in this case the
specification, for guidance as to the meaning of that language as used in the
patent. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1324-25 (Fed. Cir. 2002) (“The words used in the claim are interpreted
in light of the intrinsic evidence of record . . . . The intrinsic evidence may provide context
and clarification about the meaning of claim terms. ‘Such intrinsic evidence is the most
significant source of the legally operative meaning of disputed claim
language.’” (citations omitted)); Genentech,
Inc. v. Wellcome Found. Ltd., 29 F.3d 1559, 1563
(Fed. Cir. 1994) (“Since a definition of [the critical claim] phrase cannot be
extracted from the claims themselves, we look to the specification for
guidance.”); see also United States v. Adams, 383 U.S. 39, 49
(1966) (“[C]laims are to be construed in the light of
the specifications and both are to be read with a view to ascertaining the
invention.”).
Although in this
case, as in others, “the guidance [in the specification] is not provided in
explicit definitional format,” Irdeto
Access, Inc. v. Echostar Satellite Corp., No.
04-1154, slip op. at 8 (Fed. Cir.
Second, even if the
specification were less explicit in equating the term “toroid”
with a generally spherical surface having a cylindrical component added
thereto, the reference to the preferred embodiment as having mirrors with toroidal surfaces would give rise to a very strong
inference that the claim should be construed to include such surfaces. As this court has explained before, “a claim
interpretation that excludes a preferred embodiment from the scope of the claim
‘is rarely, if ever, correct.’” Globetrotter
Software, Inc. v. Elan Computer Group, Inc., 362
F.3d 1367, 1381 (Fed. Cir. 2004), quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996); see also Int’l Rectifier Corp. v. IXYS Corp.,
361 F.3d 1363, 1371 (Fed. Cir. 2004); Modine
Mfg. Co. v.
The district court
interpreted the reference in the specification to a “contour that approaches toroidal,” ’143 patent, col. 4, line 12, as indicating that
the recited surface could include a surface that approximates a toroidal shape, but could not include the toroidal shape itself.
We disagree with that interpretation.
From the description of the mirror surfaces of the preferred embodiment
as “toroids” four lines later in the specification,
we think it clear that the words “approaching toroidal”
were not meant to exclude curves designed to be toroidal
in shape, but simply to indicate that the surfaces recited in the invention
were intended to include all curves that closely approximate toroidal, including a toroidal
surface itself. Indeed, as a matter of
manufacturing tolerances, it is impossible to make a real-world device with a
reflecting surface that is perfectly toroidal, just
as it is impossible to make a reflecting surface that is a perfect spheroid or
a perfect paraboloid.
For that reason, even mirrors that are designed to be toroidal, such as the mirrors in Perkin-Elmer’s
device, will necessarily merely “approach” the ideal toroidal
shape, although they may come very close.
Accordingly, we do not agree with the district court that the reference
in the specification to a surface that “approaches toroidal”
was meant to exclude a device having a surface that is characterized in the art
of optical engineering as “toroidal.”
Finally, the patent
describes the effect of adding a cylindrical component to a generally spherical
mirror as being “to reduce the effective radius of curvature in one plane, thus
enabling light incident on the reflective surface to better approach the focus
in the orthogonal plane,” ’143 patent, col. 4, ll. 60-62, and “to increase
coincidence of focii in two orthogonal planes,” id.,
col. 5, ll. 51-52. A toroidal
surface “has two principal radii of curvature corresponding to its two
principal curves,” M. Jolie, supra, at 31; see
also Jurgen R. Meyer-Arendt,
Introduction to Classical & Modern Optics 120 (3d ed. 1989) (“A toric surface has two radii of curvature (different in the
two principal meridians)”); Daniel Malacara, Optical
Shop Testing 754 (2d ed. 1992). That
characteristic makes toroidal surfaces useful in
counteracting astigmatism. See
Eugene Hecht, Optics 211-12 (3d ed. 1998). Thus, while the claim language in the ’143
patent does not either expressly include a toroidal
surface or exclude other similar surfaces, the characteristics and function of
the surface described in the specification and the claims are consistent with
the characteristics and function of a toroidal
surface.
The district court
relied on extrinsic evidence that the court interpreted as supporting its claim
construction. Extrinsic evidence,
however, cannot be used to alter a claim construction dictated by a proper
analysis of the intrinsic evidence. See
Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (“When an analysis of intrinsic evidence resolves
any ambiguity in a disputed claim term, it is improper to rely on extrinsic
evidence to contradict the meaning so ascertained.”); Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs.,
Ltd., 292 F.3d 1363, 1374 (Fed. Cir.
2002); Bell & Howell Document Mgmt. Prods.
Although the
evidence showed, and On-Line’s witnesses acknowledged, that the mathematical
description of a toroid differs from that of a spherocylinder, On-Line offered evidence that a person of
skill in fabricating optics would understand the expression “sphere with
cylindrical correction” or a sphere “having a cylindrical component” to refer
not to a mathematical concept but to the type of optical correction obtained by
stacking thin lenses, one having a spherically curved surface and another
having a cylindrically curved surface.
According to On-Line’s expert, a person of ordinary skill in the art
would understand the term “sphere with cylindrical correction,” as a way of describing
the curved surfaces used in On-Line and Perkin-Elmer’s
commercial products, i.e., toroidal surfaces. The evidence in the summary judgment record
therefore provides further support for On-Line’s contention that the surface of
the objective mirrors recited in claim 1 of the ’143 patent includes toroidal surfaces, as that term is understood by persons of
skill in the pertinent art, as opposed to the manner in which it is used by
mathematicians.
To be sure,
On-Line’s inventors acknowledged that as a mathematical concept a toroidal surface is not the same thing as a spherical
surface with a cylindrical component added to it. That is not to say, however, that the
inventors regarded toroidal surfaces as falling
outside the broader claim language, which referred to “substantially spherical”
surfaces “having a cylindrical component added thereto.” As On-Line’s expert explained, “the
sphere/cylinder convention does not specify the exact mathematical surface . .
. . A person of ordinary skill in the
art would understand the term ‘sphere with cylindrical correction’ as a terse
and natural way to describe the modestly curved surfaces of the objective
mirrors in On-Line’s or Perkin-Elmer’s gas cell [both
of which are toroidal].” Moreover, while acknowledging that the
mathematical definition of a toroid differs from that
of a spheric cylinder, co-inventor Robert Carangelo testified that the claim language “substantially
spherical . . . having a cylindrical component added” includes a toroidal surface.
The other co-inventor, David Wright, testified to similar effect,
stating that the claim language was intended to cover a range of conic
sections, including ellipsoids and toroids, all of
which would have the same shape near the axis “to within the order of machining
tolerance.” Finally, even the technical
article on which Perkin-Elmer relies to demonstrate
that there is a mathematical distinction between toroidal
and spherocylindrical surfaces points out that the
distinction is extremely subtle for most applications and that toroidal surfaces “are sometimes also [referred to] as spherocylindrical surfaces.” Carmen Menchaca
& Daniel Malacara, Toroidal
and Spherocylindrical Surfaces, 25 Applied Optics
3008 (1986).
Because of the lack
of precision in the language used to define the claimed surfaces of the
objective mirrors, this case was made more difficult than it needed to be, and
the district court was required to invest considerable effort in trying to
ascertain the meaning of the critical claim language. While the district court conducted a careful
analysis of the claim language in light of the specification and the extrinsic
evidence, we are nonetheless persuaded, particularly in light of the
specification, that the district court’s claim construction was too restrictive
and that a surface designed to be toroidal is within
the scope of claim 1 of the ’143 patent.
Accordingly, because the summary judgment of noninfringement
was based on an erroneous claim construction, we vacate the judgment of noninfringement and remand the case for further proceedings
on the remaining issues pertinent to On-Line’s claim of infringement.
II
Invoking the district court’s
supplemental jurisdiction, On-Line raised a number of state law claims,
including claims that Perkin-Elmer had
misappropriated five trade secrets relating to On-Line’s gas cell, in violation
of the Connecticut Uniform Trade Secrets Act, Conn. Gen. Stat. § 35-50 et
seq. (“CUTSA”). The district court
concluded that no reasonable jury could find that Perkin-Elmer
had misappropriated any of On-Line’s trade secrets. On-Line challenges that ruling with respect
to two of the trade secrets that it alleges Perkin-Elmer
misappropriated: the long-path gas cell
and the Norton igniter source.
A. The Long-Path Gas
Cell Trade Secret Claim
In the district court, On-Line alleged that Perkin-Elmer misappropriated confidential information
relating to the design of On-Line’s long-path gas cell. The district court ruled that On-Line failed
to prove actionable misappropriation because the information at issue was
disclosed in the ’143 patent and because On-Line failed to point to any
evidence that Perkin-Elmer had improperly used any
information relating to the gas cell prior to the issuance of the patent. Based on the summary judgment record, the
district court concluded that undisputed evidence showed that Perkin-Elmer did not begin to incorporate the features of
On-Line’s gas cell into its own product until 1996, after the issuance of the
’143 patent. Although On-Line referred
to evidence regarding Perkin-Elmer’s conduct before
the issuance of the ’143 patent, the district court held that none of that
evidence was probative of misappropriation because the conduct in question all
constituted legitimate evaluation of On-Line’s product pursuant to the
nondisclosure agreement entered into by On-Line and Perkin-Elmer
in 1994. As to On-Line’s claim that not
all of the secrets relating to its gas cell were disclosed in the ’143 patent,
the court found that claim to be unsupported by any evidence.
After
a patent has issued, the information contained within it is ordinarily regarded
as public and not subject to protection as a trade secret. See Restatement
(Third) of Unfair Competition § 39 cmt. f (1995) (“Information that
is generally known or readily ascertainable through proper means . . . by others to whom it has potential economic
value is not protectable as a trade
secret. Thus, information that is
disclosed in a patent or contained in published materials reasonably
accessible to competitors does not qualify for protection [as a trade
secret].”); Conmar Prods. Corp. v. Universal Slide Fastener Co., 172 F.2d 150, 155-56 (2d Cir. 1949) (L. Hand). Moreover, the nondisclosure agreement in this
case specifically provided that the obligation of confidentiality created by
the agreement “will not apply to any information . . . which becomes publicly
available other than by breach of this agreement.” Consequently, On-Line cannot claim that Perkin-Elmer’s activities following the issuance of the
’143 patent constituted misappropriation of confidential information unless the
activities related to information not disclosed in the patent.
In
the district court, On-Line claimed that Perkins-Elmer had misappropriated
information relating to the design of the long-path gas cell and had used it to
build its own long-path gas cell prior to the issuance of the ’143 patent. The district court, however, concluded that
the evidence to which On-Line pointed did not create a genuine issue of
material fact on that issue, and we agree.
As characterized by the district court, the evidence showed that Perkin-Elmer took various steps to evaluate the On-Line
technology that it was considering buying, but did not show that Perkin-Elmer began building its own gas cell before
1996. Although On-Line asserts that the
evidence of Perkin-Elmer’s course of conduct with
respect to On-Line’s product shows that it made use of On-Line’s gas cell trade
secret before the issuance of the ’143 patent, On-Line’s general
characterizations do not satisfy the requirement that it point to specific
evidence sufficient to create a disputed issue of material fact. See Celotex
Corp. v. Catrett, 477
We
also reject On-Line’s argument that Perkin-Elmer’s
acts of copying and testing On-Line’s gas cell during the period covered by the
nondisclosure agreement were not authorized by the agreement and therefore
constituted misappropriation. As the
district court noted, On-Line did not present any evidence that Perkin-Elmer began to develop its own cell during the
period covered by the agreement or otherwise engaged in conduct prohibited by
the nondisclosure agreement. Instead,
the evidence relating to Perkin-Elmer’s conduct with
respect to the disclosed technology shows merely that Perkin-Elmer
tested and evaluated that technology, which was conduct contemplated by the
nondisclosure agreement. Moreover,
Robert Hoult, a Perkin-Elmer
scientist who visited On-Line’s facility following the execution of the
nondisclosure agreement, submitted an affidavit in which he averred that he had
learned nothing useful about On-Line’s gas cell that was not already evident
from On-Line’s nonconfidential marketing
brochure. On-Line did not offer evidence
to contradict Dr. Hoult’s representation. Because On-Line failed to demonstrate a
disputed issue of material fact with respect to the long-path gas cell trade
secret claim, we affirm the district court’s grant of summary judgment on that
issue.
B.
The Norton Igniter Source Trade Secret Claim
On-Line’s second
trade secret claim is that Perkin-Elmer
misappropriated the infrared light source and assembly used in the On-Line
spectrometer. On-Line uses a device
known as the Norton 301-T igniter to produce the infrared light beam that is
directed into its testing chamber. In
the district court, On-Line argued that Perkin-Elmer
learned of the Norton 301-T igniter during its visits to On-Line’s facility and
used that information to produce its own gas cell, which uses the same igniter
as a light source. The district court
concluded that the use of the Norton 301-T igniter as the light source was not
a trade secret because that use was publicly disclosed in a third party’s
patent, U.S. Patent No. 5,291,022 (“the ’022 patent”), which issued in March of
1994.
On appeal, On-Line
argues that although the use of the Norton 301-T igniter as a high-intensity
infrared radiation source was known, its use for that purpose in connection
with a long-path gas cell was not. It
was not the Norton 301-T igniter itself that was the protected trade secret,
On-Line argues, but rather the specific purpose to which it was put in
On-Line’s product. In
support of that argument, On-Line points to a report by On-Line’s expert, Dr.
Warren Vidrine, which described the difference
between the use of the Norton 301-T igniter in the ’022 patent and its use in
the On-Line and Perkin-Elmer devices. Specifically, On-Line points to Dr. Vidrine’s statement that On-Line and Perkin-Elmer
both “use metal mirrors to reflect radiation back to the source element to
reduce the amount of heat which would otherwise be wasted. The ’022 patent source design does not
include any reflective mirrors.”
Dr. Vidrine’s report does not suggest that the use of the
Norton 301-T igniter as an infrared radiation source in a long-path gas cell
constituted a trade secret. Instead, his
report is directed to the overall design of the source assembly. Moreover, the disclosure in the ’022 patent
of the uses to which a source such as the Norton 301-T ceramic igniter source
could be put was very broad. The ’022
patent addresses “the field of light sources, particularly those emitting in
the infrared wavelengths, and more particularly to infrared sources used in
analytical instruments such as infrared spectrometers.” ’022 patent, col. 1, ll. 5-9. It also explicitly refers to the Norton 301-T
igniter as a suitable light source.
On-Line also argued before the
district court that Perkin-Elmer misappropriated an
On-Line trade secret when it incorporated into its source assembly two reflective
surfaces similar to those that On-Line had developed to enhance and collimate
the infrared light beam directed into the testing chamber. In support of that
argument, On-Line offered Dr. Vidrine’s report, which
asserted that the igniter source assembly in Perkin-Elmer’s
devices, including a reflective cavity and a field mirror, was similar to the
source assembly in On-Line’s system.
The district court
held that On-Line’s evidence with regard to the source assembly claim did not
raise a disputed issue of material fact, and we agree. Although Dr. Vidrine
asserted that, in his opinion, Perkin-Elmer
“commenced to copy, adapt and prepare to take advantage of” features of the
On-Line source assembly, including the retroreflective
cavity, he did not cite evidence to support that assertion. Instead, Dr. Vidrine’s
assertion was based on his comparison of the optical elements in the source
assembly of the On-Line and Perkin-Elmer
instruments. With respect to the retroreflector, Dr. Vidrine
stated that one of Perkin-Elmer’s two products used a
“very similar retroreflector” having a “similarly
shaped reflective cavity,” and that the retroreflector
in the other Perkin-Elmer product, although “not a
simple copy” of On-Line’s design, “produced a functionally similar result.” Dr. Vidrine
inferred copying based on the fact that Perkin-Elmer
“rapidly adopted” a reflective cavity design. With respect to the field mirror, Dr. Vidrine did not claim that Perkin-Elmer’s
designs were identical to On-Line’s design, but asserted that Perkin-Elmer’s designs, like On-Line’s, were “good optical
engineering solutions” for matching a small hot area with the desired beam
characteristics of the respective instruments.
In support of its summary judgment motion, Perkin-Elmer offered affidavits from Dr. Hoult, in which he asserted that Perkin-Elmer
did not make use of anything he learned about On-Line’s source assembly as a
result of his visit to On-Line’s facility.
In particular, he stated that the optics in the source assembly of the Perkin-Elmer system were “what I would describe as
text-book,” that the combination of mirrors used in Perkin-Elmer’s
devices had been developed several years before his contact with On-Line and
had first been used in Perkin-Elmer infrared
spectrometers in 1989, that the arrangement of mirrors in the various source
assemblies is in essence the same as the arrangement of mirrors in an
automobile headlight, and that he did not learn from his visit to On-Line’s
facility that On-Line used a retroreflector in its
source assembly.
In
rebuttal, On-Line relied principally on a contemporaneous report by Dr. Hoult regarding his trip to On-Line’s facility. On-Line argued that the Hoult
trip report demonstrated that Dr. Hoult saw On-Line’s
source assembly during his visit. The
report described the source as follows:
Norton gas-igniter,
silicon carbide hairpin mounted on a cylinder with easy push-fit access from
the front top. Source hangs down so that
debris falls harmlessly away. Source collimation
appeared to be an off-axis parabola machined directly on the end of an aluminum
cylinder. No firm details of lifetime
for source.
That discussion of
the source housing (a cylinder with easy push-fit access from the front top)
could be interpreted to refer to the source assembly at issue in this
case. A reasonable jury could conclude
that the “off-axis parabola machined directly on the end of an aluminum
cylinder” describes a retroreflective cavity designed
to focus the radiation emitted by the Norton igniter, especially given that its
purpose is for “[s]ource collimation.”
Even accepting the
inference from the trip report that Dr. Hoult viewed
On-Line’s source assembly, On-Line’s evidence is insufficient to avoid summary
judgment because On-Line failed to address the assertions in Dr. Hoult’s affidavit that the mirror array in the source
assembly was “text-book” and that Perkin-Elmer had
used a similar combination of mirrors in a like instrument years earlier. Although On-Line argues that the earlier
device did not use a ceramic igniter as the energy source, there was no
evidence before the district court that the difference in the energy source
rendered On-Line’s source assembly sufficiently distinct to constitute a protectable trade secret.
Moreover, nothing in the Hoult trip report
suggests that the structure of the source assembly was unfamiliar to Dr. Hoult; in fact, the abbreviated description of the source
assembly in the trip report suggests the contrary. In any event, the mere description of the
source assembly in the Hoult trip report is
insufficient to overcome the evidence from Dr. Hoult
that the design of source assemblies of the sort used by On-Line was already
familiar to Perkin-Elmer and that the design of
On-Line’s source assembly was not a trade secret that Perkin-Elmer
misappropriated as a result of the visit to On-Line’s facility. As to that issue, On-Line is essentially
limited to Dr. Vidrine’s conclusory
assertion that Perkin-Elmer misappropriated On-Line’s
design, and such conclusory assertions by expert
witnesses are not sufficient to avoid summary judgment. See Schwing
GMBH v. Putzmeister Aktiengesellschaft,
305 F.3d 1318, 1326 (Fed. Cir. 2002); Applied Cos. v.
III
In addition to the
trade secret claims, On-Line raised state law claims of fraud, breach of
contract, and unfair trade practices.
The district court granted summary judgment for Perkin-Elmer
as to each of those claims. On-Line appeals as to each.
A. The Fraud Claim
The district court
rejected On-Line’s fraud claim on the ground that it fell within the scope of
CUTSA and was therefore preempted under CUTSA’s
preemption provision, Conn. Gen. Stat. § 35-57(a). On-Line argues that its claim is not
preempted because the facts on which its fraud claim is based differ from those
that support its misappropriation claim.
On-Line contends that its fraud claim is based on the proposed business
transaction being negotiated by the parties, rather than the misappropriation
of trade secrets. The district court
concluded otherwise, and we agree.
Section 35-57(a) of
the Connecticut General Statutes states that “[u]nless
otherwise agreed by the parties, the provisions of this chapter supersede any
conflicting tort, restitutionary, or other law of
this state pertaining to civil liability for misappropriation of a trade secret.” The preemptive effect of that statute is
limited by subsection (b), which states that it does not affect “[c]ontractual or other civil liability or relief that is not
based upon misappropriation of a trade secret,” among other things. Conn. Gen. Stat. §
35-57(b). On-Line contends that
its fraud claims are not based upon the misappropriation of a trade secret and
thus they are not preempted under section 35-57.
The district court
concluded that On-Line’s fraud claim was based on the theory that Perkin-Elmer’s allegedly fraudulent actions allowed it to
misappropriate On-Line’s trade secrets. In the fraud portion of its complaint, On-Line alleged that Perkin-Elmer had induced it to disclose a variety of trade
secrets. On-Line now contends
that the district court misunderstood its fraud allegations; in its brief
On-Line contends that its fraud claim “is related to the proposed business
transaction being negotiated by the parties,” and is not related to the
misappropriation of trade secrets. On-Line focuses in particular on Perkin-Elmer’s
termination of the licensing negotiations in November 1994 and Perkin-Elmer’s allegedly false statement that the
evaluation of On-Line’s technology was unsatisfactory.
The problem with
that characterization of the fraud claim is that it is unclear how that
statement—even if false—misled On-Line to its prejudice, see Paiva v. Vanech Heights
Constr. Co., 271 A.2d 69, 71 (Conn. 1970), except
perhaps to promote the furtive misappropriation of On-Line’s trade secrets by
suggesting that Perkin-Elmer was uninterested in the
technology when in fact Perkin-Elmer intended to copy
it. If that is the purpose suggested by
On-Line’s argument regarding the November 1994 false statement, it merely
demonstrates that the ultimate injury to which the alleged fraud was directed
was the misappropriation of On-Line’s trade secrets. In its brief, On-Line has not suggested any
other injury that On-Line suffered as a result of Perkin-Elmer’s
allegedly fraudulent conduct. The
district court therefore properly held that the fraud claim was preempted under
section 35-57.
B. The Breach of Contract Claim
The district court
granted summary judgment with respect to On-Line’s breach of contract claim on
the ground that the nondisclosure agreement between On-Line and Perkin-Elmer provided no greater protection than that
provided by CUTSA. Because the court
concluded that no reasonable jury could find a CUTSA violation, the court held
that there could be no breach of contract, either.
On-Line argues that
its breach of contract claim is different from its trade secret
misappropriation claim. On-Line,
however, does not suggest that if it failed to prove misappropriation of trade
secrets it would be nonetheless be entitled to relief on a breach of contract theory
for violating the covenant not to disclose trade secrets. Instead, in its brief in this court On-Line
focuses on the provision of the nondisclosure agreement that imposed on Perkin-Elmer the obligation to return “all copies” of
information that On-Line designated as confidential. Because Perkin-Elmer
retained some records containing confidential materials relating to the On-Line
spectrometer, On-Line argues that the district court improperly granted summary
judgment on the breach of contract claim.
The district court
addressed On-Line’s argument with regard to Perkin-Elmer’s
alleged failure to return documents and held that On-Line did not raise the
failure to return documents as a basis for liability in the breach of contract
claim in its complaint. Because On-Line
failed to raise that claim in a timely manner, it was not error for the
district court to reject On-Line’s effort to raise that aspect of the contract
as a basis for liability at the summary judgment stage.
C.
The Unfair Trade Practices Claims
The district court
held that On-Line’s unfair trade practices claims are preempted by CUTSA. In its complaint, On-Line raised claims
against Perkin-Elmer under the Connecticut Uniform
Trade Practices Act. Specifically,
On-Line alleged that Perkin-Elmer had improperly used
trade secrets obtained from On-Line to make its own products and had
represented to a variety of parties that On-Line’s trade secrets were its
own. The district court concluded that
those allegations constituted nothing more than CUTSA violations and that the
unfair trade practice claims were therefore preempted by section 37-57(a).
On-Line argues that
because Perkin-Elmer gained access to its trade
secrets under the guise of offering a license agreement, its claims are not
preempted by CUTSA. We cannot
agree. All of On-Line’s allegations
relate to the misappropriation of trade secrets, as is clear from On-Line’s
complaint, which relies upon Perkin-Elmer’s alleged
acquisition and use of On-Line’s confidential information. As a result, we agree with the trial court
that CUTSA preempts On-Line’s unfair trade practices claims.
IV
On-Line contends that the district
court erred when it dismissed Sick, A.G., from the lawsuit based on a lack of
personal jurisdiction. In support of its
argument, On-Line points to several events: a visit by a Sick, A.G.,
representative to On-Line’s facility in East Hartford, Connecticut; a
nondisclosure agreement with On-Line signed by a representative of Sick, A.G.;
a report prepared by a representative of Sick, A.G., relating to his visit to
the On-Line facility; the receipt by Sick, A.G., of a copy of On-Line’s
business plan; and a subsequent inquiry by Sick, A.G., to On-Line.
The trial court concluded that the
evidence offered in support of On-Line’s claim of personal jurisdiction over
Sick, A.G., was insufficient to establish personal jurisdiction under
Connecticut’s long-arm statute, Conn. Gen. Stat. § 33-929. The court found that none of the allegations
regarding Sick, A.G., were sufficient to constitute tortious
conduct under Conn. Gen. Stat. § 33-929(f), solicitation of business under
Conn. Gen. Stat. § 33-929(f)(2), or a business
transaction under Conn. Gen. Stat. § 33-929(e).
On-Line has not specifically challenged any of those findings, but instead
has made only a general assertion that the district court’s ruling is
“incorrect and inequitable.” Because
On-Line has failed to point out any specific errors in the district court’s
analysis, and because the court’s jurisdictional ruling is not otherwise
flawed, we uphold the district court’s ruling that it lacked personal
jurisdiction over Sick, A.G.
* *
* * *
In summary, we affirm the grant of
summary judgment with respect to On-Line’s state law claims and with respect to
the order dismissing Sick, A.G., on grounds of lack of personal
jurisdiction. As to the patent claim, we
vacate the grant of summary judgment of noninfringement
and remand that issue to the district court for further proceedings.
Each party shall bear its own costs
for this appeal.
AFFIRMED IN PART, VACATED IN PART,
and REMANDED.