Alpha Pro Tech, Inc. v. VWR International LLC
984 F. Supp. 2d 425
E.D. Pa.2013Background
- APT manufactures CRITICAL COVER protective apparel and owns related trade secrets embodied in a coated SBP method; VWR was APT’s exclusive US distributor under a 1996 two-document contract/operations framework featuring confidentiality obligations.
- APT claims its method and formula were proprietary, not public, and protected as trade secrets; VWR allegedly sought and obtained confidential information and later marketed competing products.
- In 2000, APT moved manufacturing to XXPC in China under an oral confidentiality regime with XXPC; APT maintained control over materials, supervision, and property rights related to its method.
- Around 2009–2010, VWR allegedly induced XXPC and Mr. Fu to manufacture products for VWR using APT’s trade secrets and then misrepresented product changes to customers to imply continuity with CRITICAL COVER® brands.
- APT filed a Second Amended Complaint with five counts: PUTSA misappropriation, breach of contract/confidentiality, unjust enrichment, tortious interference with XXPC contract, and Lanham Act false advertising and false designation of origin; the court granted in part and denied in part the motion to dismiss.
- Court disposition: Counts II and IV are dismissed; Counts I, III, and V survive; XXPC deemed not a necessary party under Rule 19.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| PUTSA trade secrets exist and were misappropriated by VWR | APT pleads coated SBP method as a trade secret and VWR’s use constitutes misappropriation | VWR argues the information may not satisfy trade secret status and has challenged the sufficiency of allegations | Sufficient at pleadings stage; trade secret status and misappropriation viable |
| Breach of contract/confidentiality | Distribution Contract/Operations Document prohibit disclosure/use of confidential information, including trade secrets | Contract language limits confidentiality to information transmitted under the agreement and does not cover third-party disclosures | Count II survives as pleaded; contract language does not plainly bar the confidentiality claim |
| Unjust enrichment when contract exists | Unjust enrichment available alongside contract claims for the benefit VWR allegedly retained | Contract precludes unjust enrichment; potential preemption by PUTSA | Count III survives at pleading stage but may be preempted if PUTSA proves trade secrets; not precluded now |
| Lanham Act false advertising and designation of origin viability | VWR’s marketing misleads customers into thinking VWR products are CRITICAL COVER® products | Advertising may be literally true or not misleading; complexity of product identity and consumer confusion factors | Count V survives; likelihood of confusion arguments are fact-intensive and not resolved on motion to dismiss |
Key Cases Cited
- Bimbo Bakeries USA, Inc. v. Botticella, 613 F.3d 102 (3d Cir. 2010) (trade secret factors and secrecy measures guidance; case law cited for PUTSA analysis)
- Nova Chems., Inc. v. Sekisui Plastics Co., Ltd., 579 F.3d 319 (3d Cir. 2009) (PUTSA trade secret framework and case-specific application)
- Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001) (factors for likelihood of confusion in Lanham Act false designation of origin)
- Acumed LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199 (3d Cir. 2009) (restatement-based privilege/independently actionable standard for tortious interference)
- Reading Radio, Inc. v. Fink, 833 A.2d 199 (Pa. Super. 2003) (independently actionable conduct concept in Pennsylvania law)
- Janney Montgomery Scott, Inc. v. Shepard Niles, Inc., 11 F.3d 399 (3d Cir. 1993) (joinder rules and Rule 19(a) analysis framework)