427 F.Supp.3d 152
D. Mass.2019Background
- Brady Esch was a Covidien marketing director who signed a 2009 Employment Agreement (non‑competition, non‑solicitation, confidentiality) and a Separation Agreement in 2013 that reaffirmed certain terms.
- After leaving Covidien, Esch formed Venclose and filed patent applications in 2014–2015 ('498 provisional, '338 utility, and a PCT) describing venous RF ablation technology.
- Covidien sued, alleging (1) failure to disclose "Inventions" to Covidien, (2) disclosure of Covidien confidential information in the patent applications, and (3) breach of the covenant of good faith and fair dealing.
- A nine‑day jury trial found Esch liable for breaching confidentiality under both agreements and awarded $794,892.24, but found no breach of the disclosure obligation or the covenant of good faith; several verdict questions (6–8) about reduction to practice were left unanswered.
- Post‑trial Covidien sought entry of judgment on confidentiality claims, declaratory judgment requiring assignment of any Inventions, prejudgment/post‑judgment interest, costs and attorneys’ fees, and a permanent injunction; Esch opposed parts of this relief.
- The court: entered judgment for Covidien on the confidentiality claims and awarded prejudgment/post‑judgment interest, costs and contractual attorneys’ fees (to be quantified under Rule 54); denied declaratory judgment that Esch must assign Inventions; denied a permanent injunction (finding no irreparable harm).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Preservation of objection to verdict form | Covidien preserved objections and later asked court to require answers to Q6–Q8 | Esch argued Covidien waived timely objection to verdict form structure | Court found Covidien adequately preserved its objection; motion procedurally sound |
| Declaratory judgment that Esch must assign any "Inventions" | Jury left assignment issues undecided; court should decide equitable question and declare assignment of any Inventions to Covidien | A jury verdict finding no disclosure implies there were no Inventions to assign; declaratory relief would conflict with jury findings | Denied — court concluded the jury's negative answer to disclosure (Q3) precludes declaring assignment and that Covidien's proposed reading would create an inconsistent verdict |
| Prejudgment/post‑judgment interest, costs, and attorneys’ fees | Entitled to prejudgment interest under Mass. Gen. Laws c.231 §6C; Covidien prevailed and contract entitles it to attorneys’ fees | Esch argued discretion to deny prejudgment interest because jury awarded present value and criticized fee request as overbroad | Awarded prejudgment and post‑judgment interest; costs awarded to Covidien; contractual attorneys’ fees allowed with amount to be submitted under Rule 54(d) |
| Permanent injunction | A permanent injunction should follow the preliminary injunction because Covidien prevailed and faces continued competitive harm from use of its confidential information | Esch argued money damages suffice; contest speculative irreparable harm | Denied — court found Covidien failed to show irreparable harm and that jury damages adequately remedied the injury |
Key Cases Cited
- Peckham v. Cont'l Cas. Ins. Co., 895 F.2d 830 (1st Cir. 1990) (verdict‑form objection waiver rule)
- Perdoni Bros., Inc. v. Concrete Sys., Inc., 35 F.3d 1 (1st Cir. 1994) (jury findings bind court on factual issues affecting equitable claims)
- Davignon v. Hodgson, 524 F.3d 91 (1st Cir. 2008) (courts should attempt to reconcile inconsistent verdicts)
- Sharp v. Hylas Yachts, LLC, 872 F.3d 31 (1st Cir. 2017) (jury instructions must be read in the context of the overall charge)
- Accusoft Corp. v. Palo, 237 F.3d 31 (1st Cir. 2001) (honoring contractual attorney‑fee provisions)
- Ira Green, Inc. v. Military Sales & Serv. Co., 775 F.3d 12 (1st Cir. 2014) (discretion in taxing costs when results are mixed)
- Spooner v. EEN, Inc., 644 F.3d 62 (1st Cir. 2011) (definition of the prevailing party)
- Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res., 532 U.S. 598 (2001) (standard for determining prevailing party)