Dow Chemical Canada Inc. v. HRD Corp.
909 F. Supp. 2d 340
D. Del.2012Background
- Dow moves for summary judgment on HRD’s remaining counterclaims: ownership of two Dow patent applications under the JDA and misappropriation of trade secrets.
- JDA allocated Developments between Dow and HRD; Dow owned other Developments, HRD owned Developments linked to PE wax products and processes.
- Activity Period and connection to JDA govern which inventions are HRD’s Developments; reduction to practice during the JDA is required.
- HRD asserts ownership of the ’897 and ’217 applications as Developments; Dow contends no connection to the JDA work.
- Court previously granted partial summary judgment for Dow on the contract claim and now resolves the remaining counterclaims and related discovery issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of the ’897 and ’217 applications | HRD: exclusive development makes these Developments | Dow: Developments must be reduced to practice during the JDA | Dow entitled to summary judgment; no JDA connection shown |
| Misappropriation of trade secrets | HRD: Dow used HRD secrets via patent filings | HRD failed to identify trade secrets and show disclosure | HRD claim fails; misappropriation not established |
| Admissibility of Citron Declaration | HRD relies on late expert declaration | Late declaration prejudicial and should be struck | Citron Declaration struck; not considered in decision on merits |
| Identification of trade secrets | HRD identified Trade Secrets 13, 23, 24, 40 | HRD’s identifications are too vague or conclusory | HRD fails to provide adequate particularity for Nos. 24, 40, 23; No trade secrets |
Key Cases Cited
- Azur v. Chase Bank, USA Natl. Ass’n, 601 F.3d 212 (3d Cir. 2010) (summary judgment standard for material facts in civil cases)
- Mosaid Technologies Inc. v. Samsung Electronics Co., Ltd., 362 F.Supp.2d 526 (D.N.J. 2005) (post-deadline expert reports may be disregarded in summary judgment)
- O’Brien v. Progressive N. Ins., Co., 785 A.2d 281 (Del. 2001) (contract interpretation is a question of law)
- Elliott Assocs., L.P. v. Avatex Corp., 715 A.2d 843 (Del. 1998) (interpretation of contract provisions; avoid meaningless terms)
- Imax Corp. v. Cinema Technologies, Inc., 152 F.3d 1161 (9th Cir. 1998) (trade secret identification must be particular and refer to tangible material)
- Accenture Global Services GMBH v. Guidewire Software Inc., 581 F.Supp.2d 654 (D. Del. 2008) (misappropriation requires actual communication of trade secrets)