Nova Design Technologies, Ltd. v. Walters
875 F. Supp. 2d 458
E.D. Pa.2012Background
- Nova alleges sandpaper-trigger invention for heat packs; '157 Patent issued 2005 to Matthew Walters.
- Nova and Omni Therm entered a Confidential Disclosure Agreement in 1998; Nova sent trigger samples for evaluation.
- Omni later sold assets including the '157 Patent to CMV in 2006; Guerra joined CMV.
- Nova asserts corporate and individual defendants engaged in misappropriation, concealment, and inventorship disputes; bifurcation separated counts for summary judgment.
- Plaintiff seeks correction of inventorship (Count VI) and various tort and trade secret claims; several counts are narrowed or withdrawn during litigation.
- Court grants in part, granting individual defendants’ summary judgment on some tort claims and full grant as to corporate defendants on several counts; correction of inventorship remains contested.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Gist of the action bar | Gist doctrine should not bar claims tied to confidential CDA duties. | Tort claims arise from contract duties under the CDA and are barred. | Gist of the action doctrine bars tort claims against Guerra and Walters. |
| Trade secret misappropriation vs. PUTSA timing | Corporate defendants misused Nova’s trade secrets; PUTSA may apply post-2004. | No corporate defendant knew of confidential info or used it improperly; PUTSA preemption applies. | Trade secret claim against corporate defendants dismissed; PUTSA applies to post-2004 acts; no preemption issue for pre-2004 acts. |
| Trade secret misappropriation against Dale Walters | Walters misappropriated Nova’s trade secrets. | Insufficient evidence Walters learned or used confidential info in breach of trust. | Count V against Dale Walters dismissed for insufficient evidence. |
| Correction of inventorship standing | Nova has standing via confirmatory assignment and financial interest in the patent. | Nova lacks standing to pursue inventorship. | Nova has standing; trial on correction of inventorship proceeds. |
| Corporate defendants’ liability for fraudulent concealment | CMV/Respironics concealed breaches and aided Guerra by hiring him. | No duty to speak; no fiduciary relationship with Nova; concealment not shown. | Counts III and related fraud claims dismissed; no duty to speak found. |
Key Cases Cited
- Bohler-Uddeholm Am., Inc. v. Ellwood Grp., Inc., 247 F.3d 79 (3d Cir. 2001) (collateral misappropriation not barred by contract if not covered by NDA)
- eToll, Inc. v. Elias/Savion Adver., Inc., 811 A.2d 10 (Pa. Super. Ct. 2002) (fraud claims may be barred if rooted in contractual duties unless collateral)
- Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d 1292 (Fed. Cir. 2002) (conception and inventorship standards under patent law)
- Sandt Tech., Ltd., v. Resco Metal & Plastics Corp., 264 F.3d 1344 (Fed. Cir. 2001) (contemporaneous documents as corroboration in inventorship cases)
- Werwinski v. Ford Motor Co., 286 F.3d 661 (3d Cir. 2002) (restricts liability under interpretive state law principles when undecided by higher court)
- First Health Group Corp. v. National Prescription Administrators, Inc., 155 F. Supp. 2d 194 (M.D. Pa. 2001) (illustrates treatment of confidential information in preemption context)