Optos, Inc. v. TOPCON MEDICAL SYSTEMS, INC.
2011 U.S. Dist. LEXIS 22263
| D. Mass. | 2011Background
- Optos, Inc. sues Schafer and Topcon alleging breach of contract, tortious interference, theft of trade secrets, and unfair and deceptive trade practices.
- Schafer signed a Confidentiality/Non-Solicitation Agreement in 2008 and again in 2009; the 2009 agreement includes confidentiality, non-solicitation, and a Massachusetts governing law and forum provision.
- Optos alleges Schafer used a confidential customer list and aided Topcon in a plan to recruit Optos customers (the so‑called Topcon Liberation Plan).
- Optos asserts Schafer’s conduct breached the 2009 agreement and that Topcon knowingly benefited from Schafer’s conduct, causing injury in Massachusetts.
- Optos seeks a preliminary injunction restricting use/dissemination of information, contact with Optos customers, and Schafer’s employment at Topcon pending litigation.
- Defendants move to dismiss for lack of personal jurisdiction or to transfer venue; Optos cross-moves for injunctive relief; the court denies dismissal/transfer and grants in part the injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of Schafer's consent to Massachusetts jurisdiction | Massachusetts clause binding Schafer should be enforced. | Choice-of-law/jurisdiction should be California-based due to policy; contract considerations questioned. | Schafer consent to Massachusetts jurisdiction is enforceable under Massachusetts law. |
| Proper choice of law for Schafer's jurisdictional consent | Massachusetts law governs the choice-of-law clause in the agreement. | California policy may govern due to trade secret concerns. | Massachusetts law applies; the choice-of-law clause is enforceable. |
| Personal jurisdiction over Topcon | Topcon knowingly contributed to breach of contract and targeted Massachusetts customers, satisfying relatedness. | Topcon’s contacts are too attenuated; cannot be subject to MA jurisdiction. | The court finds specific personal jurisdiction over Topcon. |
| Venue propriety and potential transfer | Massachusetts is proper due to contract forum and in-forum injury. | California venue would be more convenient for some parties. | Venue is proper in this district; transfer denied. |
| Likelihood of success and irreparable harm for trade secrets claim (preliminary injunction). | Optos will likely prove trade-secret misappropriation by Schafer/Topcon and harm is irreparable. | No conclusive showing of trade-secret misappropriation or irreparable harm at this stage. | Preliminary injunction granted in part: enjoin use/dissemination, require accounting/return of information, and restrict certain customer contact during litigation; some restrictions narrowed. |
Key Cases Cited
- Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (U.S. 1972) (consent-to-jurisdiction framework; enforceability of forum-selection clauses)
- Astro-Med, Inc. v. Nihon Kohden Am., Inc., 591 F.3d 1 (1st Cir. 2009) (relatedness under tortious interference; in-forum injury can satisfy relatedness)
- M/S Bremen v. Zapata Off-Shore Co., 407 U.S. 1 (U.S. 1972) (consent to jurisdiction and forum-selection considerations)
- Edwards v. Arthur Andersen LLP, 44 Cal.4th 937 (Cal. 2008) (California policy on restraints; trade secrets carve-outs)
- Jet Spray Cooler, Inc. v. Crampton, 361 Mass. 835 (Mass. 1972) (definition of trade secret and secrecy factors)
- Barnes v. Berklee Coll. of Music, Inc., 733 F. Supp. 2d 204 (D. Mass. 2010) (personal jurisdiction showing and standard in D. Mass.)