*1 CONCLUSION the court is judgment of

The

AFFIRMED-IN-PART, REVERSED-

IN-PART, AND REMANDED.

COSTS

No costs. SIMPSONVILLE,

BBA NONWOVENS

INC., Reemay, Inc., and Fiberweb SA, Appel- Plaintiffs-Cross

lants, NONWOVENS,

SUPERIOR LLC and Trimble,

Lloyd E. Defendants-

Appellants. 02-1053, 02-1059 and 02-1101.

Nos. Appeals,

United States Court

Federal Circuit. Aug. 2002.

DECIDED: Denied Oct.

Rehearing *2 appellants. him plaintiffs-cross With P. Higgins

on the brief were John Bradley. Kirk T. *3 II, Mabry, Haynsworth

H. Sinkler Sam P.A., Greenville, Carolina, Boyd, South argued defendants-appellants. for With him on the brief were W. David Conner A. and Kevin Kauer. Of counsel on the L. brief were Albert Underhill and James Withers, Gould, P.C., D. Merchant & Minneapolis, MN. NEWMAN, LINN, DYK,

Before Judges. Circuit Opinion for the court filed Circuit Judge Dissenting opinion LINN. filed Judge Circuit DYK.

LINN, Judge. Circuit Nonwovens, Superior LLC and Lloyd (“Superior”) E. appeal Trimble denying Supe decision of the district court post-trial rior’s motions for judgment as (“JMOL”) matter of law and for a new trial. The judgment district court’s fol jury lowed a verdict in favor of Fiberweb (“Fiberweb France”) France SA on its claim in favor BBA secret (“BBA”) Simpsonville, Nonwovens Inc. on patent infringement Superior claim. appeals further the district court’s order permanently enjoining Superior from us ing, selling, disclosing or otherwise trade secrets of Fiberweb France. Ree may, (“Reemay”) cross-appeals Inc. denying district court’s order Reema/s motion trial. new Fiberweb France seeks modification of the district court’s percent order net placed appeal. pending sales be escrow Because the district court did not err in (jenying Superior’s Atkinson, Bird, motions for JMOL and William M. Alston & LLP, trial, Charlotte, Carolina, argued North a new and because the district court did not abuse its discretion in declining consolidator, using sometimes and wound on the Servo case or in for later conversion jury instruct products. into end order, forming the escrow we affirm 1 disputes, Three distinct relating to three technologies

distinct used in the manufac- BACKGROUND turing process, are at issue in appeal. First, Fiberweb France asserted that Su- BBA, France, Reemay, perior willfully«misappropriated its trade Superior are commercial manufacturers of technology. chamber Sec- spunbond nonwoven fabrics used in the ond, BBA asserted that willfully production of products, such as infringed 5,397,413 its U.S. Patent No. *4 sheets, filters, dryer carpet underlay. and (“the patent”) '413 appara- directed to an BBA, formerly known Fiberweb North as tus and method for producing a web of America, is affiliated with Fiberweb thermoplastic filaments, including claims Reemay, France and as all compa- three reciting a slot-draw attenuator with a coro- (a are BBA by Group nies owned PLC UK positioned na device to electrostatically corporation). charge Third, the filaments. Reemay as- serted that willfully misappropri- Superior was in early by formed ated its trade steam secret consolidator employees several former and consultants technology. France, of Fiberweb BBA and Reemay. employees former include These President BBA and Reemay brought against suit E. Lloyd Trimble and Vice-President Superior in the U.S. District Court for the Superior’s goal Scott Gessner. pro- was to District of September 6, South Carolina on duce nonwoven in competition fabric with 2000, alleging trade misappropria- France, BBA, Fiberweb Reemay. and patent and infringement. tion France was plaintiff later added as a The at issue relates to the misappropriation. trade secret Following manufacture of spunbond nonwoven fabric. expedited discovery, the district court on The manufacturing process begins with 9, August 2001 held a Markman hearing, polymer pellets that are melted and ex- 17, August and on issued Markman a through spinneret truded a long to form 1, 8, 9, ruling construing claims and 13 of polymer discrete The filaments. filaments patent. 20-31, BBA’s '413 On August are cooled with air “quench from cham- 2001, jury a trial was conducted. bers,” provide stretched to strength, elec- trostatically charged so the filaments don’t The jury returned a verdict in favor of together, deposited bunch onto a mov- claim, Fiberweb France on its trade secret ing “laydown belt” to a form nonwoven in favor BBA patent of on infringement bonded, (claims web of fabric. 1, 8, The is 13), web then 9, claim against but “Motion, parties (1975). Thus, 1. The have submitted a Re- public "the beneficial effects of questing Issuance Any Opinion of Written scrutiny upon justice” the administration of Under Seal or Without support Disclosure of Confi- presumption public a in favor of ac- id.; requesting dential Information.” judicial The motion cess to records. See Nixon v. opinion Communications, Inc., issuance this under seal is denied. Warner 435 U.S. open "Official records and (1978). documents to the 98 S.Ct. 55 L.Ed.2d 570 public However, are governmental the basic data the court has avoided the inclusion Cohn, operations.” Corp. Cox Broad. opinion v. any information marked 95 S.Ct. U.S. 43 L.Ed.2d 328 parties. confidential claim. The DISCUSSION Reemay on its misappropria- Superior’s jury found that Standard of Review France’s trade secrets tion of Fiberweb wanton, “willful, or reckless” and judg The denial of motion for $2,620,275.00. damages of actual awarded procedural of law a ment as a matter Superior’s in- further found jury The law, unique patent and thus we issue not was will- BBA’s '413 fringement of patent apply regional the law of the circuit where damages actual awarded ful and appeal from the district court would $50,000. Musland, normally Sjolund lie. v. See 1573, 1576, USPQ2d 1, 2001, the district court On November (Fed.Cir.1988). case, In this is the motions for JMOL or denied Fourth The Fourth Circuit re Circuit. awarded, trial, to the addition new views de novo a district court’s denial of jury, punitive found damages actual judgment motion for as a matter of law. $1,310,137.50 on Fiberweb damages of Tenn., Riese, L.P. P’ship S. Atl. Ltd. claim, and enhanced France’s trade secret (4th Cir.2002) (citing $50,000 patent on BBA’s damages of *5 Inc., Konkel v. Bob Evans Farms 165 F.3d The district court also fringement claim. (4th Cir.1999)). 275, to According 279 the enjoined Superior using from permanently Circuit, judgment a motion for as a Fourth France’s disclosing Fiberweb or otherwise law if a granted matter of should be dis the electro- using and from trade secrets determines, weighing trict court without patent. of BBA’s '413 On apparatus static considering credibility the evidence or the Superior, the district court motion of witnesses, of the that substantial evidence to stayed injunction the as Fiberweb support jury’s findings. does not the See imposed royal- a trade secret and France’s County Newberry, White v. 985 F.2d percent in which 10 ty procedure escrow (4th Cir.1993). 168, 172 placed were in escrow Superior’s net sales Superior oppose did not pending appeal. The denial of a motion for a new imposition injunction the as to the '413 procedural trial likewise is a issue not during appeal. patent Thus, patent unique apply law. we 50(b) appeal pur of this jurisdiction regional We have law circuit the Rule of the 1295(a)(1), where a suant to 28 U.S.C. issue as we do with the JMOL issue. raised for patent infringement Software, Harlequin claim was Inc. v. Southwest Inc., 1280, 1290, complaint, USPQ2d in the see Holmes first time 226 F.3d 56 (Fed.Cir.2000). 1161, Air Group, reviewing Inc. v. Vornado Circulation In 1168 —Inc., —, —, 50(b) 122 U.S. S.Ct. Sys., district court’s decision on Rule (2002), 1889, 1893, motion, 153 L.Ed.2d 13 includ Fourth Circuit law instructs that jurisdiction of the claims for ing pendent light we must “view all the evidence in the Roton misappropriation, party trade see prevailing secret most favorable to Works, Barrier, Stanley v. 79 F.3d in Inc. draw all reasonable inferences his or (Fed. USPQ2d 1816, Atl., 1112, 1116, 1819 37 her favor.” at 532. The S. 284 F.3d Cir.1996) (citing Special Rhone-Poulenc Fourth reviews a denial of a motion Circuit 50(b) Corp., v. 769 F.2d trial under Rule for abuse Chimiques ites SCM for new (Fed.Cir. Konkel, 1569, 1571, 873, 279; USPQ F.3d at 226 874 of discretion. See 165 1985)). Works, Bristol & Iron Inc. v. Bethle- Steel

1337 (4th 182, Corp., hem Steel or further contends that the record lacks Cir.1994). (i) substantial evidence of misappropriation (ii)

of a by Superior, trade secret apply Federal courts the trade se “willful, wanton, or reckless” misappropri- appropriate cret law of the state. See by Superior, ation support sufficient to Calco, Ltd., Corp. Water Techs. v. 850 F.2d jury’s verdict. (Fed.Cir. USPQ2d 1097, 1988). bar, In at the case the defendants- 1. Existence of Trade Secret

appellants principal place have a of busi argues that Fiberweb Carolina, ness reside South -and and/or (cid:127) prove France failed to at trial alleged misappro all acts of satisfied each of Carolina, priation occurred South thus statutory requirements for existence of apply we the trade secret law of the State a trade secret under South Studs, Carolina law. of South Carolina. See Sun Inc. v. In particular, Superior Assocs., Inc., contends Applied Theory that the 772 F.2d (Fed.Cir. record lacks substantial evidence showing 1985). France’s chamber tech

nology makes a “substantial difference interpretation Claim raises issues the efficiency process of a produc or the of law that this court reviews de novo. product” tion of a require and that Techs., Inc., Cybor Corp. v. FAS 39-8-20(5)(b) ments of Ann. S.C.Code (Fed. USPQ2d (Law.Co-op.Supp.2001) are not satisfied. Cir.1998) (en banc); Markman West According Superior, because Fiberweb *6 Inc., Instruments, 967, 979, view 52 F.3d France had the burden' of proving (Fed.Cir.1995) 1321, (en USPQ2d 34 1329 technology qualified as a trade un banc), 370, 1384, aff'd, 517 U.S. 116 S.Ct. law, der South Carolina see Louwndes (1996). 134 L.Ed.2d 577 Prods., Brower, 322, Inc. v. 259 S.C. 191 (S.C. 209,

S.Eüd 1972), and because evidence at trial Superior’s Appeals I. showed that quench Fiberweb France’s Superior appeals the district court’s de- chamber technology composed of a denying Superior’s cisions motions for elements, combination of well-known then JMOL or for a new trial regard with required Fiberweb France was to demon willful, wanton, Fiberweb France’s claim of strate pursuant “substantial difference” misappropriation or reckless of trade se- 39-8-20(5)(b). crets, and to BBA’s claim willful in- responds Fiberweb France that this ar- fringement patent. of the '413 We first gument was not before the district court address Fiberweb France’s trade secret merits, and is thus waived. On the Fiber- claim, patent and then discuss BBA’s web argues France its trade secret fringement claim.

technology composed is not in fact of a combination of known elements. Fiber- A. Fiberweb France’s Trade Secret web argues France that substantial evi- Superior argues that Fiberweb France dence of record establishes that each of failed to show existence of a trade quench individual elements of its secret under Superi- South Carolina law. chamber technology qualifies for trade se- veys §Ann. 39- a clear and definite protection meaning, under S.C.Code there is

cret 8-20(5)(a). for employing France ar- no occasion rules of statuto- further ” 8—20(5)(b) ry interpretation.... Ray Bell Constr. impose does not gues that 39— County, v. Sch. Dist. Co. Greenville requirement, asserted the additional (1998). S.C. 501 S.E.2d But secret, qualify as a trade Superior, that “plain language where the of the statute known elements must be a combination of equally logical interpre- lends itself to two a to “make substantial difference shown tations,” apply courts “must the rules of process produc- or the efficiency of statutory interpretation to the am- resolve product.” Finally, Fiberweb tion of a biguity and to discover the intent of the 39-8-20(5)(b) §if that even argues Assembly.” Kennedy General v. Ret. S.C. “substantial differ- imposes an additional 243, 247 Sys., 345 S.C. 549 S.E.2d evidence of requirement, ence” substantial (2001). testimony and documen- including record

tary evidence demonstrates that its governing South Carolina statutes require- satisfies this chamber secrets are modeled after the Uniform ment. (“UTSA”). Trade Secrets Act The UTSA phrase defines the “trade secret:” matter, briefly we As threshold (4) information, “Trade secret” means argu Fiberweb France’s waiver address formula, including pattern, compila- Although may ment. the court decline to tion, device, method, program, tech- “fairly address issues not raised” before nique, process or that: plain the trial court the absence of (i) independent derives economic val- Seidlitz, error, v. United States 589 F.2d ue, potential, being actual or from not (4th Cir.1978), the Fourth Circuit to, generally known being and not readi- application has endorsed the “liberal ly by proper by, ascertainable means 50(b)” Singer Dungan, v. Rule persons who can obtain economic Cir.1995). (4th See Harrison 828-29 use, from value its disclosure or Stores, Inc., Apparel Edison Bros. (4th Cir.1998). (ii) subject is the of efforts that are *7 plaintiffs at the close of moved for JMOL reasonable under the to circumstances evidence, of all of case and at the close the secrecy. maintain its challenging the of a trade existence secret (amended Unif. Trade Secrets Act 1 France. While as 1985). initially adopted South Carolina the argument in the district court was some UTSA, but later enacted the South Car- general, question what it did the raise the (“SCTSA”), olina Trade Secrets Act proven France had of whether Fiberweb to-130, §§ S.C.Code Ann. in 39-8-10 protectable the of a trade secret. existence Riedman, See Williams v. 339 S.C. standard, applicable In of the we light 28, 42 (App.2000). 529 S.E.2d n. 3 The decline to find waiver of the issue of expands SCTSA the definition of trade whether Fiberweb France satisfied the by adding types to the of informa- statutory requirements. may qualify tion that as a trade secret: (5) “Trade secret” means: begin analysis

We our with the lan (a) guage of the “If a lan statute. statute’s lim- including, information but not to, formula, guage plain unambiguous, pattern, compilation, and and con- ited (1998); device, method, Lawyer Thig Mark V. technique, olina program, pen, Age Discovery: A New Your Trade pro- process, design, system, or product, of Carolina, Are In Secrets South or code that: totype, procedure, Safe (1998). S.C. L.Rev. (i) independent economic derives SCTSA, protectability Prior the the value, potential, from not actual or by governed combination trade secrets was to, and not be- known being generally Products, Loumdes which stated: by proper readily ascertainable ing per- public any or means the in the unique A trade secret can exist value can obtain economic son who compo- combination of otherwise known use, and disclosure or from its nents; parts, by although each of its simple reasonable maintain its (b) (ii) A trade secret fact, item, is the under the circumstances secrecy. subject of efforts that or may consist of a procedure, or a are itself, the combination unified the secret. ^[*] may process, design % be in v may public be the essence of ^[*] operation domain, ^[*] ^[*] proce- or sequence or of items series generally unique [A]n combination which, individually could although dures steps can as a qualify known elements or relatively minor or sim- perceived be as secret, represents if a valuable trade it make a substantial ple, collectively can indepen- attributable to the contribution efficiency process of a difference claiming the one to have dent efforts of product, may or production or the conceived it. The combination must dif- marketing or commer- be the basis of re- materially fer from other methods effect of strategy. cial The collective prior art.... vealed con- procedures must be the items USPQ 211 (quot at at 191 S.E.2d any analysis of whether a sidered Callman, Compe The Law ing Unfair general secret exists and not tition, Trademarks, Monopolies, individual item or knowledge of each (3d ed.1968)). 52.1, §§ Federal courts 53.3 procedure. have applying Carolina law been South Am. Ins. accord. Wilkes v. Pioneer See 39-8-20(5) (Law Co-op. Ann. S.C.Code (D.S.C.1974) Co., F.Supp. enu- Beyond adding to the Supp.2001). (“It law that the fact is well settled types of information meration of all, compo of the part, eventually or even secret, a trade the SCTSA may qualify as matters of a trade secret are nents of definition, i.e., “in- provides open-ended an knowledge does not public public law or limited to.” Id. *8 cluding, but not secret.”) (citing claim of trade prohibit a enactment of the SCTSA The 1997 Distillers, v. Nat’l Imperial Chem. Indus. expand protection sought to (2d Cir.1965) (“A 737, trade 342 F.2d 742 pro-business implement to other and of charac can exist in a combination secret to make the state changes to the statute which, by components, each of teristics manu- in the more attractive businesses domain, itself, the public in but is Philip technology areas. See facturing and operation process, design unified III, combination, Trade Kilgore which, A. & Charles N. Griffin in affords unique protectable New Act and is a competitive advantage in Carolina: Secrets South secret.”)). Changes Employers, 9 S. Car- Outlook for

1340 applying

Courts the law of other states strict the definition of “trade secret” set 39-8-20(5)(a), § law basis for com forth in have cited common or to narrow the secrets, passage even after definition bination trade to exclude trade other- secrets See, e.g., Capital protectable Re of the Asset wise under that definition. UTSA. 683, Finnegan, search v. Corp. argues quench that its (11th Cir.1998) 686, USPQ2d 1855 48 technology protectable chamber aas law); Georgia Rivendell Forest (applying 39-8-20(5)(a). § trade secret under We Prods., Georgia-Pacific Corp., 28 Ltd. agree. Substantial evidence of record 1042, 1045, USPQ2d 1472, F.3d 31 1475 demonstrates that at least one of the indi- (10th Cir.1994) law); (applying Colorado vidual quench elements of its chamber de- Co., Servo Am. v. Gen. Elec. 393 Corp. of sign qualifies protection. for trade secret (4th 551, 554, 157 473 At expert least one witness testified Cir.1968) law); BioCore, Virginia (applying the individual quench elements of the Khosrowshahi, F.Supp.2d Inc. v. 96 chamber technology “very at issue were (D.Kan.2000) law); (applying Kansas novel,” unusual,” “really quite “very, Motorola, Inc., F.Supp. Nilssen v. very unusual.” (N.D.Ill.1997) law); (applying Illinois Ehmke, Leasing Enter. Phoenix v. Co. Further substantial evidence the rec- 197 Ariz. 3 P.3d supports finding ord that the combina- USPQ2d (App.1999) (applying qualifies protection tion itself under law). Many Arizona of the cases from Although Lowndes Products. Superior jurisdictions Imperial cite for its published cites various showing references Rivendell, definition of trade secret. See summary descriptions of similar technolo- 1045, USPQ2d 1475; 28 F.3d at at Nils gy, substantial evidence of record estab- sen, 677; F.Supp. Imperial, at particular lishes that the combination used F.2d at 742.. by Fiberweb generally France was not readily known or pub- ascertainable pointed provision has to no lic. We decline to find that the SCTSA statute, none, and we can find indicat- narrowed the definition of “trade secret” ing legislature that the South Carolina from that existing under the common law. to narrow the definition of a tended trade enunciated in Lowndes Products. Moreover, substantial evidence of record 39-8-20(5)(b), § Superior cites but this supports protection of Fiberweb France’s narrows, provision expands, than rather quench technology chamber under 39-8- protection 20(5)(b). trade Contrary secrets. Documentary evidence and testi- assertions, 39-8-20(5)(b) is mony appears showing record permissive not restrictive. Use lan- Superior’s officers considered the details of (i.e., of’), “may guage consist rather than design impor- chamber to be “must”), mandatory language (e.g., production, tant to implying that Fiberweb provision demonstrates the intent of the France’s does make a differ- legislature expand South Carolina production ence in the of the nonwoven fact, secret protection simple to “a product, item or fabric end and that difference is *9 procedure, a sequence or series or of Superior items cites no evidence substantial. procedures” or which tending meet certain condi- contrary. to show the Under tions. provi- circumstances, There is no indication in this these we decline to find a sion that the legislature intended to re- lack of support substantial evidence to (a) of a trade secret of an- acquisition that Fiberweb finding presumed jury’s means; person by improper aby of a trade the existence established Corp. v. Com Perkin-Elmer secret. See (b) of acquisition of a trade secret 888, 893, 221 Corp., putervision person a who knows or has another (absent (Fed.Cir.1984) in USPQ to know that the trade secret was reason necessary sup to findings terrogatories, means; by improper or acquired presumed); ac are jury verdict port (c) a trade secret disclosure or use of Acme-McCrary Corp., Tights, Inc. cord express implied without or of another by person a who: consent (4th Cir.1976).

(i) improper acquire used means to Misappropriation secret; 2. Evidence of the trade or knowledge (ii) use, at the time of disclosure or jury that the ver Superior argues know that his knew had reason to or of Fiberweb misappropriation dict of secret was: knowledge of cannot stand for lack trade secret France’s misappropria evidence of substantial (A) per- through derived from or a it became argues that tion. improper son who had utilized information trade secret aware of the it; acquire means to contractor Scott independent through (B) by mistake or under acquired Gessner, rela had no master-servant who duty a giving circumstances rise to Superior contends Superior. tionship with secrecy or limit its passed while to maintain its information was consultant, use; merely a or was Scott Gessner becoming an officer of prior to his (C) per- through from or derived Superior of thereby relieving corporation, person duty to the son owed who liability. any secre- relief to maintain its seeking use; limit or cy evidence or argues that no Superior further had an en- that Gessner was introduced (iii) change of his a material before with agreement forceable nondisclosure to know knew or had reason position, existed, if France. Even one and that a trade secret it was it was nullified according Superior, acquired it had been knowledge of reply failed to Fiberweb France when accident or mistake. requesting clarification letter Gessner’s (Law 39-8-20(2) Co-op. Ann. S.C.Code secret. was considered what information Supp.2001). Trimble that Dr. Superior contends under the SCTSA does Misappropriation the infor-' misappropriated could not have any master- turn on the existence not evi- there was insufficient because mation The definition relationship. servant know had reason to that he knew or dence aóf “acquisition includes misappropriation considered the tech- that Fiberweb France who knows or by person ... a trade secret. to be nology question that the trade reason to know has in the “Misappropriation” is defined Id. improper means.” acquired by SCTSA: argu- Superior’s master-servant findWe dispositive irrelevant (2) ment to be “Misappropriation” means: *10 Wanton, Willful, or quench chamber Reckless issue of whether (i.e., by person a acquired formation was willful, Superior argues that wan Trimble) who knew or had or Gessner misappropriation requires ton or reckless by acquired that it was reason to know aggravation some element of or malice. improper means. Superior contends that the evidence in this suggests case the defendants were moti an enforceable nondisclosure As for by competition vated and not malice or an record shows that Gessner agreement, the by aggravation. argues element of he was bound nondisclosure believed good that in faith includes Gessner acted when agreement. The record Gessner’s not “Confidentiality sharing the information because he did acknowledging letter personally technology believe that the signed,” request- which I and Agreements a trade for question what was asked ing a clarification of Fiberweb secrets, clarification before the informa sharing which France considered its Thus, than tion. response. rather received no of an enforceable non- showing an absence argues Fiberweb the statute agreement, the record instead disclosure willful, wanton, has a or reckless standard evidence of existence shows substantial aggravation and no or malice need be agreement. such an Fiberweb France’s agree. shown. We S.C.Code Ann. 39- hardly letter reply

failure to to Gessner’s 8-40 states: agree- to rescind the signifies an intention (A) complainant A is entitled to recover ment, Fi- contrary may on the show damages misappropriation actual preserve France’s intention to berweb trade secrets. trade secret. ij; :]s misappropriation by Trim

As for ble, the record includes substantial evi (C) wanton, Upon finding willful, showing that Trimble had reason to dence plaintiffs disregard or reckless of the information secret and had know the rights, may separate the court award by improper Trim acquired been means. exemplary damages in an amount not employed by ble had been any twice award made under exceeding France and hence knew or should have (A). subsection known that Fiberweb France maintained (Law Co-op. S.C.Code Ann. 39-8-40 technology quench chamber as se added). Supp.2001) (emphasis No malice cret. Trimble admitted that he had ac aggravation appears or standard in this during employ his cess to the information provision. Although Superior cites cases documents, Company ment Fiberweb. standard, support of a including malice testimony, per confirmed show that he Railway, Eberle v. Southern 98 S.C. sonally the transfer of the infor directed (1913), S.E. v. Allen Cohen contractors, pur mation to outside for the Co., Bottling dale Coca-Cola 291 S.C. pose including Fiberweb France’s (App.1986), pre 351 S.E.2d those chamber interpret governing cedents do not production facility. We find substan statute. supports jury tial evidence verdict of Moreover, misappropriation of supports Fiberweb France’s the record a find- ing misappropriation. trade secrets. of willful Trimble

1343 The district Superior appeal. on infor- raised to the had access that he admitted he corona means of agreed shows that court that the evidence and the mation limitation, of the means-plus-function transfer directed the claim 1 is a personally contractors, the for outside to includes fur- formation that the claim also but found France’s including Fiberweb purpose location, “posi- language designating ther Superior’s in chamber quench fil- electrostatically charging the tioned to continued facility. Gessner production deposited ... are on they before aments Germany LTG project the when support court surface.” The district said collection fa- Superior’s help design to tapped per- of the claim language that the found knew that though cility, even Gessner outside, albeit mits the corona means to be with Fiber- Germany was familiar LTG to, the The district connected attenuator. design. Su- chamber France’s secret web Superior’s prosecution court addressed design, the pursue continued perior prose- that the history argument but found by its contractor being after told even limit in history failed to the claims cution the whether not confirm that it could by Superior. way argued the the same were designs chamber alia, recites, inter because Claim as Fiberweb France’s We find were secret. designs France’s d) cooperating with said corona means jury’s willful- to the challenge positioned for electro- attenuator and up- verdict, court’s order ness the filaments so that statically charging the it, merit. holding to be without in the fila- repelling forces are induced the fila- uniformly spread ments to more B. Patent BBA deposited on said they ments before are surface to form web. collection the district that Superior argues the claims of construing in erred court 9,11. col. 32-37. patent, ’413 Superior argues that patent. BBA’s '413 correctly con court As the district means,” means-plus-function as a “corona cluded, means” is limitation “corona the limitation, embodiments dis limited to is form, and thus is sub equivalents, plus function specification in the means closed in the disclosed only the embodiment of 35 U.S.C. requirements the ject Med., within the corona means patent shows 112, '413 B. Braun six. See paragraph of the 1424, the four walls attenuator. Labs., 1419, F.3d Inc. v. Abbott appli during prosecution, argues (Fed.Cir.1997) 1896, USPQ2d limiting the prior art distinguished cant (“Because expressed limitation is to be “within” the corona means position of be language and plus function’ ‘means at a location the slot draw attenuator definite structure it does not recite cause Su slot of the attenuator. the exit above function, subject to its it is support in accused device perior argues ¶ of 35 U.S.C. requirements positioned device an electrostatic cludes (1994).”). a limitation of such Construction attenuator, and the exit slot of below identify the first the court requires claims, a col require that which thus limita means-plus-function function of the adjacent the positioned be lection surface corresponding identify next tion and slot, the accused device. fail to read on exit description neces written in the structure Micro function. perform that sary to claim construction The district court’s Co., 194 Chem., Chem. Inc. v. Great Plains arguments August addressed USPQ2d “adjacent” limitation, similarly unper- *12 (Fed.Cir.1999). recites, suasive. Claim 1 “a collection sur- positioned face adjacent said exit slot of Superior argues that the recited function 9,11. said attenuator.” patent, '413 col. 28- electrostatically charging includes “for the contention, Superior’s 29. that the collec- they deposited filaments ... before are on adjacent tion surface cannot be the exit said to form a collection surface web.” We slot if the corona means not is within the disagree. correctly The district court attenuator, is without merit. Just because identified the recited function: the corona means is located outside the corresponds The “function that to the attenuator, and connected to the attenua- portion “means” of Claim 1 stems tor, does not mean that the collection sur- “corona”; is, from the word that the precluded face adjacent is from being to properly claim if read as it said the attenuator exit slot. Again, Superior forming “means corona.” invites ignore “positioned” us to the limita- tion in favor of restricting the corona Superior’s proposed ignores construction “positioned” the word in claim means to that patent as the shown the figures. district court observed. Rather than recit- Superior’s Because construction reads a means, ing the function of the corona the claims, limitation out of the we decline expression following “positioned” the word Superior’s invitation. describes where the corona means is locat- We find arguments concern- separate ed and is a subject limitation not ing claims unpersuasive and 13 to be paragraph section 6. What the “co- for similar reasons.

rona means” is and where it is located are two things. different II. Cross-Appeals

Superior’s argument that the “corona means” must be “within” the slot draw Reemay A. Trade Secret misplaced. attenuator is The “within” lim- proposed by Superior itation ap- does not Reemay argues pursuant pear prosecution in the claim. The history the holding court’s in Servo Corp. Amer applicant shows that the prior described a Co., ica v. General Electric reference, Japanese 60-94663, art Pat. No. (4th USPQ Cir.1968), the district by noting that it applying “discloses a co- court was required to exclude from the rona to filaments after the filaments have evidence certain expired patents not relied attenuator,” an applicant exited but the did upon by Superior in developing the ac not distinguish this on reference that basis. cused technology. Reemay argues that Instead, applicant the distinguished this requires Servo exclusion of references that referring reference as “tube-type round do not “completely ]” disclosef attenuators and not to a slot draw attenua- secret or make the trade secret “so obvi tor,” having a different filament con- ous as to render meaningless the confiden figuration. canWe find no error in the tial relationship” parties, between the if district finding court’s the intrinsic the reference was not actually upon relied evidence require does not that the corona by the accused. Id. at at means be “within” the attenuator. 474. Reemay argues that the district

Superior’s argument that the court claims fail abused its discretion admitting device, to read on the accused due to the expired patents refusing to mation, and remanded for determination concerning the Servo jury instruct an instruction that damages, with case. was to base determination district court ad- did not that Servo Superior argues portion proprietary on that Servo’s case, in this presented the issue dress had not been dis- publicly formation which crite- satisfied the whether 10, 1958, the April closed as of date Supe- a trade secret. protection as ria for at misappropriation by GE. Id. that substantial evidence rior contends remand, USPQ at On district *13 trial, limited to the ex- at not presented in that “the detector court Servo concluded issue, Ree- showing that at patents pired publicly dis- entirety had not been its pro- qualify not for technology did may’s $50,000. closed,” damages and awarded of a trade secret. tection as Id. case is that the Servo Initially, we note and again The Fourth Circuit reversed in- involved Servo binding precedent. not found Id. The court that remanded. law, not South Virginia terpretation of findings lacked sufficient district court’s in law, court thus the district and Carolina which information specificity regarding necessarily by not bound case 556, disclosed. Id. at publicly had been of substantive interpretation USPQ 474. The court also com- 157 at Elec. Am. v. Corp. Gen. law. See Servo every signifi- defense that mented on GE’s 2, USPQ n. Co., n. 85 F.2d device been aspect the detector had cant Cir.1964). (4th April 1958: prior publicly disclosed allegation that GE involved an Servo in that those instances We do not believe for box patents two “hot infringed had argua- where the extent of disclosure detectors,” “in railroad devices used ble, not the information had and where abnormal industry quantity to detect an domain, public clearly placed been journal emanating freight from car heat be allowed to should General Electric 552,157 USPQ 471. at at boxes.” consequences of breach avoid the patents found the The Fourth Circuit in retro- by piecing together confidence had been valid, that GE but concluded which had been spect bits of information copying of Ser- by enriched willful unjustly places and variety in a disclosed in breach of a confiden- Corp.’s device vo clearly not were which as a combination and Corp. Servo relationship between tial public knowledge. a matter of had in- Id. Servo Railway Co. Southern stalled a device for testing and experimen- ^[*] ^[*] ^[*] v # ^[*] Co., on Railway and tation Southern made Thus, appear it Servo should personnel engineering GE’s April un- April prior disclosures obtained installation and inspected Servo’s secret so made its less these disclosures notes, engi- and drawings, photographs, meaningless to render obvious as Id., neering data. relationship which had been confidential attempted, had and USPQ 472. GE at Southern, they by and established Servo failed, hot box develop its own workable Elec- unless General become irrelevant of 1955. Id. near the close detector on that it relied them tric can show in its the secret appropriate did not had GE Circuit found that The Fourth 10,1958 inspection. April infor- proprietary misappropriated Servo’s Servo, 393 F.2d at at Supp.2001). 473- We can find no abuse of dis- cretion the district court in admitting this evidence.

These statements the Fourth Circuit were made in Servo the context of “a B. Fiberweb France Royalty breach confidential relationship.” of a Id Escrow Order The court considered the confidential rela- tionship to be central to the cause of ac- Fiberweb France challenges the dis- tion, any ‘public disclosure’ defense trict court’s order staying imposition of necessity would of have to be so sweeping injunction prohibiting Superior from negate relationship, as to to avoid the misappropriating Fiberweb France’s consequences of breach: secret, directing per- that 10 cent of

Servo cannot recover for net appropriation placed sales be escrow pending appeal. of information which had been so com- *14 pletely public argues disclosed to the that this as to dis- order fails to ac- count pel the existence of a trade secret during sales two negate thus period the confidential months of misappropriation, relation- ship September which had been established Ser- October of 2001. Wheth- vo er and Southern between and to what injunction themselves. extent an awarded in this case are firmly matters (citations omitted). Id within the discretion of the district court. case, present In the the determination 39-8-50(A) (Law See S.C.Code Ann. whether Reemay’s consolidator technology (“Actual Co-op. Supp.2001) or threatened qualifies for protection does (em- misappropriation may enjoined.” be not turn on the breach of a confidential added)). phasis We find no abuse of that Thus, relationship. inapposite Servo is un- discretion here. circumstances,

der these and the district court did not abuse discretiomby refus- CONCLUSION ing jury to instruct concerning the case. Because the district court did not err in denying Superior’s motions for JMOL and Reemay’s argument that Servo man- trial, a new we affirm appeal. on Because dates exclusion of unexpired pat- certain the district court did not abuse its discre- similarly unpersuasive. ents is tion in admitting certain evidence and de- Reemay’s introduced evidence that consoli- clining to instruct jury on the Servo dator technology was available in prior case, order, or in forming the escrow we art, and thus was not secret. Although affirm on cross-appeal. Reemay contends that Servo decrees such evidence to be irrelevant if not sufficient to AFFIRMED. “render meaningless” a confidential rela- tionship, Servo establishes no such rule DYK, Judge, Circuit dissenting-in-part. outside the context of breach of a confiden- tial relationship. join The I expired patents the majority opinion are insofar as it relevant to the question of the existence of holds that the district court properly de- a trade secret under Superior Nonwovens, the SCTSA. nied See L.L.C.’s motion 39-8-20(5) (Law S.C.Code Ann. Co-op. for JMOL and a new trial as to infringe- Simpsonville, independently that can be controlled. Id. BBA Nonwovens ment of 5,397,413 Figs. at Patent patent, U.S. No. Inc.’s (“the properly denied Ree- patent”), '413 A Synthetic book entitled Formation of for a new trial as to

may, Inc.’s motion systems Fibers states that of cool- “[t]wo secret, and of its trade misappropriation ing they emerge the hot filaments after respect its discretion with did not abuse spinnerette from the are common use. However, respectfully I order. the escrow The older still more often used method majority’s up- from the decision dissent commonly bears the name of cross-flow that Fiber- holding jury determination Wakzak, quench.” Zbigniew K. Forma- France”) (“Fiberweb dem- web France SA (1977). Synthetic Fig- tion Fibers protectable of a onstrated the existence depicts 5.1 of ure the book cross-flow view, my In should trade secret. JMOL quench chamber with six horizontal zones. no reasonable granted have been because undisputed Id. at 152. It is that the use properly conclude that Fiber- jury could multiple zones in quench chamber was pro- proven expert that it had a known. generally web France had Plaintiffs own Dr. acknowledged: Smorada trade secret. tectable

COUNSEL: 1. The number zones particular Smorada, you agree Dr. do that the is not a trade secret. itself expired patents you materials reviewed in this case on the *15 majority opinion that Fiber- The finds independently chamber show con- a trade secret web demonstrated anywhere trolled zones from to 6 to 15 respect particular to the number of with quenches spunbond zones on in the quench range in the chamber the zones industry? (I identify- refrain from of six to fifteen. DR. SMORADA: particular the number because of the ing majority’s particular conclusion that the mul- There are a number of claims of secret). I number of is a trade zones tiple quenches. zone disagree particular that the number of sure, testimony that the To be there was in the chamber is a trade zones by particular number of zones selected patent An expired secret. United States and “very Fiberweb France was novel” prior publication plainly art dis- and “very, very unusual.” To establish a trade in a multiple the use of zones closed law, however, secret under South Carolina quench chamber. than that the one must do more assert is “novel.” Rath- question information 3,274,644 Patent No. United States er, must show that the information one Massey (“Massey”) depicts et al. value, independent economic ac- “derives quenching molten fil- quench chamber “for potential, being generally or from not tual aments” with fifteen horizontal zones to, being readily and not ascertain- known sliding plate dampers describes use public any by proper by able means or independently control air flow each person who can obtain economic val- other spinning filamentary zone in “the melt ue from its disclosure or use.” S.C.Code polymeric Massey, materials nature.” added). 8—20(5)(a)(i)(emphasis Ann. 39— 12-17, Fig. patent 11. 4. The col. figures illustrating quench showing particu- two There no that the shows independent had eco- multiple with horizontal zones lar number chosen chambers qualify 39-8-20(5)(b) (Law nomic value that would it as a S.C.Code Ann. Co added). secret. op. Supp.2001) (emphasis Thus the “material difference” standard re quires showing alleged combina no showing There was that the combi- tion represents a “valuable contri materially” nation secret “differfs] ie., bution,” superior it has economic methods revealed in the from prior value over the art. This is in accord prior art. general with trade secret law. See Riven- Alternatively majority concludes Prods., dell Forest Ltd. v. Georgia-Pacific that Fiberweb France demonstrated the Corp., USPQ2d existence of a combination trade secret (10th Cir.1994) (“[A] trade se consisting particular of the number of system cret can include a where the ele quench chamber zones combined with oth- domain, ments are in public but there er known elements. Ante at 1340-41. has accomplished effective, been an suc Again I disagree. majority must The rec- cessful and integration valuable of the Products, ognizes that ” Lowndes Inc. v. public domain (emphasis elements .... Brower, 259 S.C. 191 S.E.2d 177 added)); Integrated Servs., Mgmt. Cash (1972), USPQ governs In case. Transactions, Inc., Inc. v. Digital Lowndes, accordance with a “unique com- 171, 174, (2d USPQ2d Cir. of generally bination known elements or 1990) (“[A] trade secret can exist in a steps secret, qualify can a trade as if it combination of compo characteristics and represents a valuable contribution attrib- nents, which, itself, each is in the independent utable to the efforts of the public domain, process, but the unified de claiming one to have conceived it. The sign operation which, in unique combination must materially differ from combination, competitive affords a advan other methods revealed prior art. ....”) added) tage (citation (emphasis ...” 191 S.E.2d at at 211 omitted); Servs., Water Inc. v. Tesco *16 Coliman, (citing The Law of Unfair Chems., Inc., Trademarks, Competition, and Monopo- (5th Cir.1969) (finding combina (3d ed.1968)) added). (emphases lies 53.3 tion trade secret where the combination of appears This standard also in essence in generally known “unique elements was the South Carolina Trade Secrets Act: a substantial competitive advan conferred ” A may trade secret simple consist of a tage in that company enjoyed “the unpar fact, item, procedure, or or a series or alleled financial success during the four- sequence which, procedures, of items or years competitors were unsuccessfully try although individually perceived could be secret].”) (em ing duplicate [trade relatively as minor or simple, collectively added). phasis can make a substantial in the difference The record here shows that there was a efficiency a process production or the of complete proof absence of that the use of a a or product, may be the basis particular number of zones within the marketing strategy. or commercial The quench chambers in collective effect of the combination with oth- proce- items and er qualified dures must be considered in elements any analy- as a trade secret sis of whether a trade under secret exists and materially” “differ[s] test. not general knowledge of each indi- There testimony was no making here vidual procedure. item or comparison between this combination and they “differ[ed] how to show art prior Walcek, Stanley Al- WALCEK, Delores At value. economic in terms materially” Ammons, Regina Walcek, and bert admitted counsel plaintiffs argument oral Plaintiffs-Appellants, be- been made had comparison no that here and alleged tween methods: any other Defendant-Appellee. STATES, UNITED

THE COURT: testimony this any there Is No. 01-5108. compared as process, Appeals, Court States United dif- a substantial made technologies, Circuit. Federal ference?

COUNSEL: Sept. words they used those know if I don’t said Dr. Eschbach but

specifically, which profile,” the best “this was mind. his comparison

suggests comparing evidence submit didn’t

A B. added).

(Emphasis to is referred testimony counsel

The Eschbach, that: testified who Dr.

that of

COUNSEL: the number is contention your

So the hori- vertical side in the

zones secret? also trade

zontal is

MR. ESCHBACH: com- It’s us, secret. it’s a trade

For experience our from

ing outside profile it that defined

we have one.

the best added).

(Emphasis plain- relied on evidence

The record to establish inadequate quite

tiff is “dif- trade secret combination alleged already known materially” from

fer[s] plain- I hold that Thus would

technology. aof the existence establish

tiff failed law. under South Carolina