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Convolve, Inc. v. Compaq Computer Corp.

Convolve, Inc. v. Compaq Computer Corp.

United States Court of Appeals for the Federal Circuit

July 1, 2013, Decided

2012-1074

Opinion

 [*912]  O'Malley, Circuit Judge.

Convolve, Inc. ("Convolve") and Massachusetts Institute of Technology ("MIT") appeal the decision of the United States District Court for the Southern District of  [**2] New York granting summary judgment in favor of Compaq Computer Corp. ("Compaq"), Seagate Technology, LLC, and Seagate Technology, Inc. (collectively "Seagate"). The district court found that Compaq and Seagate did not misappropriate eleven (11) of the fifteen (15) Convolve trade secrets that remained at issue in the suit. The court also held that Compaq and Seagate did not infringe claims 1, 3, 4, and 7-15 of U.S. Patent No. 6,314,473 ("the '473 patent") and that claims 1-4, 7, 11, 21, and 24 1 of U.S. Patent No. 4,916,635 ("the '635 patent") are invalid. After the district court's summary judgment order, all remaining claims were dismissed without prejudice. Convolve's appeal is timely and we have jurisdiction under 28 U.S.C. § 1295(a)(1). For the reasons below, we affirm the district court's rulings on the trade secret claims and validity of the asserted claims of the '635 patent, but vacate the court's judgment of non-infringement with respect to the '473 patent. We remand for further proceedings on the '473 patent.

 [*913]  I. Background

In July 2000, Convolve and MIT sued Compaq and Seagate for, among other things, trade secret misappropriation and patent infringement. Convolve was conceived and is owned by Dr. Neil Singer. While a graduate student at MIT, Dr. Singer set out to solve the general problem of moving equipment quickly while minimizing the resultant vibrations. The '635 and '473 patents grew out of that research. MIT owns the '635 patent while Convolve owns the '473 patent and all alleged trade secrets in this suit. Convolve contends that Seagate manufactured drives and tools that infringe the '473 and '635 patents and misappropriated Convolve's trade secrets. Convolve also asserts that Compaq incorporated the Seagate drives into its computers and provided tools, such as the "F10 BIOS," that together infringe certain claims of the '473 patent. Convolve further claims that Compaq misappropriated multiple trade secrets relating to the Quick and Quiet User Interface.

Convolve is MIT's exclusive licensee for use of a software motion control technology  [**4] called Input Shaping. According to Convolve, Input Shaping technology is a method for commanding equipment to move as quickly as possible without excitation or vibration. Convolve explains that, from 1997 to 1998, it developed an application for its Input Shaping technology in hard disk drives. Convolve asserts that this technology is covered by the trade secrets and patents involved in this case.

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527 Fed. Appx. 910 *; 2013 U.S. App. LEXIS 13612 **; 2013 WL 3285331

CONVOLVE, INC. AND MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiffs-Appellants, v. COMPAQ COMPUTER CORPORATION, Defendant-Appellee, AND SEAGATE TECHNOLOGY, LLC AND SEAGATE TECHNOLOGY, INC., Defendant-Appellee.

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Subsequent History: US Supreme Court certiorari denied by Convolve, Inc. v. Compaq Computer Corp., 134 S. Ct. 801, 187 L. Ed. 2d 596, 2013 U.S. LEXIS 8898 (U.S., 2013)

On remand at, Summary judgment granted by, Claim dismissed by Convolve, Inc. v. Compaq Computer Corp., 2014 U.S. Dist. LEXIS 99927 (S.D.N.Y., July 11, 2014)

Prior History:  [**1] Appeal from the United States District Court for the Southern District of New York in No. 00-CV-5141, Judge George B. Daniels.

Convolve, Inc. v. Compaq Computer Corp., 2011 U.S. Dist. LEXIS 152762 (S.D.N.Y., Aug. 16, 2011)

CORE TERMS

district court, drives, trade secret, frequencies, infringement, confidential, disk, patent, disclosures, parties, misappropriation, unwanted, target, user, asserted claim, input, technology, acoustics, interface, filter, summary judgment, designated, reduction, contends, argues, Quiet, inducement, vibrations, dynamics, enabling

Civil Procedure, Preliminary Considerations, Federal & State Interrelationships, General Overview, Patent Law, Jurisdiction & Review, Trade Secrets Law, Misappropriation Actions, Elements of Misappropriation, Appeals, Summary Judgment Review, Standards of Review, Standards of Review, De Novo Review, Contracts Law, Contract Interpretation, Intent, Contract Modifications, Business & Corporate Compliance, Trade Secrets Law, Federal Versus State Law, Uniform Trade Secrets Act, Disclosures, Breach of Contract, Implied Contracts, Acquisition, Infringement Actions, Summary Judgment, Entitlement as Matter of Law, Appropriateness, Infringing Acts, Use, Specifications, Enablement Requirement, Standards & Tests, Clearly Erroneous Review, Evidence, Burdens of Proof, Clear & Convincing Proof, Defenses, Patent Invalidity, Grounds, Record on Appeal