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Metso Minerals Indus., Inc. v. FLSmidth-Excel LLC

United States District Court for the Eastern District of Wisconsin

May 7, 2010, Decided

Case No. 07-CV-926

Opinion

 [*970]  ORDER

On October 17, 2007, plaintiff Metso Minerals Industries, Inc. ("Metso") filed suit against FLSmidth-Excel LLC ("Excel"). In the ensuing years, Metso filed several amended complaints, adding numerous new defendants. In Metso's fifth, and final, amended complaint, it alleged that all of the defendants (excluding Cheryl Sullivan) partook in misappropriation of certain trade secrets from Metso. Defendants 1 have moved for summary judgment as to Metso's trade secret misappropriation claims related to the HP400, 2 arguing that Metso does not own the relevant trade secrets and thus does not have standing to assert a claim for their misappropriation. After consideration of the parties' arguments, the court concludes that Metso does have standing to pursue these claims, and thus the defendants' motion for summary judgment on these claims is denied.

BACKGROUND

Metso is engaged in the manufacture and sale of high performance conical rock crushers, including the model HP400. In December of 2002, Metso sold all of the engineering, design information, and intellectual property rights (except for patent and trademark rights) related to the HP400 to Metso Minerals Macon ("Macon"), a separate legal entity located in Macon, France. As part of that transaction,  [*971]  Macon granted to Metso a non-exclusive, royalty-free right to continue to use the technology for service and warranty repair for the products sold by Metso.

Metso contends that two of the individual defendants, Messrs. Wade and Martinez, misappropriated trade secrets relating to the HP400. Martinez was previously employed by Metso, and Wade was previously employed by one of Metso's authorized repair facilities; both are currently employed by Excel. Metso alleges that Wade impermissibly took HP400 technical  [**4] data sheets and other Metso detailed design information to his new job at Excel Foundry & Machine, Inc. ("Foundry"), and then to Excel where he transferred a year later. Metso alleges that Martinez impermissibly took a copy of the HP400 General Assembly, Master Layout CAD 3 file with him to his new job at Excel. Metso also maintains that Richard Parsons and Douglas Parsons, both high ranking officers in both Foundry and Excel, knew of (or had reason to know of) and actively encouraged such acquisition of confidential information pertaining to the HP400. According to Metso, defendants used the HP400 trade secret information to design and build the XL400, a conical rock crusher sold by Excel. Metso claims that since the XL400 entered the market, Metso has lost at least thirty-four HP400 sales to Excel.

ANALYSIS

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733 F. Supp. 2d 969 *; 2010 U.S. Dist. LEXIS 44967 **

METSO MINERALS INDUSTRIES, INC., Plaintiff, v. FLSMIDTH-EXCEL LLC, EXCEL FOUNDRY & MACHINE, INC., JOSEPH P. MARTINEZ, CHERYL A. SULLIVAN, RICHARD A. PARSONS, DOUGLAS M. PARSONS, KENNETH L. OLSON, and CHRISTOPHER P. WADE, Defendants.

Subsequent History: Summary judgment granted, in part, summary judgment denied, in part by, Patent interpreted by Metso Minerals Indus. v. FLSmidth-Excel LLC, 2010 U.S. Dist. LEXIS 47389 (E.D. Wis., May 13, 2010)

Prior History: Metso Minerals Indus. v. FLSmidth-Excel LLC, 2010 U.S. Dist. LEXIS 44964 (E.D. Wis., May 7, 2010)

CORE TERMS

trade secret, misappropriation, secret, licensee, license, patent, defendants', trade secret protection, real party in interest, summary judgment, patent infringement, non-exclusive, ownership, lack standing, persuasive, possessed, parties, courts, protected interest, standing to sue, improper means, instant case, bring suit, patentee, rights, relevant language, standing to bring, file suit, infringement, proprietary

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, Appropriateness, Genuine Disputes, Materiality of Facts, Evidentiary Considerations, Absence of Essential Element, Burdens of Proof, Nonmovant Persuasion & Proof, Judgments, Evidentiary Considerations, Justiciability, Case & Controversy Requirements, General Overview, Constitutional Law, The Judiciary, Case or Controversy, Standing, Elements, Trade Secrets Law, Misappropriation Actions, Elements of Misappropriation, Business & Corporate Compliance, Ownership, Conveyances, Licenses, Patent Law, Infringement Actions, Exclusive Rights, Patents as Property, Parties, Real Party in Interest