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On-Line Techs., Inc. v. Perkin-Elmer Corp.

On-Line Techs., Inc. v. Perkin-Elmer Corp.

United States District Court for the District of Connecticut

March 31, 2003, Decided

No. 3:99cv2146 (JBA)

Opinion

 [*315]  Ruling on Motions for Summary Judgment [Doc. # # 160, 164 & 169

On-Line Technologies ("OLT") asserts that defendants misappropriated trade secrets during a series of visits to OLT's laboratory in 1994 and designed a product that infringes one of its patents. The patent infringement claim relates to defendants' gas cell, and the state law trade secret misappropriation and associated claims (fraud, breach of contract, and unfair trade practices) are based on OLT's allegation that its trade secrets were used in the development of two instruments designed and/or manufactured by defendants (the Spectrum One and the MCS100E). For the reasons set out below, defendants' motions for summary judgment on all claims in the Third Amended Complaint are granted.

I. Background 1

OLT, a small company that survived over the years primarily on government [**2]  grants, planned to grow its business by entering into strategic alliances with larger, more experienced companies. OLT envisioned supplying its core technology, which it claims is superior to other technology available in the marketplace, to companies with established marketing and manufacturing capabilities. To that end, OLT and the defendants explored a possible licensing agreement, but after a series of visits to OLT's laboratory in 1994, defendants refused to license OLT's technology and the prospect of any planned collaboration between the companies ended.

While the technology at issue has expanded, OLT's theory of this case has remained the same: that in licensing negotiations with the defendants, it opened its laboratory doors to scientists associated with the Perkin Elmer entities in a series of visits in 1994, giving the scientists free reign (after executing a non-disclosure agreement) to learn its trade secrets, and that even though OLT met or exceeded defendants' "performance criteria" for the efficacy of OLT's technology required for a licensing agreement, defendants refused to license OLT's technology, but instead unlawfully  [*316]  used what they learned from OLT in the development [**3]  of their own products.

OLT points, in particular, to three occurrences: (1) defendants' assertion, in late 1994, that a satisfactory agreement could not be reached because OLT's technology was not up to par, even though internal documents and a subsequent letter from one of defendants' scientists show that defendants believed OLT's product was "a winner" 2 [**4]  ;(2) defendants' failure to return OLT's technical documents in its possession related to OLT's technology, despite representation that it had returned all documents; and (3) an email from Dr. Wolfgang Berkhahn, associated with the defendants, in which Berkhahn claims that he copied OLT's technology in the design of defendants' gas cell. 3 

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253 F. Supp. 2d 313 *; 2003 U.S. Dist. LEXIS 5161 **

On-Line Technologies, Inc. v. Perkin-Elmer Corp., et al.

Subsequent History: Affirmed in part and vacated in part by, Remanded by On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 2004 U.S. App. LEXIS 21245 (Fed. Cir., Oct. 13, 2004)

Prior History:  On-Line Techs. v. Perkin Elmer Corp., 141 F. Supp. 2d 246, 2001 U.S. Dist. LEXIS 5895 (D. Conn., 2001)

Disposition: Defendants' motions for summary judgment are granted.

CORE TERMS

trade secret, mirrors, patent, gas cell, toroidal, infringement, secret, laser, defendants', misappropriation, linearization, diode, correction, Spectrum, cell, path, literally, technology, servo, summary judgment, cylindrical, disclosure, spherical, manufacture, doctrine of equivalents, specification, documents, parameters, retroreflector, constitutes

Civil Procedure, Discovery, Methods of Discovery, General Overview, Summary Judgment, Entitlement as Matter of Law, Genuine Disputes, Legal Entitlement, Materiality of Facts, Supporting Materials, Evidence, Burdens of Proof, Ultimate Burden of Persuasion, Movant Persuasion & Proof, Judgments, Evidentiary Considerations, Opposing Materials, Standards of Review, Substantial Evidence, Sufficiency of Evidence, Business & Corporate Compliance, Infringement Actions, Infringing Acts, Offers to Sell & Sales, International Trade Law, International Commerce & Trade, Exports & Imports, Patent Law, Use, Doctrine of Equivalents, Motions for Summary Judgment, Fact & Law Issues, Claim Interpretation, Specifications, Description Requirement, Standards & Tests, Enablement Requirement, Claims, Claim Language, Claims & Specifications, Invention Theory, Trade Secrets Law, Misappropriation Actions, Elements of Misappropriation, Acquisition, Antitrust & Trade Law, Intellectual Property, Bad Faith, Fraud & Nonuse, Regulated Practices, Trade Practices & Unfair Competition, Torts, Business Torts, Unfair Business Practices, Definitions of Misappropriation, Disclosures, Improper Means, Protected Information, Products, Employee Duties & Obligations, Right to Compete, Customer Solicitation, Manufacturing Processes, Civil Actions, Questions of Fact, Federal Versus State Law, Patent Law, Exclusive Rights, Nonprotected Information, Public Domain, Contracts Law, Types of Contracts, Express Contracts, Energy & Utilities Law, Oil, Gas & Mineral Interests, Trade Secret Determination Factors, Economic Value, Types of Evidence, Documentary Evidence, Summaries, Inspections, Unfair Competition, Trade Secrets Law, Uniform Trade Secrets Act