United States Gypsum Co. v. LaFarge N. Am., Inc., No. 03 C 6027, 2007 WL 1100804 (N.D. Ill. Apr. 3, 2007) (Hart, J.).
Judge Hart granted in part and denied in part the parties’ cross-motions for summary judgment. This case was a dispute over technology related to gypsum wallboard manufacturing and included patent infringement, trade secret misappropriation, breach of contract, Stored Communications Act ("SCA"), Computer Fraud and Abuse Act ("CFAA") and various related state tort claims. The Court first looked at plaintiff’s patent infringement claims regarding methods for making gypsum board and resolved the parties’ claim construction disputes. The Court then turned to defendants’ argument that plaintiff was estopped from claiming infringement by equivalents because it failed to expressly refer to the doctrine of equivalents in its complaint or in its contention interrogatory responses. The Court held that it was sufficient to allege infringement and cite Section 271 in a complaint. And as to waiver for failure to disclose equivalents in its interrogatory responses, the Court held that defendants had shown no prejudice from plaintiff’s failure to disclose equivalents and that while plaintiff did not use the term equivalents in its responses, it did state that it contended defendants infringed the patents even if defendants processes did not meet timing requirements in the claims. As a result, plaintiff was not barred from arguing infringement pursuant to the doctrine of equivalents.
The Court also performed a detailed analysis of whether each alleged trade secret at issue was, in fact, a trade secret and whether it was misappropriated. For example, the Court held that regardless of whether plaintiff’s Construction Specifications were trade secrets, they were not misappropriated because plaintiff’s did not show that the Construction Specifications were used in the corporate defendants’ business. The Court held that certain drawings and blueprints were not misappropriated because there was no proof that the individual defendant alleged to have taken them gave them to the corporate defendants or otherwise used them in any way. Additionally, there was no evidence that the corporate defendants used the drawings or blueprints in their business. The Court dismissed claims based upon a slotted forming plate because of evidence that at least four different groups independently developed the slotted plates for use in wallboard manufacturing. The Court noted that if just one other group had developed the plate it could have been accorded trade secret status, but because four others had developed similar technology it was a commonly known procedure which could not be afforded trade secret status. The Court held that board formulation sheets which contained, among other things, the formula for making the wallboard material were protectable trade secrets. The Court held that plaintiff could not claim blanket trade secret protection for its 11,000 page Operating Bulletins or its 500 page Expert System included therein. But the Court did allow trade secret protection for elements of the Operating Bulletins and Expert System specifically identified as trade secrets.
The Court also held that plaintiff’s state court claims were preempted by the Illinois Trade Secret Act only to the extent that the torts involved trade secrets. To the extent the torts were based simply on business issues, for example tortious interference with business expectancy, they were not preempted.
Finally, the Court held that it had personal jurisdiction over the individual defendants because plaintiff was headquartered in Illinois and the individual defendants were aware of that based on the fact that each had attended limited training sessions in Illinois