AgroFresh Inc. v. Essentiv LLC
| Decision Date | 30 November 2020 |
| Docket Number | C.A. No. 16-662 (MN) |
| Parties | AGROFRESH INC., Plaintiff, v. ESSENTIV LLC, DECCO U.S. POST-HARVEST, INC., CEREXAGRI, INC. d/b/a DECCO POST-HARVEST and UPL, LTD., Defendants. |
| Court | U.S. District Court — District of Delaware |
Chad S.C. Stover, Regina S.E. Murphy, BARNES & THORNBURG LLP, Wilmington, DE; Robert D. MacGill, Matthew Ciulla, MACGILL PC, Indianapolis, IN; Lynn C. Tyler, Joseph T. Wendt, Jessica M. Lindemann, BARNES & THORNBURG LLP, Indianapolis, IN - Attorneys for Plaintiff
Frederick L. Cottrell, III, Jeffrey L. Moyer, Nicole K. Pedi, RICHARDS, LAYTON & FINGER, Wilmington, DE; Gerald F. Ivey, J. Michael Jakes, John M. Williamson, Anand K. Sharma, Rajeev Gupta, Maximilienne Giannelli, Karthik Kumar, Daniel F. Roland, FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Washington, DC - Attorneys for Defendants
November 30, 2020
Wilmington, Delaware
The Court presided over a five-day jury trial from October 7, 2019 to October 11, 2019. (See D.I. 537 ¶ 2; see also D.I. 632, 633, 634, 635 & 636). At the end, the jury found Defendants Essentiv LLC ("Essentiv"), Decco U.S. Post-Harvest, Inc. ("Decco U.S. Post-Harvest"), Cerexagri, Inc. d/b/a Decco Post-Harvest ("Cerexagri")1 and UPL, Ltd. ("UPL") (collectively "Defendants") to have willfully misappropriated four of Plaintiff AgroFresh Inc.'s ("Plaintiff" or "AgroFresh") trade secrets, willfully infringed an AgroFresh patent and engaged in unfair competition, intentional interference with contracts and a business relationship, conversion and conspiracy. Presently before the Court are Defendants' renewed motion for judgment as a matter of law (D.I. 596) and Plaintiff's motions for enhanced damages (D.I. 587) and pre- and post-judgment interest (D.I. 589). For the reasons set forth below, the Court will grant-in-part and deny-in-part Defendants' motion for judgment as a matter of law, deny Plaintiff's motion for enhanced damages and grant Plaintiff's motion for pre- and post-judgment interest.
Now in its fifth year, this case represents a fiercely contested fight, filled with animosity and acrimony. Plaintiff and Defendants are in the agriculture business and provide products that preserve the freshness of certain produce. Plaintiff's SmartFresh, which has been marketed in the United States since 2002, contains 1-methylcyclopropene ("1-MCP"), a compound that delays ripening by inhibiting produce response to ethylene (a natural byproduct that causes ripening). (See D.I. 519, Ex. 1 ¶¶ 6-7). For a limited time in 2016-2017, Defendants marketed their own 1-MCP containing product, TruPick. It is TruPick and its development that are at the heart of this case.
Plaintiff originally filed this case against MirTech, Inc., Nazir Mir, Essentiv, Decco U.S. Post-Harvest and Cerexagri, seeking declarations of ownership over certain intellectual property rights and asserting claims of breach of contract, tortious conduct and patent infringement. (See generally D.I. 2). Dr. Mir had been AgroFresh's technical consultant on 1-MCP for years but, in 2014, while still working with AgroFresh, he began working with Decco U.S. Post-Harvest and Essentiv to help them develop their own 1-MCP product (i.e., TruPick).2 Many of the allegations in the original Complaint (and the resulting causes of action) related to the failed relationship between Plaintiff and Dr. Mir and MirTech, Inc. ("the MirTech Defendants"). (See, e.g., id. ¶¶ 3-4; see also id. at Counts I & IV). Pursuant to the parties' joint request (D.I. 18), on October 12, 2016, Judge Robinson3 bifurcated the claims relating to ownership of U.S. Patent No. 9,394,216 ("the '216 Patent") and fraudulent inducement based on the parties' representation that addressing those claims first would simplify and clarify the disputed issues.
In March 2017, Judge Robinson held a bench trial on Counts I and IV. (See D.I. 94, 95 & 96). The court's post-trial opinion issued on June 30, 2017. (D.I. 97). In that opinion, Judge Robinson concluded that the '216 Patent, which claims 1-MCP complexes with metal-organic frameworks ("MOFs"), had been automatically assigned to Plaintiff pursuant to its agreement with Dr. Mir4 and that Dr. Mir had fraudulently induced Plaintiff into an extension of that agreement.(See D.I. 97 at 33-34; see also D.I. 98 ()). The ruling meant that Decco U.S. Post-Harvest and Essentiv had no ownership in or rights to the '216 Patent or related 1-MCP technology despite their own contracts with the MirTech Defendants.
On August 18, 2017, Plaintiff filed its First Amended Complaint, asserting claims against the original defendants as well as an additional defendant, UPL. (See D.I. 106). In the First Amended Complaint, Plaintiff added claims arising under the Defend Trade Secrets Act ("DTSA") and the Pennsylvania Uniform Trade Secrets Act ("PUTSA"), as well as a number of other causes of action for tortious interference with Plaintiff's contracts or business relationships. (See generally id.). On September 15, 2017, Plaintiff and the MirTech Defendants entered into a settlement agreement and a consent judgment, which "establish[ed] liability" for all counts asserted against the MirTech Defendants in the First Amended Complaint (D.I. 115). The MirTech Defendants were dismissed on January 2, 2019, leaving the current Defendants in the case. On February 18, 2019, Plaintiff filed a Second Amended Complaint that asserted unfair competition, unjust enrichment, DTSA and PUTSA violations, various acts of tortious interference, conversion and civil conspiracy, as well as direct, indirect and willful infringement of the '216 Patent and U.S. Patent Nos. 6,017,849 ("the '849 Patent") and 6,313,068 ("the '068 Patent"). (See generally D.I. 412; see also D.I. 519 ¶ 10).
From October 7, 2019 to October 11, 2019, the Court presided over a jury trial. (See D.I. 537 ¶ 2; see also D.I. 632, 633, 634, 635 & 636). The jury found that Plaintiff held trade secrets in four technologies (its gas generator, gas sampler, testing protocols and treatment parameters), but Plaintiff did not possess trade secrets in its treatment tents or information relating to the '216 Patent. (D.I. 578 at 2). The jury further found that Defendants willfully and maliciouslymisappropriated the trade secrets Plaintiff held in its gas generator, gas sampler, testing protocols and treatment parameters. (Id. at 3). The jury also found that Defendants were liable for unfair competition, intentional interference with the MirTech agreements and business relationship, intentional interference with Plaintiff's customer contracts and conversion. (Id. at 4-5). Defendants were found not liable for intentional interference with prospective business relationships. (Id. at 4). As to civil conspiracy, the jury found that Decco was liable for civil conspiracy (with UPL and/or Dr. Mir) as to trade secret misappropriation, unfair competition, intentional interference with the MirTech agreements and business relationship and intentional interference with customer contracts, as well as conversion. (Id. at 5). As to the same claims, the jury found that UPL was liable for civil conspiracy with Decco (and/or Dr. Mir) only as to intentional interference with the MirTech agreements and business relationship and intentional interference with customer contracts. (Id.). Finally, the jury found that Decco willfully infringed claim 1 of the '849 Patent and that claim 1 was not invalid.5 (Id. at 6).
The jury awarded Plaintiff $6,000,000 in compensatory damages for actual loss caused by Defendants' patent infringement, trade secret misappropriation, unfair competition, intentional interference with the MirTech agreements and business relationship and intentional interference with customer contracts, conversion and civil conspiracy. (D.I. 578 at 7). The jury found that Defendants had been unjustly enriched by the trade secret misappropriation and awarded Plaintiff $1,013,000 for that unjust enrichment. (Id.). The jury also awarded $24,000,000 in punitive damages against Defendants based on unfair competition, intentional interference with theMirTech agreements and business relationship and intentional interference with customer contracts, conversion and/or civil conspiracy. (Id.).
On October 30, 2019, the Court entered judgment on the jury verdict under Rule 58(b) of the Federal Rules of Civil Procedure. (See D.I. 586). On November 8, 2019, Plaintiff moved for enhanced damages (see D.I. 587 & 588) and, on November 11, 2019, Plaintiff moved for pre- and post-judgment interest (see D.I. 589, 590 & 591). On November 27, 2019, Defendants renewed their motion for judgment as a matter of law. (See D.I. 596 & 597). Briefing on post-trial motions was completed on January 7, 2020. (See D.I. 594, 598, 602, 603, 605, 606, 612 & 616).6 On May 27, 2020, the Court heard oral argument on the post-trial motions.
Judgment as a matter of law may be entered against a non-moving party if the Court "finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on [an] issue." FED. R. CIV. P. 50(a)(1). Judgment as a matter of law is appropriate "only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find liability." Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). Entry of judgment as a matter of law is a remedy to be invoked only "sparingly." CGB Occupational Therapy, Inc. v. RHA Health Servs. Inc., 357 F.3d 375, 383 (3d Cir. 2004).
Following a jury trial, a renewed motion for judgment as a matter of law under Rule 50(b) may be granted only if the movant demonstrates "that the jury's findings, presumed or express, are not supported by...
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