Big Vision Private Ltd. v. E.I. Dupont De Nemours & Co.

• Decision Date: 03 March 2014
• Docket Number: No. 11 Civ. 8511(KPF).,11 Civ. 8511(KPF).
• Citation: 1 F.Supp.3d 224
• Court: U.S. District Court — Southern District of New York
• Parties: BIG VISION PRIVATE LTD., Plaintiff, v. E.I. DuPONT DE NEMOURS & CO., Defendant.

1 F.Supp.3d 224

BIG VISION PRIVATE LTD., Plaintiff,

v.E.I. DuPONT DE NEMOURS & CO., Defendant.

No. 11 Civ. 8511(KPF).

United States District Court, S.D. New York.

Signed Feb. 10, 2014.

Filed March 3, 2014.

Ariel Lavinbuk, Gary A. Orseck, Kathryn Schaefer Zecca, Lawrence Saul Robbins, Robbins, Russell, Englert, Orseck, Untereiner & Sauber LLP, Washington, DC, for Plaintiff.

Edward Stephen Bloomberg, Aaron Michael Schue, Anna Liza Robles Mercado, Phillips Lytle LLP, New York, NY, Michael James Berchou, Phillips Lytle LLP, Buffalo, NY, for Defendant.

OPINION AND ORDER

KATHERINE POLK FAILLA, District Judge.

On November 23, 2011, Plaintiff Big Vision Private Limited (“Big Vision” or “Plaintiff”) initiated the instant action against Defendant E.I. DuPont De Nemours & Co. (“DuPont” or “Defendant”), alleging breach of contract, unfair competition, and misappropriation of trade secrets. Broadly speaking, Big Vision claims that (i) DuPont misappropriated its five-element trade secret method for producing recyclable banners over the course of three laboratory trials attended by both Big Vision and DuPont in 2008 and 2009, and (ii) its trade secret is reflected in several DuPont patent applications and in certain recyclable banner products that DuPont introduced to the market between 2009 and 2011. Pending before the Court is DuPont's motion for summary judgment. For the reasons set forth in the remainder of this Opinion, the motion is granted.

BACKGROUND¹

A. Factual Background1. The Parties and the Claims

Plaintiff Big Vision is a digital printing company with approximately 50 employees, headquartered in Mumbai, India. (Compl. ¶ 6; S. Visaria Tr. 10). ² Big Vision has over 15 years' experience printing advertising banners and billboards. (Compl. ¶¶ 1, 6; Pl. 56.1 ¶ 139).

Defendant DuPont is a Delaware corporation headquartered in Wilmington, Delaware. (Def. 56.1 ¶ 1). DuPont's Tyvek® is a recyclable, nonwoven substrate made from polyethylene that has been used for over 20 years as an advertising banner. ( Id. at ¶ 52). Coated, recyclable Tyvek products have been developed and sold for at least 10 years by several companies. ( Id. at ¶ 53). DuPont also produces and sells specialty polymers and resins, such as Entira®, and commodity pigments such as titanium dioxide (“TiO2”). ( Id. at ¶ 2).³

Big Vision alleges that DuPont misappropriated its five-element trade secret for producing recyclable banners, which it defines in its briefing as: (i) a “suitably strong nonwoven polyolefin central layer”; (ii) “high pigment levels, including CaCO3”; (iii) “a layered structure efficiently made by coextrusion or lamination of a predominantly LDPE structure”; (iv) “minimal use of Entira or other expensive resins”; and (v) “surface treatment.” (Pl. 56.1 ¶ 159; Pl. Opp. 23–24). Related to this claim is a claim for breach of contract, which Big Vision predicates on two non-disclosure agreements between the parties, and a claim for unfair competition. A careful review of the record—set forth herein with particular focus on the disclosures made by, and the agreements reached between, the parties—is essential to understanding the arguments now made to this Court.

2. Banner Production Generally

Banners are commonly produced by “extruding,” or coating, polyvinyl chloride (“PVC”), a polymer, onto the surface of a base, or “substrate,” which is usually a lightweight, woven fabric, such as polyester. (Def. 56.1 ¶¶ 5, 6). PVC banners are not recyclable. ( Id. at ¶ 8; Compl. ¶ 12). Substrates can also be made of polyethylene (“PE”) or polypropylene (“PP”), both of which are of the class of polymers known as polyolefins, and both of which can, in certain circumstances, be recyclable. (Benim Decl. ¶ 9; S. Visaria Tr. 87–88).

Extrusion coating equipment coats the substrate one layer at a time, while coextrusion coating equipment coats the substrate with two or more layers simultaneously. (Def. 56.1 ¶ 10). The layers of the banner are referred to as the banner's “structure,” and are commonly referred to with letter designations, as, for example, “A/B/A” or “A/B.” (Ronaghan Tr. 10–11).

The “masterbatch” is a customizable commercial blend of one or more additives in various concentrations that can be extruded onto the substrate. (Def. 56.1 ¶ 6). Various other materials, including resins and additives, can be added to the masterbatch or extruded separately to confer certain physical qualities onto the banner, such as opacity or a silky finish. ( Id.).

Materials to be coated can include expensive, specialty resins like DuPont's Entira,and inexpensive, commodity resins like Low Density Polyethylene (“LDPE”). (Def. 56.1 ¶¶ 7, 57). LDPE is a widely-used and cost-effective extrusion coating resin. ( Id. at ¶ 85; Ex. 6 at 5 (Defendant's expert noting that LDPE is “widely known to be the least expensive and easiest to process resin for extrusion coating”); Reitman Tr. 216; Shokar Tr. 19–20 (noting that LDPE was the “most widely-used and cost-effective extrusion coating resin”)). Other ingredients may include titanium dioxide (TiO2), one of the most-commonly used whitening elements worldwide. (Ex. 6 at 15 (noting that TiO2 is “the best of the opacifiers”)). Calcium carbonate (CaCO3) is also frequently used to improve printability in the top layer of the banner, or as a filler or whitening agent. ( Id. at 14).

3. Big Vision Explores the Recyclable Banner Market

a. The Decision to Develop Recyclable Banners

In early 2007, perceiving a need in the market, Big Vision began exploring a project to develop cost-competitive recyclable banners for its own use and for resale. (Pl. 56.1 ¶¶ 140–41). In or around April 2007, Big Vision retained a polymer expert with experience in product development, Dr. Yatish Vasudeo, to assist in developing a recyclable banner. ( Id. at ¶ 144). Big Vision then entered into a written confidentiality agreement with Dr. Vasudeo that, inter alia, prevented him from disclosing Big Vision's “business and manufacturing secrets.” ( Id. at ¶ 148; Ex. 150).

b. Circulation of the Circle Graphics Article and Subsequent Patent Searches

In April 2007, Manish Avashia, the executive director of Big Vision, circulated an article to the company's managing director, Shailesh Visaria (“Visaria”), and to Dr. Vasudeo from “Sign of the Times,” a U.S.-based trade publication. (Def. 56.1 ¶ 86; Pl. 56.1 ¶ 139; Avashia Tr. 8; Ex. 44). The article concerned a recyclable banner patent recently filed by Circle Graphics, a Denver-based printing company (the “Circle Graphics Patent”). (Ex. 44). ⁴ Shortly thereafter, Visaria began conducting patent searches on the Internet, in the course of which he found and reviewed a number of patents related to recyclable banners, including ones filed by Circle Graphics and 3M (the “3M Patent”).⁵ (S. Visaria Tr. 131–32, 174–76).⁶ Visaria also obtained a recyclable banner sample from InterWrap shortly thereafter. (S. Visaria Tr. 107, 150).⁷

c. Big Vision Produces a Test Film at Charu Plastics

As part of its recyclable banner development project, in April 2007, Big Vision contacted Charu Plastics in Indore, India, and asked them to produce a blown, white, opaque film with CaCO3, TiO2, and corona treatment. (Pl. 56.1 ¶¶ 145–46; S. Visaria Tr. 120, 122; Ex. 29). In his initial e-mail communication with Charu Plastics, Visaria attached a copy of the “Sign of the Times” article regarding Circle Graphics' patent for recyclable banners. (Ex. 29).

Around June 2007, Charu Plastics produced a blown film for Big Vision that included CaCO3, TiO2, LDPE, and corona treatment. (Pl. 56.1 ¶ 145; S. Visaria Tr. 122). Shailesh Visaria and Urmil Visaria (“Urmil”), the manager of marketing at Big Vision and Shailesh's nephew, provided different accounts of how the film came to be produced. (U. Visaria Tr. 14, 18). Urmil testified that his uncle instructed him to give Charu Plastics a pre-mixed blend of TiO2, CaCO3, and LDPE, and that Charu Plastics later added in LLDPE. ( Id. at 57–58).

Visaria testified, by contrast, that “[w]e asked [Charu Plastics] for [a] white opaque film with calcium carbonate and TiO2 with corona treatment,” but did not specify the amount of TiO2 or CaCO3 to use. (S. Visaria Tr. 122–23).⁸ Visaria further testified that Big Vision did not know the precise amounts of ingredients used in the film, since Big Vision did not send the final product out for analysis. ( Id. at 122–23). While Big Vision concededly did not enter into a written non-disclosure agreement with Charu Plastics, Visaria testified that Big Vision “didn't tell [Charu Plastics] what the intentions of the film” were and “didn't give them any [of the] structure [s].” ( Id. at 121–22).

d. Big Vision Seeks a Manufacturer

Big Vision began contacting manufacturers in 2007 and 2008 with the intention of purchasing its own machinery to manufacture recyclable banners. (Pl. 56.1 ¶ 147). In early 2007, Big Vision contacted various manufacturers and disclosed the “recipe” from the 3M Patent as its intended formulation. (Ex. 63, 64, 65; S. Visaria Tr. 188–92, 194).⁹ That formulation included the specific percentages of the ingredients for, and structure of, each layer. ( See Ex. 63, 65).¹⁰ Big Vision did not enter into confidentialityagreements with these manufacturers, but Visaria testified that he had an “understanding of confidentiality” or an “understanding of confidentiality orally” with them. (S. Visaria Tr. 188, 191–93).

Big Vision then turned to Davis–Standard, a noted manufacturer of extrusion and coextrusion equipment. (Def. 56.1 ¶ 13). In May 2007, Shailesh Visaria met Philip Tan, a sales representative from Davis–Standard. (S. Visaria Tr. 145–46). Visaria testified that he told Tan that Big Vision “wanted to manufacture a polyethylene film,” and may have discussed the Circle Graphics Patent with Tan. ( Id. at 145–47). In April 2008, Big Vision entered into a contract with Davis–Standard for the production of an extrusion coating line. (Ex. 32). Visaria...