Coda Dev. S.R.O. v. Goodyear Tire & Rubber Co.

• Decision Date: 30 September 2021
• Docket Number: CASE NO. 5:15-cv-1572
• Citation: 565 F.Supp.3d 978
• Parties: CODA DEVELOPMENT S.R.O., Coda Innovations s.r.o., and Frantisek Hrabal, Plaintiffs, v. GOODYEAR TIRE & RUBBER COMPANY and Robert Benedict, Defendants.
• Court: U.S. District Court — Northern District of Ohio

565 F.Supp.3d 978

CODA DEVELOPMENT S.R.O., Coda Innovations s.r.o., and Frantisek Hrabal, Plaintiffs,

v.GOODYEAR TIRE & RUBBER COMPANY and Robert Benedict, Defendants.

CASE NO. 5:15-cv-1572

United States District Court, N.D. Ohio, Eastern Division.

Signed September 30, 2021

Boyd T. Cloern, Erica L. Fruiterman, John M. Caracappa, Katherine D. Cappaert, Scott M. Richey, Steptoe & Johnson, Kassandra M. Officer, Timothy P. McAnulty, Finnegan Henderson Farabow Garrett & Dunner, Washington, DC, Emily K. Anglewicz, Jessica A. Lopez, Ronald S. Kopp, Roetzel & Andress, Akron, OH, James R. Nuttall, Jeremy S. Goldkind, Steptoe & Johnson, Chicago, IL, Julie C. Amadeo, Steptoe & Johnson, New York, NY, Michael E. Flynn-O'Brien, Bunsow De Mory, Redwood City, CA, for Plaintiffs Coda Development s.r.o., Coda Innovations s.r.o.

Boyd T. Cloern, Erica L. Fruiterman, John M. Caracappa, Kassandra M. Officer, Katherine D. Cappaert, Scott M. Richey, Steptoe & Johnson, Kassandra M. Officer, Timothy P. McAnulty, Finnegan Henderson Farabow Garrett & Dunner, Washington, DC, Emily K. Anglewicz, Jessica A. Lopez, Ronald S. Kopp, Roetzel & Andress, Akron, OH, James R. Nuttall, Jeremy S. Goldkind, Steptoe & Johnson, Chicago, IL, Julie C. Amadeo, Steptoe & Johnson, New York, NY, Michael E. Flynn-O'Brien, Bunsow De Mory, Redwood City, CA, for Plaintiff Frantisek Hrabal.

Calvin P. Griffith, David M. Maiorana, John Charles Evans, Kerry A. Barrett, Michael P. Atkins, Thomas R. Goots, Thomas S. Koglman, Jones Day, Cleveland, OH, for Defendants.

MEMORANDUM OPINION AND ORDER

SARA LIOI, UNITED STATES DISTRICT JUDGE

Before the Court are two motions for summary judgment filed by defendants Goodyear Tire & Rubber Company and Robert Benedict ("Benedict") (collectively "Goodyear" or "defendants").

The first motion seeks summary judgment on the remaining claims in the first amended complaint.¹ (Doc. No. 221 [Sealed], Defendants’ Motion for Summary Judgment on Plaintiffs’ Remaining Claims.) Plaintiffs Coda Development s.r.o., Coda Innovations s.r.o., and Frantisek Hrabal ("Hrabal") (collectively, "Coda" or "plaintiffs") filed a brief in opposition. (Doc. No. 244 [Sealed], Corrected Brief Opposing Defendants’ Motion for Summary Judgment on Plaintiffs’ Remaining Claims.) Goodyear filed a reply brief. (Doc. No. 254 [Sealed], Reply Memorandum in Support of Defendants’ Motion for Summary Judgment on Plaintiffs’ Remaining Claims.)²

The second motion, filed with leave, seeks summary judgment as to trade secret damages. (Doc. No. 222 [Sealed], Defendants’ Motion for Summary Judgment as to Trade Secret Damages.) Coda filed a brief in opposition. (Doc. No. 241 [Sealed], Coda's Opposition to Defendants’ Motion for Summary Judgment as to Trade Secret Damages.) Goodyear filed a reply brief. (Doc. No. 255 [Sealed], Reply in Support of Defendants’ Motion for Summary Judgment as to Trade Secret Damages.)³

The briefs are further supported by several declarations: Doc. No. 223 [Sealed], Declaration of David M. Maiorana in Support of Defendants’ Motion for Summary Judgment (2/8/2021); Doc. No. 230 [Sealed], Supplemental Declaration of David M. Maiorana (2/17/2021); Doc. No. 240 [Sealed], Declaration of Katherine D. Cappaert in Support of Coda's Opposition (5/5/2021); and Doc. No. 253 [Sealed], Declaration of David M. Maiorana in Support of Defendants’ Reply (6/4/2021).⁴

For the reasons set forth herein, Goodyear's motion for summary judgment on Coda's remaining claims is denied and Goodyear's motion for summary judgment as to trade secret damages is denied.

I. BACKGROUND

A. Procedural Summary

On August 9, 2015, Coda filed its complaint against Goodyear, Benedict, and a third defendant (who has since been dismissed), alleging various claims relating to the purported misappropriation by defendants of Coda's confidential and proprietary Self-Inflating Tire ("SIT") technology, invented by Hrabal (Coda's CEO) and allegedly orally disclosed to Goodyear under a non-disclosure agreement during the course of two meetings in January and June of 2009. The original complaint set forth thirteen claims for correction of inventorship under 35 U.S.C. § 256, one claim under the Lanham Act, and several state law claims (two for fraudulent non-disclosure, one for misappropriation of trade secrets, two for tortious interference with business relations/prospective economic advantage, one for negligent misrepresentation, and one for unjust enrichment).

Goodyear filed a motion to dismiss, which this Court granted on September 29, 2016. (See Doc. No. 30, Memorandum Opinion; Doc. No. 31, Judgment Entry.) On October 27, 2016, Coda filed a motion to amend the judgment or for relief from the judgment, along with a motion for leave to file an amended complaint. On September 26, 2017, the Court denied both motions (except for granting a correction to footnote 5 in the original dismissal order). (See Doc. No. 42, Memorandum Opinion and Order.)

Coda timely appealed both the dismissal order and the order denying relief from the judgment. On February 22, 2019, the Federal Circuit vacated this Court's orders and remanded for further proceedings. That court noted that it was "aware of no reason why [plaintiffs] should not be permitted to file their proposed amended complaint on remand." CODA Dev. s.r.o. v. Goodyear Tire & Rubber Co. , 916 F.3d 1350, 1362 (Fed. Cir. 2019).

Following remand, on April 15, 2019, Coda filed the first amended complaint setting forth five claims: three seeking correction of inventorship, one for misappropriation of trade secrets, and one for a declaratory judgment. (Doc. No. 53.⁵ ) Goodyear answered on May 13, 2019, having been granted an unopposed extension of time. (Doc. No. 57, Answer to First Amended Complaint.) On August 1, 2019, after consultation with counsel, the Court set the case management dates and deadlines. (See Doc. No. 66, Case Management Plan and Trial Order ["CMPTO"].⁶ )

Early in the course of discovery, during the first status conference under the case management plan—with both counsel and all party representatives participating (see Minute Order [non-document] (11/1/2019))—the Court discussed Goodyear's concern that "Coda refuses to ... provide a closed-ended response [to certain interrogatories.]" (Doc. No. 74, Defendants’ Notice of Discovery Dispute at 2.⁷ ) In an order issued following that status conference, the Court determined:

Under the peculiar circumstances of this case, where the alleged disclosure of trade secrets was entirely oral , the danger of plaintiffs "molding" their claims by way of subsequent supplementation of their original recollection of those two 2009 conversations is of particular concern. Plaintiffs claim they told defendants their trade secrets and defendants thereafter misappropriated them. Under that scenario, it is entirely reasonable for defendants to request ... that plaintiffs supply a "closed" recital of their recollection of what was orally imparted in the two meetings of limited duration in 2009.

(Doc. No. 82, Memorandum Opinion and Order at 7 (emphases in original).) The Court then ordered:

Accordingly, the Court will require that plaintiffs supply a "closed" response to [the relevant interrogatory[ies]], supplying sufficient specificity and description to permit defendants to know what discovery will be relevant and what specific claims of trade secret misappropriation they must defend against.

As a final caution, the Court directs plaintiffs to take this discovery mandate seriously and not provide a response so broad that it is meaningless or so incomplete, vague, and evasive that it is useless. Should the Court determine that plaintiffs fail in this regard, and do so purposefully, it will reserve the right to sanction plaintiffs up to and including dismissal. This is not prejudicial to plaintiffs because plaintiffs themselves are the ones who know what they said to defendants during the two meetings. There is no need to discover anything from the defendants in order for plaintiffs to write down their recollection of those meetings.⁵

⁵ Presumably, it was also plaintiffs themselves who made the choice to rely entirely upon an oral disclosure, which easily lends itself to the very situation the parties find themselves in now.

That said, although general supplementation will not be permitted, should it be determined that plaintiffs inadvertently failed to include something in their answer[s] ..., the Court will remain open to entertaining limited supplementation upon a showing of an exceptional reason for doing so.

(Id. at 7–8 (footnote and emphases in original).) Coda subsequently supplemented its responses to Goodyear's interrogatories. (See Doc. No. 223-20, Plaintiffs’ Supplemental Responses to Defendants’ First Set of Interrogatories.) In particular, Coda listed twenty-seven trade secrets that it allegedly disclosed to Goodyear relating to its SIT technology. (Id. at 24–27.) Since that supplementation, Coda has withdrawn ten of these listed claims of trade secret misappropriation, namely, nos. 6, 8–10, 12–14, 17, 21, and 26. (Doc. No. 223-1, Scott Richey Email to Calvin P. Griffith (2/3/2021) at 2.)

Following resolution of all discovery disputes and completion of discovery, Goodyear filed its two motions for summary judgment—one on the merits of Coda's remaining claims (Doc. No. 221) and the other on damages relating to trade secret misappropriation (Doc. No. 222). This order addresses each motion in turn, after reciting the underlying facts.

B. Underlying Facts

In their briefs, the parties recite some of the facts without specific reference to the record.⁸ This is not the best practice for summary judgment. Because the Court itself has no independent duty to search the record for support and because neither party has objected to the use of this technique, for some of this factual background, the Court will cite to the parties’ briefs, merely to set a context for this opinion, and will use pinpoint citations to the record only where...