Evans v. General Motors Corp.

• Citation: 976 A.2d 84,51 Conn.Sup. 44
• Decision Date: 13 September 2007
• Docket Number: No. X06-CV-94-0156090-S.,X06-CV-94-0156090-S.
• Court: Connecticut Superior Court
• Parties: John W. EVANS et al. v. GENERAL MOTORS CORPORATION.

976 A.2d 84

51 Conn.Sup. 44

John W. EVANS et al. v. GENERAL MOTORS CORPORATION.

No. X06-CV-94-0156090-S.

Superior Court of Connecticut, Complex Litigation Docket, Judicial District of Waterbury.

September 13, 2007.

Robert J. Silverman, pro hac vice, for the plaintiffs.

Jonathan F. Putnam, pro hac vice, New York City, for the defendant.

STEVENS, J.

STATEMENT OF THE CASE

This action commenced in January, 1994. The plaintiffs are John W. Evans and Evans Cooling Systems, Inc., and the defendant is General Motors Corporation (General Motors). The operative complaint is the amended complaint filed in April, 2001. This complaint alleges that Evans is an inventor of automotive cooling system techniques and improvements, and that Evans Cooling Systems, Inc., is a corporation in the business of research, development, design, manufacture and sale of automobile component parts and systems. The plaintiffs further allege that Evans invented an automotive cooling system called the Evans aqueous reverse flow cooling system (Evans system), and that the plaintiffs own the rights to the Evans system technology. The gravamen of the plaintiffs' complaint is their claim that General Motors misappropriated a trade secret of the Evans system during a demonstration of the technology at the General Motors test facility in March, 1989. The specific allegations are as follows.

Upon the request of General Motors, Evans entered into an agreement to perform a "black box" presentation of the Evans system, whereby the trade secret technologies would not be disclosed or submitted to General Motors. This presentation was done on March 16 and 17, 1989, for General Motors engineers and technicians. At some point during this two day demonstration, General Motors violated the "black box" agreement by examining the test car containing the Evans system and misappropriating the trade secret. General Motors later revealed the trade secret in publications, to the press, and by employing the system in its 1992 Corvette and various other automobiles. General Motors sold and continues to sell vehicles with engines using the plaintiffs' trade secret, including, inter alia, the Gen II and Gen III engines. This public disclosure by General Motors prevented the plaintiffs from obtaining patents on the Evans system, causing them "enormous economic loss." General Motors' actions also have caused Evans to lose personal and business credit, and to suffer psychological and physical damages, as well as loss of reputation.

The amended complaint asserts five counts. The plaintiffs demand damages for misappropriation of a trade secret in violation of the Connecticut Uniform Trade Secrets Act (CUTSA), General Statutes § 35-50 et seq., misappropriation of a trade secret under the common law of Michigan, violation of the Connecticut Unfair Trade Practices Act, General Statutes § 42a-110a et seq., breach of contract, and breach of the implied covenant of good faith and fair dealing.¹

Within one week after the commencement of this action in 1994, Evans Cooling Systems, Inc., filed a complaint in the United States District Court for the District of Connecticut in Hartford alleging a claim of patent infringement. On February 9, 1994, the state case was removed to the federal court, and the two cases were consolidated for trial.

On September 30, 1996, the District Court granted General Motors' motion for summary judgment. The court found that Evans filed the patent application on July 1, 1992, and that the patent was issued on October 26, 1993. The court further found that General Motors had placed engine cooling systems invoking the plaintiffs' invention for sale in its 1992 Corvette models more than one year before Evans filed his patent application. On these facts, the District Court held that the patent application was not timely filed and that under the "on sale" provision of the patent statutes, the patent was invalid and could not support the plaintiffs' claim for patent infringement. Evans Cooling Systems, Inc. v. General Motors Corp., 939 F.Supp. 154, 156 (D.Conn.1996), aff'd, 125 F.3d 1448 (Fed.Cir.1997), cert. denied, 522 U.S. 1115, 118 S.Ct. 1050, 140 L.Ed.2d 113 (1998). "An inventor who does not promptly seek a patent runs the risk of losing the right to obtain a patent. Under 35 U.S.C. § 102(b), an inventor loses his or her right to obtain a patent if the invention was `on sale' more than one year prior to the date of the patent application. The on sale bar is not limited to sales by the inventor or one under his control, but may result from activities of a third party." (Internal quotation marks omitted.) Evans Cooling Systems, Inc. v. General Motors Corp., supra, at 155. The District Court ruling was affirmed on appeal. Evans Cooling Systems, Inc. v. General Motors Corp., 125 F.3d 1448, 1453 (Fed.Cir.1997), cert. denied, 522 U.S. 1115, 118 S.Ct. 1050, 140 L.Ed.2d 113 (1998). After this affirmance, the case was remanded to the state court for adjudication of the plaintiffs' state law claims.

The initial complaint filed in this case in 1994 was primarily directed to General Motors' Gen II engine. That engine was discontinued in 1997, and was succeeded by the Gen III engine. As previously discussed, the 1994 complaint was amended in April, 2001. This amended complaint asserts claims involving both the Gen II and Gen III engines, and became the operative complaint without objection.

In July, 2001, the plaintiffs filed a motion to compel discovery on issues involving the Gen III engine cooling system. General Motors objected, claiming that it would be unduly prejudicial to allow discovery on the Gen III engine because this engine was not introduced until 1997 and was not a part of the original complaint. On August 23, 2001, the court, McWeeny, J., agreed with General Motors and denied the plaintiffs' motion to compel. The effect of that decision was to preclude the plaintiffs from asserting at trial any claims relating to the Gen III engine.

In August, 2003, following a court trial, Judge McWeeny ruled that the special defenses of license and release as asserted by General Motors completely barred the plaintiffs' claims for damages for misappropriation of a trade secret. The plaintiffs appealed from that decision. In March, 2006, our Supreme Court reversed the judgment of the trial court, holding that the "trial court improperly denied the plaintiffs their right to, a jury trial on their trade secrets claims...." Evans v. General Motors Corp., 277 Conn. 496, 519, 893 A.2d 371 (2006). The case is now before this court for a jury trial on remand from the Supreme Court. Id., at 526, 893 A.2d 371.

Immediately on remand, General Motors moved the trial court to preclude any evidence "pertaining to its Gen III engines at the retrial of this case because ... such evidence is irrelevant to the plaintiffs' claims of misappropriation of trade secrets and allowance of the admission of such evidence at trial would prejudice [General Motors]." Evans v. General Motors Corp., Superior Court, judicial district of Waterbury, Complex Litigation Docket, Docket No. X06 CV 94 0156090, 2006 WL 2627407 (August 28, 2006) (Alander, J.). In this motion, General Motors maintained that on the basis of the pleadings and discovery in the case, the plaintiffs' trade secret claims were limited to reverse flow engine cooling systems and that the Gen III engines do not use this type of cooling system. Id. In a decision issued on August 28, 2006, the court, Alander, J., denied General Motors' motion to preclude, effectively reconsidering Judge McWeeny's earlier decision denying the plaintiffs' motion to compel discovery on the Gen III engine. The court found that even if the plaintiffs had limited their claims to the Gen II engine prior to April, 2001, they clearly had expanded their claims to include the Gen III engine in the amended complaint filed in April, 2001, without objection. Moreover, General Motors expressly addressed the Gen III claims in its May, 2001 answer to the amended complaint. The amended complaint alleges that the cooling venting techniques of the Evans system constitute a trade secret, that General Motors sold engines using this system, and that Gen III engines are among these engines. The court therefore concluded that evidence regarding the Gen III engine is relevant to the claims raised in the amended complaint and denied General Motors' motion to preclude this evidence. Id.

Now pending before the court, is General Motors' motion for a protective order or, in the alternative, motion for summary judgment, regarding any claims by the plaintiffs that are based on the Gen III engine. The motion was heard on October 30, 2006. Since that date, supplemental briefing has occurred,² including that requested by the court concerning the application of the federal preemption doctrine raised by General Motors in its memoranda, but not fully addressed by the parties. For the following reasons, General Motors' motion for a protective order is denied but the alternative motion for partial summary judgment is granted. Judgment shall enter as a dismissal as to all of the plaintiffs' claims for relief under all counts of the amended complaint arising after the issuance of the patent on October 26, 1993, which claims include the plaintiffs' demand for damages involving the Gen III engine.

DISCUSSION

I

Summary judgment shall be rendered if the pleadings, affidavits and any other proof submitted show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. Practice Book § 17-49. The moving party has the burden of showing the absence of any genuine issue of material fact and therefore a right to summary judgment. D.H.R. Construction Co. v. Donnelly, 180 Conn. 430, 434, 429 A.2d 908 (1980). "[T]he party opposing such a motion must provide an evidentiary foundation to demonstrate the existence of a genuine issue...