In an action alleging both patent infringement and misappropriation of trade secrets, an inventor cannot “have it both ways” by relying on the disclosures of his patent to claim an invention he purposefully shielded from the public as a trade secret.
Alleging patent infringement and misappropriation of trade secrets, the patentee filed suit against a former employee and his competing arms manufacturing company. The original patent and its reissue both claimed a handguard device that attaches to military rifles. In its summary judgment ruling, the district court held that the written description disclosed a handguard that attaches to both the barrel nut of the gun and a second attachment point. However, the court had already construed the asserted claims in such a way that they covered the invention of a handguard that attaches solely to the barrel nut of the gun. Since the asserted claims covered a subject matter that was not disclosed in the specification, the patent failed to meet the written description requirement and was held to be invalid. At trial on the Massachusetts state law claims, a jury awarded the patentee more than $1.8 million in damages, finding that its trade secrets had been misappropriated and that its former employee had breached his fiduciary duty. All parties filed appeals to the Federal Circuit.
Reviewing the district court’s summary judgment and claim construction decisions de novo, the Federal Circuit agreed that the specification of the patent-in-suit clearly did not disclose an invention where the barrel nut is the only attachment point for the handguard. The asserted claims, however, by their plain meaning, were clearly intended to cover such an invention. Since the accused product undisputedly includes a barrel nut only attachment design, the patentee had supported claim constructions that would cover that design. But the specification failed to describe this broader invention, so the Federal Circuit affirmed the invalidity of the patent due to its failure to meet the written description requirement.
The Federal Circuit also acknowledged that its decision on invalidity was bolstered by the fact that the patentee claimed its trade secret was a barrel nut only attachment design. The court recognized that an invention disclosed in a patent cannot be a trade secret. Applying First Circuit and Massachusetts state law, the Federal Circuit refused to find error with the jury’s verdict since a reasonable jury could have found that a trade secret did exist. However, due to issues of jury taint, the court went on to vacate the jury’s verdict and reversed the district court’s denial of the alleged infringer’s motion for a mistrial.
A copy of the opinion can be found here.