DANIELI CORPORATION v. SMS GROUP, INC.

District Court, W.D. Pennsylvania·Decided November 14, 2024·No. 2:21-cv-01716·Unknown

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA

DANIELI CORPORATION and DANIELI & C. OFFICINE MECCANICHE S.P.A., Plaintiffs, Civil Action No. 2:21-cv-1716 v. Hon. William S. Stickman IV SMS GROUP, INC., SMS GROUP GMBH, and STEEL DYNAMICS, INC., Defendants.

MEMORANDUM OPINION WILLIAM S. STICKMAN IV, United States District Judge I. INTRODUCTION Plaintiffs Danieli Corporation and Danieli & C. Officine Meccaniche S.p.A. (collectively “Danieli’”) filed a four-count amended complaint (“Amended Complaint”) against Defendants SMS Group, Inc. and SMS Group GMBH (collectively “SMS”) and Steel Dynamics, Inc. (“SDI’). (ECF No. 171). In response, SMS asserted five counterclaims against Danieli. (ECF No. 188). SMS brought claims for unfair competition (Count I), unjust enrichment (Count ID), tortious interference with contractual relations (Count III), tortious interference with prospective contractual relations (Count IV), and abuse of process (Count V). (/d. 130-68). Pending before the Court is Danieli’s Motion for Summary Judgment Against SMS (“Motion”) as to all of SMS’s counterclaims asserted against Danieli.! (ECF No. 441). For the following reasons, Danieli’s Motion will be denied. Specifically, Counterclaims I and IV will

a SMS informed the Court at the June 21, 2024, oral argument that it would not be pursuing its unjust enrichment claim. (ECF No. 534, p. 51). Accordingly, the Court will only consider Danieli’s Motion as asserted against SMS’s four remaining counterclaims.

proceed to trial because these claims are replete with disputed issues of fact that must be submitted to ajury. Likewise, as to Counts III and V, the Court holds that issues of fact preclude a finding that Danieli’s actions are protected by the Noerr-Pennington doctrine. Il. FACTUAL BACKGROUND The facts relevant to SMS’s counterclaims generally arise from two occurrences—alleged misconduct by Danieli in 2015 through 2016 in connection with a bid for a steel plant in China and, in 2021, Danieli’s decision to initiate this litigation by filing its complaint against SMS and SDI alleging, inter alia, misappropriation of its trade secrets. While there is some agreement between the parties, for the most part, the facts are hotly contested. It is undisputed that from 2015 to 2016, Danieli and SMS proposed competing bids to a steel manufacturer in China named Shougang Jingtang (“Shougang’’) to supply Shougang with a steel slab caster. (ECF No. 445, J 7); (ECF No. 454, p. 12). SMS submitted a joint bid with POSCO. (ECF No. 445, 9 8); (ECF No. 454, p. 12). It is undisputed that POSCO had an early relationship with Danieli for the development of technology called the “CEM Caster.” (ECF No. 445, {§ 1-5). The parties further agree that, as a general matter, POSCO was responsible for the caster roll diagram and SMS was responsible for all other equipment, though SMS and Danieli dispute the degree of SMS’s involvement in the creation of the roll diagram. (ECF No. 445, § 8); (ECF No. 454, p. 12). Danieli’s proposed roll diagram for Shougang was entitled “QSP1.” (ECF No. 445, § 9); (ECF No. 454, p. 13). Danieli contends that its proposal resulted from “three decades of experience with designing, building, and commissioning high speed VLB casters.” (ECF No. 445, ¢ 10). SMS counters that Danieli’s QSP1 roll diagram derived from well-known design principles. (ECF No. 454, p. 13). After submitting its roll diagram to Shougang, on or about February 26, 2016,

Andrea Carboni (“Carboni”), Danieli’s then-chief technology officer, met with Mr. Yang, the project manager for Shougang, to discuss Danieli’s proposal. (ECF No. 445, ¥ 12); (ECF No. 454, p. 15). During the meeting, Mr. Carboni learned more about Shougang’s preferences, specifically that it sought a design that prioritized improving bulging control, even at the expense of roll life and maintenance costs. (ECF No. 445, 4 13); (ECF No. 454, p. 15). That same day, Mr. Carboni emailed two Danieli engineers to instruct them to prepare an updated roll diagram for Shougang. (ECF No. 445, J 15); (ECF No. 454, p. 17). That email stated: Today we discussed with Mr Yang the concept of aur Rol Diagram for DUE. In principle they understand and appreciated the modification we did compared with original CEM . We are in the right direction, but as expected they told us that POSCO did deeper modification to solve the problem of the caster, Of course spreading shit on Danieli .( true or not POSCO is believed as the GOD1) And they are worried if we do not do the same. In conclusion , after a long and political discussion , we agreed to be open to consider any suggestion and include it after a technical evaluation in our solution. Customer is happy and finally they started to pass us some sensitive information about what they got from POSCO . Not numbers but concepts because POSCO did not give them any details. This is strictly confidential And this is also a confirmation that they want to go on with US. in conclusion they are asking to: 1. Improve bulging in top zone and bender. 2. To use 3 set of roli diameter/pitch in segment 1- 6 instead of 2 sets ( 3 types of segment instead of two) 3. They acknowledge that this requires more maintenance and more spares, but they accept So we have to: 1. Reconsider the roll diameter and pitch in bender. Bulging has to be lower than CEM . FOuss bre ssan tor loaadisthibition and. Harder material for thatt dad supnbi ts Wee please advise) 2. To consider three types of segment in bow (1-2 , 3-4, 5-6} 3, Sleeve ral! up to segment 4. 4. Bulging has to be lower than CEM ( original D&C) in all the metallurgical length in the bow , lower equal in horizontal part. 5. To reduce driven roll diameter to smooth down the peaks of bulging due to the different diameters. it is clear that there will be some compromise on safety factors and lifetirme but: 1. SGIT gives priority to technology 2. WE did not give guarantees on life of roll/bearing Please prepare the new Roll Diagram by next Monday /Tuesday. In the presentation we need also to include a description on how we calculate bulging, strain and loads. We promised the submission but Thursday next week . 1 will be back in Beijing to discuss it . BAF organize yourself to be with me Thursday/Friday next week. Thanks Andrea Carboni (ECF No. 447-19, p. 4). Over the next three days, the Danieli engineers created the “QSP2” roll diagram. (ECF No. 445, { 16); (ECF No. 454, p. 17). SMS believes that this email demonstrates that Shougang passed information relating to the SMS/POSCO bid to Danieli. (ECF No. 454, pp. 15-17). SMS contends that Danieli then used SMS’s information to redesign its own submission in only two days to be more desirable to Shougang. (/d. at 14-20). Danieli, on the other hand,

acknowledges that it was passed “sensitive information,” but claims that this information related only to where its existing bid was ranked by Shougang. (ECF No. 445, ¢ 19). In SMS and POSCO’s jointly submitted proposal, they included a “fake” or “for reference” roll diagram. (ECF No. 445, 4 48); (ECF No. 454, pp. 26-27, 32). An “actual” design was created for the Shougang bid, but SMS and POSCO attempted to ensure that the details of this design were not entirely disclosed to Shougang. (ECF No. 445, {ff 48-53); (ECF No. 454, pp. 26-36). A key fact in dispute is whether Danieli possessed SMS and POSCO’s actual design prior to developing its QSP2. (ECF No. 445, q 55); (ECF No. 454, pp. 36-37). Danieli claims it could not have received the actual SMS/POSCO design because Shougang had only received a fake design. (ECF No. 445, 9] 55-58). However, SMS contends that Shougang, in fact, had the real roll diagram because, in September 2015, POSCO had inadvertently sent the real roll diagram information to Shougang. (ECF No. 454, p. 18). Further, SMS and POSCO previously showed Shougang its real roll geometry during an in-person meeting. (/d.

Free access — add to your briefcase to read the full text and ask questions with AI

DANIELI CORPORATION v. SMS GROUP, INC., (W.D. Pa. 2024).

DANIELI CORPORATION v. SMS GROUP, INC. (DANIELI CORPORATION v. SMS GROUP, INC.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related

Anderson v. Liberty Lobby, Inc.
477 U.S. 242 (Supreme Court, 1986)
Lujan v. Defenders of Wildlife
504 U.S. 555 (Supreme Court, 1992)
We, Inc. v. City of Philadelphia
174 F.3d 322 (Third Circuit, 1999)
ACUMED LLC v. Advanced Surgical Services, Inc.
561 F.3d 199 (Third Circuit, 2009)
Building Materials Corp. of America v. Rotter
535 F. Supp. 2d 518 (E.D. Pennsylvania, 2008)
Yeager's Fuel, Inc. v. Pennsylvania Power & Light Co.
953 F. Supp. 617 (E.D. Pennsylvania, 1997)
Thompson Coal Co. v. Pike Coal Co.
412 A.2d 466 (Supreme Court of Pennsylvania, 1979)
Pennsylvania State University v. University Orthopedics, Ltd.
706 A.2d 863 (Superior Court of Pennsylvania, 1998)
Carl A. Colteryahn Dairy, Inc. v. Dairy
203 A.2d 469 (Supreme Court of Pennsylvania, 1964)
In Re Flonase Antitrust Litigation
795 F. Supp. 2d 300 (E.D. Pennsylvania, 2011)
USX Corp. v. Adriatic Insurance Co.
99 F. Supp. 2d 593 (W.D. Pennsylvania, 2000)
ID Security Systems Canada, Inc. v. Checkpoint Systems, Inc.
249 F. Supp. 2d 622 (E.D. Pennsylvania, 2003)
VIM, INC. v. Somerset Hotel Ass'n
19 F. Supp. 2d 422 (W.D. Pennsylvania, 1998)