Iconics, Inc. v. Massaro

266 F. Supp. 3d 449
District Court, D. Massachusetts·Decided July 19, 2017·No. CIVIL ACTION NO. 11-11526-DPW·Published·Cited by 6 cases

Opinion

MEMORANDUM AND ORDER

DOUGLAS P. WOODLOCK, UNITED STATES DISTRICT

Defendants Simone Massaro, BaxEner-gy GmbH, Christopher Volpe, BaxEnergy [452] Italia, and Vento Industries have moved [Dkt. No. 543] for summary judgment as to plaintiff Iconics’; trade secret misappropriation claims.1

Iconics alleges that defendants misappropriated its trade secrets in developing the Energy Studio Pro product. To establish misappropriation of trade secrets under Massachusetts law, a plaintiff must show “1) the information is a trade secret; 2) the plaintiff took reasonable steps to preserve .the secrecy of the information; and 3) the defendant used improper means, in breach of a confidential relationship, to acquire and use the trade secret.” Incase Inc. v. Timex Corp., 488 F.3d 46, 52 (1st Cir. 2007); see also J.T. Healy & Son, Inc. v. James A. Murphy & Son, Inc., 357 Mass. 728,260 N.E.2d 723, 730-32 (1970).2 For the core first element, Massachusetts defines a. trade secret as “any formula, pattern, device or compilation of information which is used in one’s business, and which gives him' an opportunity to obtain an advantage over competitors who do not know or use it.” J.T. Healy & Son, Inc., 260 N.E.2d at 729 (citing Restatement (First) of Torts § 757, comment b). But, as the name suggests, a trade secret must be a secret; “[m]atters of public knowledge or of general knowledge in an industry cannot be appropriated by one as his secret.” Id.

There are three asserted trade secrets remaining at issue in this case; these relate to the core architecture, data intake, and workflow. In their motion for summary judgment, defendants open two lines of attack. First, they argue that they did not misappropriate Iconics’ asserted trade secrets. Second, defendants argue that the asserted subjects are .not in fact trade secrets, either because Iconics publicly disclosed tliem or because they .involve the sort of public or general knowledge beyond trade secret protection.

I consider the. arguments concerning each of the asserted trade secrets in turn.

I. CORE ARCHITECTURE

Iconics’ first asserted trade secret concerns its core architecture. In its Narrative Description of asserted trade secrets, Iconics defines the core architecture trade secret as “the presence and arrangement of’ several specified components, “the functionality of those components, and how they interact with and relate to one another.” The narrative description provides a graphic representation of how’ Iconics implements the core architecture trade secret and lists the eight components that are a part of the implementation. Iconics explains how its core architecture “has been developed over a number of years” and therefore “reflects innumerable small tradeoffs and optimizations.” According to Iconics, the core architecture trade secret would be particularly useful to a software developer in the early stages of development, because the new developer could [453] utilize these benefits without having to invest the time and energy it took Iconics to realize them. ■

A. Misappropriation

Iconics does not dispute, tjiat its core architecture trade secret was publicly disclosed, on April 9, 2009, when an earlier Iconics, patent application was published. Atl. Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1357 (Fed. Cir. 2011) (applying Massachusetts law and concluding “[t]hat which is disclosed in a patent cannot be a trade secret”). Iconics claims, however, that Massaro misappropriated the core architecture trade secret, during the brief window of time between his departure from Iconics in January 2009 and the public disclosure on April 9,2009.

Defendants argue that Iconics has presented ' no direct evidence that Massaro worked on any code employing the core architecture trade secret before April 9, 2009. They note that the earliest code potentially relevant to the asserted trade secret was not checked in until .February 2010. Responding to Iconics’ claim that Massaro’s company AnteaSoft may have written some code incorporating three of the eight components of the core architecture before April 2009, defendants assert that use of three components would not qualify as misappropriation of the trade secret. Defendants contend the core architecture trade secret must .be viewed as all eight components and their interrelations. See American Airlines, Inc. v. KLM Royal Dutch Airlines, Inc., 114 F.3d 108, 111-12 (8th Cir. 1997) (expert’s testimony that “the specific combination of all five elements constituted a trade secret” meant combination of fewer than five elements would not constitute the trade secret).

In response, Iconics adduces evidence-it contends indicates that the full core architecture was misappropriated between January. 2009 and April 9, 2009. It points to several communications between Massaro and Mr. Bax in February 2009 regarding software Massaro was developing for Bax Wind Power, including one email where Massaro stated he was working on the “architectural overview” of the software. Iconics also explains that it cannot identify any relevant code developed before February 2010 because defendants have failed to turn over any code or early design documents from that time period. Finally, setting aside the question whether defendants misappropriated before April, 9, 2009, Iconics’ expert Christian Hicks opines that BaxEnergy employs the core architecture trade secret in Energy Studio Pro, basing his conclusion on both BaxEnergy’s source code and its technical design. In their initial motion for summary judgment, defendants by contrast cite the report of their expert Arthur Zatarain, who concludes that BaxEnergy does not employ the core architecture trade secret.

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

Iconics, Inc. v. Massaro, 266 F. Supp. 3d 449 (D. Mass. 2017).

266 F. Supp. 3d 449 (Iconics, Inc. v. Massaro) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related