Larry R. Moore v. Kulicke & Soffa Industries, Inc

318 F.3d 561, 65 U.S.P.Q. 2d (BNA) 1771, 2003 U.S. App. LEXIS 2081, 2003 WL 253626
CourtCourt of Appeals for the Third Circuit
DecidedFebruary 3, 2003
Docket02-1466
StatusPublished
Cited by42 cases

This text of 318 F.3d 561 (Larry R. Moore v. Kulicke & Soffa Industries, Inc) is published on Counsel Stack Legal Research, covering Court of Appeals for the Third Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Larry R. Moore v. Kulicke & Soffa Industries, Inc, 318 F.3d 561, 65 U.S.P.Q. 2d (BNA) 1771, 2003 U.S. App. LEXIS 2081, 2003 WL 253626 (3d Cir. 2003).

Opinions

OPINION OF THE COURT

BECKER, Chief Judge.

This is a trade secret misappropriation case arising under our diversity jurisdiction and governed by Pennsylvania law. At trial, the defense to the misappropriation claim was the “independent development” of the allegedly misappropriated technique. This appeal by plaintiff appellant Larry R. Moore (“Moore”) from a judgment entered on a jury verdict in favor of the defendant Kulicke & Sofia Industries, Inc. (“K&S”) presents the vexing question whether, in Pennsylvania trade secret law, independent development is an affirmative defense so that the proponent (here K&S) bears not only the burden of production but also the risk of non-persuasion, or whether raising the defense only shifts onto the proponent the burden of going forward, with the risk of non-persuasion remaining with the plaintiff. Although the question is close and difficult, we believe that Pennsylvania would conclude that only the burden of production is shifted when the defendant raises independent development, and that the ultimate burden of persuasion remains on the plaintiff to prove that the defendant did not arrive at a technique similar to the trade secret through its own independent development. Since Moore’s appeal challenges the jury instruction, and this is what the [564]*564District Court charged, we will affirm the judgment.

I.

K&S is a manufacturer and marketer of wire bonding equipment to companies involved in making computer chips for use in connecting the extremely small wires from semiconductor terminals to other components of computer chips. In 1981, Moore, an engineer, submitted a technical paper to a K&S consultant discussing a specific design approach and methodology for achieving greater speed and accuracy for the type of wire bonding machines that K&S manufactured. After reviewing the paper, K&S informed Moore that it had no interest in the information contained in his proposal. However, some time later, Moore learned that K&S was using in its equipment a wire-bonding technique that he believed was similar to the technique and information contained in the paper he had submitted. Moreover, Moore asserted that K&S had also obtained a patent using information similar to that contained in the proposal he had submitted to K&S.

Moore thereupon brought an action against K&S in the District Court for the Eastern District of Pennsylvania, setting forth a claim for trade secret misappropriation under Pennsylvania state law and a federal claim for copyright infringement. At the conclusion of the trial, the District Court instructed the jury:

If you find that the plaintiff has proven by a fair preponderance of the evidence that the defendant used the plaintiffs trade secret, and that the defendant did not arrive at the relevant wire bonding technique through independent invention, then you should find in favor of the plaintiff. On the other hand, if you determine that the wire bonding technique used by the defendant was developed through defendant’s own independent efforts and invention, then you must find in favor of the defendant.

Perhaps responding to the statement of counsel for K&S that “[bjurden of proof is a little slippery here,” the District Court had vocalized some concern about where to place the burden of proving independent development, representing that it had adopted the jury instruction proposed by K&S but “without the burden of proof on there.” However, the language of the jury charge placed the burden of proving independent development on the plaintiff: As noted above, the District Court asked the jury, in the charge, to consider whether “the plaintiff has proven by a fair preponderance of the evidence that the defendant used the plaintiffs trade secret, and that the defendant did not arrive at the relevant wire bonding technique through independent invention.” (emphasis added). Moreover, the Court, in the generalized portion of the charge, placed the burden of proof on Moore.1 Thus, under the Court’s trial procedure, the burden of production shifted to K&S to present some evidence of independent development, but Moore, under the charge, retained the burden of proving independent development by a preponderance of the evidence.

[565]*565Ultimately, the jury answered “no” to the following interrogatory:

Do you find that Plaintiff has proven by a preponderance of the evidence that he owned a trade secret which was disclosed in confidence to Defendant which Defendant was not entitled to use or disclose without Plaintiffs permission?

Although the interrogatory did not specifically mention independent development, the District Court' had instructed the jury in the charge, set forth supra, to consider whether K&S independently developed the technique as part of its determination of whether the defendant “used” the plaintiffs trade secret. By answering “no” to this interrogatory, the jury thus rendered a verdict for K&S on the trade secret misappropriation claim. Moore moved for a new trial under Rule 59 of the Federal Rules of Civil Procedure, which the District Court denied. This appeal followed.2

The District Court had jurisdiction pursuant to 28 U.S.C. § 1332 and 28 U.S.C. § 1338. We have appellate jurisdiction pursuant to 28 U.S.C. § 1291. We exercise plenary review where the District Court erred in formulating or applying the proper legal precept regarding the burden of proof in a jury instruction. See Hook v. Ernst & Young, 28 F.3d 366, 370 (3d Cir.1994) (“Where a jury charge is attacked for legal error we must determine whether ‘the charge[taken] as a whole fairly and adequately submits the issues in the case to the jury.’ We will reverse ‘only if the [566]*566instruction was capable of confusing and thereby misleading the jury.’” (quoting Bennis v. Gable, 823 F.2d 723, 727 (3d Cir.1987)) (alteration in original) (citation omitted)). .

II.

A.

At the risk of carrying coals to Newcastle, we discuss briefly the dual meaning of the term “burden of proof.” We note that “[t]he two distinct concepts [embodied in the term ‘burden of proof] may be referred to as (1) the risk of nonpersuasion, sometimes called the ‘burden of persuasion,’ and (2) the duty of producing evidence (or the burden of production), sometimes called the burden of going forward with the evidence.” Fleming James, Jr. & Geoffrey C. Hazard, et al., Civil Procedure § 7.12 (5th ed.2001). These two concepts can be distinguished by the fact that “[u]n-like the burden of persuasion, the burden of production can shift back and forth between parties during the trial.” Larry L. Teply & Ralph U. 'Whitten, Civil Procedure 855 (2d ed.2000).

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

Related

Cite This Page — Counsel Stack

Bluebook (online)
318 F.3d 561, 65 U.S.P.Q. 2d (BNA) 1771, 2003 U.S. App. LEXIS 2081, 2003 WL 253626, Counsel Stack Legal Research, https://law.counselstack.com/opinion/larry-r-moore-v-kulicke-soffa-industries-inc-ca3-2003.