Lumentum Operations LLC v. nLIGHT Inc

District Court, W.D. Washington·Decided September 6, 2024·No. 3:22-cv-05186·Unknown

Opinion

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5 UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT TACOMA 7 LUMENTUM OPERATIONS LLC, CASE NO. C22-5186 BHS 8 Plaintiff, ORDER 9 v. 10 NLIGHT, INC.; DAHV KLINER; and ROGER L. FARROW, 11 Defendant. 12

13 This matter is before the Court on Defendants nLIGHT, Dahv Kliner, and Roger 14 Farrow’s motion to exclude the testimony of Plaintiff Lumentum Operations LLC’s 15 damages expert witness, Donald Gorowsky. Dkt. 107. Because Lumentum is not legally 16 entitled to recover the types of damages to which Gorowsky would testify, the motion is 17 granted. 18 I. BACKGROUND 19 Kliner and Farrow are former employees of Lumentum’s predecessor-in-interest, 20 JDS Uniphase. Dkt. 32, ¶ 1. At JDS Uniphase, Kliner and Farrow each signed an 21 agreement entitled, “Employee Proprietary Information and Inventions Agreement.” 22 1 Dkts. 32-1, 32-2. In section 3 of this Agreement, Kliner and Farrow agreed to not 2 disclose JDS Uniphase’s proprietary information to “anyone outside” the company:

3 During and after my employment with Company Group, I will not disclose any Proprietary Information to anyone outside Company Group, and I will 4 use and disclose Proprietary Information to those inside Company Group only as may be necessary in the ordinary course of performing my duties as 5 an employee of Company.

6 Dkt. 32-1 at 2. 7 Kliner and Farrow left JDS Uniphase in 2012 and 2013, respectively, to work for 8 nLIGHT. Dkt. 32, ¶¶ 88–90, 92–94. Lumentum alleges that, after joining nLIGHT, 9 Kliner and Farrow used JDS Uniphase’s propriety information to assist nLIGHT in 10 obtaining two categories of patents, the “adjustable beam patents” and the “triple-clad 11 fiber patents.” Id. ¶¶ 52–87; 96–565. Lumentum also alleges that nLIGHT used these 12 patents to develop certain fiber laser products, the “Corona” and “AFX” fiber laser 13 products. Id. ¶ 97. 14 In 2022, Lumentum sued, asserting breach-of-contract claims against Kliner and 15 Farrow and correction-of-inventorship and declaration-of-patent-ownership claims 16 against all Defendants. Dkt. 1, ¶¶ 652–729. Following the Court’s prior order granting in 17 part and denying in part Defendants’ motion to dismiss, the sole remaining breach-of- 18 contract claims against Kliner and Farrow concern whether they breached section 3 of 19 their Agreements by disclosing JDS Uniphase’s proprietary information to nLIGHT. Dkt. 20 40 at 22–23. The correction-of-inventorship and declaration-of-patent-ownership claims 21 also remain. Id. 22 1 In support of its breach-of-contract claims, Lumentum seeks to present at trial 2 testimony from its damages expert witness, Gorowsky, on three subjects: (1) the total

3 compensation that Kliner and Farrow received when they were employed by JDS 4 Uniphase; (2) the total compensation that Kliner and Farrow received when they were 5 employed at nLIGHT; and (3) the total revenues and gross profits that nLIGHT has 6 received from its Corona fiber laser products.1 Dkt. 108 at 16. 7 Defendants move to exclude Gorowsky’s testimony, making numerous arguments 8 about why his testimony is unnecessary and unreliable. Dkt. 107 at 9–17. More

9 persuasively, however, Defendants suggest that Gorowsky’s opinions are irrelevant 10 because Lumentum is not legally entitled to recover the types of damages to which he 11 would testify.2 See Dkt. 107 at 17. Defendants also assert that, because “there is no claim 12 for money damages against nLIGHT,” “Gorowsky’s presentation of opinions about 13 ‘nLIGHT’s Revenues and Gross Profits’ could be interpreted as evidence of damages

14 asserted against nLIGHT, rather than the two individuals against whom the breach of 15 contract has been asserted.” Id. at 18. 16

1 It is not clear from Gorowsky’s expert report whether he also opines on nLIGHT’s 17 revenues and gross profits resulting from the “AFX” fiber laser products. 18 2 Defendants nevertheless extensively and unpersuasively argue that Gorowsky’s testimony should be excluded simply because he “did not conduct any causal analysis or explain his causal assumptions despite the only claim allowing damages—breach of contract—requiring 19 causation.” Dkt. 107 at 6. As Lumentum correctly responds, “it is ‘well established that experts on damages can assume causation.’” Dkt. 141 at 6 (emphasis removed) (quoting Indect USA 20 Corp. v. Park Assist, LLC, No. 3:18-cv-02409-BEN-DEB, 2021 WL 4311002, at *3 (S.D. Cal. Sept. 22, 2021)). Defendants’ reply concedes as much. Dkt. 145 at 5. The issue, then, is not 21 whether Gorowsky establishes a causal connection to Kliner’s or Farrow’s alleged breach. It is whether Lumentum is legally entitled to recover the asserted contract damages to which 22 Gorowsky would testify. 1 Lumentum argues that Gorowsky’s testimony is admissible to establish damages 2 for unjust enrichment. Dkt. 143 at 20. Lumentum asserts that “it is entitled to all or a

3 portion of Kliner’s and Farrow’s JDSU compensation because their employment at JDSU 4 was expressly conditioned on their agreement to abide by their [Employee Proprietary 5 Information and Inventions Agreements], which prohibited the disclosure of JDSU 6 Proprietary Information.” Dkt. 141 at 11. It contends that “it is entitled to all or a portion 7 of Kliner’s and Farrow’s nLIGHT compensation because their compensation was based 8 at least in part on the value they brought to nLIGHT, which value was attributable to and

9 the result of their disclosure of JDSU Proprietary Information.” Id. at 12. Lumentum 10 argues that, “[i]n connection with these arguments, Gorowsky’s opinions regarding how 11 to determine Kliner’s and Farrow’s compensation and nLIGHT’s Corona Revenue with a 12 reasonable degree of accounting certainty will be helpful to the jury.” Id. 13 Defendants reply that Gorowsky’s testimony “is irrelevant and untethered to the

14 claims at issue because it is unsupported in both law and fact.” Dkt. 145 at 4. They 15 contend that California law3 “does not support that an employee who provided value to 16 his employer, but allegedly and while employed by a subsequent employer breached a 17 specific term of his [prior employment] agreement, must forfeit every penny of 18 compensation earned during both tenures as damages.” Id. Defendants also assert that

19 California law does not “support the idea that a plaintiff can force a defendant to disgorge 20 profits that it did not earn.” Id. They explain that “nLIGHT’s profits did not flow to 21

22 3 The parties agree that California law applies to the breach-of-contract claims. 1 Kliner and Farrow” and “[t]here is no evidence that Kliner and Farrow received even a 2 percentage of the nLIGHT profit Lumentum now seeks to disgorge from them.” Id. at 6.

3 In sum, they argue, “[b]ecause Gorowsky opines on damages that Lumentum cannot 4 legally recover, exclusion is appropriate.” Id. at 4. 5 The issues are addressed in turn. 6 II. DISCUSSION 7 Lumentum asks the Court to set a dangerous precedent. It seeks to disgorge two 8 former employees of the salaries and benefits that it paid to them over a decade ago,

9 merely upon proof that these former employees breached a single provision of their 10 employment agreements after their employment had ended and while they otherwise 11 performed satisfactory work. See Dkt. 143 at 20. Under the circumstances of this case, 12 such relief is plainly prohibited by both the California Labor Code and basic contract 13 principles.

14 California’s Labor Code expressly provides that “[i]t shall be unlawful for any 15 employer to collect or receive from an employee any part of wages theretofore paid by 16 said employer to said employee.” Cal. Lab. Code, § 221. “Labor Code section 221’s 17 rights are nonnegotiable and cannot be waived by the parties.” Sciborski v. Pac.

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