Rogers Industrial Products Inc. v. HF Rubber Machinery, Inc.

936 N.E.2d 122, 188 Ohio App. 3d 570
CourtOhio Court of Appeals
DecidedJuly 21, 2010
DocketNo. 25093
StatusPublished
Cited by16 cases

This text of 936 N.E.2d 122 (Rogers Industrial Products Inc. v. HF Rubber Machinery, Inc.) is published on Counsel Stack Legal Research, covering Ohio Court of Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Rogers Industrial Products Inc. v. HF Rubber Machinery, Inc., 936 N.E.2d 122, 188 Ohio App. 3d 570 (Ohio Ct. App. 2010).

Opinion

Dickinson, Presiding Judge.

INTRODUCTION

{¶ 1} Rogers Industrial Products Inc., a manufacturer of tire-curing presses, filed a complaint against a competing manufacturer and other defendants, alleging statutory and common-law claims that they misappropriated its trade secrets. Rogers alleged that the defendants had used confidential information about its tire-curing press to copy the unique design of its system for loading and unloading tires and that it had lost numerous sales as a result. Most of the defendants moved for summary judgment, asserting that the information about Rogers’s press did not constitute trade secrets for several reasons, including that Rogers had disclosed the press design in a patent application that was published before the alleged misappropriation. The trial court granted summary judgment on the trade-secret claims on that basis and also found that the common-law claims had been displaced. We reverse the trial court’s judgment on the claims for misappropriation of trade secrets because Rogers raised a genuine issue of material fact regarding whether its original patent application disclosed the [573]*573alleged trade secrets. We affirm the trial court insofar as it granted summary judgment to the defendants on Rogers’s common-law claims, however, because Rogers failed to demonstrate that those claims were based on acts other than the alleged misappropriation of confidential information.

FACTS

{¶ 2} During the early 1950s, Rogers started business as a manufacturer of pneumatic controls for tire-curing presses. Approximately 20 years later, its business expanded into rebuilding tire-curing presses with replacement parts purchased from the original manufacturers. Through their experience rebuilding other manufacturers’ tire-curing presses, Rogers’s engineers became familiar with the strengths and weaknesses of the industry’s then-existing press designs. Over time, Rogers began redesigning and manufacturing some of the parts for the presses it rebuilt. By 1987, Rogers was designing and manufacturing entire machines.

{¶ 3} Rogers concentrated its design efforts primarily on manufacturing a more efficient device for loading and unloading tires and continued to make improvements to the loader and unloader mechanism of each press model it designed. It focused on making the movement of the tires more precise to maintain the tolerances of the tires during the curing process.

{¶ 4} Rogers manufactured a hydraulic tire-curing press for the first time around 1990 through a three-year license agreement with Krupp, a larger press manufacturer and the predecessor of Harburg-Freudenberger Maschinenbau GmbH. By building and marketing a press designed by Krupp, Rogers’s engineers were able to detect flaws in its design. Rogers later designed its first hydraulic press and approached Goodyear Tire and Rubber Company, its primary customer since 1953, to market the novel design of its hydraulic press. In addition to believing that its loader and unloader operated more effectively than other models on the market, Rogers designed the press with the tire loader mounted on top of the press, rather than to the side. Its top-loading design allowed Rogers’s press to operate in a smaller area than other tire-curing presses on the market at that time. Goodyear expressed an interest in the press, mainly because of its smaller “footprint.” Goodyear intended to purchase 57 new hydraulic tire-curing presses for its plants around the country, but wanted to test the models of different manufacturers before it decided to purchase a particular model. During late 2002, Rogers agreed to build a prototype of its model H200T press and place it in Goodyear’s plant in Lawton, Oklahoma. In addition to the prototype of the press, Rogers supplied Goodyear with written materials that included nine pages of detailed assembly drawings of the press, which Rogers had stamped “confidential.”

[574]*574{¶ 5} Goodyear considered purchasing presses from other manufacturers, including Krupp, and also tested their presses. The presses were set up in separate areas of the Lawton plant, where Goodyear ran tests for the next three or four months. During the testing period, Rogers heard from Goodyear employees that they preferred the Rogers press because it ran faster and had a longer bladder life than the presses of its competitors.

{¶ 6} Although Rogers had hoped that Goodyear would purchase all 57 presses from it, Goodyear ultimately purchased 40 presses from Krupp and only 17 presses from Rogers. Goodyear informed Rogers that it was purchasing more presses from Krupp because it was a larger manufacturer and could produce them faster. At about that same time, Krupp was purchased by another company, and its name was changed to Harburg-Freudenberger Maschinenbau GmbH. HF Rubber Machinery, Inc. (“HF”) is Harburg-Freudenberger’s U.S. subsidiary.

{¶ 7} Near the end of 2005, John Cole, the president and owner of Rogers, began hearing that the tire-curing press that Goodyear had purchased from HF looked like a “cousin” of the Rogers H200T press and not like the HF model that Goodyear had tested at its plant. Cole was concerned about the fact that HF had so quickly and drastically changed the design of its press and the fact that the new design of its loader and unloader was similar to the drawings Rogers had supplied Goodyear. He contacted Goodyear to investigate whether Rogers’s unique press design could have been leaked to HF because Rogers had not revealed it to anyone else. Cole ultimately learned that during November 2004, James Bukowski, a Goodyear engineer, took nine pages of assembly drawings from the owner’s manual of the Rogers H200T press and gave them to HF. Because Goodyear was impressed with Rogers’s top-loading press design, Bukowski allegedly instructed HF to design a press that was similar to Rogers’s drawings.

{¶ 8} Rogers filed this action against Bukowski and the HF defendants: Harburg-Freudenberger Maschinenbau GmbH; HF Rubber Machinery, Inc., and two HF employees, Ernest Els and Timothy Burton. It alleged that the defendants had misappropriated its trade secrets, that HF had copied the confidential design of Rogers’s loader and unloader mechanism, and that Rogers had sustained damages as a result. Rogers further maintained that these actions constituted unfair competition, tortious interference with contracts or business relationships, and conversion.

{¶ 9} The HF defendants did not deny that they had possession of Rogers’s assembly drawings. The primary dispute in this case was whether the information revealed in the drawings constituted trade secrets under Ohio’s Uniform Trade Secret Act. The HF defendants eventually moved for summary judgment, [575]*575asserting that Rogers’s assembly drawings and other information about its press did not constitute trade secrets. They further argued that Rogers’s common-law claims had been displaced by the Uniform Trade Secrets Act because those common-law claims were based on alleged misappropriation of confidential information.

{¶ 10} The trial court granted summary judgment to the HF defendants on Rogers’s claim for misappropriation of trade secrets, reasoning that Rogers had lost any trade-secret protection by disclosing its press design in a patent application that was published in February 2004, well before the alleged misappropriation of the information. The trial court also granted summary judgment to the HF defendants on the common-law claims, concluding that they had been displaced by the Uniform Trade Secrets Act.

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936 N.E.2d 122, 188 Ohio App. 3d 570, Counsel Stack Legal Research, https://law.counselstack.com/opinion/rogers-industrial-products-inc-v-hf-rubber-machinery-inc-ohioctapp-2010.