United States District Court for the District of Columbia
December 14, 2004.
CATALYST & CHEMICAL SERVICES, INC., et al., Plaintiffs,
GLOBAL GROUND SUPPORT, et al., Defendants.
The opinion of the court was delivered by: HENRY KENNEDY, District Judge
Plaintiffs, Catalyst Chemical Services, Inc., John R. Gaughan,
and Whisper Wash Development Corp., bring this action against
defendants, Global Ground Support and William Dempsey, for
misappropriation of trade secret, breach of contract, and patent
infringement. Presently before this court are plaintiffs' motions
for summary judgment [#37, 38, 44, 53, 54], defendants' motion
for summary judgment [#39], and defendants' motion to dismiss
[#73]. Upon consideration of the parties' motions, the
oppositions thereto, and the record of this case, the court
concludes that plaintiffs' motions for summary judgment must be
denied, defendants' motion for summary judgment must be granted
in part and denied in part, and defendants' motion to dismiss
must be granted.
I. BACKGROUND INFORMATION
John R. Gaughan ("Gaughan") is the owner of Catalyst Chemical
Services, Inc. ("Catalyst") and owns 90% of the stock of Whisper
Wash Development Corp. ("Whisper Wash"), and is Whisper Wash's
sole officer and director. Second Am. Compl. ¶ 2. Gaughan and his
companies obtained U.S. Patent No. 5,104,068 (issued April 14,
1992) (hereinafter '068 patent) for the development of a process and apparatus for
de-icing commercial aircraft to be used prior to take off. Defs.'
Statement of Material Facts ¶¶ 1-2. William H. Dempsey
("Dempsey") is currently president of Global Ground Support
("Global"), the successor in interest of Terex Aviation Ground
Equipment ("Terex") where Dempsey was Director of Operations in
1997. Id. ¶ 21; Second Am. Compl. ¶ 4. Through his work for
Global, Dempsey sells and markets aircraft de-icing equipment.
Second Am. Compl. ¶ 5.
On or about July 28, 1997, Dempsey, acting as Director of
Operations for Terex, signed a confidentiality agreement with
Catalyst in an effort to establish a business relationship.
Second Am. Compl. ¶¶ 14-15; see Confidentiality Agreement (Ex.
A to Second Am. Compl.). Operating under the aegis of the
confidentiality agreement, plaintiffs disclosed to defendants the
information regarding the operation of plaintiffs' de-icing
equipment. Ex. 2 to Pls.' Opp'n (Gaughan Decl. ¶¶ 6, 11). The
business relationship never materialized, however. Id. ¶ 13.
On August 26-27, 2001, at the 10th Annual Aircraft and Airfield
Deicing Conference & Exposition held in Washington, D.C.,
defendant Dempsey, as president of Global, gave an oral and video
presentation describing the operation of his company's Ice Wolf
de-icing equipment in which plaintiffs allege he disclosed their
trade secrets. Second Am. Compl. ¶ 17; see Videotape Tr. (Ex.
2C to Pls.' Mot. for Supp. Summ. J. for Literal Infringement).
Plaintiffs also allege that defendants are infringing their
patent by selling their Ice Wolf de-icing equipment within the
United States so that third parties can practice methods within
the scope of the '068 patent. Id. ¶¶ 37-38. On August 26, 2002,
at the 11th Annual Aircraft and Airfield Deicing Conference &
Exposition held in Washington, D.C., Gaughan distributed to
industry representatives a flyer re-asserting the trade secret and patent infringement allegations he made
against defendants in district court. "Global Compl." (NC
Complaint) ¶ 9.
Catalyst, Gaughan, and Whisper Wash then filed an action in
this court alleging misappropriation of trade secret, breach of
contract, and patent infringement. Global and Air T, Inc. ("Air
T"), which owns 100% of Global's capital stock, filed a complaint
in the Superior Court of North Carolina, Catawba County, Civ. No.
02-52794, alleging defamation and unfair and deceptive trade
practices, which was removed to federal court and transferred to
this judicial district. These two actions were consolidated on
September 5, 2003.
Plaintiffs seek summary judgment on their claims for literal
infringement, willful infringement, defamation and unfair
competition, patent validity,*fn1 and on the enforceability
of the '068 patent.*fn2 Defendants move for summary judgment
on all claims but make specific arguments only with respect to
the misappropriation of trade secrets claim and patent
infringement claim and move to dismiss Catalyst and Whisper
Wash for lack of standing.
A. Standard of Review
1. Summary Judgment
Under Rule 56, a motion for summary judgment should be granted
only if it is shown "that there is no genuine issue as to any
material fact and that the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c). The moving
party's "initial responsibility" consists of "informing the
[trial] court of the basis for its motion, and identifying those
portions of the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, which it believes demonstrate the absence of
a genuine issue of material fact." Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986) (internal quotation marks omitted).
If the moving party meets its burden, the burden then shifts to
the non-moving party to establish that a genuine issue as to any
material fact actually exists. See Matsushita Elec. Indus. Co.
v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). To meet its
burden, the non-moving party must show that "`the evidence is
such that a reasonable jury could return a verdict'" in its
favor. Laningham v. United States Navy, 813 F.2d 1236, 1241
(D.C. Cir. 1987) (quoting Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986)). Such evidence must consist of more than
mere unsupported allegations or denials and must set forth
specific facts showing that there is a genuine issue for trial.
FED. R. CIV. P. 56(e); Celotex, 477 U.S. at 322 n. 3. If the
evidence is "merely colorable" or "not significantly probative,"
summary judgment may be granted. Anderson, 477 U.S. at 249-50.
Summary judgment is as appropriate for a patent infringement
claim as for any other claim. See, e.g., Barmag Barmer
Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835-36
(Fed. Cir. 1984) (patent infringement).
2. Motion to Dismiss
A motion to dismiss for lack of subject matter jurisdiction
based on a party's lack of standing is analyzed under Rule
12(b)(1). The court must accept as true all factual allegations
contained in the complaint. Leatherman v. Tarrant County
Narcotics Intelligence & Coordination Unit, 507 U.S. 163, 164
(1993). At the same time, the plaintiff bears the burden of establishing the court's jurisdiction. Grand Lodge of the
Fraternal Order of Police v. Ashcroft, 185 F. Supp. 2d 9, 13
(D.D.C. 2001) (citation omitted). "A motion to dismiss under Rule
12(b)(1) for lack of standing . . . involves an examination of
the face of the complaint . . .," Haase v. Sessions,
835 F.2d 902, 908 (D.C. Cir. 1987), and the plaintiff's allegations
therein require "closer scrutiny" than they would under the Rule
12(b)(6) motion to dismiss standard. Bates v. Rumsfeld,
271 F. Supp. 2d 54, 59-60 (D.D.C. 2002) (quoting Grand Lodge,
185 F. Supp. 2d at 13-14 (citations omitted)). Additionally, "where
necessary, the court may consider the complaint supplemented by
undisputed facts evidenced in the record, or the complaint
supplemented by undisputed facts plus the court's resolution of
disputed facts." Coalition for Underground Expansion v. Mineta,
333 F.3d 193, 198 (D.C. Cir. 2003) (quoting Herbert v. Nat'l
Acad. of Scis., 974 F.2d 192, 197 (D.C. Cir. 1992) (citations
B. Misappropriation of Trade Secret
Plaintiffs' misappropriation of trade secrets claim is premised
on defendants' alleged disclosure of parameters of temperature,
pressure, angle and distance useful in operating de-icing
equipment. Plaintiffs seek damages pursuant to D.C. Code § 36-401
et seq. ("Trade Secrets Act"). "Misappropriation" is defined by
the statute as:
(B) Disclosure or use of a trade secret of another
without express or implied consent by a person who:
. . . .
(ii) At the time of disclosure or use, knew or had
reason to know that the trade secret was:
. . . .
(II) Acquired under circumstances giving rise to a
duty to maintain its secrecy or limit its use. . . .
D.C. Code § 36-401(2).*fn3
Thus, the three elements required
to make out a claim for trade secret misappropriation are:
(1) "existence of a trade secret";
(2) "acquisition of the trade secret as a result of a
confidential relationship"; and
(3) "unauthorized use [or disclosure] of the secret"
resulting in loss or damages.
Leggett & Platt, Inc. v. Hickory Spring Mfg. Co.,
285 F.3d 1353
, 1360 (Fed. Cir. 2002); see also Computer Mgmt. Assistance
Co. v. Robert DeCastro, Inc., 220 F.3d 396
, 403 (5th Cir. 2000);
Lemmon v. Hendrickson, 559 N.W.2d 278
, 279 (Iowa 1997).
1. Existence of a Trade Secret
The "threshold inquiry" in every trade secret case is "whether
or not there [is] a trade secret to be misappropriated."
Fireworks Spectacular, Inc. v. Premier Pyrotechnics, Inc.,
147 F. Supp. 2d 1057, 1065 (D. Kan. 2001) (citations omitted);
accord Jensen v. Redev. Agency of Sandy City, 998 F.2d 1550,
1556 (10th Cir. 1993); Reinforced Molding Corp. v. Gen. Elec.
Co., 592 F. Supp. 1083, 1087 (W.D. Pa. 1984); Carolina Chem.
Equip. Co. v. Muckenfuss, 471 S.E.2d 721, 724 (S.C.Ct.App. 1996). Under the D.C. statute, a
"trade secret" is defined as follows:
[I]nformation, including a formula, pattern,
compilation, program, device, method, technique, or
(A) Derives actual or potential independent economic
value, from not being generally known to, and not
being readily ascertainable by, proper means by
another who can obtain economic value from its
disclosure or use; and
(B) Is the subject of reasonable efforts to maintain
D.C. Code § 36-401(4). Interpreting this language, courts have
imposed the following requirements before information will be
protected as a trade secret:
(a) the "information must be secret";
(b) "its value must derive from the secrecy"; and
(c) "the owner . . . must use reasonable efforts to safeguard
the confidentiality" of the information.
Motor City Bagels, LLC v. Am. Bagel Co., 50 F. Supp. 2d 460,
478 (D. Md. 1999); accord IDX Sys. Corp. v. Epic Sys. Corp.,
285 F.3d 581, 583 (7th Cir. 2002); Standard Register Co. v.
Cleaver, 30 F. Supp. 2d 1084, 1094 (N.D. Ind. 1998); APAC
Teleservices, Inc. v. McRae, 985 F. Supp. 852, 864 (N.D. Iowa
1997); Curtis 1000, Inc. v. Pierce, 905 F. Supp. 898, 901 (D.
a. Secrecy of Information
"[T]he hallmark of a trade secret is not its novelty but its
secrecy." Avtec Sys., Inc. v. Peiffer, 21 F.3d 568, 575 (4th
Cir. 1994). Information that is "generally known or readily
ascertainable to the public" cannot constitute a trade secret.
State ex rel. the Plain Dealer v. Ohio Dep't of Ins.,
687 N.E.2d 661, 675 (Ohio 1997); accord Microbix Biosys., Inc. v.
Biowhittaker, Inc., 172 F. Supp. 2d 665, 674 (D. Md. 2000); IBM
Corp. v. Seagate Tech., Inc., 941 F. Supp. 98, 100 (D. Minn.
1992). Furthermore, information which is "generally known within an industry," even if it is not generally known to the
public, cannot constitute a trade secret. Mangren Research &
Dev. Corp. v. Nat'l Chem. Co., 87 F.3d 937, 942 (7th Cir. 1996);
accord Pope v. Alberto-Culver Co., 694 N.E.2d 615, 617
(Ill.App. Ct. 1998). However, it is widely accepted that "a trade
secret can exist in a combination of characteristics . . . each
of which, by itself, is in the public domain," Minn. Mining &
Mfg. Co. v. Pribyl, 259 F.3d 587, 595-96 (7th Cir. 2001), and
"even if all of the information [about those characteristics] is
publicly available, a unique combination of that information,
which adds value to the information . . . may qualify as a trade
secret." Penalty Kick Mgmt. Ltd. v. Coca Cola Co.,
318 F.3d 1284, 1291 (11th Cir. 2003). Accord Harvey Barnett, Inc. v.
Shidler, 338 F.3d 1125, 1129 (10th Cir. 2003). But see
Strategic Directions Group, Inc. v. Bristol-Myers Squibb Co.,
293 F.3d 1062, 1065 (8th Cir. 2002) (holding that simply
asserting that a trade secret resides in some combination of
otherwise known information by itself is not sufficient to
satisfy the requirements for a trade secret).
Plaintiffs allege the parameters relating to angles, distances,
pressures and temperatures used by their de-icing process should
be protected under the Trade Secrets Act. Pls.' Opp'n at 2.
However, "once material is publicly disclosed, it loses any
status it ever had as a trade secret." State ex rel. Rea v. Ohio
Dep't of Educ., 692 N.E.2d 596, 601 (Ohio 1998) (citing
Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1002 (1984)).
Defendants have submitted exhibits showing that each parameter
individually was within industry knowledge before defendants'
alleged disclosure. See Exs. L, M, N, P, Q, & W to Defs.'
Reply. Plaintiffs, however, do not allege only that each
parameter individually is a trade secret; rather, they also argue
that all four elements taken together in precise combination
constitute a legally protected interest under the Trade Secrets
Act. Pls.' Opp'n at 4. The record does not show that all four
parameters were disclosed together, in a specific combination, to the industry.*fn4
Therefore, a genuine issue remains as to whether the specific
combination of the parameters is "secret" sufficient to warrant
protection under the Trade Secrets Act.
b. Value Derived from Secrecy
In order to be protected under the Trade Secrets Act, the
combination must derive some value from its secrecy. IDX,
285 F.3d at 582. Because defendants have shown that all the
parameters individually are in the realm of public knowledge, any
value each of those pieces may have independently is not a result
of secrecy. Therefore, in order for the combination to be
afforded trade secret status, the value of the specific
combination of parameters must exceed the mere sum of the value
of each individual parameter. See Strategic, 293 F.3d at 1065
(noting in a case involving a specific combination of
widely-known elements that mere variations are not protected as
trade secrets). A combination qualifies as a trade secret only
when there is an added value to the combination over the value of
the individual parameters, i.e., when "the whole is more than
the sum of the parts." See Penalty Kick, 318 F.3d at 1291
("[E]ven if all of the information is publicly available, a
unique combination of that information, which adds value to the information, also may qualify as a trade secret.") (emphasis
added) (citations omitted); cf. Strategic, 293 F.3d at 1065
(holding that a combination of known elements was not protected
by trade secret statute because the choice of elements was
obvious and therefore the combination did not achieve a
sufficient degree of secrecy).
The only evidence defendants present to support their assertion
that there is no added value in the combination of the parameters
are the declarations of expert witnesses Rondal Moore and Lee
Williams, who assert that plaintiffs' combination of parameters
are no more than "common sense." Ex. 3 to Defs.' Mot. for Summ.
J. (Moore Decl. ¶ 10); Ex. N to Defs.' Reply (Williams Decl. ¶
6). However, neither defendants nor their experts make reference
to any evidence or alleged facts to support this proposition.
Conclusory assertions by expert witnesses are insufficient to
allow a party to prevail on a summary judgment motion. See
On-Line Techs. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133,
1144 (Fed. Cir. 2004) (citations omitted).
c. Reasonable Efforts to Maintain Confidentiality
For a trade secret to be afforded protection by the courts, the
owner must make "reasonable efforts to maintain its secrecy."
D.C. Code § 36-401(4)(B); see, e.g., Leggett & Platt,
285 F.3d at 1360. Defendants assert that plaintiffs have disclosed their
trade secrets in their own marketing materials, and have
therefore failed to make reasonable efforts to keep such
information secret. However, the only instance defendants show of
a disclosure by plaintiffs of the entire combination of
parameters is in a confidential fax sent during the course of
business negotiations. Exs. P, Q, & R to Defs.' Reply.*fn5
An owner is not required to maintain absolute secrecy to retain trade secret protection. "Simply because
information is disclosed outside of a company does not result in
the loss of trade secret status . . . `the owner of a trade
secret may, without losing protection, disclose it to a licensee,
an employee, or a stranger, if the disclosure is made in
confidence, express or implied.'" MicroStrategy Inc. v. Bus.
Objects, S.A., 331 F. Supp. 2d 396, 416 (E.D. Va. 2004) (citing
Tao of Sys. Integration, Inc. v. Analytical Servs. & Materials,
Inc., 229 F. Supp. 2d 565, 574 (E.D. Va. 2004) (internal
citations omitted)). Maintaining trade secret status thus
requires only reasonable efforts, such as implementing
confidentiality agreements. Id.; cf. Sheets v. Yamaha Motors
Corp., 849 F.2d 179, 183-84 (5th Cir. 1988) ("a disclosure of a
trade secret to others who have no obligation of
confidentiality extinguishes the property right of the trade
secret." (emphasis added)). Otherwise, owners would only be able
to contemplate transactions involving trade secrets, such as
sales or joint ventures, at the risk of destroying the trade
secrets themselves. Gaughan's fax to Dempsey was marked as
confidential, putting Dempsey on notice that the enclosed
information was not suitable for public disclosure. Thus,
defendants have failed to show that plaintiffs' limited,
confidential disclosure of the trade secrets contained in the fax
transmission undercuts their efforts to maintain secrecy and
impairs their assertion of trade secret protection. Summary
judgment is therefore inappropriate on this ground.
2. Acquisition of the Trade Secret as a Result of a
The second element of misappropriation requires a showing that
defendant acquired the trade secret as a result of the confidential relationship,
"rather than developed independently or obtained from a third
source." Leggett & Platt, 285 F.3d at 1360. Defendants do not
contest that as a result of signing a confidentiality agreement,
Ex. 1 to Second Am. Compl., plaintiffs disclosed to them
confidential information about their aircraft de-icing process
and apparatus, Defs.' Mot. for Summ. J. at 3. However, defendants
deny learning any trade secrets as a result of their
communications with Gaughan. Answer to Second Am. Compl. ¶ 13.
Plaintiffs, in contrast, assert they disclosed all four
parameters to defendants after the execution of the
confidentiality agreement. Ex. 2 to Pls.' Opp'n (Gaughan Decl. ¶¶
6, 11). To support this contention, plaintiffs provide an exhibit
showing engineering calculations that were shown to defendants
which disclose distance, angle and pressure parameters. Ex. 2A
(Attach. to Gaughan Decl.) to Pls.' Opp'n. This exhibit, however,
does not mention the temperature parameter. Therefore, there
remains a genuine issue as to whether defendants learned the
temperature parameter during their business relationship.
Furthermore, even if defendants only learned distance, angle and
pressure parameters, there is a genuine issue as to whether the
combination of those three parameters alone warrants trade secret
protection. Again, summary judgment is inappropriate when such
material factual differences persist.
3. Unauthorized Disclosure of the Trade Secret
The third requirement of a trade secret misappropriation claim
is a showing that the defendant used or disclosed the protected
information. See, e.g., Lemmon, 559 N.W.2d at 279-80
(dismissing a trade secret claim in the absence of direct
evidence showing defendant's use of protected information).
Defendants deny disclosing the four parameters at the de-icing
conference. Defs.' Mot. for Summ. J. at 5. Plaintiffs provide the
transcript of the video shown at the de-icing conference which shows a disclosure of the angle,
distance and pressure parameters. Ex. 2C to Pls.' Mot. for Summ.
J. for Literal Infringement (Videotape Tr.). However, there
remains a genuine issue as to whether Dempsey disclosed the
temperature parameter in his oral presentation.
Because genuine issues of material fact exist with regard to
secrecy, value, acquisition as part of a confidential
relationship, and disclosure of the alleged trade secrets,
defendants' motion for summary judgment on trade secret
misappropriation and breach of contract*fn6 must be denied.
C. Patent Infringement
The court uses "a two-step process" in analyzing patent
infringement cases: first, the limitations of the claim are
determined; and second, the accused product or process is
measured against the properly interpreted claim. Teleflex, Inc.
v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir. 2002).
The first step, claim construction, is a matter of law and is
"exclusively within the province of the court." Markman v.
Westview Instruments, Inc., 517 U.S. 372, 372 (1996); accord
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir.
1998) (en banc). The second step, comparing the competing process
to the construed claim, is a matter of fact for the jury. Allen
Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1344 (Fed.
1. Claim Construction
Patent claim construction must begin with the language of the
claim. Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc.,
222 F.3d 951, 955 (Fed. Cir. 2000); see also Interactive Gift Express, Inc. v. Compuserve Inc.,
256 F.3d 1323, 1331 (Fed. Cir. 2001) ("In construing claims, the
analytical focus must begin and remain centered on the language
of the claims themselves. . . ."); SRI Int'l v. Matsushita Elec.
Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) ("It is the
claims that measure the invention."). Unless the inventor
designated a special definition for a term in the specification,
a claim term is to be given its "ordinary and accustomed"
meaning. Renishaw PLC v. Marposs Societa' per Azioni,
158 F.3d 1243, 1249 (Fed. Cir. 1998); accord York Prods. Inc. v. Cent.
Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
In determining the ordinary meaning of a term, "[d]ictionaries
are always available to the court" and are a preferred tool of
construction because they are publicly available, "objective
resources that serve as reliable sources of information on the
established meanings" of terms. Tex. Digital Sys., Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1202-03 (Fed. Cir. 2002);
accord Cybor, 138 F.3d at 1459; see also Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 n. 6 (Fed. Cir. 1996)
("[T]echnical treatises and dictionaries . . . are worthy of
special note. Judges are free to consult such resources at any
time. . . .").
After the language of the claim itself and dictionaries or
treatises, courts look to intrinsic evidence, i.e., the patent
specification (or description), the prosecution history (or file
wrapper), and prior art cited in the prosecution history, to help
interpret claims. The court first looks to the specification to
"assist in resolving ambiguity." Teleflex, 299 F.3d at 1325;
see also Vitronics, 90 F.3d at 1582 (stating that the
specification "is the single best guide to the meaning of a
disputed term"). Second, the prosecution history can help
determine the meaning of claim terms by eliminating
interpretations that were "clearly and unambiguously"
relinquished during the proceedings before the U.S. Patent &
Trademark Office. Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Lastly,
extrinsic evidence (e.g., expert testimony) may only be used as
a last resort, where the meaning of the claim cannot be
determined from intrinsic evidence alone. Vitronics,
90 F.3d at 1582.
a. Claim 25 of the '068 Patent
Plaintiffs allege infringement of only claim 25 of the '068
patent. Claim 25 is a "method" or process claim which describes
(1) "providing a stationary apparatus through which
the aircraft moves . . .";
(2) "spraying a . . . high-pressure . . . air/fluid
mixture . . . onto selected surfaces of the aircraft
. . ." to de-ice the aircraft;
(3) "spraying a . . . low-pressure . . . glycol/water
. . . fluid mixture onto the deiced surfaces . . ."
to anti-ice*fn7 the aircraft; and
(4) "collecting the runoff . . . fluid mixtures for
subsequent recycling. . . ."
'068 patent, col. 38, ll. 18-39.*fn8
b. The "One-Pass" Characteristic
The distinguishing characteristic of claim 25 is the temporal
relationship between steps (2) and (3): step (3) is started while
step (2) is still being performed so that it lays "down an
anti-icing coating . . . as remaining portions of the aircraft
surfaces are being de-iced. . . ." '068 patent, col. 38, ll.
33-35. In this way, the performance of steps (2) and (3) overlap
temporally, allowing the aircraft to be "progressively de-iced
and anti-iced in one pass of the aircraft relative to the
apparatus." Id., col. 38, ll. 37-39. Figures 4B-E of the '068
patent, reproduced below, illustrate this unique characteristic
of claim 25.*fn9
This figure is a side view of a wing as the nozzle mechanism
passes over it. In the first panel, only step (2), high pressure
de-icing, is being performed. In the middle two panels, both
steps (2) and (3) are being performed: de-icing on the right part
of the wing and anti-icing on the left part of the wing. The last
panel shows the end of step (3), finishing anti-icing the wing.
The fact that the one-pass capabilities of claim 25 provide the
important distinction over the prior art is illustrated by the
prosecution history and comparisons with prior art. "[T]he
prosecution history (or file wrapper) limits the interpretation
of claims so as to exclude any interpretation that may have been
disclaimed or disavowed during prosecution in order to obtain
[EDITORS' NOTE: FIGURES ARE ELECTRONICALLY NON-TRANSFERRABLE.]
claim allowance." Standard Oil Co. v. Am. Cyanamid Co.,
774 F.2d 448, 452 (Fed. Cir. 1985). Furthermore, an "amendment to
overcome a rejection" is a "clear disavowal of claim coverage"
that shows "the intentional narrowing of a claim." Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1321 (Fed. Cir.
2003); accord York Prods., 99 F.3d at 1575 (stating that a
patent applicant "limits claims during prosecution" when he
"alter[s] claim language to escape an examiner rejection"); see
also Genzyme Corp. v. Atrium Med. Corp., 212 F. Supp. 2d 292,
327 (D. Del. 2002) ("[W]hen an applicant disclaims coverage of a
prior art device, a later claim construction should not give the
patentee the benefit of a broad scope of coverage that includes
the devices that were expressly disclaimed in order to obtain the
patent."). Claim 25 was amended twice before finally being accepted. See
Ex. 3 to Pls.' Mot. for Summ. J. on Non-Unenforceability ('068
File Wrapper at 195, 210). In order to cure the patentability
problems of claim 25, patentee agreed on the telephone with the
patent officer to add language to claim 25 indicating that "the
aircraft will be de-iced and anti-iced in a two step single pass
operation." Id. at 207. The prosecution history of the '068
patent shows that the examiner rejected the unamended version of
claim 25 as anticipated by U.S. Patent No. 4,032,090 (issued June
28, 1977) ("Thornton-Trump patent"). See Ex. 3 to Pls.' Mot.
for Summ. J. on Non-Unenforceability ('068 File Wrapper at
163).*fn10 The Thornton-Trump patent describes a process of
de-icing and anti-icing that occurs in two passes: the anti-icing
is performed only after the de-icing has been completed. Ex. 3 to
Pls.' Mot. for Summ. J. on Non-Unenforceability at 305
(Thornton-Trump patent, col. 5, ll. 41-56). Therefore, in order
to avoid the prior-art process patented by Thornton-Trump, patent
officer and patentee agreed to add language to show that for a
portion of the process steps (2) and (3) occur simultaneously.
See Ex. 3 to Pls.' Mot. for Summ. J. on Non-Unenforceability
('068 File Wrapper at 210). Thus, the claim language read
together with the prosecution history and comparisons with prior
art show the temporal relationship between steps (2) and (3) to
be essential to the claim. c. "Stationary"
The term "stationary" in step (1) is not explicitly defined in
the specification, and both parties submit several pages debating
its meaning. When the patentee does not choose to act as his own
lexicographer in the specification, a claim term is to be given
its "ordinary and customary meaning." Vitronics,
90 F.3d at 1582.
i. Dictionary Definition of "Stationary"
To determine the ordinary meaning of claim terms, the court may
reference dictionaries. Tex. Digital, 308 F.3d at 1202.
According to the Random House Dictionary of the English Language
1283 (College ed. 1968), "stationary" means: "1. standing still;
not moving. 2. having a fixed position; not movable." Plaintiffs
contend both the first and the second definitions apply,
asserting that "stationary" means "not movable." Under this
interpretation, "stationary" would describe any sort of permanent
de/anti-icing fixture at an airport but would distinguish mobile
units such as trucks in the Thornton-Trump patent. However,
defendants argue only the first definition should apply,
contending that "stationary" as "not moving" means fixed or with
no moving parts. Under this narrower interpretation, the term
"stationary" would only include fixed gantry systems and exclude
permanent fixtures with moving parts, such as defendants'
When the ordinary meaning of a word comprises "two relevant
alternatives," the term "may be construed to encompass both
alternatives." Inverness Med. Switz. GmbH v. Warner Lambert
Co., 309 F.3d 1373, 1379 (Fed. Cir. 2002); accord Tex.
Digital, 308 F.3d at 1203; see also Rexnord Corp. v. Laitram
Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) ("In addition,
unless compelled to do otherwise, a court will give a claim term
the full range of its ordinary meaning as understood by an
artisan of ordinary skill."). Therefore, "stationary" as used in
step (1) could comprise a fixed-location permanent installation with moving
parts or without moving parts. However, before this
interpretation is applied, the court must examine the intrinsic
evidence to determine if it "clearly demonstrates" that only one
of the definitions was intended. Inverness, 309 F.3d at 1379;
see, e.g., Globetrotter Software, Inc. v. Elan Computer Group,
Inc., 362 F.3d 1367, 1380 (Fed. Cir. 2004) (looking to intrinsic
evidence to decide between two dictionary definitions for the
claim term "prevent"); see also Renishaw, 158 F.3d at 1250
("However, a common meaning, such as one expressed in a relevant
dictionary, that flies in the face of the patent disclosure is
undeserving of fealty.").
ii. "Stationary" in the Specification
When a term has multiple dictionary definitions, the court must
examine the intrinsic evidence to decide which of the possible
dictionary definitions apply. Tehrani v. Hamilton Med., Inc.,
331 F.3d 1355, 1361 (Fed. Cir. 2003); accord Tex. Digital,
308 F.3d at 1203 (holding that "the intrinsic record must always be
consulted to identify which of the different possible dictionary
meanings of the claim terms in issue is most consistent with the
use of the words by the inventor."); cf. Renishaw,
158 F.3d at 1249 (holding that when "a patent applicant has elected to be a
lexicographer by providing an explicit definition in the
specification for a claim term . . . the definition selected by
the patent applicant controls."). The word "stationary" appears
in only one other place in the specification.*fn11 In that
instance, the term "stationary" is used to reference a boom with
articulating arms in contrast to a "truck-mounted boom." '068
patent, col. 17, ll. 29-30. The example from the specification uses the word "stationary" to
describe something with moving parts (similar to the articulating
boom of defendants' apparatus), thus supporting plaintiffs'
definition which allows for moving parts. See, e.g., Ex. 3 to
Pls.' Opp'n (Dempsey Dep. at 15) (defendant's description of
apparatus having articulating booms). In addition, contrasting
the term "stationary" with the term "truck mounted" further
supports plaintiffs' interpretation that a stationary apparatus
is anything other than a mobile facility such as a deicing truck.
The only explicit reference to the term "stationary" in the
specification supports a broad interpretation of the claim term.
To support their interpretation of "stationary," defendants
point out "more than 100 references" in the specification to the
fact that the aircraft travels through the apparatus.*fn12
Defs.' Reply at 15-16. However, "[r]eferences to a preferred
embodiment, such as those often present in a specification, are
not claim limitations." Laitram Corp. v. Cambridge Wire Cloth
Co., 863 F.2d 855, 865 (Fed. Cir. 1988), cited with approval in
Inverness, 309 F.3d at 1379; accord Super Prods. Corp. v. D P
Way Corp., 546 F.2d 748, 756 (7th Cir. 1976) ("While the
language of the claim must be read in light of the specification
and the file wrapper . . . the claim alone is the measure of the
invention.") (citations omitted); see also 3M Innovative Props.
Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir.
2003) (noting that "a patentee need not describe all embodiments
of his invention"); Laitram Corp. v. NEC Corp., 163 F.3d 1342,
1347 (Fed. Cir. 1998) ("[A] court may not import limitations from
the written description into the claims."); Electro Med. Sys., S.A. v. Cooper Life Scis., Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994) ("[A]lthough the specifications may
well indicate that certain embodiments are preferred, particular
embodiments appearing in a specification will not be read into
the claims when the claim language is broader than such
embodiments."). The specification describes one embodiment, a
fixed gantry system, capable of performing the process described
in claim 25. However, the disclosure of one embodiment does not
import the limitations of that embodiment into the claim. See
Libel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 ("Even
when the specification describes only a single embodiment, the
claims of the patent will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim
scope using `words or expressions of manifest exclusion or
restriction.'") (quoting Teleflex, 299 F.3d at 1327). Because
the references in the specification pointed out by the defendants
simply describe one particular embodiment, they do not limit
claim 25 only to processes performed by fixed gantry systems.
iii. Prosecution History Regarding "Stationary"
In addition to the claim language and specification, the court
may examine the prosecution history,*fn13 which is "often of
critical significance in determining the meaning of the claims."
Vitronics, 90 F.3d at 1582. "Where the patentee in the course
of his application in the patent office has, by amendment,
cancelled or surrendered claims, those which are allowed are to
be read in the light of those abandoned and an abandoned claim
cannot be revived and restored to the patent by reading it by
construction into the claims which are allowed."
Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 218 (1940); accord
Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576
(Fed. Cir. 1995); Standard Oil, 774 F.2d at 452.
The file wrapper reveals that the added claim language
"providing a stationary apparatus through which the aircraft
moves, the apparatus including respective nozzle means" was added
in an amendment directly before approval, at the same time as the
"one pass" clause. Ex. 3 to Pls.' Mot. for Summ. J. on
Non-Unenforceability ('068 File Wrapper at 210). Before the
amendment, there was no apparatus requirement; therefore, the
claim would have been construed to include processes effected by
truck-mounted booms, fixed booms, fixed gantry systems or any
effective apparatus. Defendants contend that in making the
"stationary" amendment the patentee not only abandoned the
truck-mounted means for effecting the process but that patentee
also abandoned all fixed-installation articulating-boom means
(including defendants' apparatus). However, there is nothing in
the prosecution history to suggest that interpretation. In fact,
examination of the prior art leads to the opposite conclusion.
"[T]he prior art cited in the file wrapper gives clues as to
what the claims do not cover." Autogiro, 384 F.2d at 399. The
patent office cited the Thornton-Trump patent both times as the
reason for rejecting claim 25 without the "stationary" language.
Ex. 3 to Pls.' Mot. for Summ. J. on Non-Unenforceability ('068
File Wrapper at 163, 203). Thornton-Trump provides a preferred
embodiment of its process claims as being performed by trucks.
See Ex. 3 to Pls.' Mot. for Summ. J. on Non-Unenforceability at
(Thornton-Trump patent, col. 2, ll. 61-64) ("[I]t is contemplated
that the operation be accomplished with a mobile
vehicle. . . ."). This suggests that the "stationary" language
was added by patentee to avoid the prior art of Thornton-Trump
and therefore only the use of trucks or other mobile vehicles
for achieving the method was abandoned by the amendment. Compare id. (Thornton-Trump patent,
col. 2, ll. 64-68) ("An example of such a [mobile vehicle] unit . . .
comprises a truck having articulated booms. . . .")
(emphasis added) with '068 patent, col. 7, l. 67 to col. 8, l.
1 ("[T]he present invention defines a central location at an
airport for de-icing and anti-icing an aircraft just prior to the
flight of the aircraft.") (emphasis added). Because the
prosecution history supports the broader interpretation of the
claim term "stationary," the interpretation that encompasses both
alternate definitions, this court must reject defendants' overly
narrow interpretation. Therefore, the court concludes that the
claim term "stationary apparatus" describes any fixed-location
installation for de/anti-icing an aircraft, containing either
articulating booms or a fixed gantry.
2. Indirect Infringement
Plaintiffs and defendants both move for summary judgment on the
issue of infringement, both literal and wilful. Plaintiffs
clarify in their opposition that they do not allege direct
infringement*fn14 of claim 25 of the '068 patent by
defendants; rather, they allege indirect infringement, i.e.,
contributory infringement under 35 U.S.C. § 271(b) or inducement
of infringement under 25 U.S.C. § 271(c). See Pls.' Opp'n at
13. A method claim is directly infringed "only by one practicing
the patented method." Joy Techs., Inc. v. Flakt, Inc.,
6 F.3d 770, 775 (Fed. Cir. 1993). Therefore, "although not direct
infringement under 35 U.S.C. § 271(a)," activities associated
with selling equipment may "constitute active inducement of
infringement or contributory infringement . . . under
35 U.S.C. § 271(b) and (c)." Id. Liability for inducement attaches under
35 U.S.C. § 271(b) to "[w]hoever actively induces infringement of a patent." The Federal Circuit interpreted the statute as such:
"[a] person induces infringement under § 271(b) by actively and
knowingly aiding and abetting another's direct infringement."
C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc.,
911 F.2d 670, 675 (Fed. Cir. 1990) (citation and emphasis omitted).
Furthermore, a person can be held liable for contributory
infringement under § 271(c) when she "offers to sell or sells
within the United States . . . a material or apparatus for use in
practicing a patented process" when that material or apparatus:
(1) "constitut[es] a material part of the invention";
(2) "[is] know[n] by [such person] to be especially made or
especially adapted for use in an infringement of such patent";
(3) "[is] not a staple article or commodity of commerce
suitable for substantial non-infringing use. . . ."
35 U.S.C. § 271(c).*fn15
a. No Indirect Infringement Without Direct Infringement
It is well settled that "[a]bsent direct infringement of the
patent claims, there can be neither contributory infringement . . .
nor inducement of infringement." Met-Coil Sys. Corp. v.
Korners Unltd., Inc., 803 F.2d 684, 687 (Fed. Cir. 1986)
(citations omitted); accord Joy Techs., 6 F.3d at 774
(contributory infringement and inducement); Aro Mfg. Co. v.
Convertible Top Replacement Co., 365 U.S. 336, 341 (1961)
(contributory infringement); Nationwide Chem. Corp. v. Wright, 458 F. Supp. 828, 839-40 (M.D. Fla. 1976)
(inducement), aff'd, 584 F.2d 714 (5th Cir. 1978); see, e.g.,
Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263,
1277 (Fed. Cir. 2004) (holding that summary judgment of
non-infringement is warranted because the plaintiff's "failure to
prove direct infringement . . . necessarily dooms its allegations
of indirect infringement"). Because for both inducement and
contributory infringement the product must be capable of use in
an infringing process, if the material or apparatus cannot be
used to practice a patented process, there can be no inducement
or contributory infringement. Thus, failure to show direct
infringement by some third party is fatal to any claims of
b. Defendant's Product is Incapable of Infringing
The evidence shows that the product sold to the Philadelphia
airport by defendants is incapable of infringing use. Plaintiffs
claim that defendants sold their product to the Philadelphia
Airport where it is being operated in a manner which infringes
claim 25 of the '068 patent. Pls.' Opp'n at 14. Defendants'
product "consists of two maneuverable nozzles attached to the
nose of an operator-controlled, rotating cab mounted at the end
of . . . a rotating, telescopic and vertically-articulating
boom." Defs.' Reply at 14; see also Exs. 3A, 3B, & 4 to Pls.'
Opp'n (diagrams and photographs of defendants' product). The
system sold to the Philadelphia airport consists of two booms,
one for each side of the aircraft. Ex. 3 to Pls.' Reply (Dempsey
Dep. at 109-10). A preferred mode of operation of defendants'
product is described in the deposition of William Dempsey. Ex. 2A
to Pls.' Mot. for Summ. J. on Literal Infringement (Dempsey Dep.
at 37-38). The operator, in the enclosed cab at the end of the
boom, traverses the plane, usually from nose to tail, performing
the de-icing. Id. The lower nozzle provides forced air and the
upper nozzle provides fluid. Ex. 3 to Pls.' Opp'n (Dempsey Dep.
at 97-98). The two nozzles together can deliver only one stream of air/fluid mixture at a
time; the operator has the ability to choose either the de-icing
fluid or the anti-icing fluid from within the enclosed cab. Ex.
2A to Pls.' Mot. for Summ. J. on Literal Infringement (Dempsey
Dep. at 37-38). Therefore, the apparatus can perform anti-icing
on a section only after de-icing is complete and the cab is
incapable of spraying high pressure de-icing fluid and
low-pressure anti-icing fluid at the same time.
Claim 25 of the '068 patent requires that step (2),
high-pressure de-icing, and step (3), low-pressure anti-icing,
overlap temporally so that for a portion of the process both
streams are being sprayed at the same time, see supra p. 16.
Defendants' product is unable to spray both streams at the same
and is thus incapable of infringing the '068 patent. Because the
alleged contributory infringement is the sale of a product which
is incapable of infringing, there can be no liability for
contributory infringement under 35 U.S.C. § 271(c).*fn16
Moreover, the only activities plaintiffs rely upon to support
their claim of inducement relate to the sale, training or
instructions given to the Philadelphia airport regarding
defendants' product. Pls.' Opp'n at 14-16; Pls.' Mot. for Summ.
J. on Literal Infringement at 8. However, because there is no way
to operate defendants' product in an infringing manner,
defendants cannot have provided any instruction or training on
how to infringe plaintiffs' patent. Because the activities
alleged to be inducement relate to a product incapable of
infringing, no set of alleged facts could support liability for
inducement under 35 U.S.C. § 271(b). There is no genuine issue
related to any facts material to the claims of literal or willful infringement;
therefore, plaintiffs' motion for summary judgement on literal
infringement must be denied and defendants' motion for summary
judgment on this claim must be granted.*fn17
D. Defamation and Unfair Competition
Gaughan and Whisper Wash move for summary judgment on the
defamation and unfair competition claims originally brought
against them in North Carolina. These claims are based on a press
release Gaughan circulated to industry representatives at the
11th Annual Aircraft and Airfield Deicing Conference and
Exposition in Washington, D.C., but which was not disseminated to
any media outlet. See Global Compl. ¶¶ 9-10; Catalyst Answer ¶¶
9-10. The contents of the press release describe the allegations
plaintiffs made in their original complaint in this court for
breach of contract, misappropriation of trade secret and
violations of the Racketeer Influenced Corrupt Organizations Act
("RICO"). See Ex. B to Global Compl. Global and Air T allege
that the contents of the press release are defamatory and
Gaughan's actions in producing and distributing it constitute
unfair and deceptive trade practices under North Carolina General
Statute § 75-1.1.*fn18 The parties do not discuss whether the language of the press
release is defamatory, but instead focus their argument on
whether the common interest privilege applies. The court will
assume arguendo that the contents of plaintiffs' press release
are defamatory in order to decide the merits of the privilege
The common interest privilege is a qualified privilege that
"exists when the publisher of a defamatory statement and the
person to whom it is made have a common interest, and the
communication is of a kind reasonably calculated to protect or
further it." Roland v. Arazien, 685 F.2d 653, 655 (D.C. Cir.
1982). The common interest privilege protects statements that are
"(1) made in good faith, (2) on a subject in which the party
communicating has an interest . . . (3) to a person who has such
a corresponding interest." Moss v. Stockard, 580 A.2d 1011,
1024 (D.C. 1990). It is a question of law for the court to
determine whether a communication is privileged when the facts
surrounding its publication are undisputed. Roland,
685 F.2d at 655. The issue of whether a party abused the privilege by acting
with malice, recklessness, or dishonesty is a question of fact
for the jury. Id.
Global and Air T argue that the common interest privilege does
not apply because the parties to whom Gaughan circulated the
press release did not share a common interest in the subject
matter with Gaughan. Plaintiffs have not specifically articulated
any common interest shared by Gaughan and the industry
representatives present at the 11th Annual Aircraft and Airfield
Deicing Conference and Exposition. Plaintiffs merely assert that
the common interest in this case is indistinguishable from the
common interests in Audain v. American University, 1997 U.S. Dist. LEXIS 21730 (D.D.C. 1997), and Roland, 685 F.2d 653.
In Audain, the court held that the common interest privilege
applied to the circulation of a complaint, alleging breach of
contract and discrimination in faculty hiring, to prospective
employers and to faculty members who were serving as references.
Id. at *5. The court found that law schools contemplating a
prospective hire would want to know the circumstances under which
he left his former place of employment. Id. In Roland, the
court held that a common interest in the smooth and efficient
operation of a congressman's office privileged a staffer who
informed the office's staff director about the facts underlying a
conflict with a colleague, who was later terminated on the basis
of that information. 685 F.2d at 655.
It is unclear what common interest industry representatives may
have had with Gaughan and Whisper Wash that would warrant the
disclosure of information about the lawsuit against Global and
Air T. Perhaps industry representatives have an interest in
knowing the status of litigation involving Gaughan and Whisper
Wash and Global and Air T, but the claims alleged in the
complaint for breach of contract, trade secret misappropriation
and violations of RICO do not directly concern the new de-icing
technology. Further, because the technology in the '068 patent
was never implemented such that plaintiffs would actually have
prospective customers, the industry representatives at the
conference would not be in a position similar to the law schools
in Audain who were considering hiring Audain or the staff
director in Roland as potential purchasers of the new
technology. Accordingly, taking all inferences in favor of the
non-moving party, because Gaughan and Whisper Wash have not
resolved the material issues of fact regarding the application of
the common interest privilege, plaintiffs' motion for summary
judgment on the defamation claim must be denied. E. Standing
Finally, defendants contend that plaintiffs Catalyst and
Whisper Wash should be dismissed from this action because they
lack standing to sue, thus depriving the court of subject matter
jurisdiction over their claims. Plaintiffs have asserted that
both Catalyst and Whisper Wash are "duly incorporated under the
laws of the state of Maryland." Second Am. Compl. ¶¶ 1, 3.
Defendants note that Catalyst no longer exists as a Maryland
corporation, since its charter was forfeited in 1996, and that
Whisper Wash is not incorporated in the state of Maryland at all.
A federal district court exercising diversity jurisdiction must
look to state law to determine a party's standing to sue.
Hoffman v. Jeffords, 175 F. Supp. 2d 49, 54 n. 2 (D.D.C. 2001)
(citation omitted). In the case of Catalyst, under Maryland law,
a corporation whose charter is forfeited no longer has a legal
existence, and its "power to sue and be sued . . . is
extinguished." Atl. Mill & Lumber Realty Co. v. Keefer,
20 A.2d 178, 180 (Md. 1941) (citations omitted). Simply put, forfeiture
ends a corporation's existence, legal and otherwise.
Cloverfields Imp. Ass'n, Inc. v. Seabreeze Props.,
362 A.2d 675, 679 (1976), aff'd, 373 A.2d 935, modified, 374 A.2d 906
(1977) (citation omitted). Here, defendants assert, and
plaintiffs do not deny, that Catalyst's corporate charter was
forfeited in 1996. Exh. A to Defs.' Mot. to Dismiss. Under the
facts presented and the applicable law, Catalyst lacks standing
to maintain this action.
Defendants also petition the court to dismiss Whisper Wash, on
the grounds that contrary to plaintiffs' repeated averments in
pleadings filed with this court, see Pls.' Mot. to Add Whisper
Wash as a Party, it is not incorporated in the state of Maryland.
Plaintiffs now concede this assertion, and instead muse that both
Whisper Wash and Catalyst would qualify as "unincorporated
associations" under FED. R. CIV. P. 17(b). This possibility,
however, will not support those plaintiffs' continued participation in these
proceedings, since 17(b) provides standing for a party "enforcing
a substantive right . . . existing under the Constitution or laws
of the United States." The only such rights at issue in the
instant case are plaintiffs' patent infringement claims, which
fail for the reasons discussed supra pp. 24-28.
Finally, while Maryland law*fn19 provides an opportunity
for unincorporated associations to sue and be sued,*fn20
this provision cannot be read to expand the kind of entities so
entitled to include amorphous groups that have their own name but
no distinct identity. Bourexis v. Carroll County Narcotics Task
Force, 625 A.2d 391, 396 (Md.App. 1993). Furthermore, an
unincorporated association has no standing to sue when it has no
property interest of its own that is separate and distinct from
its individual members. Carroll Park Manor Cmty. Ass'n, Inc. v.
Board of County Comm'rs, 437 A.2d 689, 693 (1981). Plaintiffs
have made no showing that Whisper Wash has any distinct assets or
other characteristics that would allow it to be properly
designated as an entity separate from Catalyst or from Gaughan,
the sole officer and director (and at least 90% owner) of both
"companies." See Pls.' Mot. to Add Whisper Wash as a Party at 3.
Accordingly, Whisper Wash also lacks standing to sue, and along
with Catalyst it must be dismissed from this action. III. CONCLUSION
For the foregoing reasons, the court concludes that plaintiffs'
motions for summary judgment must be denied, defendants' motion
for summary judgment must be granted in part and denied in part,
and defendants' motion to dismiss must be granted. An appropriate
order accompanies this opinion. ORDER
For the reasons stated in the court's memorandum opinion
docketed this same day, it is this 14th day of December, 2004,
ORDERED, that plaintiffs' motions for summary judgment are
DENIED; and it is further
ORDERED, that defendants' motion for summary judgment is
GRANTED as to the patent infringement claim and DENIED as to
the misappropriation of trade secret and breach of contract
claims; and it further
ORDERED, that defendants' motion to dismiss plaintiffs
Catalyst and Whisper Wash is GRANTED.