Patentee Cannot Assert That An Allegedly Infringed Claim Element Is A Trade Secret

This article previously appeared in Last Month at the Federal Circuit November, 2011.

Judges: Prost (author), Mayer, O'Malley

[Appealed from D. Mass., Judge Saris]

In Atlantic Research Marketing Systems, Inc. v. Troy, Nos. 11-1002, -1003 (Fed. Cir. Oct. 6, 2011), the Federal Circuit affirmed the district court's grant of SJ of invalidity of certain patent claims on written description grounds, and the district court's denial of defendants Stephen P. Troy, Jr. and Troy Industries, Inc.'s (collectively "Troy") motion for JMOL. The Court also vacated the jury's verdict in favor of Atlantic Research Marketing Systems, Inc. ("Atlantic Research") and reversed the district court's denial of Troy's motion for a mistrial on the ground that the district court did not properly address a jury taint issue.

Atlantic Research is an arms manufacturing company that focuses on accessories for small arms weaponry, including handguards that attach to military rifles. Richard Swan founded Atlantic Research and is the named inventor of U.S. Patent No. 6,499,245 ("the '245 patent") and its reissue, U.S. Reissue Patent No. 39,465 ("the '465 patent"), both of which are directed to a handguard device. Mr. Troy, initially a distributor for Atlantic Research, eventually became an employee of Atlantic Research. As part of his employment, Mr. Troy signed a nondisclosure agreement. Mr. Troy also became familiar with Atlantic Research's products, product designs, and prototypes. While employed at Atlantic Research, Mr. Troy also developed a weapons product for his own company, Troy Industries, Inc. Mr. Swan was aware of this and permitted Mr. Troy to promote his product from Atlantic Research's booth at a weapons industry trade show. Soon after the trade show, however, Mr. Swan terminated Mr. Troy's employment with Atlantic Research. Thereafter, Troy Industries, Inc. began offering handguards that attached to rifles solely by clamping to the barrel nut, which is used to attach the barrel to the firearm. Mr. Troy also sought a patent for this invention, and U.S. Patent No. 7,216,451 issued in May 2007 with Mr. Troy as the named inventor.

Atlantic Research filed a complaint against Troy alleging infringement of the '465 patent and alleging misappropriation of trade secrets. Troy, in turn, alleged that the '465 patent was invalid. The district court found claims 31-36 of the '465 patent invalid for failing to meet the written description and best mode requirements at the SJ...