Tuesday, June 07, 2011, 6/07/2011 10:04:00 AM

Northwestern Engineering Professors Lose Trade Secrets Claim Against Former Students in Seventh Circuit

By Todd

Plaintiffs Seng–Tiong Ho and Yingyan Huang are engineering professors at Northwestern University. Defendants Huang and Chang were engineering graduate students at Northwestern University.

In 1998, Plaintiff Ho conceived of and first formulated a “4–level 2–electron atomic model with Pauli Exclusion Principle for simulating the dynamics of active media in a photonic device (‘the Model’).” By 1999, Plaintiff Ho had completed mathematical derivations of the Model, which comprised sixty-nine pages of notes and equations. The Model currently has no known commercial use.

Defendant Chang worked for Plaintiff Ho in the late 1990s as a graduate research assistant. In June 2002, Defendant Chang switched to Professor Taflove's research group. When Defendant Chang switched groups, he was warned by the head of the department not to continue any work previously done in Professor Ho's group and to avoid misappropriating Professor Ho's work. Mr. Chang returned several of Professor Ho's notebooks, but he failed to return an original copy of one of Professor Ho's notebooks previously issued to him in early 2002 to record his work.

Professor Taflove and Mr. Chang submitted a symposium paper to the IEEE Antennas and Propagation Society (“APS paper”) and an article to the journal Optics Express (“OE article”). These submissions described the Model and its applications: The APS paper provided a brief summary, and the OE article described the Model in detail. Some of the figures in Ms. Huang's master's thesis also were included in these submissions. The APS paper was published in 2003, and the OE article was published in 2004. Professor Taflove and Mr. Chang did not attribute any of the contents of the OE article or the APS paper to Professor Ho or Ms. Huang.

Professor Ho first became aware of the alleged wrong-doing in 2004, when he submitted his project for publication in Optics Communications, and it was rejected because of a previously published paper on the same topic, namely Professor Taflove and Mr. Chang's APS paper. In 2007, the plaintiffs received certificates of copyright in Professor Ho's 1998 and 1999 notebooks, Ms. Huang's master's thesis, two figures used within Ms. Huang's master's thesis and a visual presentation given by Ms. Huang that discussed the Model.

Professor Ho and Ms. Huang allege that Professor Taflove and Mr. Chang infringed upon their copyrights six times, by using the copyrighted materials without permission in the following documents, listed chronologically: (1) the APS paper; (2) Mr. Chang's Ph.D. thesis; (3) the OE article; (4) Professor Taflove and Mr. Chang's book chapter, published by Artech House in 2005; (5) Professor Taflove's presentation in 2006; and (6) Professor Taflove's presentation in 2007. “[T]he two main infringing documents” are the APS symposium paper and the OE article, as the other incidents of infringement involve parts of these two documents.

Professor Ho and Ms. Huang brought this action against Professor Taflove and Mr. Chang, alleging copyright infringement and state law claims of false designation of origin, unfair competition, conversion, fraud and misappropriation of trade secrets. We will focus on the trade secrets ruling that Professor Ho and Ms. Huang were not the victims of trade secret misappropriation.

In the district court's view, no trade secrets misappropriation occurred because the Model was not kept secret. It reasoned that the Model was published by Professor Ho and Ms. Huang in 2001 and 2002. Moreover, a trade secret is not dependent on whether proper attribution is given in later publications.

In support of a trade secrets misappropriation claim, Professor Ho also had asserted that Professor Taflove and Mr. Chang's article and book chapter contained some materials from the notebooks that were not previously published. The district court, however, found this statement “unsupported” and “nebulous.” Thus, the assertion by Professor Ho was insufficient to support a claim of trade secrets misappropriation.

The appellate court, agreeing with the trial court, reasoned as follows: "We need not decide whether the expressions of the Model had economic value because the plaintiffs did not show, in their summary judgment papers, that the expressions of the Model had the status of secrecy.

Professor Ho and Ms. Huang concede that “Professor Ho's research results were partially published in a conference paper in 2001 and then published in more detail in 2002” in Ms. Huang's master's thesis.

The plaintiffs, nevertheless, offer two reasons why the Model had the status of secrecy; both of these contentions fail. The plaintiffs first submit that “it is expected that anyone reading that thesis and using the Model would at least cite the thesis as the source of the expression of the Model.” Such an expectation of attribution, however, is not part of a trade secrets misappropriation claim. Once the possessor of information intentionally releases that information, the possessor can no longer make a successful trade secrets misappropriation claim because the information is not subject to reasonable efforts to maintain secrecy.

Professor Ho and Ms. Huang also contend that the defendants used “materials from Ho's copyrighted notebook that were not published.” As support for this assertion, the plaintiffs point to their statement of material facts, which refers, in turn, to Professor Ho's affidavit, submitted as Exhibit A to the plaintiffs' response to the summary judgment motion. In his affidavit, Professor Ho generally asserts that the defendants' publications included materials from one of his copyrighted, but unpublished, notebooks. The affidavit, however, does not specify what material allegedly was copied from Professor Ho's unpublished notebook, as opposed to that taken from Ms. Huang's published master's thesis or from other published sources. The plaintiffs claim that the defendants used material from Professor Ho's copyrighted notebook, but they provide no specific evidence linking the material in papers published by the defendant to that found exclusively in Professor Ho's unpublished notebook."

So this is officially "you've got to use reasonable means to keep your secrets secret" week at Womble Trade Secrets. The case can be cited as Seng-Tiong Ho v. Taflove, --- F.3d ----, 2011 WL 2175878(7th Cir. June 6, 2011). Click on the title above and you will be linked to the opinion.


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