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Archived updates for Thursday, December 01, 2005

Trade Secret Claim Fails to Identify Novel Feature of Copied Device

In Stratienko v. Cordis Corp. (6th Cir.; November 18, 2005) the lower court had granted summary judgment for Cordis, holding that there was no misappropriation of trade secret during Cordis's inspection of Dr. Statienko's then patent-pending catheter design. Dr. Stratienko was also later forced to withdraw his patent infringement claim when faced with a summary judgement motion on invalidity based upon an earlier patent by Cordis for the "Webster Guiding Sheath." When Dr. Statienko appealed the trade secret misappropriation judgement, the appellate court found that Dr. Stratienko had not demonstrated similarity between the novel aspects of his secret catheter and the Cordis device:

Instead, his experts state only that the Stratienko device has a catheter-sheath combination, a preformed tip, and holes at the distal end. At no point do his experts state which, if any, of these characteristics renders his idea innovative. It is entirely possible that the holes at the distal end, which the Cordis design lacked, distinguished Dr. Stratienko’s device from prior art. We cannot find in the record that Dr. Stratienko has presented evidence of which features were novel to his design, and thus he has failed to show sufficient similarity between the innovative aspect of his idea and Cordis’ device to provide enough of a circumstantial inference to create a genuine issue of material fact.

It is true that the parties have already conceded that Dr. Stratienko had a trade secret. But this does not mean that sufficient similarity has been shown to permit an inference of use. The parties’ implicit concession that a trade secret exists does not identify the secret. Identifying the secret that provides Dr. Stratienko with an advantage in the market is necessary for determining whether the pertinent similarity implies that Cordis used his secret. The analysis of similarity evaluates only relevant, innovative features, not all possible congruence. Without evidence of the advantage of Dr. Stratienko’s device over prior art, there is not a sufficient basis for a reasonable jury to make the circumstantial inference of use. Dr. Stratienko, therefore, has not presented sufficient evidence to establish that there is any genuine issue of material fact as to use, and summary judgment was proper as to Dr. Stratienko’s claims for misappropriation, wrongful benefit, and breach of contract.

In a footnote, the court acknowledged that counsel stated during oral argument that the combination of the sheath and catheter was the novel feature. "But the record demonstrates only that Dr. Stratienko’s device had such a combination, not that the features had never before
been combined," worte the court. Perhaps because that was what was exactly what was disclosed in Cordis' patent? "Because Cordis did not produce any evidence of the 1997 Webster Guiding Sheath at the time that the district court granted the [first] motion for summary judgment [on misappropriation of trade secret] in October 2003, we do not consider it."
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