Citations
- 12 F. Supp. 2d 132
Full opinion text
Opinion
KEETON, District Judge.
I. Procedural Summary
After extensive pretrial hearings and rulings, which reduced to some extent the scope of the issues foe trial, this case proceeded through jury trial commencing on March 16, 1998 and concluding with a Verdict on April 3, 1998. On April 8, 1998, the court held hearings regarding the form of the judgment, and ordered judgment for declaratory relief and monetary damages as found by the jury.
Now before the court are the following post-verdict motions:
(1) Mechtronics Corporation’s Post>-Ver~ diet Motion for Judgment as a Matter of Law or, Alternatively, to Alter or Amend the Judgment (Docket No. 113, filed April 22, 1998), with supporting submissions (Docket Nos. 114, 115). Sign-A-Way’s opposing positions are set forth in its post-verdict motions and submissions identified in the next paragraph below.
(2) Sign-A-Way’s Renewed Motion for Judgment as a Matter of Law and Motion to Alter or Amend the Judgment (Docket No. 117, filed April 23, 1998) and Sign-A-Way’s Alternative Motion for Setoff of Judgments (Docket No. 116), with supporting submission (Docket No. 118). Mechtronics filed an opposition (Docket No. 121, filed May 7, 1998).
The intertwined legal and factual complexities of this case made it infeasible to try the case to general verdict. Instead, the court submitted only special questions to the jury under Rule 49(a) of the Federal Rules of Civil Procedure. The judgment of April 8, 1998, awarding some relief to each party and rejecting other contentions of each party, recites each of the answers of the jury that the court concluded on April 8 were relevant to terms of the judgment.
For the reasons explained in Parts IV — V of this opinion, I conclude that the Judgment of April 8 awarding damages to Mechtronics on its counterclaim must be vacated, and an Amended Judgment making a lower award on the counterclaim will be ordered.
As background for explaining the court’s rulings on the post-verdict motions now pending, Part II of this opinion recites the terms of the Judgment of April 8, 1998, including quoted portions of the verdict.
II. The Judgment of April 8, 1998
The entire terms of the judgment, excluding only the caption, were as follows:
Plaintiff’s Amended and Restated Complaint sought injunctive relief, declaratory relief, compensatory damages, punitive damages, attorneys fees, and an accounting of defendant’s use of plaintiffs alleged “invention.” After court rulings in pretrial proceedings, plaintiffs numerous theories of claim remaining at the beginning of trial proceedings included a federal law claim of violation of the Lanham Act for false or misleading advertisement and promotion; Massachusetts state-law claims of breach of contract, misappropriation of trade secrets, unjust enrichment, conversion, interference with advantageous relations, damage to reputation, and fraud; and claims under the law of Connecticut of unfair competition and violation of the Connecticut Unfair Trade Practices Act.
Defendant, in counterclaims, asserted Massachusetts state-law claims for injunctive relief; “damages, together with interest, costs, and attorneys’ fees;” double damages as to one of the asserted counterclaims; conversion; misappropriation of trade secrets and other proprietary information; and unjust enrichment.
The court submitted to the jury factual issues, by questions under Rule 49(a) of the Federal Rules of Civil Procedure, bearing upon the claims and counterclaims remaining for trial. On April 3,1998, the jury returned a verdict that, in material part, was as follows:
I. WHAT WAS KNOWN, SAID, AND DONE AT VARIOUS IDENTIFIED TIMES
A. Promises of Mechtronics to Keep Disclosures of Donna Stearns Confidential
1. Defendant does not dispute that Christopher Anderson, Vice President of Me-chtronics, at the meeting of January 1994, promised to keep confidential all disclosures made by Donna Steams during that meeting and in their further dealings with each other as to which you have heard evidence in this case.
Did Donna Steams, acting in reliance on that promise, provide to Mechtronics during or after that meeting one or more of the following?
(1) A mechanical model of a self-leveling sign hanging device ?
X YES _ NO
(2) A photograph of the self-leveling sign hanging device ?
X YES _ NO
(S)A patent disclosure statement?
X YES _ NO
(4) An explanation as to how the self-leveling sign hanging device functioned?
X YES _ NO
(5) Her opinion that there was a marketplace need for self-leveling sign hanging devices?
X YES _ NO
2. Defendant does not dispute that, at the January 1994 meeting or later, Donna Steams disclosed to Mechtronics, either orally, or by presentation of a model, photograph or patent disclosure, a device that consisted of one or more of the follounng characteristics:
(1) A device to raise and lower a sign from a ceiling.
(2) A device to raise and lower a sign that was self-leveling (i.e., the sign would remain level at all times).
(S) A device for suspending signs containing a sign holder to hold the sign.
(4) A device for suspending signs containing a sign holder where the sign holder’s sheaves are spaced equidistantly from their respective ends.
(5) A cord supporting the sign holder.
(6) A drum from which the cord would wind and unwind thereby raising or lowering the sign.
(7) A cord which supports the sign holder that runs from a fixed point on the ceiling to a drum.
(8) A device for suspending signs containing a sign holder where the distance between the sign holder’s sheaves and the cord-attaching unit and drum are the same.
(9) Two pulleys attached to the sign holder through which the cord runs.
Did Donna Steams also disclose to Me-chtronics, either orally or by a presentation of a model, photograph, or patent disclosure:
(10) A motorized means to turn the drum and thereby wind and unwind the cord to raise and lower the sign?
X YES NO
_
(11) A remote • control device to activate the motor to turn the drum, thereby '' winding and unwinding the cord to raise and lower the sign?
X YES _ NO
B. Intent of Mechtronics and Reliance by Donna Steams
Defendant does not dispute
(1) that Mechtronics promised, in the letter dated February 7, 1994, to keep confidential the disclosures to Me-chtronics that were made by Donna Steams, before and after as well as on February 7, 1994-, and
(2) that an ordinarily prudent person in Donna Steams’ circumstances would have relied upon that promise.
3(a). Did Donna Steams rely on that promise?
X YES_NO
If YES to 3(a), go to 3(b) -(d). Otherwise, skip 3(b) -(d).
3(b). Do you find that a representative of Mechtronics, at the time of making such a promise to Donna Steams, did not then intend and expect that Mechtronics would keep that promise?
(1) Oral promise by Christopher Anderson?
_ We find by a preponderance of the evidence that plaintiff has met its burden of proving that Anderson did not then intend and expect that Mechtronics would keep the promise
X We find that plaintiff failed to meet its burden
(2) Oral promise by Richard Fellinger?
_ We find by a preponderance of the evidence that plaintiff has met its burden of proving that Fellinger did not then intend and expect that Mechtronics would keep the promise
X We find that plaintiff failed to meet its burden
(3) Promise in the February 7, 1994 Letter?
_ We find by a preponderance of the evidence that plaintiff has met its burden of proving that Fellinger, at the time of signing the letter, did not then intend and expect that Mechtron-ics would keep the promise
X We find that plaintiff failed to meet its burden ■
3(c). At a later time (after the promise was made) did a representative of Mechtron-ics decide that Mechtronics did not at that later time then intend and expect that Me-chtronics would keep the promise?
_ We find by a preponderance of the evidence that plaintiff has met its burden of proving that at a later time a representative of Mechtronics then intended that Mechtronics would not keep the promise
_ We find by a preponderance of the evidence that plaintiff has met its burden of proving that at a later time a representative of Mechtronics then expected that Mechtronics would not keep the promise
X We find that plaintiff failed to meet its burden
3(d). Did any person acting for Me-chtronics tell Donna Steams, at either the January or the February/March 1994 meeting, that Mechtronics did not intend to keep confidential the disclosures she made?
(1) As to Christopher Anderson?
X We find by a preponderance of the evidence that plaintiff has met its burden of proving that Anderson did not tell Donna Steams that Mechtronics did not intend to keep confidential the disclosures she made
_ We find that plaintiff failed to meet its burden
(2) As to Richard Fellinger?
X We find by a preponderance of the evidence that plaintiff has met its burden of proving that Fellinger did not tell Donna Steams that Mechtronics did not intend to keep confidential the disclosures she made
_ We find that plaintiff failed to meet its burden
(3) As to any other person?
X We find by a preponderance of the evidence that plaintiff has met its burden of proving that no other person acting for Me-chtronics told Donna Steams that Mechtronics did not intend to keep confidential the disclosures she made
_ We find that plaintiff failed to meet its burden
C. Compliance or Breach
4(a). Did Mechtronics, without the manifested consent (express or implied in fact) of Donna Steams, reveal to at least one other person, or entity, material information contained in one or more of the disclosures by Donna Steams to Mechtronics regarding the Self-Leveling Sign Hanging Device ?
X YES _ NO
If YES to Ua), go to h(b) -(e). Otherwise, skip Jp(b) -(e).
b(b). Did Mechtronics’ conduct in revealing material information contained in one or more of the disclosures of Donna Steams cause harm to Sign-A-Way ?
X YES _ NO
Me). To which, if any, of the following did Mechtronics reveal material information contained in one or more of the disclosures by Donna Steams ?
(1) Arthur Torrence
X YES _ NO
(2) Cary Cieciuch
X YES _ NO
(3) The Patent and Trademark Office in the 1995 application
X YES _NO
(If) The Patent and Trademark Office in the 1996 application X YES _ NO
U(d)(l). After Mechtronics revealed to one or more of the persons or office identified in k(c), did Donna Steams learn that Mechtronics had revealed and what Me-chtronics had revealed, and to whom?
X YES _ NO
If YES to U(d)(l), go to k(d)(2) and (3). Otherwise, skip f(d)(2) and (3).
1(d)(2). Did Donna Steams manifest consent (express or implied in fact) to what Mechtronics had revealed?
X YES _ NO
f(d)(3). Did Donna Steams know that Mechtronics was taking additional steps to proceed with development of the Self-Leveling Sign Hanging Device?
X YES _ NO
k(e). As to the disclosures about the Self-Leveling Sign Hanging Device provided by Donna Steams to Mechtronics,
(1)were all of them otherwise known to Mechtronics?
_ YES, we find by a preponderance of the evidence
X NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(2) were all of them generally known?
_ YES, we find by a preponderance of the evidence
X NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(3) were any of them both (i) not previously known to Mechtronics and (ii) useable in the operation of a business or other enterprise?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(If) were any of them both (i) not previously known to Mechtronics and (ii) sufficiently valuable and secret to afford an actual or potential economic advantage over others?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(5) were any of them both (i) not previously known to Mechtronics and (ii) of measurable benefit to Mechtronics?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
D. Trade Secrets
5. This question concerns care in protecting confidential information about the Self-Leveling Sign Hanging Device.
5(a). Did Donna Steams violate the standard of due respect for the interests of Mechtronics to protect secrecy and avoid disclosure
to persons and entities other than Me-chtronics of the information about the Self-Leveling Sign Hanging Device that she disclosed to Mechtronics after receiving a promise of confidentiality from Mechtronics ?
(1) X We find by a preponderance of the evidence that she made disclosures to persons or entities other than Mechtronics that a reasonable person in her circumstances would not have made
(2) _ We find by a preponderance of the evidence that any disclosures she made to persons or entities other than Mechtronics were made in circumstances in which a reasonable person would have felt free to make them
(3) _ We unanimously find no preponderance of the evidence on this matter
If in answering 5(a) you checked 5(a)(1) or 5(a)(3), go to 5(b). Otherwise, skip 5(b).
5(b). Did Donna Steams’ disclosures in violation of the standard of due respect to protect secrecy of confidential information she had disclosed to Mechtronics cause loss to Mechtronics?
X YES _ NO
E. Concerning Unjust Enrichment
6(a). Did Mechtronics attempt to use for its own benefit
the disclosures Donna Steams made to Mechtronics concerning the Self-Leveling Sign Hanging Device in one or more of the following ways?
(1) In making the 1995 patent application
X YES _ NO
(2) In making the 1996 patent application
X YES _ NO
(3) In one or more other ways
X YES _ NO
If YES to any part of 6(a), go to the corresponding part of 6(b). Otherwise, skip 6(b).
6(b). Did Mechtronics do so without the consent of Donna Steams (express or implied in fact) ?
(1) As to the 1995 patent application
X We find by a preponderance of the evidence that Mechtronics did not have the consent of Donna Steams
_ We find by a preponderance of the evidence that Mechtronics did have the consent of Donna Steams
_ We unanimously find no preponderance of the evidence on this matter
(3) In one or more of other ways
X We find by a preponderance of the evidence that Mechtronics did not have the consent of Donna Steams
__ We find by a preponderance of the evidence that Mechtronics did have the consent of Donna Steams
_ We unanimously find no preponderance of the evidence on this matter
7(a). Did Mechtronics understand the benefit of the disclosures made by Donna Steams to Mechtronics concerning the Self-Leveling Sign Hanging Device?
X We find by a preponderance of the evidence that Mechtronics did understand
_We find by a preponderance of the evidence that Mechtronics did not understand
_We unanimously find no preponderance of the evidence on this matter
7(b). Did Mechtronics in fact obtain a benefit from the disclosures Donna Steams made to Mechtronics concerning the Self-Leveling Sign Hanging Device?
X We find by a preponderance of the evidence that Mechtronics in fact did obtain a benefit
___ We find by a preponderance of the evidence that Mechtronics in fact did not obtain a benefit
_ We unanimously find no preponderance of the evidence on this matter
F. Contacts in the Industry
8(a). Did Donna Steams
(1) have a business relationship or contemplated business relationship of economic benefit with persons or entities in a business in which the Self-Level ing Sign Hanging Device would be useful?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(2) advise Mechtronics of those business relationships or contemplated business relationships?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
8(b). Did Mechtronics,
by application for a patent on a Self-Leveling Sign Hanging Device, interfere with Donna Steams’ business relationships and contemplated business relationships?
Check in only one of the following five blanks to express your unanimous finding of knowing, reckless, or negligent interference, or your unanimous finding that Sign-A-Way has not met its burden of proving knowing, reckless, or negligent interference.
(1) - YES, knowingly, we find by a preponderance of the evidence
m — YES, recklessly, we find by a preponderance of the evidence
(3) - YES, negligently, we find by a preponderance of the evidence
(tí NO, we find by a preponderance of the evidence
(5) - We unanimously find that there is no preponderance of the evidence
8(c). Did Mechtronics
in a way or ways other than applying for a patent,
interfere with Ms. Steams’ potential customers of the Self-Leveling Sign Hanging Device?
Check in only one of the following five blanks to express your unanimous finding of knowing, reckless, or negligent interference, or your unanimous finding that Sign-A-Way has not met its burden of proving knowing or negligent interference.
(1) X YES, knounngly, we find by a preponderance of the evidence
(2) _ YES, recklessly we find by a preponderance of the evidence
(3) _ YES, negligently we find by a preponderance of the evidence
(h) _ NO, we find by a preponderance of the evidence
(5) _ We unanimously find that there is no preponderance of the evidence
G. Applications to the Patent Office— 1995 and 1996 (Alleged Promise to Name Donna Stearns as Inventor)
9(a). Did Mechtronics make a promise to Donna Steams that you find to be applicable to either or both of the 1995 and 1996 applications, in which part of the promise was that Mechtronics would list her as inventor:
(1) with respect to the 1995 application?
X YES _ NO
(2) with respect to the 1996 application?
X YES _ NO
If YES to either part of 9(a), go to the same part of 9(b). Otherwise, skip 9(b).
9(b). Did Donna Steams rely on Me-chtronics’ promise to list her as inventor,
(1) with respect to the 1995 application?
X YES _ NO
If YES to either part of 9(b), go to the same part of 9(d). Otherwise, skip 9(d).
9(c). In the circumstances occupied by Donna Steams, would an ordinarily prudent person have relied upon the promise to list her as inventor
(1) by Christopher Anderson ?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(2) by Richard Fellinger?
X YES, we find by a preponderance of the evidence
_ NO, we find by a 'preponderance of the evidence
_ We find that there is no preponderance of the evidence
(3) in the February 7, 1991* Letter?
_ YES, we find by a preponderance of the evidence
X NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
9(d). Did Mechtronics break its promise to list her as inventor,
(1)with respect to the 1995 application?
X YES _ NO
H.Standard of Conduct (Mechtronics)
10(a). An administrative regulation, 37 Code of Federal Regulations, § 1.56, entitled “Duty to disclose information material to patentability, ” prescribes a “duty of candor and good faith in dealing with” the Patent and Trademark Office in submitting an application. Did Mechtronics violate the duty of candor and good faith in dealing with the Patent Office in
(1) making the 1995 application?
X YES _ NO
(2) making the 1996 application?
X YES _ NO
If YES to any part of 10(a), go to the corresponding part of 10(b). Otherwise, skip 10(b).
10(b). Was Mechtronics’ conduct also a violation of Mechtronics’ duty of due respect for interests of Sigrir-A-Way and Donna Steams and was that conduct a cause of loss to them?
(1) Was submitting the 1995 application
(i) a violation of duty to Sigiu-A Way and Donna Steams?
X YES _ NO
(ii) a cause of loss to Sign-A-Way and Donna Steams?
X YES _ NO
10(c). After Mechtronics made the 1995 application and Donna Steams learned that Mechtronics had done so and learned about its content, did she manifest consent (express or implied in fact) to Mechtronics having made that application and to its content?
X YES _ NO
10(d). After Mechtronics made the 1996 application and Donna Steams learned that Mechtronics had done so and learned about its content, did she manifest consent (express or implied in fact) to Mechtronics having made that application and to its content?
X YES _ NO
I. Mechtronics’ Display at Trade Show of 1996
11(a). Was the display of a model of the Self-Leveling Sign Hanging Device by Me-chtronics
(1) with the word “patented”
likely to deceive or mislead potential purchasers?
X YES _ NO
(2) with a sign stating that it was patented
likely to cause confusion among potential purchasers
concerning Sign-A-Way’s and Me-chtronics’ rights and the rights of ownership of the device?
X YES _ NO
(3) with a sign stating that it was patented
likely to cause confusion among potential purchasers
as to the origin of the sign suspension device?
X YES _ NO
11(b). Did Mechtronics
(1) make false representations as to the origin of the sign suspension device
X YES _ NO
If YES to 11(b)(1), answer 11(b)(2). Otherwise, skip 11(b)(2).
J. Mitigation
12(a). Did Donna Steams believe before filing this civil action that Mechtronics was attempting to misappropriate the information she had disclosed to Mechtronics?
X YES _ NO
If YES to 12(a), go to 12(b). Otherwise, skip 12(b).
12(b). Do you find that Donna Stearns had not formed this belief, before she arranged for removal of the model in the Pet Supply store?
(1) X We find by a preponderance of the evidence that she did not form this belief until later
(2) _ We find by a preponderance of the evidence that she had formed this belief before she arranged for removal of the model in the Pet Supply store
(3) _ We unanimously find no preponderance of the evidence
II. DAMAGES AWARDS, IF ANY, FOR SIGN-A-WAY AGAINST MECHTRONICS
If YES to 1.3(a) and H(a), answer II.l. Otherwise, skip II.l.
1.This question concerns alleged harm caused. What amount of money, if any, is needed to compensate Sign-A-Way fairly and reasonably for any harm, as defined in the court’s Charge,
caused by Mechtronics’revealing information disclosed to it by Donna Steams. Answer in DOLLARS or NONE.
(a) Revealing to the Patent Office
(1) In the 1995 application
$ NONE_
(2) In the 1996 application
$ NONE_
(b) Revealing to others
(1) Arthur Torrence
$ NONE_
(2) Cary Cieciuch
$ NONE_
If you have answered more than one of the above parts of II.l with a DOLLAR AMOUNT, go to 1(c). Otherwise, skip 1(c).
If YES to any part of 1.6(a), go to the corresponding part of 11.2. Otherwise, skip II.2.
2. This question concerns alleged unjust enrichment. What amount of money, if any, is needed to compensate Sign-A Way fairly and reasonably for misappropriation in one or more of the following ways? Answer in DOLLARS or NONE.
2(a). Making a patent application
(1) In making the 1995 application
$ NONE
(2) In making the 1996 application
$ NONE
2(b). In one or more other ways
$ NONE
If you have answered one or more parts of 11.2 with a DOLLAR amount, go to 2(c). Otherwise, skip 2(c).
If YES to any part of 8(b), or in answer to 8(b) you checked “we find no preponderance,” go to II. 3. Otherwise, skip 11.3.
3. This question concerns alleged interference with advantageous relationships by making applications to the Patent Office.
3(a). What amount of money, if any, is needed to compensate Sigm-A-Way for losing established customers and not gaining new customers, caused by Mechtronics’ making application to the Patent Office? Answer in DOLLARS or NONE.
(1) In making the 1995 application
$ NONE
(2) In making the 1996 application
$ NONE
If you have answered either part of 11.3(a) with a DOLLAR AMOUNT, go to 3(b). Otherwise, skip 3(b).
If YES to any part of 8(c), or in answer to 8(c) you checked “we find no preponderance, ” go to Ilf. Otherwise, skip ILL
L This question concerns alleged interference with advantageous relationships in ways other than making applications to the Patent Office.
1(a). What amount of money, if any, is needed to compensate Sign-A-Way for loss of established customers or not gaining new customers, caused by conduct of Mechtronics other than making applications to the Patent Offce? Answer in DOLLARS or NONE.
$ NONE
If you have answered II.1(a) with a DOLLAR AMOUNT, go to 1(b). Otherwise, skip 1(b).
If YES to either part of 1.9(b), go to the corresponding part of I 1.5. Otherwise, skip 11.5.
5(a). What amount of money, if any, is needed to compensate Sign-A-Way fairly and reasonably for harm, if any, that Me-chtronics’ failure to list her as inventor caused? Answer in DOLLARS or NONE.
(1) With respect to the 1995 application
$ 200,000.00
(2) With respect to the 1996 application
$ NONE
If you have answered either part of 5(a) with a DOLLAR amount, go to 5(b). Otherwise, skip 5(b).
If YES to any part of 1.10(a) and any part of 1.10(b), go to II.6. Otherwise, skip II.6.
6(a). What amount of money, if any, is needed to compensate Sign-A-Way fairly and reasonably for any loss to Sign-A-Way caused by conduct of Mechtronics in violation of a duty to Sign-A-Way and Donna Steams regarding candor and good faith in dealing with the Patent and Trademark Office? Answer in DOLLARS or NONE.
(1) In making the 1995 application
$ 200,000.00
(2) In making the 1996 application
$ NONE
If you have answered either part of 11.6(a) with a DOLLAR AMOUNT, go to 6(b). Otherwise, skip 6(b).
6(b). How much, if any, of the amount or amounts you have found is duplicative? Answer in DOLLARS or NONE.
(1) With respect to the amount in 6(a)(1)
(xi) Duplicative as to 5(a)(1) $ 200,000.00
If YES to any part of 1.11, go to 11.7. Otherwise, skip II. 7.
7(a). What amount of money, if any, is needed to compensate Sign-A-Way fairly and reasonably for any loss to Sign-A-Way caused by the conduct of Mechtronics in any of the following ways? Answer in DOLLARS or NONE.
(1) In displaying a model of the Self-Leveling Sign Hanging Device
NONE
(2) In making a false representation as to the origin of the sign suspension device
$ NONE
If you have answered either part of 11.7(a) with a DOLLAR AMOUNT, go to 7(b). Otherwise, skip 7(b).
If you have been directed in Part II to answer any other question in Part II., go to II.8 immediately below. Otherwise, skip II. 8.
The court needs your answer to this following question in order to determine what, if any, judgment is to be made with respect to declaratory relief in this case.
8. Do you find by a preponderance of the evidence that it is reasonably certain that Signr-A-Way will suffer economic harm in the future, beyond the date of your verdict, of which any wrongful conduct of Mechtronics you have found in answering other questions in this verdict is a cause?
X YES _ NO
9. If you have awarded a sum of money in answer to any question in Part II, answer the corresponding part of this question. Otherwise, skip this question. What, if any, prejudgment interest do you award. Answer in DOLLARS or NONE.
(xi) On the sum awarded in 5(a)(1), $ 20,-000.00 in prejudgment interest
(xiii) On the sum awarded in 6(a)(1), $ 20,-000.00 in prejudgment interest
III. DISCLOSURES BY MECHTRONICS TO SIGN-A-WAY
1. This question concerns Mechtronics’ disclosures to Donna Steams or Sign-AWay.
1(a)(1) Did Mechtronics disclose to Donna Steams or Sigm-A-Way the Mechtronics device’s micro-chip?
X YES _ NO
If YES to 1(a)(1), go to (2)-(6). Otherwise skip (2)-(6).
(2) Was this information otherwise known to Sign-A-Way?
X YES _ NO
(3) Was this information generally known?
X YES _ NO
ft) Was this information useable in the operation of a business or other enterprise?
X YES _ NO
(5) Was this disclosure sufficiently informative beyond general knowledge and valuable, alone or together with other disclosures, to provide Donna Steams an economic advantage over others in a similar business?
X YES _ NO
(6) Did Donna Steams or Sigm-A-Way violate their duty of due respect for the interests of Mechtronics in this information Mechtronics disclosed to Donna Steams or Sigm-A-Way?
X YES _ NO
1(b)(1) Did Mechtronics disclose to Donna Steams or Sign-A-Way Mechtron-ics’ customer lists, contacts, and marketing leads, developed by Me-chtronics?
X YES _ NO
If YES to 1(b)(1), go to (2)-(6). Otherwise skip (2)-(6).
2. This question concerns Mechtronics’ Trade Secrets and Mechtronics’ care in protecting confidential information about Me-chtronics development of models and designs.
2(a) Did Mechtronics violate the standard of due respect for the interests of Sigm-A-Way to protect secrecy and avoid disclosure to persons and entities other than Donna Steams and Sign-A-Way of the information about Mechtronics’ development of models and designs that Me-chtronics disclosed to Donna Steams or Sign-A-Way
(1) _We find by a preponderance of the evidence that Mechtronics made disclosures to persons or entities other than Donna Steams and Sigm-A-Way that a reasonable person in Mechtronics’ circumstances would not have made.
(2) X We find by a preponderance of the evidence that any disclosures Mechtronics made to persons or entities other than Donna Steams and Sign-A-Way were made in circumstances in which a reasonable person would have felt free to make them.
(3) _ We unanimously find no preponderance of the evidence on this matter.
3(a) Was Donna Steams’ conduct in either of the following ways a violation of her duty of due respect for the interests of Me-chtronics?
(1) Was Donna Steams’ conduct in arranging for the removal of the model that was displayed in the Pet Supply Store a violation of her duty of due respect for Mechtronics’ property interest in the model?
X YES _ NO
(2) Was Donna Steams’ conduct in making the arrangements she made with Selectronics for developing and making a model a violation of her duty of due respect for Mechtronics’ interests?
X YES _ NO
If YES to either part of 3(a), go to the corresponding part of 3(b). Otherwise skip 3(b).
3(b) Did Donna Steams’ conduct in either of the following ways cause Mechtronics to suffer a loss?
(2) Her conduct in making the arrangements she made with Selectronics for developing and making a model?
X YES _ NO
IV. DAMAGES AWARDS, IF ANY, FOR MECHTRONICS AGAINST SIGN-AWAY
If YES to any of III.l(a)-(d)(l) or 111.1(b)(1), go to 1, immediately below. Otherwise, skip 1.
1. This question concerns alleged misappropriation of benefit.
1(a). Did Sign-A-Way use for its own benefit information Mechtronics disclosed to Sign-A-Way about the Self-Leveling Sign Hanging Device without compensating Mechtronics fairly and reasonably for the use?
X YES _ NO
If YES to 1(a), go to 1(b). Otherwise, skip 1(b).
1(b). What amount of money, if any, is needed to compensate Mechtronics fairly and reasonably for misappropriation? Answer in DOLLARS or NONE.
(1) For use of the Mechtronics’ microchip $ 1,000.00
(2) For use of customer lists, marketing contracts and leads
$ NONE
If you have answered both parts of 111.1(b) with a DOLLAR amount, go to 1(c). Otherwise skip 1(c).
1(c). How much, if any, of the amounts you have found is duplicative? Answer in DOLLARS or NONE.
$ NONE
If YES to 111.1(a)(6) or 111.1(b)(6), go to 2.
2. This question concerns Donna Steams’ or Sign-A-Way’s allegedly causing loss to Mechtronics by revealing information Mechtronics disclosed to Donna Steams or Sign-A-Way.
2(a). What amount of money, if any, is needed to compensate Mechtronics fairly and reasonably for any loss to Mechtronics caused by Donna Steams or Sign-A-Way by revealing to others in violation of their duty of due respect for the interests of Mechtron-ics, one or more of the disclosures of Me-chtronics to Donna Steams or Sign-A-Way?
$ NONE
If you have answered IV.2(a) with a DOLLAR amount, answer 2(b). Otherwise skip 2(b).
If YES to either part of 111.3(a), to 3, immediately below. Otherwise, skip 3.
3(a)(1). What amount of money, if any, is needed to compensate Mechtronics fairly and reasonably for any loss to Mechtronics caused by Donna Steams’ arranging for removal of the model in the Pet Supply store? Answer in DOLLARS or NONE.
$ NONE
3(a)(2). What amount of money, if any, is needed to compensate Mechtronics fairly and reasonably for any loss to Mechtronics caused by Donna Steams’ making the arrangements she made with Selectronics for developing and making a model? Answer in DOLLARS or NONE.
$ 28,000.00
If you answered either part of 3(a) with a dollar amount, go to 3(b). Otherwise skip 3(b).
3(b). How much, if any, of the amount or amounts you have found is duplicative? Answer in DOLLARS or NONE.
(2) With respect to the amount found in 3(a)(2)
(i) Duplicative as to 1(b)(1) $ 1,000.00
L If you have awarded a sum of money in any question in Part IV, answer the corresponding part of this question. Otherwise skip this question.
What, if any, prejudgment interest do you award? Answer in DOLLARS or NONE.
On the sum awarded in 3(a)(2), $ 8,4.00.00 in prejudgment interest
April 13, 1998_ X_
Date Foreperson
On the stipulations, rulings of law, and the foregoing findings of fact by the jury in response to Questions 1.(1) — (5), 1.2(1) — (11), 1.3(a), I.4(a)-(c), 1.4(e), 1.6, 1.7, 1.8(c), 1.9, 1.10, Ill, and 11.4(a), it is ORDERED AND ADJUDGED:
(1)With respect to plaintiffs claim for declaratory relief, it is adjudicated and declared that:
(a) Donna Stearns, acting in reliance on promises of confidentiality by Me-chtronics, provided to Mechtronics:
(1) A mechanical model of a self-leveling sign hanging device;
(2) A photograph of the self-leveling sign hanging device;
(3) A patent disclosure statement;
(4) An explanation as to how the self-leveling sign hanging device functioned;
(5) Her opinion that there was a marketplace need for self-leveling sign hanging devices;
(b) Donna Stearns, acting in reliance upon promises of confidentiality by Mechtronics, also disclosed to Me-chtronics:
(1) A device to raise and lower a sign from a ceiling;
(2) A device to raise and lower a sign that was self-leveling (i.e., the sign would remain level at all times);
(3) A device for suspending signs containing a sign holder to hold the sign;
(4) A device' for suspending signs containing a sign holder where the sign holder’s sheaves are spaced equidistantly from their respective ends;
(5) A cord supporting the sign holder;
(6) A drum from which the cord would wind and unwind thereby raising or lowering the sign;
(7) A cord which supports the sign holder that runs from a fixed point on the ceiling to a drum;
(8) A device for suspending signs containing a sign holder where the distance between the sign holder’s sheaves and the cord-attaching unit and drum are the same;
(9) Two pulleys attached to the sign-holder through which the cord runs;
(10) A motorized means to turn the drum and thereby wind and unwind the cord to raise and lower the sign;
(11) A remote control device to activate the motor to turn the drum, thereby winding and unwinding the cord to raise and lower the sign;
(c) Mechtronics thereafter revealed to the Patent and Trademark Office in Mechtronics’ 1995 application for a patent, and to Arthur Torrence and Cary Cieciuch before that application was filed, material information contained in Donna Stearns’ confidential disclosures to Mechtronics, and did so without the manifest consent (express or implied in fact) of Donna Stearns;
(d) Sign-A-Way (as assignee of Donna Stearns) failed, however, to show by a preponderance of the evidence that Mechtronics’ conduct in revealing material information contained in Donna Stearns’ confidential disclosures caused measurable harm to Sign-AWay;
(e) Donna Stearns’ disclosures to Me-chtronics included matter not otherwise known to Mechtronics, not generally known, useable in the operation of a business or other enterprise, affording an actual or potential economic advantage over others, and of measurable benefit to Mechtronics,
(f) Mechtronics attempted to use Donna Steams’ disclosures concerning the Self-Leveling Sign Hanging Device for its own benefit in making the 1995 patent application and in other ways, and did so without the consent of Donna Stearns (express or implied in fact), and in fact did obtain benefit. Sign-A-Way failed, however, to show by a preponderance of the evidence that Sign-A-Way suffered any reasonably certain amount of loss as a result;
(g) Mechtronics made a promise to Donna Stearns that Mechtronics would list her as inventor in the 1995 application to the Patent and Trademark Office, broke that promise, and in that conduct violated the duty of candor and good faith in dealing with the Patent and Trademark Office under 37 Code of Federal Regulations § 1.56 and its duty of due respect for the interests of Sign-A-Way (as Donna Stearns’ as-signee) and Donna Steams, causing loss to Donna Stearns and Sign-AWay;
(h) Mechtronics displayed a model of the Self-Leveling Sign Hanging Device in the Trade Show of 1996, with the word “patented,” which was thus likely to deceive or mislead potential purchasers, and displayed the model with a sign stating that it was patented, which was likely to cause confusion among potential purchasers concerning Sign-A-Way’s and Mechtronics’ rights and the rights of ownership of the device and to the origin of the sign suspension device.
(2) Judgment is awarded to Sign-A-Way against Mechtronics in the amount of $220,000 in compensatory damages based on the stipulations, jury findings and rulings declared and adjudged in (1) above and the jury findings identified in (a)-(b) immediately below, which establish two independent grounds for this award of $220,000.
(a) The first ground is the jury’s finding of $200,000 in answer to Question 11.5(a)(1) and prejudgment interest of $20,000 found in Question II.9(xi).
(b) The second ground is the jury finding of $200,000 in answer to Question 11.6(a)(1)- and prejudgment interest of $20,000 found in Question II.9(xiii).
(3) In all other respects, as to all claims of Sign-A-Way against Mechtronics, the court orders judgment for Mechtronics.
(4) With respect to Mechtronics’ counterclaims against Sign-A-Way, the court orders judgment for Mechtronics for compensatory damages in the amount of $36,400 (which includes $8,400 in prejudgment interest) based on:
(a) the jury’s findings of $28,000 in answer to Question 111.3(a)(2) and of $8,400 in answer to Question IV.4; and
(b) the finding in answer to Question IV.3(b)(2)(i) that the finding of $28,000 in answer to Question IV.3(a)(2) is du-plicative of the finding of $1,000 in answer to Question IV.l(b)(l).
(5) In all other respects, as to all counterclaims of Mechtronics against Sign-AWay, the court orders judgment for Sign-A-Way.
(6) Each party will bear its own costs.
(7) All awards of damages and costs bear postjudgment interest at the federal judgment rate of 5.391% per annum.
Approved: By the Court
_M._ _M._
United States District Joanne M. Cull, Deputy
Judge Clerk
III. Rulings on Mechtronics’ Motion for Judgment as a Matter of Law
A. Affirmative Defenses of Waiver and Estoppel
In pretrial proceedings and during trial, Mechtronics and Sign-A-Way each sought a ruling as a matter of law in its favor on Mechtronics’ affirmative defenses of waiver and estoppel. The court concluded that none of the precedents that the parties relied upon was precisely in point and that the court should submit some potentially material questions of disputed historical fact and disputed evaluative inferences to the jury in anticipation that their verdict would be likely, at the least, to moot some of the disputes of law. I now conclude that key findings of the jury, well supported by the evidence received for their consideration, do moot some but not all of the disputes of law. Also, I conclude again after considering the post-judgment submissions, as I had concluded before ordering judgment, that the jury findings that were not recited in the form of judgment ordered by the court and entered by the Clerk were appropriately omitted because they were not material to any of the declaratory or monetary relief ordered. Including the omitted recitations anywhere in the form of judgment would confuse rather than clarify the terms of the judgment.
Mechtronics’ first contention is that Donna Stearns “consented” to Mechtronics’ “having made the application and to its content.” That application omitted any naming of Donna Stearns as inventor. Docket No. 114 at page 2. The awkward and ambiguous phrasing of this contention, which Meehtron-ics has persistently used throughout pretrial, in trial, and now in post-judgment presentation of this contention, is apparently an effort to evade the consequences of Mechtronics’ deception of Donna Stearns by nondisclosure. Mechtronics did not tell Donna Stearns what they were doing in the application, or had done, until her demand for an explanation created a necessity for disclosure. The evidence before the jury supported the following findings of the jury:
G. Applications to the Patent Office— 1995 and 1996 (Alleged Promise to Name Donna Steams as Inventor)
9(a). Did Mechtronics make a promise to Donna Steams that you find to be applicable to either or both of the 1995 and 1996 applications, in which part of the promise was that Mechtronics would list her as inventor:
(a) with respect to the 1995 application?
X YES _ NO
(b) with respect to the 1996 application?
X YES _ NO
If YES to either part of 9(a), go to the same part of 9(b). Otherwise, skip 9(b).
9(b). Did Donna Steams rely on Me-chtronics’ promise to list her as inventor,
(1)with respect to the 1995 application?
X YES _ NO
If YES to either part of 9(b), go to the same part of 9(d). Otherwise, skip 9(d).
9(c). In the circumstances occupied by Donna Steams, would an ordinarily prudent person have relied upon the promise to list her as inventor
(1) by Christopher Anderson?
X YES, we find by a preponderance of the evidence
_ NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
(2) by Richard Fellinger?
X YES, we find by a preponderance of the evidence
NO, we find by a preponderance of the evidence
We find that there is no preponderance of the evidence
(3)in the February 7,1991 Letter?
_ YES, we find by a preponderance of the evidence
X NO, we find by a preponderance of the evidence
_ We find that there is no preponderance of the evidence
9(d). Did Mechtronics break its promise to list her as inventor,
(1) mth respect to the 1995 application?
X YES ___ NO
Mechtronics’ request that the court disregard these findings and rule that the court should call Donna Stearns’ conduct a “consent” to her not being listed as an inventor, when she plainly did not consent, in fact, is without merit. Mechtronics contends that the answers to Verdict Questions 1.4(d)(1), 1.10(c) and 1.4(d)(3) require a conclusion that defendant met its burden of proving all of the elements of defenses of waiver, consent and estoppel. All that the answer to Question 1.4(d)(1) finds, however, is that Donna Stearns knew that Mechtronics revealed “material information” to the United States Patent and Trademark Office, Arthur Tor-rence and Cary Cieciuch. This finding does not determine that Donna Stearns knew all of the contents of the application at the time that the application was made.
Furthermore, the contention that the answer to Question 1.10(c) must mean that Donna Stearns consented to the filing of the 1995 Application without her name being listed as an inventor is not sustainable. The finding in Question 1.10(c) does not specifically refer to consent to the failure to name Donna Stearns as inventor, and, in light of other evidence before the jury regarding later promises to amend the 1995 Application, the finding in Question 1.10(c) cannot be interpreted as determining that Donna Stearns consented to an application in breach of Me-chtronics’ earlier promise to her, see Question 1.9, that her name would be included in the application.
In any event, Mechtronics failed during trial to present to the jury any evidence that could reasonably support a finding that Donna Stearns consented to the exclusion of her name from the list of inventors that appeared in the 1995 Application. Indeed, the evidence before the jury would not support a finding other than that she never consented to not being named as an inventor.
The precedents that Mechtronics cites come nowhere near to holding that a contrary-to-fact ruling of consent should be made by the court in the circumstances of this case. Of course a party may “waive” rights, as cases cited by Mechtronics declare. But the jury never made findings of fact that would support waiver, and the jury did make findings inconsistent with waiver.
Mechtronics argues for estoppel, but again seeks a ruling without findings of fact that are essential to invoking precedents on es-toppel. I reject this estoppel contention because of lack of support in the verdict, and because several findings in the verdict are inconsistent with the prerequisites of a ruling that the defense of estoppel was established at trial. For example, in answer to the three separate parts of Question 1.3(d), the jury found that Sign-A-Way met its burden of proving that (1) Christopher Anderson, (2) Richard Fellinger, and (3) one or more other representatives of Mechtronics did not tell Donna Stearns that Mechtronics did not intend to keep confidential the disclosures that she made to Mechtronics. The undisputed use of those disclosures in development of the device that was the subject of the 1995 Patent Application, together with their failure to notify her of the content of their disclosures until she happened to learn about the application and demand explanation, is fundamentally inconsistent with Mechtronics’ estoppel contention.
B. Mechtronics’ Request for a Ruling Against Stearns and Sign-A-Way Grounded on Alleged Failure of Stearns to Protect Information
Mechtronics’ second contention is that the award of damages to Donna Stearns cannot stand because Donna Stearns did not take reasonable steps to protect the “material information” that she disclosed to Me-chtronics, see Verdict at 1.1 and 1.2, from being acquired by other parties. By asserting this contention in an ambiguous and imprecise manner, Mechtronics attempts to characterize the following finding in Question 1.5(a) as barring recovery by plaintiff under one or more of plaintiffs asserted causes of action. Question 1.5 appeared in a section of Question I headed “D. Trade Secrets.” Questions 1.5(a) and the answers to it were as follows:
5. This question concerns care in protecting confidential information about the Self-Leveling Sign Hanging Device.
5(a). Did Donna Steams violate the standard of due respect for the interests of Mechtronics to protect secrecy and avoid disclosure
to persons and entities other than Me-chtronics of the information about the Self-Leveling Sign Hanging Device that she disclosed to Mechtronics after receiving a promise of confidentiality from Mechtronics ?
(1) X We find by a preponderance of the evidence that she made disclosures to persons or entities other than Mechtronics that a reasonable person in her circumstances would not have made
(2) - We find by a preponderance of the evidence that any disclosures she made to persons or entities other than Mechtronics were made in circumstances in which a reasonable person would have felt free to make them
(3) _ We unanimously find no preponderance of the evidence on this matter
Mechtronics contends that this finding bars recovery by plaintiff under a theory of breach of the confidentiality agreement and under a theory of misappropriation of trade secrets based on Mechtronics’ handling of the information governed by the confidentiality agreement between the parties. Me-chtronics has not identified why, and this court cannot identify any reason why, the answer to Question 1.5(a) could bar recovery under other claims Sign-A-Way has asserted, including, but not limited to, Sign-AWay’s claim that Mechtronies is liable for failing to carry out its promise to name Donna Stearns as an inventor in the 1995 Application.
Mechtronies’ arguments that Donna Stearns’ failure to protect information should affect the judgment in this case fail for another reason. In the Verdict, the jury awarded plaintiff money damages resulting from Mechtronies’ breach of its promise to list Donna Stearns as an inventor on the 1995 Application. Verdict at 11.5(a). The jury did not award money damages to plaintiff in compensation for harm resulting from Me-chtronics’ disclosure to third parties of the information that the jury found was protected by the confidentiality agreement. See Verdict at II.l, II.3, II.4, and II.7. In addition, the jury did not award damages in compensation for any misappropriation of ideas by Mechtronies. Verdict at II.2. The jury’s findings in these respects necessarily imply that the jury found that, even if Me-ehtronies violated a duty of confidentiality to Donna Stearns by making certain disclosures to third parties, Mechtronies’ disclosure caused no tangible harm to plaintiff.
For that reason, the findings of the jury in Part II moot the question of law as to whether, in this case, Mechtronies still had a duty of confidentiality to plaintiff, even after identified disclosures by plaintiff to certain third parties.
A required element of both the tort of misappropriation of trade secrets and of an action for breach of a contract of confidentiality in Massachusetts is that the conduct of the defendant must cause tangible harm to the plaintiff. Jet Spray Cooler, Inc. v. Crampton, 377 Mass. 159, 168, 385 N.E.2d 1349, 1355 (1979). In this case, the jury has unambiguously found that plaintiff failed to meet its burden to show that Donna Stearns and Sign-A-Way suffered harm from the alleged breach of the duty of confidentiality, regardless of whether that duty arose as a matter of law, if at all, from the confidentiality agreement or by operation of law. These findings serve Mechtronies’ interest as a shield against liability for breach of the confidentiality agreement. Mechtronies, not content with that benefit, asks the court to treat these findings also as a shield against Me-chtronics’ liability for breach of its other promises and obligations to Donna Stearns, to which Sign-A-Way has succeeded as as-signee. This proposed expansion of a shield against one claim to become a shield against all other claims is not supported in this case either factually or legally.
Neither is Mechtronies correct in contending, in effect, that the declaratory relief included in the Judgment of April 8, 1998 constitutes a judgment for plaintiff on counts asserting a breach of a duty of confidentiality. The declaratory judgment of April 8 is clear in. stating that the jury found that the breach of a duty of confidentiality did not cause any harm to plaintiff:
(c) Mechtronies thereafter revealed to the Patent and Trademark Office in Me-chtronics’ 1995 application for a patent, and to Arthur Torrence and Cary Ciec-iuch before that application was filed, material information contained in Donna Stearns’ confidential disclosures to Mechtronies, and did so without the manifest consent (express or implied in fact) of Donna Stearns;
(d) Sign-A-Way (as assignee of Donna Stearns) failed, however, to show by a preponderance of the evidence that Mechtronies’ conduct in revealing material information contained in Donna Stearns’ confidential disclosures caused measurable harm to Sign-A-Way;
(e) Donna Stearns’ disclosures to Me-chtronics included matter not otherwise known to Mechtronies, not generally known, useable in the operation of a business or other enterprise, affording an actual or potential economic advantage over others, and of measurable benefit to Mechtronies;
(f) Mechtronies attempted to use Donna Stearns’ disclosures concerning the Self-Leveling Sign Hanging Device for its own benefit in making the 1995 patent application and in other ways, and did so without the consent of Donna Stearns (express or implied in fact), and in fact did obtain benefit. Sign-AWay failed, however, to show by a preponderance of the evidence that Sign-A-Way suffered any reasonably certain amount of loss as a result....
The declaratory judgment explicitly stated that plaintiff failed to prove at trial one of the elements required by law for relief grounded on breach of a duty of confidentiality. The declaratory 'judgment, therefore, cannot properly be treated as a judgment for plaintiff that adjudicates, in plaintiffs favor, those counts asserting a breach of a duty of confidentiality.
For these reasons, I conclude that the findings of the jury have made moot a determination regarding the existence and scope, as a matter of law, of a duty of confidentiality running from Mechtronies to Sign-A-Way regarding the “material information” that Donna Stearns disclosed to Mechtronies.
C. Mechtronies’ Request for a Ruling in Its Favor Because the Money Award Constitutes a Recovery of Attorney’s Fees
Mechtronies’ third contention in moving for judgment as a matter of law is that •the $200,000 awarded by the jury must have been an impermissible award of. attorney’s fees because evidence regarding the cost of the present litigation suggested a cost for plaintiff of $200,000.
The jury awarded plaintiff $200,000 in compensatory damages. The jury found this amount to be the appropriate amount of compensation in their answer to the following questions in Part II of the Verdict:
If YES to either part 1.9(b), go to the corresponding part of II.5. Otherwise, skip 11.5.
5(a). What amount of money, if any, is needed to compensate Sign-A-Way fairly and reasonably for harm, if any, that Me-chtfonics’ failure to list her as inventor caused? Answer in DOLLARS or NONE.
(1) With respect to the 1995 application
$200,000.00
(2) With respect to the 1996 application
$ NONE_
If you have answered either part of 5(a) with a DOLLAR amount, go to 5(b). Otherwise, skip 5(b).
If YES to any part of 1.10(a) and any part of 1.10(b), go to II. 6. Otherwise, skip II. 6.
6(a). What amount of money, if any, is needed to compensate Sign-A-Way fairly and reasonably for any loss to Sign-A-Way caused by conduct of Mechtronies in violation of a duty to Sign-A-Way and Donna Steams regarding candor and good faith in dealing with the Patent and Trademark Office? Answer in DOLLARS or NONE.
(1) In making the 1995 application
$ 200,000.00
(2) In making the 1996 application
$ NONE
If you have answered either part of 11.6(a) with a DOLLAR AMOUNT, go to 6(b). Otherwise, skip 6(b).
6(b). How much, if any, of the amount or amounts you have found is duplicative? Answer in DOLLARS or NONE.
(1) With respect to the amount in 6(a)(1)
(xi) Duplicative as to 5(a)(1) $200,000.00
The jury, therefore, found plaintiff entitled to $200,000 in compensatory damages based on two independent theories of claim.
Defendant’s contention that the $200,000 must have been awarded as attorney’s fees calls for this court to speculate in an impermissible manner into the decision-making processes of the jury. In deciding a postjudgment motion for judgment as a matter of law under Fed.R.Civ.P. 50(b), a court is not to speculate into the particular thought processes of jurors; rather the court’s inquiry is limited to determining whether no reasonable jury could have made the challenged finding in light of the evidence presented to the jury. See McMillan v. Massachusetts Soc’y for the Prevention of Cruelty to Animals, 140 F.3d 288, 299 (1st Cir.1998) (“We will not set aside a jury verdict as a matter of law unless there was only one conclusion the jury could have reached.”). See also Plummer v. Springfield Terminal Ry. Co., 5 F.3d 1 (1st Cir.1993), cert. denied, 510 U.S. 1112, 114 S.Ct. 1057, 127 L.Ed.2d 377 (1994). In determining the appropriateness, as a matter of law, of a jury’s award of money damages, the court is authorized to override that award only if it exceeds “any rational appraisal or estimate of the damages that could be based on the evidence before the jury.” Anthony v. G.M.D. Airline Services, Inc., 17 F.3d 490, 493 (1st Cir.1994). If the court determines that a reasonable jury could have found, in light of the evidence presented to the jury in this case, that $200,000 was an appropriate amount to compensate plaintiff, the court’s inquiry stops at that determination because strong interests of secrecy and independence of jury decisionmaking and applicable law counsel against even attempting to ferret out the precise reasoning that led the jury to its finding.
For the reasons explained below, I conclude that plaintiff presented sufficient evidence to the jury to allow a reasonable jury to award $200,000 in compensatory damages to plaintiff based on at least one of the theories of claim as to which the findings of the jury supported judgment for plaintiff. This is not an exhaustive exploration into all possible trains of thought by which the jury might have arrived at the $200,000 figure. The applicable law does not require that the court explore every possible train of thought that the jury might have followed as long as there was one train that it could have reasonably followed. See Johnson v. Teamsters Local 559, 102 F.3d 21, 23 (1st Cir.1996).
As Exhibit 32 shows, Mechtronics’ 1995 Application for a Patent on the Self-Leveling Sign Hanging Device was accompanied by a Joint Declaration and Power of Attorney signed by each of the inventors named in the application. The governing regulations require, as stated in that exhibit, that all statements of invention contained therein be accurate. Through this declaration and power of attorney, each “joint inventor” affirmed that he invented the device and that he was represented by Haynes Johnson, Mechtronics’ patent counsel, in all matters before the United States Patent and Trademark Office (USPTO).
As a named inventor to the Self-Leveling Sign Hanging device on which Mechtronics sought a patent, Donna Stearns would have been in a position that would have allowed her to either block the application or demand some compensation by refusing to sign the Joint Declaration and Power of Attorney.
From the evidence before the jury, they could have reasonably inferred that, by excluding Donna Stearns from the list of inventors in breach of a promise to her to name her, Mechtronics circumvented its obligation to obtain Donna Stearns’ approval of the 1995 Application because Mechtronics was then not required by law to get Donna Stearns to endorse the Joint Declaration and Power of Attorney. And from that inference and testimony regarding the application process, the jury could have reasonably determined that, as a result of not listing Donna Stearns as an inventor, Mechtronics was able to file, at a very early stage, an application for a patent. The jury could also reasonably infer that the early filing of this application by Mechtronics created a problem with the Patent Office that later caused Donna Stearns’ or Sign-A-Way not be able to obtain a patent on the device.
From the evidence before them, then, the jury also could have reasonably inferred that Donna Stearns’ or Sign-A-Way’s inability to obtain a patent prevented Donna Stearns and Sign-A-Way from realizing profits from the sale of the device on an exclusive basis for a limited period of time during which Sign-AWay might have had net profits in the range of $200,000.
Plaintiff presented to the jury evidence, in the form of expert testimony, that supports an implicit finding that the profitability of the device to Sign-A-Way would be exponentially magnified if the USPTO conferred a patent to Sign-A-Way on the Self-Leveling Sign Hanging Device. If no patent was conferred, the testimony showed that the manufactu