Carl Zeiss Meditec, Inc. v. Topcon Medical Systems, Inc.
- Yvonne Rogers
- 4:19-cv-04162
- U.S. District Court · Northern District of California
- 2
In Carl Zeiss Meditec v. Topcon Medical Systems, Judge Armstrong denied CZMI’s contempt-show-cause request because the appealed injunction was too unclear to enforce.
Carl Zeiss Meditec, Inc.’s request to pursue a civil-contempt proceeding against Topcon was denied; the court said it would separately clarify the injunction’s scope.
What happened
Carl Zeiss Meditec, Inc. sued Topcon Medical Systems, Inc., Topcon Healthcare Solutions, Inc., Tobias Kurzke, and seven former employees over alleged trade-secret misappropriation. The case includes claims under federal and California trade-secret laws.
The court had previously barred Topcon from selling its Glaucoma Module and barred Topcon and Kurzke from using or sharing Carl Zeiss’s confidential and trade-secret information. Carl Zeiss then sought an order requiring Topcon to explain why it should not be held in civil contempt for continuing to use its DICOM decoder.
The Federal Circuit had vacated the part of the injunction concerning confidential information because it did not clearly explain whether, or to what extent, it prohibited use of Topcon’s Harmony platform and DICOM decoder. Because that unclear provision could not support a contempt finding, Judge Saundra B. Armstrong denied Carl Zeiss’s request for an order to show cause and said a separate order would clarify the injunction’s scope.
The detailed version
- Carl Zeiss Meditec, Inc. v. Topcon Medical Systems, Inc. · No. 4:19-cv-04162
- Yvonne Rogers
- June 30, 2022
Background
Carl Zeiss Meditec, Inc. (CZMI) sued Topcon Medical Systems, Inc.; Topcon Healthcare Solutions, Inc.; Tobias Kurzke; and seven other former CZMI employees. The operative complaint alleged misappropriation of trade secrets and asserted claims under the federal Defend Trade Secrets Act and the California Uniform Trade Secrets Act, along with related claims.
On March 1, 2021, the court issued a preliminary injunction, which is a temporary order restricting conduct while a case continues. The injunction barred Topcon Healthcare Solutions and Topcon Medical Systems from releasing or selling the Glaucoma Module. It also barred those companies and Kurzke from obtaining, retaining, using, transmitting, disseminating, or disclosing CZMI’s confidential, proprietary, or trade-secret information, including files obtained from a hard drive or during the former employees’ work for CZMI.
Request for an Order to Show Cause
Topcon Healthcare Solutions, Topcon Medical Systems, and Kurzke appealed the preliminary injunction. While that appeal was pending, CZMI sought an order requiring Topcon to show why it should not be held in civil contempt for violating the injunction through continued use of its DICOM decoder. Civil contempt is a court enforcement mechanism for violating a court order.
On May 16, 2022, the Federal Circuit held that paragraph 2 of the preliminary injunction did not satisfy Federal Rule of Civil Procedure 65(d) because it did not describe the prohibited conduct with enough specificity. The Federal Circuit found the paragraph ambiguous about whether, and to what extent, it barred continued use of Topcon’s Harmony platform and DICOM decoder. It therefore vacated paragraph 2 and sent the matter back for clarification.
Ruling
The court explained that an injunction that does not clearly describe the prohibited or required conduct cannot be enforced through contempt. Because paragraph 2 had been vacated for ambiguity concerning continued use of the DICOM decoder, the court held that it could not support a contempt proceeding.
The court denied CZMI’s motion for an order to show cause. It stated that a separate order would issue to clarify the scope of the preliminary injunction. The order was signed by Richard Seeborg for Saundra B. Armstrong.
Read the full 2-page opinion on CourtListener, the free public archive maintained by the Free Law Project.