Carl Zeiss Meditec, Inc. v. Topcon Medical Systems, Inc.

Background

Carl Zeiss Meditec, Inc. (CZMI) sued Topcon Medical Systems, Inc., Topcon Healthcare Solutions, Inc., Tobias Kurzke, and seven former CZMI employees. The operative complaint asserts claims under the federal Defend Trade Secrets Act and the California Uniform Trade Secrets Act, along with related claims.

CZMI alleged that Topcon used CZMI trade-secret information to develop products competing with CZMI’s FORUM platform and Glaucoma Workplace software. CZMI relied in part on an external hard drive containing more than 35,000 files that Kurzke retained after leaving CZMI.

In March 2021, the court issued a preliminary injunction. Paragraph 1 barred Topcon Healthcare Solutions and Topcon Medical Systems from releasing or selling Glaucoma Module to the public. Paragraph 2 barred those entities and Kurzke from obtaining, retaining, using, transmitting, disseminating, or disclosing CZMI confidential, proprietary, or trade-secret information, including information from the hard drive or from the former employees’ work at CZMI.

On appeal, the Federal Circuit held that paragraph 2 was not specific enough under Federal Rule of Civil Procedure 65(d). It vacated that paragraph and sent the matter back for clarification about whether the injunction covered continued use of Topcon’s Harmony platform and DICOM decoder. The district court had separately denied CZMI’s request to hold Topcon in civil contempt for allegedly violating the injunction through continued use of the decoder.

Court’s Analysis

The court held that the preliminary injunction does not prohibit continued use of Harmony or the DICOM decoder. CZMI had initially sought broader relief concerning other ophthalmic-diagnostic software, but its revised request focused on preventing release of Glaucoma Module. Paragraph 1 likewise identified only Glaucoma Module and did not name Harmony or the DICOM decoder.

The court also concluded that paragraph 2 was not intended to prohibit use of Harmony or the decoder. Such a restriction would have required a preliminary showing that those products potentially used CZMI’s confidential, proprietary, or trade-secret information. The evidence presented in support of the original preliminary-injunction motion focused on Glaucoma Module and did not support separate findings about Harmony or the decoder.

The court stated that later discovery could not expand the original injunction through clarification or through the previously filed contempt request. Instead, CZMI would need to file a motion to modify the preliminary injunction if it wanted the court to consider new evidence.

Order

The court ordered that the preliminary injunction does not enjoin Topcon’s continued use of Harmony or the DICOM decoder. It denied Topcon and Kurzke’s administrative motion for additional briefing on the injunction’s scope because the briefing was unnecessary. The court also stated that CZMI may file a motion to modify the preliminary injunction to present new evidence obtained during discovery. Judge Rogers issued the order.