Wilson v. Corning, Inc.

Background

John R. Wilson and Wilson Wolf Manufacturing Corporation alleged that Corning obtained Wilson Wolf’s cell-culture technology under a confidentiality agreement, used it to develop and commercialize the HYPERFlask and HYPERStack products, and filed patent applications claiming the technology as Corning’s own. The remaining claims were trade-secret misappropriation, breach of the confidentiality agreement, and correction of inventorship for certain Corning patents. Corning moved to strike the plaintiffs’ jury demand.

Legal standard

The Seventh Amendment preserves a jury trial for actions resembling traditional legal claims, but not for claims seeking only equitable relief. Courts compare the claim with historical legal actions and examine whether the requested remedy is legal or equitable; the remedy analysis carries greater weight.

Trade-secret misappropriation

The plaintiffs sought damages measured by Corning’s actual and projected revenues or profits from the HYPERFlask, HYPERStack, and related products. They described one damages calculation as unjust enrichment and another as compensatory damages, but both calculations used Corning’s profits, with the alleged compensatory damages amounting to 50% of those profits. The court concluded that the plaintiffs were seeking disgorgement of Corning’s profits rather than compensation for their own lost profits or other proven losses. It held that disgorgement was an equitable remedy and that the trade-secret claim therefore carried no Seventh Amendment right to a jury trial. The court also noted that the trade-secret claim had already been dismissed with prejudice to the extent it was based on misappropriation after April 21, 2005.

Breach of the confidentiality agreement

The plaintiffs alleged that Corning breached the agreement by developing, commercializing, and filing patent applications related to its cell-culture flask technology. Although breach-of-contract claims seeking reliance or expectation damages were historically tried at law, the court examined the substance of the damages theory here. It found that the plaintiffs had not identified lost customers, lost sales, or lost earnings caused by the alleged breach. Instead, the proposed damages rested on a speculative agreement under which the parties supposedly would have split Corning’s profits 50/50. The court therefore characterized the requested relief as equitable disgorgement, not damages based on the plaintiffs’ own losses, and held that the contract claim did not create a right to a jury trial.

Inventorship claims

The plaintiffs sought correction of the named inventors on three Corning patents under 35 U.S.C. § 256. They conceded that these claims, standing alone, did not carry a jury-trial right, but argued that the underlying facts overlapped with the trade-secret and contract claims. Because the court had determined that those claims also were not entitled to a jury, it held that the inventorship claims were likewise not entitled to a jury trial.

Order

Judge Donovan W. Frank granted Corning’s Motion to Strike Plaintiffs John R. Wilson and Wilson Wolf Manufacturing Corporation’s Jury Demand. The court concluded that the remaining claims sought remedies equitable in nature and struck the jury demand.