# Cincom Systems, Inc. v. LABWARE, INC.

> District Court, S.D. Ohio · August 22, 2024

URL: https://www.frixlaw.com/law-library/cases/10665244

## Case

- **Court:** District Court, S.D. Ohio
- **Decided:** August 22, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10665244

## How later opinions describe it (automated extraction)

- noting that a plaintiff may not succeed at the summary judgment stage by relying on claims not pled in the complaint
- noting that the United States Copyright Office advises that any subsequent registration of a computer program covers only the new material added to the previously registered version
- affirming the admission of a computer scientist as an expert who initially lacked experience in the software at issue in the case

## Opinion text

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION - CINCINNATI
CINCOM SYSTEMS, INC., : Case No. 1:20-cv-83
Plaintiff, Judge Matthew W. McFarland

LABWARE, INC.,
Defendant.

ORDER AND OPINION

This matter is before the Court on Defendant’s Motion for Summary Judgment
(Doc. 83), Plaintiff's Motion to Exclude Expert Testimony of Benjamin Goldberg (Doc. 85),
Plaintiff's Motion to Exclude Expert Testimony of Daniel McGavock (Doc. 86), Plaintiff's
Motion in Limine to Exclude Defendant's Use of Plaintiff’s Virtual Smalltalk Enterprise
2000 Manuals (Doc. 87), Plaintiff's Motion to Exclude Testimony and Evidence for
Violation of the Source Code Inspection Protocol (Doc. 88), and Plaintiff's Motion for
Partial Summary Judgment (Doc. 92).1 Each motion has been fully briefed. (See Docs. 98-
109.) Thus, these matters are ripe for review.
For the reasons detailed below, Plaintiff's motions to exclude expert testimony and
evidence (Docs. 85, 86, 87, and 88) are DENIED, Defendant's Motion for Summary

1 Defendant requests oral arguments on both motions for summary judgment. (See Defendant's Motion for
Summary Judgment, Doc. 83, Pg. ID 9341; Defendant's Response to Plaintiff's Motion for Summary
Judgment, Doc. 102, Pg. ID 11691.) The undersigned finds that oral arguments are not “essential to the fair
resolution” of these motions. See S.D. Ohio Civ. R. 7.1(b)(2). Accordingly, Defendant's requests are denied.

Judgment (Doc. 83) is GRANTED, and Plaintiff's Motion for Partial Summary Judgment
(Doc. 92) is DENIED.
FACTS
Plaintiff Cincom Systems, Inc. is a software development company. (See Fortman
Dep., Doc. 52, Pg. ID 528; Bish Dep., Doc. 53, Pg. ID 1584.) Defendant LabWare, Inc. is a

company that distributes laboratory information management systems (“LIMS”).
(Goldberg Report, Doc. 62-1, Pg. ID 4099-4100.) The controversy here stems from
Defendant's allegedly unauthorized use of Plaintiff's software in developing LIMS. (See
Compl., Doc. 1.)
I. The Software
Smalltalk is a computer programming language invented in the 1970s. (SmallTalk
White Paper, Doc. 68-10, Pg. ID 5613.) Visual Smalltalk Enterprise (“VSE”) is a software

program based on Smalltalk. (See Buck Report, Doc. 56-1, Pg. ID 2720.) VSE operates
within a “virtual machine” (“VM”), which is software that runs the Smalltalk code. (See
Bates Dep., Doc. 68, Pg. ID 5479.)
VSE has had multiple releases and brand name changes over the years. (Plaintiff's
Interrog. Response, Doc. 84-1, Pg. ID 9389.) Relevant here, Digitalk, Inc., which owned
VSE at the time, released Smalltalk/V Version 1.3 (“Smalltalk Version 1.3”) in 1991. (See
id.)
II. VSE-Related Purchases and Acquisitions
In 1992, Labware Holdings, formerly known as LabWare Inc., purchased VSE
licenses from Digitalk. (See First Kershner Dep., Doc. 71, Pg. ID 6328-29, 6361.) Digitalk

became known as ParcPlace-Digitalk Inc., which continued selling VSE products. (Id. at
Pg. ID 6329.) ParcPlace-Digitalk released Version 3.1 of VSE in 1995. (See Plaintiff's
Interrog. Response, Doc. 53-2, Pg. ID 1496.) LabWare Holdings purchased licenses for
Version 3.1 in 1998. (See First Kershner Dep., Doc. 71, Pg. ID 6340, 6364.)
The VSE licenses that LabWare Holdings purchased from ParcPlace-Digitalk, Inc.
included a printed, software license known as the “Shrinkwrap License.” (Shrinkwrap
License, Doc. 71-21, Pg. ID 6603.) The Shrinkwrap License granted LabWare Holdings the
right to (1) “provide the [VSE] to a single developer solely for use in developing end-user
software applications,” (2) “transfer the [VSE] from one developer to another, or to
another individual or entity, provided that the transferring user permanently cease use
of [the VSE] and destroys all copies,” and (3) “reproduce and distribute executable files
created by using the [VSE].” (Id.) The Shrinkwrap License prohibited LabWare Holdings
from reverse engineering or distributing VSE. (Id.)
LabWare Holdings used VSE to develop a product called “LabWare LIMS.”
(Goldberg Report, Doc. 62-1, Pg. ID 4099-4100.) LabWare LIMS is mainly used by
pharmaceutical and energy companies to manage laboratory workflows and data. (Id.)
Defendant, a subsidiary of LabWare Holdings, focuses on the sale of LIMS products in
the United States. (First Kershner Dep., Doc. 71, Pg. ID 6361-62; Second Kershner Dep.,
Doc. 77, Pg. ID 8009-10; Certificate of Incorporation, Doc. 84-5, Pg. ID 9530.)
Shortly after LabWare Holdings’ purchase, ParcPlace-Digitalk became known as
ObjectShare, Inc. (See Buck Report, Doc. 56-1, Pg. ID 2726-27.) In 1999, ObjectShare sold
its rights to VSE to Seagull Software, Inc. (See Ayers Dep., Doc. 53, Pg. ID 1250-52; April

1999 Asset Purchase Agreement, Doc. 84-2, Pg. ID 9439.) In return for the sale, Seagull
licensed back limited, exclusive rights in VSE to ObjectShare. (Ayers Dep., Doc. 53, Pg.
ID 1250-52.) These exclusive rights were as follows:
a perpetual, world-wide, royalty-free, non-transferable, limited license to .
. . (a) market and license the [VSE] Software directly or indirectly through
distributors to third party end-users for the express purpose of building
Smalltalk-based applications, (b) perform maintenance modifications, bug-
fixing, error fixing and related support services for its then current licensees
..., and (c) sub-license the [VSE] Software to third parties for the express
purpose of providing Support Services on behalf of ObjectShare.
(Software License Agreement, Doc. 54-1, Pg. ID 1873.)
Later that year, ObjectShare sold its rights in VSE to Plaintiff. (See Asset Purchase
Agreement, Doc. 65-3.) Among the assets that changed hands were two Smalltalk-related
copyrights: U.S. Copyright Registration No. TX 3-733-100 (“’100 Registration”) and U.S.
Copyright Registration No. TX-1-564-488 (“’488 Registration”). (See id. at Pg. ID 4769,
4794, 4806-07.) After its purchase, Plaintiff abandoned the Shrinkwrap License and
created a new licensing model. (Ayers Dep., Doc. 53, Pg. ID 1324-26.) Under the new
model, VSE licensees paid for their license through annual subscription fees and
percentages of revenue derived from selling VSE-based applications. (Id.)
The Court has limited information about the ‘100 Registration. The parties
provided a single-page document referring to the registration in the United States
Copyright Office Public Catalog. (‘100 Registration, Doc. 84-8, Pg. ID 9541.) The registered
work's title is “Smalltalk/ V PM (version 1.3).” (Id.) The document identifies the “type of
work” as a “computer file” and clarifies in its “description” that it covers a “computer
program.” (Id.) It adds that it is related to two previous registrations and provides that

the basis of the ‘100 Registration is “New Matter: rev. & supplemental text.” (Id.)
In 2006, LabWare Holdings bought a license to the source code for VSE’s VM from
Seagull. (See Distribution and Source Code License Agreement, Doc. 71-20.) This license
included “a nontransferable, nonassignable, nonexclusive, worldwide right and license
to access, store, run, display, load, use, produce, reproduce, copy, translate, modify, or
adapt the Source Code solely as necessary to support and maintain the Software for use
with [LabWare] Products.” (Id. at Pg. ID 6596.) LabWare then “extensive[ly]” modified
the VM source code (“Modified VM Source Code”). (Goldberg Report, Doc. 62-1, Pg. ID
4122-23.) It did so to “fix errors and make improvements to the VM” to use in its LIMS
products. (Id.)
Ill. Plaintiff's Discovery of Defendant’s Use of VSE
In April 2014, executives working for Plaintiff became aware that a former
employee had begun working for Defendant. (See Employee Email, Doc. 53-5, Pg. ID
1511.) Plaintiff's Managing Director of Smalltalk, Brian Bish, forwarded email
correspondence on this discovery to Jason Ayers, Plaintiff's European Sales Director of
Smalltalk. (Id. at Pg. ID 1509-1511.) In that email, Bish noted that Plaintiff had “exclusive
distribution and support rights for VSE,” but that “[f]rom everything [he had] been able
to find, LabWare [was] using Smalltalk V.” (Id. at Pg. ID 1509) He noted that there was
“no record” of Defendant “being a VSE customer on a [Plaintiff] contract.” (Id.)
In response, Ayers questioned how Defendant “got hold of the VM,” noting that
there was “no way” Defendant had the VM source code from a previous Smalltalk or VSE
license. (Employee Emails, Doc. 53-5, Pg. ID 1509.) He added that Defendant got the

source code either by decompiling it or buying it from Seagull, who did “not have the
rights to sell VSE in any form.” (Id.) Bish responded that it was “[p]robably difficult to go
after LabWare” and took no immediate action against Labware Holdings or Defendant.
(Id.) Plaintiff investigated the employee for potential impropriety and found no issues.
(See Ayers Dep., Doc. 53, Pg. ID 1269-71.)
PROCEDURAL POSTURE
On January 30, 2020, Plaintiff sued Defendant, bringing claims of copyright
infringement under 17 U.S.C. § 101, et seq., misappropriation of trade secrets under
Ohio’s Uniform Trade Secrets Act (“OUTSA”), conversion, and unjust enrichment.
(Compl., Doc. 1, 9 18-38.) This Court dismissed Plaintiff's conversion and unjust
enrichment claims on February 22, 2021. (Order on Motion to Dismiss, Doc. 14.)
Defendant now moves for summary judgment on the remaining claims. (Defendant's
Motion for Summary Judgment, Doc. 83.) Plaintiff also moves for partial summary
judgment and to exclude certain expert testimony and evidence. (Plaintiff's Motion for
Summary Judgment, Doc. 92; Motion to Exclude Goldberg, Doc. 85; Motion to Exclude
McGavock, Doc. 86; Motion to Exclude VSE Manuals, Doc. 87; Motion to Exclude Source
Code Violation, Doc. 88.)
LAW & ANALYSIS
The Court will first address Plaintiff's evidentiary motions before proceeding to
the parties’ motions for summary judgment.
I. Evidentiary Motions
The purpose of a motion in limine is to narrow evidentiary issues for trial and

exclude inadmissible evidence. Louzon v. Ford Motor Co., 718 F.3d 556, 560-61 (6th Cir.
2013). “Unless a party proves that the evidence is clearly inadmissible—a demanding
requirement —‘evidentiary rulings should be deferred until trial so that questions of
foundation, relevancy and potential prejudice may be resolved in proper context.” In re
Davol, Inc./C.R. Bard, Inc., Polypropylene Hernia Mesh Products Liab. Litig., 505 F. Supp. 3d
770, 774 (S.D. Ohio 2020) (quoting Ind. Ins. Co. v. Gen. Elec. Co., 326 F. Supp. 2d 844, 846
(N.D. Ohio 2004)).
Federal Rule of Evidence 702 governs the admissibility of expert testimony:
A witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if
the proponent demonstrates to the court that it is more likely than not that:
(a) the expert's scientific, technical, or other specialized knowledge will
help the trier of fact to understand the evidence or to determine a
fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert’s opinion reflects a reliable application of the principles
and methods to the facts of the case.
In determining whether to admit or exclude proffered expert testimony, the Court
must act as a “gatekeeper” to ensure that the expert is duly qualified to render an expert
opinion, that his testimony will assist the trier of fact, and that the proffered testimony is
reliable. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 593 (1993). The Supreme Court
has provided a non-exhaustive list of factors that courts may consider in assessing
reliability: (1) whether a theory or technique can be (and has been) tested; (2) whether the

theory or technique has faced peer review and publication; (3) whether the technique has

a high known or potential rate of error; and (4) whether the technique enjoys general
acceptance within the relevant scientific, technical, or other specialized community. Id. at
593-94; Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147-50 (1999). Whether the court applies
a particular Daubert factor “depend[s] on the nature of the issue, the expert’s particular
expertise, and the subject of his testimony.” Kumho Tire, 526 U.S. at 150 (citation omitted).
That said, “rejection of expert testimony is the exception, rather than the rule.” In

re Scrap Metal Antitrust Litig., 527 F.3d 517, 530 (6th Cir. 2008). “Vigorous cross-
examination, presentation of contrary evidence, and careful instruction on the burden of
proof are the traditional and appropriate means of attacking shaky but admissible
evidence.” Daubert, 509 U.S. at 596; see also In re Scrap Metal Antitrust Litig., 527 F.3d at 530
(citations omitted) (“[M]ere weaknesses in the factual basis of an expert witness’ opinion
bear on the weight of the evidence rather than on its admissibility.”).
Plaintiff moves to exclude the expert testimonies of Benjamin Goldberg and Daniel
McGavock. (See Motion to Exclude Goldberg, Doc. 85; Motion to Exclude McGavock, Doc.
86). Plaintiff also seeks to exclude evidence related to certain VSE manuals, as well as
evidence related to the Modified VM Source Code. (See Motion to Exclude VSE Manuals,
Doc. 87; Motion to Exclude Source Code, Doc. 88.) The Court will consider each in turn.
a. Benjamin Goldberg
Plaintiff first seeks to exclude the expert testimony of Benjamin Goldberg, Ph.D.
(See Motion to Exclude Goldberg, Doc. 85.) Goldberg is a computer scientist who
Defendant hired to respond to Plaintiff's expert reports and trade secret allegations, as

well as to analyze Defendant's LIMS product. (Goldberg Report, Doc. 96-1, Pg. ID 11343.)
Plaintiff argues that Goldberg should be excluded as an expert because he is unqualified
and his opinions are unreliable. (Motion to Exclude Goldberg, Doc. 85-1, Pg. ID 9560-73.)
Plaintiff further argues that Goldberg’s opinions related to trade secrets are generally
inadmissible. (Id. at Pg. ID 9573-74.) The Court will consider each argument in turn.
i. Qualifications
Plaintiff contends that Goldberg is not qualified to give expert testimony because
he lacks experience or specialized knowledge in VSE and the Smalltalk programming
language. (Motion to Exclude Goldberg, Doc. 85-1, Pg. ID 9561.) Courts “take a liberal
view” of what experience qualifies a witness as an expert. Bradley v. Ameristep, Inc., 800
F.3d 205, 209 (6th Cir. 2015). “Whether a proposed expert’s experience is sufficient to
qualify the expert to offer an opinion on a particular subject depends on the nature and
extent of that experience.” Id. (quotation omitted).
Goldberg’s history and experiences show that he is qualified to give expert
testimony here. Goldberg has several advanced degrees, including a doctorate in
computer science from Yale University. (Goldberg Resume, Doc. 96-7, Pg. ID 11509). He
has taught computer science at New York University since 1987, developed computer
programming courses for undergraduate and graduate level programs, published several
works on computer programming, and obtained several research grants related to
computer programming. (Id. at Pg. ID 11511-15.) Although Goldberg has limited to no
experience working directly with Smalltalk or VSE, he has extensive experience in the
field of computer science. Consequently, his lack of familiarity with VSE speaks to the

weight and credibility of his testimony, not his qualifications. See, e.g., Wellogix, Inc v.
Accenture, L.L.P., 716 F.3d 867, 881-82 (5th Cir. 2013) (affirming the admission of a
computer scientist as an expert who initially lacked experience in the software at issue in
the case). The Court thus concludes that Dr. Goldberg is qualified to give expert
testimony here.
ii. Reliability
Plaintiff next argues that Goldberg’s opinions are not reliable for several reasons.
(Motion to Exclude Goldberg, Doc. 85-1, Pg. ID 9565-9573.)
Plaintiff first argues that Goldberg’s opinions are not reliable because Defendant's
employees, not Goldberg himself, performed the code analyses in his report. (Motion to
Exclude Goldberg, Doc. 85-1, Pg. ID 9567-68.) That said, an expert can “base an opinion
on facts or data in the case that the expert has been made aware of or personally
observed.” Fed. R. Evid. 703. Goldberg testified that he designed the tests for his code
analyses and supervised while Defendant's employees physically performed the tests.
(See Goldberg Dep., Doc. 96, Pg. ID 11120.) In fact, Goldberg directed and oversaw every
aspect of these analyses. (See id. at Pg. ID 11191). Goldberg therefore “personally
observed” the relevant data that supported his opinion, thereby satisfying Rule 703. On
top of that, Goldberg’s opinion is not inherently unreliable just because Defendant's
employees assisted in the code analysis used in his report. See, e.g., SCA Hygiene Prod.
Aktiebolag v. First Quality Baby Prod., LLC, 250 F. Supp. 3d 244, 256-57 (W.D. Ky. 2017)
(Expert’s report was reliable where expert did not personally conduct the testing but
designed the testing protocol used by the plaintiff's employees.). Thus, Plaintiff's first
10

argument fails to show that Goldberg’s opinions are unreliable.
Plaintiff also argues that Goldberg’s opinions are not reliable because he failed to
independently evaluate his sources. (Motion to Exclude Goldberg, Doc. 85-1, Pg. ID 9569-
73.) Plaintiff challenges the “Materials Considered” list in Goldberg’s report, which it
maintains consists of documents supplied to Goldberg only by Defendant. (Id. at Pg. ID
9569-70; see also Goldberg Report, Doc. 96-7, Pg. ID 11516-19.) Plaintiff also argues that
the report is unreliable because this list includes evidence that Goldberg did not actually
review in his report. (See Motion to Exclude Goldberg, Doc. 85-1, Pg. ID 9569-73.)
That Goldberg included documents supplied by Defendant in his “Materials
Considered” list does not make him unreliable. Federal Rule of Civil Procedure
26(a)(2)(B) requires a party to disclose all information provided to a testifying expert.
Reg’l Airport Auth. v. LFG, LLC, 460 F.3d 697, 715 (6th Cir. 2006). So, Goldberg included
those materials provided by Defendant in his “Materials Considered” list. (Goldberg
Report, Doc. 96-7, Pg. ID 11516-19.) Goldberg makes clear that he considered other
materials in addition to those supplied by Defendant, which are also listed in the
“Materials Considered.” (Goldberg Dep., Doc. 96, Pg. ID 11081; Goldberg Report, Doc.
96-7, Pg. ID 11516-19). In any event, Plaintiff cites no authority suggesting that an expert
is prohibited from relying on materials provided to him by a particular party. (See Motion
to Exclude Goldberg, Doc. 85.) So, Plaintiff's argument fails to show that Goldberg is
unreliable.
Likewise, Goldberg’s testimony is not unreliable because he included materials in
his “Materials Considered” that he did not end up incorporating elsewhere in his report.
11

Courts in the Sixth Circuit have broadly construed the disclosure requirements in Rule
26(a)(2) to include anything that the expert received, even if the expert did not use all the
materials to form his or her opinions. See, e.g., In re Davol, Inc./C.R. Bard, Inc., Polypropylene
Hernia Mesh Prod. Liab. Litig., 2:18-md-2846, 2021 WL 2280657, at *2 (S.D. Ohio, June 4,
2021) (collecting cases). That Goldberg did not rely on all the materials provided to him
in drafting his report is not a sufficient basis to conclude that his testimony is unreliable.
See id. Thus, Plaintiff's arguments fail to show that Goldberg’s testimony is unreliable.
Finally, Plaintiff challenges the reliability of Goldberg’s opinion about accessing
certain VSE manuals online. (Motion to Exclude Goldberg, Doc. 85-1, Pg. ID 9570-72.)
Plaintiff maintains that Goldberg received a link to the manuals from Defendant, and that
Goldberg simply copied that link into his report without independently checking its
authenticity. (Id. at Pg. ID 9571-72.) But, Goldberg testified that he was “sure” that he
independently accessed the website. (Goldberg Dep., Doc. 96, Pg. ID 11280.) And, he
further references in his report that another witness accessed the manuals online.
(Goldberg Report, Doc. 96-1, Pg. ID 11397.) Though Goldberg cannot recall specifics of
his search (see Goldberg Dep., Doc. 96, Pg. ID 11280), this consideration goes to the weight
of Goldberg’s opinion, not its reliability. See In re Scrap Metal Antitrust Litig., 527 F.3d at
529-30. Thus, Plaintiff's argument fails to show that Goldberg’s testimony is unreliable.
iii. Opinions on Trade Secrets
Plaintiff lastly contends that Goldberg’s opinions on trade secrets should be
excluded because they do not constitute expert testimony. (Motion to Exclude Goldberg,
Doc. 85-1, Pg. ID 9573-74.) Specifically, Plaintiff seeks to exclude Goldberg’s opinions that
12

certain features of VSE and Smalltalk are publicly available—and are thus not trade
secrets —as impermissibly subjective opinions. (Id. at Pg. ID 9573.)
Plaintiff's argument is not well taken. Experts possess “wide latitude” to opine in
their fields. Daubert, 509 U.S. at 592. Courts have recognized that programming experts
may offer testimony on whether code was a trade secret and whether one party’s software
contained the other party’s code. See, e.g., Wellogix, 716 F.3d at 881-82. To be sure,
Goldberg addresses the public availability of certain aspects of Smalltalk and VSE.
(Goldberg Report, Doc. 96-1, Pg. ID 11379-80.) He does so as part of a larger discussion
of Defendant’s use of VSE and the VM, the licensure of the VM source code, and the
availability of Plaintiff's purported trade secrets related to the software and code at issue.
(Id. at Pg. ID 11379-94.) These analyses are within Goldberg’s set of “knowledge, skill,
experience, training, or education.” Fed. R. Evid. 702. That said, any conclusion on
whether the software or code constitutes a trade secret is ultimately a question reserved
for the jury. See Coda Dev. S.R.O. v. Goodyear Tire & Rubber Co., 565 F. Supp. 3d 978, 993
n.13 (N.D. Ohio 2021) (“To the extent [Defendant's] lengthy argument may be an
assertion that none of [Plaintiff's] listed trade secrets actually are trade secrets because
they were public knowledge, that too is a question for a fact-finder.”). The Court will not
exclude Goldberg’s general discussion of Plaintiff's trade secrets in his report.
For these reasons, Plaintiff's request to exclude Goldberg’s expert testimony must
be denied.
b. Daniel McGavock
Plaintiff next seeks to exclude the expert testimony of Daniel McGavock,
13

Defendant’s damages expert. (See Motion to Exclude McGavock, Doc. 86.) Plaintiff
contends that McGavock’s report includes impermissible narrative testimony and that he
based his report on unreasonable hypothetical negotiations. (Id. at Pg. ID 9603.) The Court
will consider each argument in turn.
i. Narrative Testimony
Plaintiff first seeks to strike the “Case Background” section of McGavock’s report,
arguing that it is impermissible narrative testimony. (Motion to Exclude McGavock, Doc.
86-1, Pg. ID 9611-12.)
Experts are required to disclose the facts relied on to generate their reports. Fed.
R. Civ. P. 26(a)(2)(B)(ii). That said, “[a]n expert cannot be presented to the jury solely for
the purpose of constructing a factual narrative based upon record evidence.” Schall v.
Suzuki Motor of Am., Inc., No. 4:14-CV-74, 2020 WL 1162193, at *5 (W.D. Ky. March 10,
2020) (quotation omitted). “To the extent such evidence is admissible, it is properly
presented through percipient witnesses and documentary evidence.” Id. (quotation
omitted). “However, as opposed to providing a mere factual narrative, an expert is
allowed to articulate the factual underpinning upon which he bases his opinion.” Id.
(cleaned up).
McGavock’s “Case Background” section in his report is not impermissible
narrative testimony. McGavock testified that he prepared the “Case Background” section
to provide context for his conclusions related to damages. (McGavock Dep., Doc. 63, Pg.
ID 4540-41.) Review of this section supports McGavock’s testimony. In the “Case
Background” section, McGavock lists several facts relevant to his analysis: the parties and
14

technology at issue, how the parties used said technology, Defendant's licensing history
of VSE, and Plaintiff's asserted rights. (See McGavock Report, Doc. 65-1, Pg. ID 4612-30.)
Using these facts, McGavock developed a hypothetical negotiation framework tailored
to the rights at issue. (Id. at Pg. ID 4630-43.) Indeed, McGavock uses the “Case
Background” section to present the facts he used to support his expert opinion, as
required by Rule 26. Accordingly, the Court will not strike the “Case Background” section
of McGavock’s expert report.
ii. Hypothetical Negotiation
Plaintiff also seeks to exclude McGavock’s testimony because his damages
estimation is based on a hypothetical negotiation rather than on the facts in the record.
(Motion to Exclude McGavock, Doc. 86-1, Pg. ID 9612-16.) Plaintiff argues that its six
percent standard royalty rate is the only gauge to measure damages, and McGavock’s
hypothetical negotiation is therefore not based in the record because it did not use that
rate. (Id. at Pg. ID 9614-16.)
Plaintiff's argument is not well taken. While true that Plaintiff uses a six percent
standard rate, Defendant notes that Plaintiff has agreed to other rates with other
customers in the past. (Defendant’s Response, Doc. 101, Pg. ID 11681; see also Bish Dep.,
Doc. 54, Pg. ID 1556; McGavock Report., Doc. 63-1, Pg. ID 4632-33.) McGavock references
these other rates, as well as previous rates that Defendant had agreed to in other licensing
agreements, to find what he considers to be a more appropriate licensing structure.
(McGavock Dep., Doc. 63, Pg. ID 4418-20; McGavock Report, Doc. 63-1, Pg. ID 4631-37.)
So, while McGavock did not use Plaintiff's standard rate in creating his hypothetical, he
15

still considered the relevant facts here. (See id.) This procedure is appropriate in creating
a reasonable damages determination. See Nat’l Rsch. Lab’ys v. Eppert Oil Co., Inc., 104 F.
Supp. 2d 851, 863-66 (S.D. Ohio 2000). Thus, Plaintiff's argument fails to demonstrate that
McGavock’s opinions should be excluded.
Thus, Plaintiff's motion to exclude McGavock’s testimony must be denied.
c. VSE Manuals
Plaintiff next moves to exclude all expert and fact testimony about two VSE
manuals that Defendant's counsel accessed from the internet. (See Motion to Exclude VSE
Manuals, Doc. 87.) Plaintiff contends that Defendant was prohibited from accessing this
material because it did not have a license. (Id. at Pg. ID 9732.)
Plaintiff first argues that reference to the manuals should be excluded because
discovering where Defendant obtained these manuals sent them on a “wild goose chase.”
(Motion to Exclude VSE Manuals, Doc. 87-1, Pg. ID 9737-38.) Plaintiff also seeks costs
associated with this aspect of discovery. (Id. at Pg. ID 9739.) But, Plaintiff provides no
authority requiring the exclusion of evidence when a party exhausted resources in
attempting to determine its source. (See id.) Nor does Plaintiff show any efforts by
Defendant to intentionally deceive Plaintiff from discovering the source of these manuals.
(Id.) Thus, this argument fails to show that exclusion is proper, and the Court will
accordingly not award costs related to this pursuit.
Next, Plaintiff argues that reference to the manuals should be excluded because
Defendant cannot authenticate the manuals. (Motion to Exclude VSE Manuals, Doc. 87-
1, Pg. ID 9738-39.) To be sure, a party proposing evidence must provide enough proof for
16

a reasonable juror to determine authenticity. Fed. R. Evid. 901(a); United States v. Jones,
107 F.3d 1147, 1150 n.1 (6th Cir. 1997). That task can be accomplished through testimony
of any individual who accessed the manuals through the internet. See, e.g., United States

v. Thomas, 701 F. App’x. 414, 418-19 (6th Cir. 2017). Various witnesses, including
Goldberg, David Buck, and Meric Overman, have accessed the manuals through the
relevant website and could therefore speak to their authenticity. See id. (See also Overman
Dep., Doc. 71, Pg. ID 8657; Buck Dep., Doc. 56, Pg. ID 2644; Goldberg Dep., Doc. 96, Pg.
ID 11280.) As the manuals can be authenticated by several means, Plaintiff fails to show
they are inadmissible.
Thus, Plaintiff's motion to exclude all expert and fact testimony from Defendant
regarding the VSE manuals must be denied.
d. Modified VM Source Code
Plaintiff lastly moves to bar Defendant from introducing Defendant’s Modified
VM Source Code or any related expert testimony. (See Motion to Exclude Source Code,
Doc. 88.) Plaintiff argues that Defendant refused to make the Modified VM Source Code
available to Plaintiff but then allowed Goldberg to use it in his report. (Id. at Pg. ID 9780-
82.) According to Plaintiff, this alleged maneuvering violates the Federal Rules of Civil
Procedure and the parties’ Source Code Inspection Protocol. (Id.)
Federal Rule of Civil Procedure 26 provides that “[p]arties may obtain discovery
regarding any nonprivileged matter that is relevant to any party’s claim or defense and
proportional to the needs of the case.” Fed. R. Civ. P. 26(b)(1). Rule 26 also outlines what
parties must first disclose without a discovery request and what parties must supplement
17

during discovery. Fed. R. Civ. P. 26(a)(1){A), (e)(1). “Ifa party fails to provide information
or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that
information or witness to supply evidence on a motion, at a hearing, or at a trial, unless
the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). Further,
Rule 34 provides a process for parties to request information within the scope of Rule
26(b), as well as a process for parties to object to such requests. Fed. R. Civ. P. 34(a), (b).
The inquiry thus becomes whether Defendant violated Rule 26(a) or (e). To begin,
Defendant satisfied Rule 26(a) by identifying its license agreement with Seagull, Seagull’s
VM, its LIMS products, and related source code, as potentially relevant in its initial
disclosures. (See Defendant's Initial Disclosures, Doc. 98-1, Pg. ID 11588); Fed. R. Civ. P.
26(a)(1)(A)(ii); see also Hall v. Tacala, LLC, No. 1:20-CV-203, 2021 WL 5154091, at *2 (E.D.
Tenn. July 23, 2021). Plaintiff also does not identify any omission in Defendant's initial
disclosures that would implicate supplemental disclosures under Rule 26(e). (See Motion
to Exclude Modified VM Source Code, Doc. 88-1.) Thus, as Defendant has not violated
Rule 26(a) or (e), exclusion is not proper under Rule 37.
Plaintiff still argues that exclusion is appropriate based on its efforts to obtain the
Modified VM Source Code from Defendant. (See Motion to Exclude Modified VM Source
Code, Doc. 88-1, Pg. ID 9780.) Plaintiff's argument is not well taken. Plaintiff made two
requests for the Modified VM Source Code. (Plaintiff's First Request for Production, Doc.
88-3, Pg. ID 9800; Plaintiff's Email Request, Doc. 88-5, Pg. ID 9853.) Defendant objected,
contending that such requests were overly burdensome. (Defendant’s Responses to
Plaintiff's First Request for Production, Doc. 88-4, Pg. ID 9818-19; Defendant Email
18

Response, Doc. 88-6, Pg. ID 9855.) Plaintiff never requested the code considered by
Goldberg, even though Defendant submitted Goldberg’s report by the deadline for
expert reports and nearly two months before the close of discovery. (See 9/27/2022
Notation Order; Goldberg Report, Doc. 96-1, Pg. ID 11397.) Plaintiff also never presented
this issue to the Court. (See 8/9/2022 Notation Order.) Nor did Plaintiff seek to reconcile
its request with Defendant's objection or move to compel production of the Modified VM
Source Code through the procedures outlined by the Source Code Inspection Protocol.
(See Source Code Inspection Protocol, Doc. 39, Pg. ID 367-68.) Simply put, Plaintiff did
not avail itself of the remedial measures provided under the Source Code Inspection
Protocol and the Federal Rules of Civil Procedure to secure the Modified VM Source
Code. So, the Court will not exclude it now. See Roberts ex rel. Johnson v. Galen of Virginia,
Inc., 325 F.3d 776, 782-83 (6th Cir. 2003).
Plaintiff also fails to demonstrate that Defendant violated the parties’ Source Code
Inspection Protocol. The Protocol provided for a process by which a party could object to
a request for source code. (See Source Code Inspection Protocol, Doc. 39, Pg. ID 367-68.)
If one party objected to a request based on overbreadth, both parties could attempt to
resolve the issue through a “meet and confer” process. (Id.) And, if the matter remained
unresolved, the requesting party could move to compel the production of any withheld
code. (Id.)
In line with this protocol, Defendant objected that Plaintiff's request was too broad
but offered to export specific portions that Plaintiff’s expert believed to be relevant.
(Defendant's Email Response, Doc. 88-6, Pg. 9855.) At that point, the onus was on Plaintiff

to seek to compel the remaining code. (See Source Code Inspection Protocol, Doc. 39, Pg.
ID 368.) The Court cannot identify any provision of the Source Code Inspection Protocol
Defendant supposedly violated through this conduct. To the extent that Plaintiff
challenges the efficacy of the “meet and confer” process outlined in the Protocol (see
Plaintiff's Reply, Doc. 109, Pg. ID 12015), the Court is not inclined to deviate from the
procedures agreed upon by the parties. For these reasons, Plaintiff fails to demonstrate
that Defendant violated the parties’ Source Code Inspection Protocol.
Thus, Plaintiff's request to exclude Defendant’s Modified VM Source Code and
any testimony related to it must be denied. The Court further finds that Defendant's
requested award of costs is unwarranted.
* * *

In summary, each of Plaintiff's motions to exclude evidence must be denied. The
Court now proceeds to the parties’ cross-motions for summary judgment.
II. Summary Judgment
When there is no genuine dispute as to any material fact and the moving party is
entitled to judgment as a matter of law, the district court must grant summary judgment.
Fed. R. Civ. P. 56(a). The Court is to view the evidence and draw all reasonable inferences
in favor of the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 587 (1986). “This standard does not change when the parties present cross-motions
for summary judgment; [the Court] evaluate[s] each motion on its own merits.” Safety
Specialty Ins. Co. v. Genesee Cnty. Bd. of Comm’rs, 53 F.4th 1014, 1020 (6th Cir. 2022).
The moving party has the burden to show that no genuine issue of material fact
20

exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the moving party meets that
burden, then it becomes the nonmoving party’s responsibility to point to specific facts
showing that there is a genuine issue for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
250 (1986). A court need not search the record for genuine issues of material fact. Betkerur
v. Auliman Hosp. Ass’n, 78 F.3d 1079, 1087 (6th Cir. 1996). A “mere scintilla” of evidence
in support of the nonmoving party's position is not enough to avoid summary judgment.
Daniels v. Woodside, 396 F.3d 730, 734 (6th Cir. 2005). Rather, to preclude summary
judgment, the nonmoving party must put forward probative evidence on which a jury
could reasonably reach a verdict in that party’s favor. Anderson, 477 U.S. at 251-52. If the
nonmoving party fails to make the necessary showing for an element on which it has the
burden of proof, then the moving party is entitled to summary judgment. Celotex, 477
U.S. at 323,
a. Copyright Act
First, the Court considers Plaintiff's copyright infringement claim. (Compl., Doc.
1, 18-26.) Both parties move for summary judgment on this claim. (See Defendant's
Motion for Summary Judgment, Doc. 83, Pg. ID 9357; Plaintiff's Motion for Summary
Judgment, Doc. 92-1, Pg. ID 10120.) “To succeed on a copyright-infringement claim, a
plaintiff must establish ‘(1) ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original.’” ECIMOS, LLC v. Carrier Corp., 971 F.3d 616, 627-
28 (6th Cir. 2020) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).
In consideration of the first element, the Court must determine the copyright
registration at issue. Plaintiff does not reference a copyright registration in its Complaint.
21

(See Compl., Doc. 1.) At the summary judgment stage, both parties request judgment on
the copyright claim based on the ‘100 Registration. (See Plaintiff's Motion for Summary
Judgment, Doc. 92-1, Pg. ID 10121; Defendant’s Motion for Summary Judgment, Doc. 83,
Pg. ID 9357.) Likewise, Plaintiff admits in its response to Defendant’s Motion for
Summary Judgment that its copyright infringement claim is based on the ‘100
Registration. (Plaintiff's Response to Defendant’s Motion for Summary Judgment, Doc.
103-1, Pg. ID 11871 n. 3.) Plaintiff raises no other registrations as a basis for its copyright
claim. (See Plaintiff's Motion for Summary Judgment, Doc. 92; Plaintiff’s Response to
Defendant’s Motion for Summary Judgment, Doc. 103-1.) Thus, the Court will construe
Plaintiff's copyright claim as one solely relating to the ‘100 Registration. See Brashear v.
Pacira Pharms., Inc., No. 1:21-CV-700, 2023 WL 3075403, at *2 (S.D. Ohio, Apr. 25, 2023)
(limiting its analysis to the only theory of liability briefed by the parties).
The parties agree that Plaintiff has a valid interest in the ‘100 Registration. (See
Defendant’s Motion for Summary Judgment, Doc. 83, Pg. ID 9358-59.) So, the first element
has been met, and the Court turns to the second element: whether there has been a
“copying of constituent elements of the work that are original.” ECIMOS, LLC, 971 F.3d
at 627-28 (quotation omitted). The second element “tests whether any copying occurred
(a factual matter) and whether the portions of the work copied were entitled to copyright
protection (a legal matter).” Lexmark Int'l, Inc. v. Static Control Components, Inc., 387 F.3d
522, 534 (6th Cir. 2004).
Not all copying is necessarily actionable under copyright law. Kohus v. Mariol, 328
F.3d 848, 853 (6th Cir. 2003). “[I]t is a constitutional requirement that a plaintiff bringing
22

an infringement claim must prove copying of constituent elements of the work that are
original.” Id. (quotation omitted). “Original . . . means only that the work was
independently created by the author (as opposed to copied from other works), and that
it possesses at least some minimal degree of creativity.” Feist, 499 U.S. at 345.
“Consequently, before comparing similarities between two works a court should first
identify and eliminate those elements that are unoriginal and therefore unprotected.”
Kohus, 328 F.3d at 853. Important here, “[t]he copyright in a .. . derivative work extends
only to the material contributed by the author of such work, as distinguished from the
preexisting material employed in the work, and does not imply any exclusive right in the
preexisting material.” 17 U.S.C. § 103(b).
With those considerations in mind, a plaintiff claiming copyright infringement of
computer software must “identify and eliminate” unoriginal code. Automated Sols. Corp.
v. Paragon Data Sys., Inc., 756 F.3d 504, 518 (6th Cir. 2014) (quoting Kohus, 328 F.3d at 853).
Code incorporated from an earlier registration into a later, copyrighted version is not
protected by the later copyright. See 17 U.S.C. § 103(b); see also SimplexGrinnell LP v.
Integrated Sys. & Power, Inc., 642 F. Supp. 2d 206, 213 (S.D.N.Y. 2009) (noting that the
United States Copyright Office advises that any subsequent registration of a computer
program covers only the new material added to the previously registered version). The
task of separating protected code from unprotected code can be “a vexing one.” See RJ
Control Consultants, Inc. v. Multiject, LLC, No. 23-1591, 2024 WL 1432723, at *9 (6th Cir.
2024) (quotation omitted).
That said, the first step in this process is for the plaintiff to identify and provide
23

the elements of its original code. See R.C. Olmstead, Inc. v. CU Interface, LLC, 606 F.3d 262,
275 (6th Cir. 2010). Plaintiff does not supply the Court with the code specific to the ‘100
Registration. (See Defendant’s Motion for Summary Judgment, Doc. 83, Pg. ID 9357-58;
Plaintiff's Response, Doc. 103, Pg. ID 11870-71.) Rather, Plaintiff maintains that Smalltalk
Version 1.3’s code is protected by the ‘100 Registration, relying on testimony from its
expert, Georg Heeg. (Plaintiff's Motion for Summary Judgment, Doc. 92-1, Pg. ID 10121.)
Plaintiff then argues that any later versions of VSE “contain preexisting, copyrighted
source code from” Smalltalk Version 1.3. ([d.) Put another way, Plaintiff argues that
Defendant's allegedly impermissible use of VSE Version 3.1 constituted infringement of
VSE Version 1.3. (Id. at Pg. ID 10121-22.) Defendant counters that this analysis is
insufficient as Plaintiff has failed to identify the original, protected lines of code in the
‘100 Registration. (Defendant’s Reply, Doc. 104, Pg. ID 11923-24.) The Court finds
Defendant’s argument persuasive.
Plaintiff has not identified which lines of code covered by the ‘100 Registration are
original. The parameters of the ‘100 Registration, as established by a single-page
document in the record, show that it relates to Smalltalk Version 1.3 and that the basis of
the registration claim is “New Matter: rev. & supplemental text.” (‘100 Registration, Doc.
84-8, Pg. ID 9541.) Plaintiff does not shed any further light on the registration, nor does it
identify any code the registration covers. (See Plaintiff’s Response to Summary Judgment,
Doc. 103, Pg. ID 11870-71; Plaintiff's Motion for Summary Judgment, Doc. 92-1, Pg. ID
10121-22.) On top of that, Plaintiff has not provided the Court with a copy of the code for
Version 1.3, nor does it identify what original portions of that code was later used in
24

Version 3.1. (See id.) In short, Plaintiff has not identified—and the Court cannot
determine—the original code covered under the ‘100 Registration. This absence of
identified original code is fatal to Plaintiff's claim. Without identified original code, the
Court cannot determine which portions of the protected work Defendant allegedly
copied. See R.C. Olmstead, Inc. v. CU Interface, LLC, 606 F.3d 262, 275-76 (6th Cir. 2010).
Plaintiff points to Williams Prods., Inc. v. Constr. Gaskets, Inc., No. 6-71616, 1977 WL
22704 (E.D. Mich. Dec. 2, 1977), to argue that it need not identify which portion of code
from Version 1.3 was later used in Version 3.1. (Plaintiff's Response to Summary
Judgment, Doc. 103, Pg. ID 11871.) But, in Williams, the plaintiff provided the court with
copies of the copyrighted materials to compare with the allegedly copied work. See
Williams, 1977 WL 22704, at *3-4. Plaintiff has not done the same here. Furthermore,
because Plaintiff has not identified the original, protected code, the Court cannot engage
ina substantial-similarity analysis. See Automated Sols., 756 F.3d at 521; R.C. Olmstead, Inc.,
606 F.3d at 275-276. Because the Court cannot complete its analysis, Plaintiff cannot meet
the second element of a copyright infringement claim. Therefore, Plaintiff's copyright
infringement claim must fail.
In any event, even if Plaintiff filtered out unoriginal code, other doctrines stymie
its copyright infringement claim. Plaintiff's claim implicates the “scenes a faire” and
merger doctrines, which address the complexity of software and the difficulties in
separating protected and unprotected code. See RJ Control Consultants, Inc., 2024 WL
1432723, at *10. The “scenes a faire” doctrine “operates to bar certain otherwise creative
expression from copyright protection,” specifically as it relates to “standard or
25

commonplace” code. Id. (quotation omitted). Similarly, the merger doctrine provides that
unprotected, functional code “merges” with protectible, creative code and renders the
whole segment of code unprotectable by copyright. Id. at *9.
To overcome these obstacles, a plaintiff must identify the expression in software
code and enable the Court to engage in a “line-by-line analysis” to determine what code
retains protection. RJ Control Consultants, Inc., 2024 WL 1432723, at *9. Plaintiff has not
provided the code, let alone identified any expressive elements. Without this, the Court
cannot undertake the required “line-by-line analysis” to determine which elements of the
code are expressive, which elements are functional, and which elements are “standard or
commonplace.” See id. at *9-11.
For these reasons, Defendant is entitled to summary judgment in its favor on
Plaintiff's copyright infringement claim.
b. Misappropriation under OUTSA
Next, the Court turns to Plaintiff's claim for misappropriation of trade secrets
under OUTSA. (Compl., Doc. 1, Jf 27-31.) Both parties seek summary judgment as to this
claim. (Defendant’s Motion for Summary Judgment, Doc. 83, Pg. ID 9360; Plaintiff's
Motion for Summary Judgment, Doc. 92-1, Pg. ID 10123.) Though the parties make
several arguments, the Court need consider only one: Defendant's contention that
Plaintiff's claim is untimely. (See Defendant's Motion for Summary Judgment, Doc. 83,
Pg. ID 9363.) Before considering the substance of this argument, however, the Court must
first determine the trade secret at issue.
Plaintiff identified the trade secret at issue in its Complaint as the “ VSE Software.”
26

(See Compl., Doc. 1, Jf 8, 11-17, 28.) In its motion for summary judgment, Plaintiff
reiterated that “the VSE Software as a whole” was a trade secret, but also identified seven
“individual features” of the VSE Software as other trade secrets. (See Plaintiff's Motion
for Partial Summary Judgment, Doc. 92-1, Pg. ID 10124-25.) The Court will not consider
these new “individual features” as trade secrets related to this claim because Plaintiff did
not include them in the Complaint. See Tucker v. Union of Needletrades, Indus. & Textile
Emps., 407 F.3d 784, 787-89 (6th Cir. 2005) (noting that a plaintiff may not succeed at the
summary judgment stage by relying on claims not pled in the complaint). The VSE
Software is thus the only trade secret at issue. Having determined the relevant trade
secret, the Court turns to the question of the claim’s timeliness.
Under the OUTSA, “[a]n action for misappropriation shall be commenced within
four years after the misappropriation is discovered or by the exercise of reasonable
diligence should have been discovered.” Ohio Rev. Code § 1333.66. This rule “requires
the owner of a trade secret to conduct a timely and reasonable investigation after learning
of possible misappropriation.” Stolle Mach. Co. v. Ram Precision Indus., 605 F. App’x 473,
482 (6th Cir. 2015) (quotation omitted). Alleged “misappropriation is discoverable if the
owner has knowledge of such facts as would lead a fair and prudent man, using ordinary
care and thoughtfulness, to make further inquiry.” Campfield v. Safelite Grp., Inc., 91 F.Ath
401, 415 (6th Cir. 2024) (quotation omitted); see also Hambleton v. R.G. Barry Corp., 465
N.E.2d 1298, 1300-01 (Ohio 1984).
Defendant maintains that Plaintiff learned of the alleged misappropriation in
April 2014, so Plaintiff's claim should have been filed no later than April 2018.
27

(Defendant’s Motion for Summary Judgment, Doc. 83, Pg. ID 9363.) In support of this
argument, Defendant cites to email correspondence between Plaintiff executives, where
they discussed a former employee and Defendant's alleged use of VSE. (See id.) In
response, Plaintiff maintains that it conducted a reasonable investigation into the
employee and ultimately determined that no foul play had occurred. (Plaintiff's Response
to Defendant’s Motion for Summary Judgment, Doc. 103, Pg. ID 11876-77.) Plaintiff
further maintains that Defendant's alleged misappropriation could not have been
reasonably discovered in April 2014. (See id.)
Based on correspondence, Defendant’s alleged misuse of VSE should have
reasonably been discovered in 2014. During that time, an individual left his employment
with Plaintiff to work for Defendant. (Employee Emails, Doc. 53-5, Pg. ID 1511.) This
prompted the discussion between several of Plaintiff's executives concerning
Defendant's allegedly improper use of VSE Software. (See id. at Pg. ID 1509.) One
executive explicitly noted that “[f]rom everything [he had] been able to find,” Defendant
was using VSE. (Id.) The executive also stated that he had “no record” of Defendant
“being a VSE customer on a [Plaintiff] contract.” (Id.) Another executive similarly noted
that there was “no way” that Defendant had a proper VSE license. (Id.) These cues of
misappropriation would have led a “fair and prudent man, using ordinary care and
thoughtfulness, to make further inquiry” into Defendant's alleged use of VSE Software.
See Adcor Indus., Inc. v. Bevcorp, LLC, 252 F. App’x 55, 60-61 (6th Cir. 2007). Though
Plaintiff would then investigate the former employee for potential misconduct (see Ayers
Dep., Doc. 53, Pg. ID 1269-71), it did not investigate Defendant. For these reasons, the
28

Court concludes that the alleged misappropriation was discoverable in 2014. In turn, as
Plaintiff's trade secret claim was not filed until January 2020, it is untimely.
The case cited by Plaintiff, B&P Littleford, LLC v. Prescott Mach., LLC, Nos. 20-
1449/1451, 2021 WL 3732313 (6th Cir. Aug. 24, 2021), is readily distinguishable from this
case. In B&P Littleford, the Sixth Circuit concluded that a question of fact remained as to
whether the plaintiff conducted a reasonable investigation into misappropriation. Id. at
*8. The Court there noted that the plaintiff tried to investigate the matter but was
“stymied by a lack of documentation and its vendors’ responses, and thereafter turned to
the FBI for assistance.” Id. No similar efforts took place here. Plaintiff limited its
investigation to whether the departed employee violated the terms of his contract with
Plaintiff. (Ayers Dep., Doc. 53, Pg. ID 1271.) Plaintiff did not investigate whether
Defendant was improperly using VSE, despite explicit discussions that such conduct was
occurring. (See Employee Email, Doc. 53-5, Pg. ID 1507-11.) Plaintiff presents no argument
for its failure to take further investigative efforts into Defendant’s alleged misuse of VSE.
Thus, Defendant's alleged misappropriation of the VSE Software was reasonably
discoverable in 2014. Here, because Plaintiff did not bring its trade secrets claim until
2020, it is untimely. See Ohio Rev. Code § 1333.66. As a result, Defendant is entitled to
summary judgment in its favor on this claim.
CONCLUSION
For these reasons, the Court ORDERS the following:
1. Plaintiff's Motion to Exclude the Expert Testimony of Benjamin Goldberg (Doc.
85) is DENIED;
22

2. Plaintiff's Motion to Exclude the Expert Testimony of Daniel McGavock (Doc.
86) is DENIED;
3. Plaintiff's Motion in Limine to Exclude Defendant’s Use of VSE Manuals (Doc.
87) is DENIED;
4. Plaintiff's Motion in Limine to Exclude Testimony and Evidence for Violating
the Source Code Inspection Protocol (Doc. 88) is DENIED;
5. Defendant’s Motion for Summary Judgment (Doc. 83) is GRANTED;
6. Plaintiff's Motion for Partial Summary Judgment (Doc. 92) is DENIED;
7. Summary judgment on Plaintiff's copyright infringement claim is ENTERED
in favor of Defendant;
8. Summary judgment on Plaintiff's misappropriation of trade secrets claim is
ENTERED in favor of Defendant; and
IT IS SO ORDERED.

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
MeN Ged?
By: ‘
JUDGE MATTHEW W. McFARLAND

30

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10665244. Public record. Not legal advice.