Petition — Davis v. General Motors Corp.

UL

E T) r: _BE D

MAY 29 1979 |

| MICHAEL RopA

K, JR. CLERK

IN THE ee

Supreme Court of the United States

OctToBER TERM, 1978

Rosert E. Davis, Petitioner, —

Vv.

GENERAL Motors Corporation, Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Hersert B. Kern

Barry E. BRETSCHNEIDER

MicHAEL P. BucKLo

KerL & WITHERSPOON

1101 Connecticut Ave., N.W.

Washington, D.C. 20036

Attorneys for Petitioner

Press oF Byron S. ADAMS PRINTING, INC., WASHINGTON, D. C.

i ll Sint At aan ew

—

INDEX

Page

Sa a, eg Gs cas ala ok ss aw awe i

{

I rae a ay 6 walk oO wee 2

I ST ere 2

CoNsTITUTIONAL Provisions AND RuLes INVOLVED ...... 3

SUN PUNE Sais cc wed cacdwwccess 4

Reasons For GRANTING THE WRIT ............200000. 8

1. The Decision Below Conflicts With Decisions

Of Other Cireuits Respecting The Standard Of

Review Of Summary Judgment And Calls For The

Exercise Of This Court’s Supervisory Authority... 8

2. The Decision Of The Court Of Appeals Con-

travenes Due Process In That It Was Based On

Grounds With Respect To Which Discovery Had

Not Been Permitted To Petitioner .............. 10

3. The Court Of Appeals Failed To Follow Pre-

eedents Of This Court In Erroneously Deciding An

Issue Of Public. Importance Involving Highly

Nee een hae bee We meen 12

Ne ge cee eeeesac 15

pve a eeseee ee la

ii AUTHORITIES

7 Page

Cases:

Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970) ....13, 14

Carter v. Stanton, 405 U.S. 669 (1972) ..........20.. 8, 10

Cox v. Louisiana, 379 U.S. 559 (1965) .. 6.2.26. eee. 11,12

Dolgow v. Anderson, 438 F.2d 825 (2d Cir. 1971) ..... 8

Fountain v. Filson, 336 U.S. 681 (1949) .............. 10

Kennedy v. Silas Mason Co., 334 U.S, 249 (1948) ve 12

Littlejohn v. Shell Oil Co., 483 F.2d 1140 (5th Cir. ‘

ES ph Are anne i Le wr Irene Pare er ae ‘

Poller v. Cotumbie Broadcasting System, Inc., 368 U.S.

ESE ae Ce reer rye T tT eee Ty Te 12

Raley v. Ohio}360 U.S. 423 (1959) ............008. - U,12

Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620

RE Shuts cova aus went ines ae beh eeeeee 13

Steed v. Central of Georgia Rwy. Co., 477 F.2d 1303

OURS BO a OCC LG Gs aun gh Vad wee We A - 8

TSC Industries, Inc. v. Northway, Inc., 426 U.S. 438 ‘s

| TERS apenas ORNS agin ER cs tes Cae

United States v. Caceres, 59 L.Md.2d 733 (1979) ...... 11

United States v. Diebold, Inc., 369 U.S. 654 (1962) .. 12, 14

STATUTES AND RULEs:

28 U.S.C. § 1254(1) ...... NOSUES TEEPE Tee eee 2

Rule 56, Federal Rules of Civil Procedure .......... 2, 3,8

IN THE

Supreme Court of the United States

OctToBer TERM, 1978

Rovert E. Davis, Petitioner,

v.

GENERAL Motors Corporation, Respondent.

—_—_—.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

The petitioner Robert E. Davis respectfully prays

that a writ of certiorari issue to review the judgment

and opinion of the United States Court of Appeals for

the Seventh Circuit entered in this proceeding on De-

cember 12, 1978.

OPINIONS BELOW

The unreported opinion of the Court of Appeals and

the opinion of the District Court reported at 196

USPQ 218 are set forth in the Appendix at pages la

and 7a respectively.

9

_

JURISDICTION

The judgment of the Court of Appeals for the Sev-

enth Circuit was entered on December 12, 1978. A

timely petition for rehearing was denied on February

13, 1979 (p. 16a, infra). By an order entered May 9,

1979, Mr. Justice Stevens extended the time for filing

this Petition to and ineluding May 29, 1979. This

Court’s jurisdiction is invoked under 28 USC § 1254

(1).

QUESTIONS PRESENTED

1. Whether it is an abuse of discretion to affirm sum-

mary judgment on appeal and not remand the ac-

tion to the district court for further consideration

where: (1) the grounds deemed dispositive by the

court of appeals were not specifically considered by

the district court in its findings of faet and conclu-

sions of law, and (2) where discovery on the grounds

deemed dispositive by the court of appeals was con-

tinued by the district court pending disposition of

the summary judgment motion.

2. Whether it is a violation of the Due Process Clause

of the Fifth Amendment to the United States Con-

stitution to affirm summary judgment on appeal

where diseovery on the grounds deemed dispositive

by the court of appeals was continued by the dis-

trict court pending disposition of the summary

judgment motion.

3. Whether it is improper under Rule 56 of the Fed-

eral Rules of Civil Procedure to place the burden

of showing the existence of a genuine issue of ma-

terial fact on petitioner in opposing summary judg-

ment rather than requiring respondent to prove the

nonexistence of such an issue, and whether the court

3

of appeals improperly resolved a genuine issue of

material fact in concluding that there was no dis-

closure of petitioner’s trade secrets.

CONSTITUTIONAL PROVISIONS

AND RULES INVOLVED

United States Constitution, Fifth Amendment:

No person shall . . . be deprived of life, liberty, or

property, without due process of law. . .

Federal Rules of Civil Procedure, Rule 56:

SUMMARY JUDGMENT

* * * *

(b) For Defending Party. A party against

whom a claim, counterclaim, or cross-claim is as-

serted or a declaratory judgment is sought may

at any time, move with or without supporting afii-

davits for a summary judgment in his favor as to

all or any part thereof.

(e) Form of Affidavits; Further Testimony;

Defense Required. Supporting and opposing affi-

davits shall be made on personal knowledge, shall

set forth such facts as would be admissible in evi-

dence, and shall show affirmatively that the affiant

is competent to testify to the matters stated there-

in. Sworn or certified copies of all papers or parts

thereof referred to in an affidavit shall be at-

tached thereto or served therewith. The court may

permit affidavits to be supplemented or opposed by

depositions, answers to interrogatories, or further

affidavits. When a motion for summary judgment

is made and supported as provided in this rule, an

adverse party may not rest upon the mere allega-

tions or denials of his pleading, but his response

by affidavits or as otherwise provided in this rule,

4

must set forth specific facts showing that there

is a genuine issue for trial. If he does not so re-

spond, summary judgment, if appropriate, shall

be entered against him.

* * * *

(f) When Affidavits are Unavailable. Should

it appear from the affidavits of a party opposing

the motion that he cannot for reasons stated pre-

sent by affidavit facts essential to justify his op-

position, the court may refuse the application for

judgment or may order a continuance to permit

affidavits to be obtained or depositions to be taken

or discovery to be had or may make such other

order as is just.

* * * *

STATEMENT OF THE CASE

Petitioner Robert E. Davis (hereinafter ‘ Davis’’)

is a private individual residing in Hinsdale, Ilinois.

Davis is a chemist and is the president of his own com-

pany which is engaged inter alia in the development of

catalysts for the reduction of automobile exhaust emis-

sions. Respondent General Motors Corporation (here-

inafter “‘GM’’) is a Delaware corporation with its

principal place of business at Detroit, Michigan. The

subject matter of this litigation involves Davis’ trade

secrets relating to catalysts which are used in automo-

bile catalytic converters whose function is to reduce

harmful exhaust emissions. In recent years, under fed-

eral and certain state statutes and regulations, GM

has been required to equip the automobiles it manu-

factures with such converters.

In 1969 the AC Division of GM began to solicit

catalyst samples from various firms for testing and

evaluation. Davis began submitting catalysts to AC in

4)

1970 pursuant to an agreement that GM would not

analyze the Davis catalysts but would only test the

effectiveness of the catalysts in reducing exhaust emis-

sions. The success of the Davis catalysts, which were

of a secret composition, led AC to request more sam-

ples. By January 1973 AC had selected eight firms

from among sixty-five candidates to submit catalyst

samples for final evaluation, Davis’ company being

among them. In June 1973, GM formally selected four

manufacturers other than Davis to supply its catalyst

requirements.

Davis discovered, however, that GM had wrongfully

determined the secret composition of his catalysts, eon-

trary to his written agreement with GM, and that GM

had used this information to establish its final catalyst

specifications. On May 22, 1973, Davis brought this

action in the United States District Court for the

Northern District of Tllinois, alleging misappropria-

tion of trade secrets and breach of the agreement by

GM not to analyze the Davis catalysts. Jurisdiction was

based on diversity of citizenship under 28 USC § 1332.

GM originally defended against Davis’ claims on

four grounds:

(1) that GM’s catalyst suppliers independently

developed their methods- of manufacture;

(2) that GM did not use or divulge any of the

Davis trade secrets; |

(3) that the catalysts purchased by GM did not

embody any Davis trade secret; and

(4) that GM did not discover any of Davis’

trade secrets.

6

GM’s main defense was directed to point (3) above and

Davis’ discovery was focused primarily on this point.

On December 22, 1976, GM filed a motion for sum-

mary judgment based on these four points, attaching

affidavits from three persons employed by its suppliers

in support thereof. While the motion was pending,

Davis moved for leave to depose the affiants and to ob-

tain discovery of documents and things relating to this

issue (p. 17a, infra). The district court did not deny

the motion, stating rather in a minute order (p. 19a,

infra) that the motion:

‘is entered and continued until the Court rules on

pending summary judgment motion.”’

In its reply to the Davis brief in opposition to the

summary judgment motion, GM raised the new defense

that the Davis trade seerets were not novel, and the

district court ultimately based its grant of summary

judgment upon this speeifie issue. The court, in its

memorandum setting forth ‘‘Findings of Fact” and

‘“Conelusions of Law’’ (p. lla, infra), treated the re-

mainder of GM’s contentions in vague terms:

“17. Defendant did not discover of plaintiff’s

alleged trade seerets, did not itself use any

of plaintiff’s alleged secrets, and did not dis-

close any of plaintiff’s alleged trade secrets

to its manufacturers or others.

“18. Defendant’s manufacturers independently

developed their own processes of catalyst

manufacture, and these processes are the

only processes employed in manufacturing

the automotive catalysts commercially used

by defendant.”’

7

These findings were reflected in Conclusions of Law 11

and 12 (pp. 14a-15a, infra). In this connection, Con-

clusion of Law 13 is alsu highly significant (p. 15a,

infra) :

“Tt is unnecessary to reach all of the alternative

theories relied on by defendant, any one of which

if established, is sufficient to warrant dismissal of

the Complaint.”’

This conclusion may be interpreted as implying that

Findings 17 and 18, as well as Conclusions 11 and 12,

were gratuitous.

The United States Court of Appeals for the Sev-

enth Circuit affirmed, but not on the ground that the

Davis trade secrets lacked novelty. Expressing doubt as

to the propriety of summary judgment on the novelty

issue, the court nevertheless affirmed because it could

find no evidence that GM had disclosed the Davis trade

secrets to its suppliers. In so doing the court placed its

own interpretation on GM eatalyst specifications.

Davis filed a petition for rehearing, bringing to the

attention of the court of appeals the denial of discov-

ery in the distriet court directed to the now erucial

“disclosure” issue and to the presence of a genuine

issue of material fact with respect to the unique inter-

pretation placed upon GM specification documents by

the court. The petition for rehearing was denied Feb-

ruary 13, 1979.

8

REASONS FOR GRANTING THE WRIT

l. The Decision Below Conflicts With Decisions Of Other Circuits

Respecting The Standards Of Review Of Summary Judgment

And Calls For The Exercise Of This Court’s Supervisory

Authority.

The manner in which the court of appeals reached

its decision in this ease conflicts with the procedures

applied by other courts of appeals, and it appears as

well to be contrary to the spirit, if not the letter, of

Carter v. Stanton, 405 U.S. 669 (1972).

For example, the Fifth Circuit viewpoint is repre-

sented by the combination of Littlejohn v. Shell Oil

Co., 483 F.2d 1140 (5th Cir. 1973), and Steed v. Central

of Georgia Rwy. Co., 477 F.2d 1303 (5th Cir. 1973).

In Littlejohn the district court granted summary judg-

ment for defendant without considering plaintiff’s re-

quest that a decision on summary judgment be contin-

ued until diseovery could be had on the basis for the

motion. The court of appeals held that Rule 56(f),

F.R.Civ.P., applied notwithstanding the lack of an

affidavit from plaintiff, vacated the judgment and re-

manded for discovery. The district court in Steed had

granted summary judgment without explanation of

the basis therefor. The court of appeals reversed and

remanded, because it could not sustain the grant of

summary judgment without an indication of what facts

the district court deemed important and what legal

rationale it used.

The Second Cireuit position is set forth in Dolgow

v. Anderson, 438 F.2d 825 (2d Cir. 1971). The district

court had cut off plaintiffs’ diseovery and granted sum-

mary judgment to defendants without written opinion.

In reversing the judgment, the court of appeals ob-

served that plaintiffs had been denied discovery of data

9

upon which to rely in resisting summary judgment and

that the court could not conclude at the appellate level

that the requested data were not material. The sourt of

appeals also commented upon the lack of findings and

conclusions as a factor affecting its decision. See 438

F.2d at 829.

The policy distilled from these opinions is this: two

courts of appeals will not enter summary judgment on

appeal, or affirm summary judgments by trial courts,

where the lower court has not explicated its factual and

legal rationale for judgment. Further, the Second Cir-

enit will not presume that a discovery eut off did not

prejudice the losing party below.

The decision of the Seventh Circuit in this ease does

not follow these principles. The court entered judg-

ment against Davis on its own determination that Davis

had failed to raise a genuine issue of material fact as

to whether GM _ had disclosed his trade secrets to its

suppliers. The cou.. did this notwithstanding its ree-

ognition that the district court had given no reasons

for finding a lack of factual dispute on the disclosure

issue. To support its position the court proceeded to

interpret GM/’s catalyst specifications without com-

ment on the continuance of the Davis motion for dis-

covery direeted to this issue, even when Davis specifi-

eally brought this point to the court’s attention in his

petition for rehearing. As a consequence, this decision

of the Seventh Circuit directly conflicts with the scope

of discretion exercised by and the procedures set forth

by the Second and Fifth Cireuits to be followed where

the findings of the trial court are vague or lacking and

where discovery had been cut off on matters which ap-

pear to be directly relevant to the ground upon which

the court relied.

10

In Fountain v. Filson, 336 U.S. 681 (1949), this

Court exhibited its preference for procedures which

prevent the entry of summary judgment on appeal

based on grounds which the opposing party did not

have the opportunity to develop before the trial court.

The Seventh Circuit in this case failed to follow Foun-

tain,

[t is submitted that this Court should resolve this

conflict among the circuits, which concerns matters

commonly recurring in litigation, by holding that the

Seventh Cireuit abused its discretion. The Seventh

Circuit has also failed to follow the admonition of this

Court in Carter vy. Stanton, supra at 671, that summary

judgment is not proper where the order of the district

court ‘Sis opaque and unilluminating as to either the

relevant facts or the law with respect to the merits of

appellants’ claim.”

2. The Decision Of The Court Of Appeals Contravenes Due

Process In That It Was Based On Grounds With Respect To

Which Discovery Had Not Been Permitted To Petitioner.

Significantly, the.distriet court did not deny the

Davis motion for diseovery relating to the disclosure

of his trade secrets to the GM suppliers. Rather, the

court “eontinued”’ this motion pending disposition of

the summary judgment motion. It is submitted that this

clearly indicates the district court did not believe at

that time that the diseovery encompassed by the mo-

tion would be germane to the expected grounds upon

which the summary judgment motion would be decided,

and that if summary judgment were not granted or up-

held, then the requested discovery would be permitted.

Nevertheless, after finding that the novelty issue on

which the district court relied in granting summary

11

judgment was of dubious merit, the court of appeals

shifted its focus to the very disclosure issue on which

discovery was continued. Hence, Davis was in effect

placed in a ‘‘cateh 22” situation in that, on one hand,

the district court continued discovery *« ating to the

disclosure issue pending disposition of the summary

judgment motion and, on the other hand, the court of

appeals affirmed the grant of the summary judgment

motion on the grounds that Davis had not produced

sufficient evidence relating to the disclosure issue. Davis

ealled this fact to the attention of the court of appeals

in his petition for rehearing, but the court chose to

ignore the fundamental unfairness of its action.

Raley v. Ohio, 360 U.S. 423 (1959) and Coz v. Lou-

wsiana, 379 U.S. 559 (1965) are pertinent to the due

process issues presented by this petition. In Raley the

Court held that ‘‘due process preeluded the conviction

of individuals for refusing to answer questions asked

by a state investigating commission which itself had

erroneously provided assurances, express or implied,

that the defendants had a privilege under state law to

refuse to answer.”’ United States vy. Caceres, 59 L.Fd.2d

733, 744 n.15 (1979). In Coz, the court held that ‘‘an

individual could not be punished for demonstrating

‘near’ a courthouse where the highest police officials

of the city had advised the demonstrators that thev

could meet where they did without violating the statu-

tory prescription against demonstrations ‘near’ the

courthouse.” Id.

In the instant case, Davis had the right to rely on the

district court’s continuance of discovery relating to

the disclosure issue as a representation that he would

later have the opportunity to establish this issue

12

through diseovery if it became relevant. The issue

clearly did become relevant when the court of appeals

rejected the novelty finding of the distriet court and

tur: -d its attention to disclosure. In affirming sum-

mary judgment on the basis of this issue, the court

of appeals denied Davis his procedural due process

rights as surely as the lower courts did in the Raley and

Cox eases discussed above.

3. The Court Of Appeals Failed To Follow Precedents Of This

Court In Erroneously Deciding An Issue Of Public Importance

Involving Highly Technical Facts.

The subject matter of this litigation is of enormous

value: every GM ear contains a catalytic converter and

each of those converters may contain catalysts which

embody the Davis trade secrets. The issues are highly

technical, as a review of the court of appeals’ opinion

shows. This Court has often said that issues of fact

should be resolved by summary judgment only where

the truth is clear, Poller v. Columbia Broadcasting

System, Inc., 368 U.S. 464, 473 (1962), and that tech-

nical issues are particularly unsuitable for summary

judgment. Kennedy v. Silas Mason Co., 334 U.S. 249,

256-57 (1948) ; United States v. Diebold, Inc., 369 U.S.

654, 655 (1962).

The court of appeals seized on Davis’ allegation that

persons skilled in the field of catalysts would have

viewed the revision by GM of its catalyst specifications,

in which the phrase “‘at a combined level’’ was deleted

from the description of the metallic composition of the

bulk eatalyst beads, to be a direction to keep separate

the essential catalyst metals. This separation principle

is the heart of the Davis trade secrets .While this point

does not constitute the entirety of Davis’ ease by far,

13

the court of appeals nevertheless simply construed the

specifications as follows in support of its ruling against

Davis:

‘The deletion of the phrase ‘at a combined level’

in itself can hardly be characterized as an explicit

direction to separate the metals, particularly given

that the specifications continued to refer to levels

of ‘bulk catalyst’—a phrase scarcely distinguish-

able from ‘combined level’, since the word ‘bulk’

inakes sense only by assuming some joint measure-

ment of the two metals.’? [Emphasis supplied. ]

(pp. 5a-6a, infra).

Apart from the specifications themselves, the record

before the court of appeals also contained the affidavit

of Davis, a person of knowledge and experience in this

field, who explained in detail the significance of the

specifications. The court of appeals ignored this affi-

davit (Ct. App. Davis Apx. 175), calling it ‘“‘argu-

ment.’’

The court of appeals has no expertise in catalyst

technology, vet it based its decision on its own inter-

pretation of highly technical documents. Its decision

has the effect of casting on Davis the burden of prov-

ing his case on summary judgment, in contravention of

the rule that the movant has the burden of proving

the lack of a material fact issue. See, Sartor v. Arkan-

sas Natural Gas Corp., 321 U.S. 620, 627 (1944). The

specifications are, at this stage, at least unclear; the

only affidavit of record on the point goes against GM

and the interpretation placed upon the specifications

by the court.

This Court treated a situation presenting the same

legal issue in Adickes v. S.H. Kress & Co., 398 U.S.

144 (1970), wherein summary judgment was reversed

14

on the grounds that the movant Kress had failed to

prove the absence of a genuine issue of material fact

in a civil rights action stemming from the arrest of

Adickes at a Kress store. In opposing the summary

judgment motion, Adickes relied on Kress’ failure to

refute her affidavit allegation that at the time she was

refused service, the policeman who later arrested her

was in the store. This Court found that the burden was

upon Kress to show that there was no policeman in the

store and reversed: ~*

“Because ‘[o]n summary judgment the inferences

to be drawn from the underlying facts contained in

[the moving party’s] materials must be viewed in

the light most favorable to the party opposing the

motion,’ United States v. Diebold, Inec., 369 U.S.

654, 655 (1962), we think respondent’s failure to

show there was no policeman in this store requires

reversal.’’ 398 U.S. at 158-59.

Regardless of G@M’s showings, the fact remains that

Davis has submitted an affidavit supporting his position

that the catalyst specifications require separation of

the metals. If Davis’ affidavit was ‘‘argument,’’ then

so was Adickes’ in the Kress case. In that case this

Court held that Adickes-did not have to prove her

assertion that a policeman was in the store; it was

rather the burden of Kress to show the undisputed ab-

senee of a policeman. 398 U.S. at 159. The Court of

Appeals was a fortiori in error here not following the

Kress case since Davis has presented affidavit evidence

which east doubt on the inferences derived by GM (and

the court of appeals) from the catalyst specifications.

See also, TSC Industries, Inc. v. Northway, Inc., 426

U.S. 488, 450 (1976), and United States v. Diebold,

Inc., supra, which state that the assessment of the

15

inferences to be drawn from a set of facts and the sig-

nificance of those inferences are peculiarly within the

province of the trier of fact.

CONCLUSION

. ; ,

For these reasons, a writ of certiorari should issue

to review the judgment and opinion of the Seventh

Circuit.

Ilerpert B. Kern

Barry E. BretscHNEIDER

MicHaeL P, BucKkio

Ker & WITHERSPOON

1101 Connecticut Ave., N.W.

Washington, D.C. 20036

Attorneys for Petitioner

APPENDIX

la

Unitep States Court oF APPEALS

For THE Seventu Circuit

Cuicaco, ILurois 60604

No. 78-1218

Rosert KE. Davis, Plaintiff-Appellant,

VS.

GeENERAL Motors Corporation, a Delaware Corporation,

Defendant-A ppellee.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division

No. 73-C-1302

Aurred Y. Kirkianp, Judge

ORDER

ArGcuep NoveMBER 3, 1978

DeceMBeER 12, 1978

Before Hon. Tuomas E. Faircuivp, Chief Judge

Hon. Ropert A. Sprecuer, Circuit Judge

Hon. Harutrycton Woon, Jr., Circuit Judge

The issue presented by this appeal is whether the district

court’s grant of summary judgment for defendant on plain-

tiff’s diversity trade secret appropriation complaint was

proper. We find that the plaintiff failed to raise a material

issue of fact relating to the alleged disclosure of the pur-

ported trade secrets by the defendant, and thus we affirm

the district court.

I

In order to meet federal air pollution standards, the de-

fendant General Motors and AC, one of its divisicns,

created a program to develop commercialiy practicable

2a

catalysts for use in converters installed in automobile en-

gines in order to convert noxious gases into harmless emis-

sions. The method of development chosen by GM and AC

was to solicit catalyst samples from manufacturers and to

test them to determine whether they could meet standards

determined by the defendant. By September 1973, over 65

firms—ineluding the plaintiff and the four manufacturers

from whom GM currently purchases its catalyst—had sub-

mitted more than 800 samples for testing.

The accepted technology in the production of automotive

emission catalysts involves coating a substrate, typically

pellets of aluminum oxide, with a catalytic metal. Initially

AC sought submissions of samples using “base metals,” such

as copper, chromium, cobalt or molybdenum, due to the

low cost and wide availability of those substances as op-

posed to other potential catalytic substances. However, the

samples consisting of base metals were unsatisfactory in

result, leading to AC’s solicitation of samples utilizing a

“noble metal” (platinum or palladium) composition. AC

suggested that these samples should consist of platinum and

palladium in a 5:2 ratio, since that was the ratio in the ore

from which GM intended to obtain the metals.

Although the plaintiff had submitted “base” metal cata-

lysts, in December 1972 it submitted its first catalyst using

“noble” metals in the suggested 5:2 ratio. The principle

underlying the plaintiff’s submission was the separation of

the platinum and palladium. Accordingly, the plaintiff's sam-

ple consisted of platinum and palladium placed on separate

substrate pellets submitted to AC in a combination of the re-

quired ratio. Further, the composition of these pellets was

such that the palladium treated pellets had the palladium

concentrated at the surface of the pellets and the plati-

num treated pellets had the platinum deeply impregnated

in the pellet. The plaintiff submitted several samples

uilizing this principle of treating separate pellets with plati-

num and palladium. It is undisputed that none of the plain-

tiff’s samples involved the separation of platinum and palla-

3a

dium themselves in pellets containing a combination of the

two substances.

In June 1973, GM selected four manufacturers other than

the plaintiff to supply the catalytie substance. Subsequent!

the plaintiff obtained samples of the catalytic substances

used by GM from some of the defendant’s dealers. Plain-

tiff’s analysis of these substances revealed that the sub-

strate pellets contained both platinum and palladium and

that the two metals were “separated” by concentrating the

palladium at the surface of the pellet and impregnating the

platinum more deeply within the pellet. Believing these

catalysts to embody his supposedly secret “separation” prin-

ciple, plaintiff filed suit in the district court invoking di-

versity jurisdiction and alleging that the plaintiff was the

owner of certan “trade secrets” relating to a method of

preparation of catalysts, that the plaintiff had submitted

samples of this catalyst to the defendant under an agree-

ment that the defendant would not analyze them, that the

defendant breached this non-analysis agreement, and that

the defendant “divulged . . . said information which Defen-

dant unlawfully obtained.” The defendant moved for sum-

mary judgment, filing extensive and detailed affidavits. The

plaintiff likewise filed numerous affidavits. On the basis of

this record, the district court granted summary judgment,

finding that there was no material dispute as to the follow-

ing facts: that the plaintiff's “trade secrets” lacked novelty

and were easily derivable from information in the public

domain, that the defendant had not disclosed any informa-

tion relating to the alleged trade secrets, 2nd that the tech-

nology used in the competitors’ catalysts had been inde-

pendently developed. The plaintiff now appeals from that

summary judgment.

II

Were the only dispositive issue in this case the nature,

scope and novelty of plaintiff’s discovery of the “separa-

tion” principle, this court would have difficulty affirming

a summary judgment on such complex facts ordinarily re-

da

quiring specialized expertise. However, another issue—ap-

propriately resolvable by summary judgment—is disposi-

tive of this case. An essential element of a trade secret ac-

tion is proof by the plaintiff that the defendant in fact used

or disclosed the alleged trade secret. Ferroline Corp. v.

General Aniline & Film Corp., 207 F.2d 912 (7th Cir. 1953) ;

Mitchell Novelty Co. v. United Mfg. Co., 199 F.2d 462 (7th

Cir. 1952); Crown Industries Inc. v. Kawneer Co., 335 F.

Supp. 749 (N.D. Ill. 1971) (applying Michigan law). We

hold that the district court was correct in finding that there

was no material dispute as to the fact that the defendant

had made no disclosure of the alleged secrets.

The plaintiff's only support in its counteraffidavits for its

position that secrets were disclosed is in the affidavit of the

plaintiff, Robert E. Davis. The disclosure theory set out

there is as follows. Prior to the submission of the Davis

catalyst allegedly embodying the decisive separation prin-

ciple, GM in November 1972 gave companies desiring to

submit catalysts the following specifications for submis-

sions:

The catalyst shall be of the pelleted oxidation type con-

sisting principally of Gamma Alumina, coated with a

5:2 ratio of platinum :palladium at a combined level of

.332 troy ounces ner cubic feet.

After the submission of the Davis catalyst, GM released

in January 1973 the following specifications:

The catalytic coating shall consist principally of pre-

cious metals comprised of platinum and palladium in

a ratio of 5 parts platinum to 2 parts palladium. Other

material comprised of non-platinum group metal con-

stituents can be used to stabilize or improve the per-

formance characteristics of the catalyst.

The platinum group metals shall exist in the coating to

a level such that the precious metal content is no less

than 0.332 troy oz./ft., of bulk catalyst.

5a

Finally the plaintiff cites the material specification list used

by GM and AC in December 1973 after the catalyst manu-

facturers had been selected on the basis of the results of

the various entries:

The catalytic coating shall consist principally of pre-

cious metals comprised of platinum (MS 590) and

palladium (MS 591).

The platinum content as determined by state-of-the-art

procedures shall be 0.237 troy ounce/cu. ft. of bulk

catalyst + 2% when adjusted for probable error of

measurement.

The palladium content as determined by state-of-the-

art procedures shall be 0.095 troy ounce/cu. ft. of bulk

catalyst + 2% when adjusted for probable error of

measurement.

The final specification incorporated references to GM’s spe-

cifications for pure platinum and palladium, MS 590 and

MS 591, which specified respectively that platinum could

contaminate palladium no more than 100 parts per million

and that palladium could contaminate platinum at no more

than 250 parts per million. The plaintiff argues that the

deletion of the phrase “at a combined level” from the last

two specifications and the specification of pure platinum

and palladium in the final specification constituted an “ex-

‘plicit direction” to separate the platinum and the palla-

dium. See Affidavit of R. Davis, J 28-32, Appellant’s Ap-

pendix at 173-75. The plaintiff reasserts this theory in its

brief to this court and suggests no other factual basis upon

which to predicate the required element of disclosure. Brief

for Appellant at 32-34.

Although the district court did not explicate its reasons

for finding that GM and AC had not disclosed the alleged

trade secrets, the deficiencies of the appellant’s construc-

tion of the catalyst specifications make those reasons clear.

The deletion of the phrase “at a combined level” in itself

6a

ean hardly be characterized as an explicit direction to sep-

arate the metals, particularly given that the specifications

continued to refer to levels of “bulk catalyst’”—a phrase

scarcely distinguishable from “combined level,” since the

word “bulk” makes sense only by assuming some joint

measurement of the two metals. Nor does the later reference

to specifications for pure platinum and palladium provide

any support for plaintiff’s claim of disclosure. First, this

specification is dated after the catalyst manufacturers had

been selected and the relevant technology developed. This

hardly supports a claim of disclosure of a trade secret to

aid competitors in the development of a catalyst technology.

Second, even ignoring this chronological lacuna, the ulti-

mate specification is no more an explicit direction to sep-

arate the metals than the second specification. It continues

to use “bulk catalyst” in place of “combined level.” The only

_ significant change in the specification is the reference to the

pure metal specifications. That reference, however, does not

support any disclosure of a principle of separation. Since

the ratio of the metals was carefully controlled by all three

specifications, it is clear that the level of mutual inter-

contamination must be controlled to keep those ratios within

tolerable levels, whether or not the metals are ultimately

combined or separated.

Since the plaintiff has been unable to present any facts

in his counteraffidavits, or elsewhere, that would prove or

support any disclosures,’ the judgment of the district court

is

AFFIRMED.

1 See Lavine v. Shapiro, 257 F.2d 14, 20 (7th Cir. 1958); Dyer

v. MacDougall, 201 F.2d 265, 268 (2d Cir. 1952).

7a

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

ELASTERN DIVISION

No. 73 C 1302

Rosert E. Davis, Plaintiff,

VS.

GenerAL Motors Corporation, Defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

(On Defendant’s Motion for Summary Judgment)

This Court has considered the pleadings, depositions,

answers to interrogatories, and admissions on file, the affi-

davits submitted by the parties and their contentions, and

enters the following findings of fact and conclusions of law.

1. Plaintiff, Robert E. Davis, is a resident of Hinsdale,

Illinois and is President of I.E. Davis Chemical Corpora-

tion (“Davis Corporation”), an Illinois corporation having

its principal place of business in Oak Brook, Illinois. (Davis

Aff., 71).

2. Defendant, General Motors Corporation (“General

Motors”), is a Delaware corporation with its principal of-

fice and place of business in Detroit, Michigan (Complaint,

| 2). General Motors AC Spark Plug Division (“AC”) has

offices in Flint, Michigan. (Sines Aff., 3).

3. This action was brought by plaintiff May 22, 1973

alleging that he had discovered certain “trade secrets” in

relation to the manufacture of automotive eziission sup-

pression catalysts, the active constituents of catalytic con-

verters now empioyed on most new automobiles to convert

exhaust gas hydrocarbons and carbon monoxide to harm-

less vapors. (Complaint, {] 2).

8a

4. The Complaint charged that defendant improperly

“obtained information relating to plaintiff’s trade secrets”

and that “defendant has divulged, or intends to divulge, said

information ... to other manufacturer or manufacturers of

such catalysts and that defendant has utilized or intends to

utilize, the benefits of plaintiff's research and technology

for defendant’s own benefit.” (Complaint, { 8-9). These

allegations were denied by defendant in its Answer filed on

July 10, 1973.

5. By this motion defendant seeks summary judgment

pursuant to Rule 56(b), F.R.Civ.P., on one or more of the

following alternative grounds:

a. The automotive catalysts commercially used by de-

fendant are purchased from companies that manufac-

ture them pursuant to manufacturing processes inde-

pendently developed and owned by such companies.

b. Defendant has neither used any of plaintiff's al-

leged trade secrets itself nor has it divulged them to

others, in particular to the companies from which de-

fendant purchases such catalysts;

e. The catalysts purchased by defendant do not em-

body or employ any of plaintiff's alleged trade secrets;

d. Defendant did not discover any of plaintiff's al-

leged trade secrets; and

e. The subject matter plaintiff now claims as a trade

secret is generally known and part of the state of the

art of catalysts and their manufacture and therefore

cannot be protected as a trade secret as a matter of

law.

6. Numerous firms from time to time submitted catalyst

samples for testing and evaluation by AC. By September,

1973 over 65 different firms had submitted over 800 differ-

ent catalyst samples for testing and evaluation by AC.

Among the participants were plaintiff and the four com-

9a

panies from which defendant currently purchases all of

its catalysts. (Komarmy Aff., { 2).

7. Purehase orders AC issued from time to time (e.g.

PX-18) placed restrictions on defendant’s freedom to per-

form analyses determinative of the composition of plain-

tiff’s catalysts. However, purchase orders issued by AC to

plaintiff after February 1, 1973 contained no such restric-

tion. (DDX 74,77).

8. The parties dispute matters of contract interpretation

and application bearing upon’ the issue of whether or not

defendant had the right to analyze catalysts submitted by

plaintiff for evaluation after February 1, 1973.

9. Catalysts of the type employed to control automotive

exhaust emissions have long been used in petroleum refin-

ing. Conventionally, they are manufactured by applying a

coating of catalytic material (which may be one or more

“hase metals,” such as copper, chromium, cobalt, moly-

bdenum, or the like, or “noble metals,” such as platinum

and palladium) to a substrate, typically pellets of aluminum

oxide (“alumina”). (Komarmy Aff., 73).

10. Plaintiff now asserts that in the manufacture of de-

fendant’s catalysts “the noble metals were applied to the

substrate by first applying a solution containing one noble

metal, drying, and then applying a solution of a second noble

metalY (Davis Aff., 750). Plaintiff claims that the “noble

metal profile” resulting from the use of this manufacturing

technique was “(1) to maintain a substantial separation

of Platinum and Palladium, (2) to deposit Platinum more

deeply into the substrate, and (3) to allow the Palladium to

concentrate on the surface of the substrate.” (Davis Aff.,

_ § 14-16) As used hereinafter in these Findings and Conclu-

sions, the terminology “plaintiff’s alleged trade secrets” is

intended to mean these alleged trade secrets plaintiff now

contends are being employed in the manufacture of cata-

lysts for defendant.

10a

11. Plaintiff never submitted to defendant a platinum

and palladium catalyst prepared by the two-step technique

now claimed as his alleged trade secret. (PI.Ad. 128, 130,

134, 136, 148, 149; Pl. Ans. 127 (b) (iii) and 128(b) (iii);

Davis Tr. 172; Lathrop Tr. 67).

12. Use of a two-step impregnation process of the type

claimed by plaintiff is generally known and part of the

state of the art of catalysts and their manufacture and was

so at the time plaintiff’s work with noble metal catalysts

commenced. (DDX 58; Davis Tr. 762). Such a two-step,

double coating process of manufacturing catalysts from two

different catalytic materials is shown in each of U.S. Pat-

ents Nos. 3,846,343; 3,819,533; 3,272,700; and 3,304,150,

which are owned by defendant’s catalyst manufacturers.

(DDX 95-98; Davis Tr. 762). These patents were all applied

for prior to plaintiff's earliest work with noble metal cata-

lysts. (/d., Davis Aff., 7 17).

13. Plaintiff’s “noble metal profile” concept is also gen-

erally known and part of the state of the art of catalysts

and their manufacture and was so at the time plaintiff’s

work with noble metal catalysts commenced.

14. U.S. Patent No. 3,819,533 filed in May, 1972 by one

of defendant’s manufacturers disclosed that impregnation

of a pellet with palladium resulted in concentration of palla-

dium at the surface of the pellet. (DDX 96).

15. U.S. Patent No. 3,259,589 deseribed the manufacture

of a catalyst pellet with platinum impregnated deeply

throughout the pellet.

16. Plaintiff’s knowledge of noble metal profile charac-

teristics is based on plaintiff's work on defendant’s catalyst.

(Davis Aff., 156). There is no contemporaneous evidence

that plaintiff himself was aware of this phenomenon at the

time he prepared and submitted catalysts to defendant for

evaluation.

lla

17. Defendant did not discover any of plaintiff’s alleged

trade secrets, did not itself use any of plaintiff’s alleged

trade secrets, and did not disclose any of plaintiff’s alleged

trade secrets to its manufacturers or others. (Hustead Aff.,

715; Komarmy Aff., { 17; Sines Aff., | 16; Mattarella Aff.,

96; Fredericks Aff., 14; Wing Aff., 14; Wang Aff., 4;

Achey Aff., 1 4; Pierce Aff., 14; Backstrom Aff., 1 4; Smith

Aff., 1 4.).

18. Defendant’s manufacturers independently developed

their own processes of catalyst manufacture, and these

processes are the only processes employed in manufactur-

ing the automotive catalysts commercially used by defen-

dant. (Ebel Aff., { 2-4; Briggs Aff., 14-7; Jagel Aff., {[ 3-5;

Vill Aff., 1 3-5; Womeldorph Aff., {| 4-7.

19. The alleged trade secrets plaintiff contends are used

in manufacturing catalysts for defendant lack novelty.

ConcLusions oF Law

1. The Court has jurisdiction of the parties and the sub-

ject matter of this action under 28 U.S.C. Section 1332(a)

(1), and venue is properly Jaid in this judicial district under

28 U.S.C. Sections 1391(a) and (ce).

2. State law applies to a diversity case involving the

trade secret claim advanced here. Bendix Corp. v. Balaz,

Inc., 421 F.2d 809, 821 (7th Cir. 1970), cert. denied, 339 U.S.

911 (1970); Ferroline Corp. v. General Aniline & Film

Corp., 207 F.2d 912, 920 (1953); Wesley-Jessen, Inc. v.

Reynolds, 182 U.S.P.Q. 135, 144 (N.D. Tl. 1974). The law of

the forum, Illinois, governs the substantive issues raised

including the Illinois rules on conflict of laws, Erie R. Co.

v. Stentor Electric Mfg. Co., 313 U.S. 487 (1941).

3. The applicable [llinois conflicts rule is that, in an ac-

tion for alleged misappropriation of trade secrets, the law

of the place where the alleged wrong was committed or the

benefit was obtained by the defendants shouid govern.

12a

Crown Industries, Inc. v. Kawneer Co., 335 F.Supp. 749, 760,

761 (N.D. Ill. 1971) ; Wesley-Jessen, Inc. v. Reynolds, supra.

4. The law of Michigan is applicable in this case because

the place of the alleged discovery of trade secrets is AC’s

facility in Flint, Michigan. Moreover, AC’s purchase orders

issued to plaintiff all provided that Michigan law applies.

5. The essential elements of a cause of action based upon

trade secrets are the existence of the secret, its acquisition

in confidence, and the defendant’s unauthorized use of the

secret, Kubik, Inc. v. Hull, 56 Mich. App. 335, 224 N.W. 2d

80 (1974); Crown Industries, Inc. v. Kawneer Co., 335 F.

Supp. 749, 762 (N.D. Ill. 1971) (applying Michigan law) ;

Dow Chemical Co. v. American Bromine Co., 210 Mich. 262,

177 N.W. 996, 1007 (1920) ; Mitchell Novelty Co. v. United

Mfg. Co., 199 F.2d 462, 465 (7th Cir. 1952).

6. Publication of allegedly secret technical information

destroys any cause of action based on use of the informa-

tion, Insealator, Inc. v. Wallace, 357 Mich. 233, 98 N.W. 2d

643, 653 (1959) ; Crown Industries, Inc. v. Kawneer Co., 335

F.Supp. 745, 761 (N.D. Ill. 1969) (applying Michigan law) ;

Manos v. Melton, 358 Mich. 500, 100 N.W. 2d 235 (1960) ;

Russell v. Wall Wire Prod. Co., 346 Mich. 581, 78 N.W. 2d

149 (1956); Dow Chemical Co. v. Amer. Bronime Co., 210

Mich. 262, 177 N.W. 996 (1920); Wesley-Jessen, Inc. v. Rey-

nolds, 182 U.S.P.Q. 135, 145 (N.D. Ill. 1974) ; Motorola, Inc.

v. Fairchild Camera & Instruments Corp., 336 F.Supp. 1173,

1186 (D. Ariz. 1973). See also Bimba Mfg. Co. v. Starz Cyl-

inder Co., 164 U.S.P.Q. 304, 308 (Ill. App. Ist Dist., 1969) ;

Northrup v. Reisch, 200 F.2d 924, 929, (7th Cir. 1953); 4

Restatement of Torts § 757 Comment b, at 5-6 (1939).

7. A combination of known elements can be a secret but it

must differ materially from the prior art, Nickelson v. Gen-

eral Motors Corp., 361 F.2d 196, 199, (7th Cir. 1966). The

trade secret must ‘‘possess at least that modicum of origi-

nality which wili separate it from everyday knowledge,’’

13a

Cataphote Corp. v. Hudson, 444 F.2d 1313, 1315, (5th Cir.

1971). Matters derivable from customary experimentation

and testing cannot be appropriated as trade secret informa-

tion, Gabriel Co. v. Talley Industries, 137 U.S.P.Q. 630, 633

(D. Ariz. 1963); Aetna Bldg. Maintenance Co. v. West, 39

Cal. 2d 198, 246 P.2d 11 (1952); Sarkes Tarzian Inc. v.

Audio Devices Inc., 166 F.Supp. 250, 258, (S.D. Cal. 1958),

aff'd per curiam, 283 F.2d 695, (9th Cir. 1960). Novelty is

likewise prerequisite to a protectible property right in an

allegedly misappropriated confidential disclosure, Stevens

v. Continental Can Co., 309 F.2d 100, 104, (6th Cir. 1962).

8. Novelty is prerequisite to recovery in either tort or

contract law for misappropriation of material disclosed in

confidence, e.g., Ed Graham Productions v. National Broad-

casting Co., 180 U.S.P.Q. 93, 94 (N.Y. Sup. Ct. 1973). Exist-

ence of the trade secret is also a prerequisite to recovery

on a theory of quasi-contract (unjust enrichment) for use

of proprietary information, Van Rensselaer v. General

Motors Corp., 223 F.Supp. 323, 330, (E.D. Mich. 1962),

aff’d per curiam, 325 F.2d 354, (6th Cir. 1963). Both ex-

press and implied obligations to respect confidences are re-

leased when the confidentiality of the material ceases, e.g.,

Adolph Gottscho, Inc. v. Bell-Mark Corp., 79 N.J. Super.

156, (1963). Accordingly, the enforcement of an express

contract involving products and processes known in the

trade would be against public policy, even where plaintiff’s

product and processes set the defendant up in business,

Reynolds Metals Co. v. Skinner, 166 F.2d 66, 76, (6th Cir.

1948).

9. Plaintiff’s alleged trade secrets are generally known

and part of the state of the art of catalysts and their manu-

facture and therefore may not be protected as trade secrets.

The plaintiff’s alleged trade secrets do not qualify under

the applicable criteria in view of the published disclosures

and the information in the public domain. Since all essen-

tial details of plaintiff’s alleged trade secrets have been

l4a

disclosed, the information has become a part of the public

domain and cannot be claimed by plaintiff as his property.

Ferroline Corp. v. General Aniline & Film Corp., 207 F.2d

912, 921, (7th Cir. 1953).

10. There are no issues of fact material to the question

of whether plaintiff’s alleged trade secrets are generally

known and part of the state of the art of catalysts and their

manufacture. Since the prior publications, plaintiff’s state-

ment of his alleged trade secrets, and other relevant mat-

ters are all embodied in documents capable of interpreta-

tion by the Court upon examination, and all other facts rele-

vant thereto are undisputed, summary judgment on this

basis is therefore appropriate. Grayson v. McGowan, Ap-

peal No. 74-3381 (9th Cir. October 12, 1976). Faulkner v.

Baldwin Piano & Organ Co., 189 U.S.P.Q. 695, 715 (N.D.

Til. 1976) ; See e.g. Van Renssalaer v. General Motors Corp.,

139 U.S.P.Q. 359 (E.D. Mich. 1962) (under Michigan law,

an alternative ground for summary judgment was that the

secret lacked the required novelty) ; Sharmer v. Carrollton

Mfg. Co., 187 U.S.P.Q. 736 (6th Cir. 1974) (summary judg-

ment proper where trade secret publicly disclosed); Boop

v. Ford Motor Co., 278 F.2d 197 (7th Cir. 1960) (plaintiff’s

trade secrets found wholly lacking in novelty) ; Central Spe-

cialties Co. v. Schaefer, 318 F.Supp. 855 (N.D. Ill. 1970)

(subject matter in suit not a protectible trade secret) ;

Perry v. Apex Smelting Co., 173 U.S.P.Q. (N.D. Ohio 1972)

(trade secrets previously disclosed to others without main-

taining confidentiality); and Hisel v. Chrysler Corp., 94

F.Supp. 996 (W.D. Mo. 1959) (idea not protected because

it had been previously published and disclosed).

11. Defendant neither discovered plaintiff’s alleged trade

secrets, used them itself, nor disclosed them to the manu-

facturers from whom it purchased catalyst, and there is no

genuine issue of material fact to the contrary.

12. No recovery can be granted for misappropriation of

proprietary information where, as here, the defendant’s

lda

catalyst and the manufacturers’ processes were independ-

ently developed and no information obtained from plaintiff

or his catalysts was used by the manufacturers in produc-

ing the catalyst. Houser v. Snap-On Tools Corp., 202 F.

Supp. 181, 186, ‘D.Md. 1962); Bolt Associates, Inc. v. Al-

pine Geophysical Associates, 365 F.2d 742, 749 (3rd Cir.

1966).

13. It is unnecessary to reach all of the alternative the-

ories relied on by defendant, any one of which, if estab-

lished, is sufficient to warrant dismissal of the Complaint.

14. Disputed issues of fact and law exist in relation to the

contractual terms governing plaintiff’s catalyst submis-

sions to defendant subsequent to February 1, 1973. Those

issues need not be reached in determining this motion and

do not preclude entry of summary judgment because they

are not material to any of the alternative grounds advanced

by defendant.

15. Under applicable public policy no recovery can be

granted to the plaintiff here under the terms of any ex-

press contract or purchase order because there is no pro-

tectible trade secret.

16. Plaintiff having failed to establish any cause of action

against defendant, there being no genuine issue as to any

material fact, defendant’s Motion for Summary Judgment

is granted.

Enter: /s/ AtFrrep Y. KirKLAND

Alfred Y. Kirkland, Judge

Datep: June 27, 1977.

16a

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

CHICAGO, ILLINOIS 60604

No. 78-1218

Rosert E. Davis, Plaintiff-Appellant,

Vs.

GENERAL Motors Corporation, a Delaware Corporation,

Defendant-Appellee.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 73-C-1302

Aurrep Y. Krrkuanp, Judge.

February 13, 1979

Before Hon. Tuomas EK. Farrcnixp, Chief Judge.

Hon. Rosert A. Sprecuer, Circuit Judge.

Hon. Hariincton Woon, Jr., Circuit Judge.

On consideration of the petition for rehearing filed in the

above-entitled cause by plaintiff-appellant, Robert E. Davis,

all of the judges on the original panel having voted to deny

the same,

Ir Is Heresy Orpverep that the aforesaid petition for re-

hearing be, and the same is hereby, DEeniep.

17a

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

No. 73 C 13802

Rosert EK. Davis, Plaintiff,

Vv.

GENERAL Motors Corporation, Defendant.

MOTION FOR LEAVE TO TAKE THE DEPOSITIONS OF

MESSRS. JAGEL, VILL AND EBEL AND FOR

PRODUCTION OF DOCUMENTS AND THINGS

Rosert E. Davis, by J. Ropert Meyer of McBrine, Baker,

WiENKE & ScHLOssER, moves this Court for an order grant-

ing plaintiff leave to take discovery by deposition upon oral

interrogatories of Messrs. Kenneth I. Jagel, Jr., Carl A.

Vill, Jr. and Robert H. Ebel and for production of docu-

ments or things. In support of this motion, plaintiff states

as follows:

1. This suit arises out of the defendant’s breach of a con-

tract with plaintiff and defendant’s wrongful taking of one

or more of plaintiff’s trade secrets and disclosing plain-

tiff’s trade secrets to third parties.

2. Plaintiff’s trade secrets regard the catalytic material

which he developed to convert automobile emissions into

harmless gases and vapors.

3. Defendant maintained in its Memorandum in Support

of Summary Judgment that its primary catalytic con-

verter material suppliers, Engelhard Minerals & Chemicais

Corporation (‘‘Engelhard’’) and The Catalyst Company

(‘*‘TCC’’), had independently developed the manufacturing

process by which each produced the commercial catalyst.

4. In support of its position, defendant included with its

Memorandum in Support of Summary Judgment the affi-

davits of Kenneth I. Jagel, Jr. of Engelhard, Carl A. Vill,

Jr. of TCC and Robert H. Ebel of TCC.

18a

5. Plaintiff’s experts have informed him that the affidavit

of Mr. Jagel does not, as sworn by Jagel, contain a descrip-

tion of complete manufacturing process by which Engel-

hard produces commercial catalyst and that the process

described in the Vill affidavit would produce a catalyst

which had common properties and characteristics with the

plaintiff’s catalytic submissions to defendant.

6. In addition, the documents produced in this cause have

contradicted the sworn statements of Mr. Ebel regarding

the developmment of TCC’s commercial catalyst through

TCC’s own proprietary catalyst manufacturing technology.

7. Finally, the affidavit of Mr. Arthur P. Lien reports that

Mr. Ebel has represented that TCC leases technology from

the Catalyst Section of General Motors.

8. No delay will result in granting leave to discover as

requested, as the discovery authorized by this Court’s order

of January 7, 1977 has barely commenced, with answers

to the plaintiff’s first set of written interrogatories having

been delayed at defendant’s request to March 10, 1977. As

the Court stated in its Memorandum Opinion:

“This Court finds that liability and damages issues in

this case are not separate and distinct. In order to meet

the burden of proof on the liability issue, plaintiff must

show both thet defendant earned profits and that a

portion of those profits are attributable to defendant's

use of the trade secret. The same information is also

essential to plaintiff’s proof on damages.”

Wuererorr, plaintiff moves this Court for an order

granting leave to plaintiff to seek depositions upon oral in-

terrogatories of Messrs. Jagel, Vill and Ebel and produce-

tion of documents and things at a time and place convenient

to their counsel and the witnesses.

Rosert E. Davis

By /s/ J. Ropert Meyer

J. Robert Meyer

19a

UNITED STATES DISTRICT COURT, NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

Name of Presiding Judge, Honorable Alfred Y. Kirkland

Cause No. 73 C 1302 Date: March 9, 1977

Title of Cause: Ropert E. Davis v. GeneraL Motors Cor-

PORATION.

Brief Statement of Motion: Leave to take the depositions

of Messrs. Jagel, Vill and Ebel and for production of

documents and things.

The rules of this court require counsel to furnish the

names of all parties entitled to notice of the entry of an

order and the names and addresses of their attorneys.

Please do this immediately below (separate lists may

be appended).

Names and Addresses of moving counsel: J. Robert Meyer,

110 North Wacker Drive, Chicago, Illinois 60606.

Representing: Plaintiff

Names and Addresses of other counsel entitled to notice

and names of parties they represent: Daniel W. Vit-

tum, Kirkland & Ellis, 200 E. Randolph, Chicago,

Illinois 60606

Defendant.

Reserve space below for notations by minute clerk.

Marcu 10, 1977

Plaintiff's motion to take the depositions of Messrs.

Jagel, Vill and Ebel and for production of documents

and things is entered and continued until the Court

rules on pending summary judgment motion. Further

Ordered that status date now set for May 4, 1977 is

vacated and cause is given a new status date of May

19, 1977.