# Petition — Davis v. General Motors Corp.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1979
- **Citation:** 444 U.S. 836

## Text

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.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_0260%3A1. Public record. Not legal advice.