The United States Court of Appeals for the Federal Circuit has affirmed a lower court’s decision that sided with Goodyear Tire & Rubber Company against Coda Development s.r.o. and its affiliates (collectively, “Coda”). The ruling confirmed the district court’s decision to grant judgment as a matter of law in favor of Goodyear, dismissing Coda’s claims of trade secret misappropriation and denying Coda’s request to correct the inventorship on a Goodyear patent.
Coda had previously won a significant victory at the jury trial level, securing $2.8 million in compensatory damages and $61.2 million in punitive damages for the misappropriation of five alleged trade secrets related to self-inflating tire (SIT) technology. However, the U.S. District Court for the Northern District of Ohio later overturned this jury verdict through a judgment as a matter of law (JMOL) and also rejected Coda’s equitable claims regarding the inventorship of Goodyear’s U.S. Patent No. 8,042,586 (the ’586 patent).
The Federal Circuit, in an opinion authored by Circuit Judge Cunningham, found no reversible error in the district court’s actions, concluding that no reasonable jury could have found in Coda’s favor on the trade secret claims.
Trade Secret Claims Fail Due to Lack of Specificity and Secrecy
The central issue on appeal involved the five specific trade secrets (TS 7, TS 11, TS 20, TS 23, and TS 24) that formed the basis of the jury’s award. To win a trade secret claim under Ohio law, Coda needed to prove the existence of a secret, its acquisition through confidential means, and its unauthorized use. Crucially, the information must be defined with sufficient clarity.
The appellate court focused heavily on the definiteness of the asserted secrets.
TS 24, concerning the optimal placement of the pump in a tire sidewall, was dismissed because Coda had publicly disclosed this information in its own 2007 patent application and a 2008 article in *Tire Technology*. The Federal Circuit noted that Coda’s own representative confirmed at trial that the location described was “public.” Furthermore, Coda’s attempt to narrow the definition of TS 24 during later stages of litigation—arguing the placement was only secret in a “conventional tire sidewall”—was rejected. The court stated that Coda could not belatedly inject specificity into the definition after being ordered to provide a “closed” recital of its secrets during discovery.
For the other three complex secrets—TS 7 (a multi-purpose air interface), TS 11 (pump and groove solutions), and TS 20 (recirculation and non-recirculation variations)—the Federal Circuit agreed with the district court that they were too vague.
Regarding TS 7, the court observed that Coda merely listed the *functions* the interface could perform rather than detailing the actual “design and development” knowledge required to create it. Similarly, TS 11 and TS 20 were characterized as little more than “an undifferentiated list of components” described in broad terms, failing the necessary test of particularity.
Even if these secrets had been sufficiently defined, Coda failed to prove Goodyear *used* them. For TS 7, Coda’s expert testimony regarding Goodyear’s use was deemed conclusory and unsupported by specific facts linking Goodyear’s patent to all ten claimed functions. For TS 11 and TS 20, Coda pointed to evidence relating to only a few out of many components listed in the broad definitions, and Goodyear successfully countered that those few elements were already publicly known.
Finally, concerning TS 23, which related to specific testing results for pressure generation in SIT prototypes, the appellate court found the evidence of use insufficient. Coda relied on a single email showing some test results, but this email did not include all the data points defined in TS 23. The subsequent advancement of Goodyear’s SIT project shortly after receiving Coda’s data was deemed too weak an inference to support a jury finding of misappropriation of the entire TS 23 package.
Inventorship Claim Tied to Trade Secret Findings
Coda also appealed the denial of its claim seeking correction of inventorship for the ’586 patent, arguing that the district court improperly disregarded the jury’s factual findings when deciding this equitable claim.
The Federal Circuit found this challenge unavailing because Coda’s argument was entirely dependent on the successful reversal of the trade secret ruling. Since the court affirmed the JMOL decision against Coda on the trade secret claims, the basis for overturning the inventorship denial fell away.
Furthermore, the court noted that the district court was not bound by the jury’s findings in this context because the jury was never asked to compare the scope of the alleged trade secret (TS 24) directly against the claims of the ’586 patent. The district court found that the trade secret and the patent claims covered different scopes of invention. Determining inventorship hinges on who conceived of every limitation of the claimed invention—a question the district court properly addressed on its own, independent of the jury’s findings on misappropriation.
In summary, the Federal Circuit upheld the district court’s judgment, concluding that Coda failed to meet its burden to establish the essential elements of its trade secret claims due to vague definitions and insufficient proof of use, which consequently supported the denial of the correction of inventorship claim.