Late yesterday, the Federal Circuit released a nonprecedential order dismissing an appeal. This morning the court released one nonprecedential opinion, two nonprecedential opinions, and another nonprecedential order dismissing an appeal. The precedential opinion comes in an appeal of a jury finding of misappropriation of trade secrets, counterfeiting, breach of contract, and patent invalidity. One of the nonprecedential opinions comes in a companion case to the precedential opinion and discusses costs and attorneys’ fees. The other nonprecedential opinion comes in an appeal of a decision of the Bureau of Justice Assistance. Here are the introductions to the opinions and links to the dismissals.
International Medical Devices, Inc. v. Cornell (Precedential)
Plaintiffs International Medical Devices, Inc. (“IMD”), Menova International, Inc., and Dr. James Elist (collectively “plaintiffs”) manufacture and sell the Penuma® cosmetic penile implant. Plaintiffs sued Dr. Robert Cornell, Mr. Richard Finger, Dr. Run Wang, and a number of other individuals and entities (collectively “defendants”) in the Central District of California, asserting misappropriation of four trade secrets, counterfeiting, and breach of contract. Plaintiffs further sought to invalidate two cosmetic-implant patents issued to several defendants for failing to name one of the plaintiffs, Dr. Elist, as an inventor. A jury found that defendants misappropriated each of the trade secrets and found for the plaintiffs on other claims. After a bench trial on damages, the district court awarded a reasonable royalty and exemplary damages for the trade-secret claims based on a finding of willful and malicious misappropriation and awarded damages against the defendants found liable for the counterfeiting claim. The court also entered a permanent injunction enjoining defendants from using the four trade secrets. Defendants filed a motion for judgment as a matter of law (“JMOL”) on all claims. The district court denied JMOL, and defendants appeal.
We hold that there was no legally sufficient evidentiary basis to support the jury’s finding that plaintiffs had met their burden to show that each of the asserted trade secrets was a protectable trade secret under California law and reverse the district court’s denial of JMOL on the trade-secret claims. Because the plaintiffs do not allege that the confidential information subject to the nondisclosure agreement (“NDA”) asserted in the breach-of-contract claim extended farther than the four trade secrets, we also reverse the denial of JMOL on the breach-of-contract claim. We vacate the district court’s finding of willful and malicious misappropriation, award of a reasonable royalty, award of exemplary damages, and the permanent injunction.
On the counterfeiting claim, which stems from Dr. Cornell’s unauthorized use of the Penuma® mark, we conclude that there was sufficient evidence to sustain a verdict of liability for counterfeiting and affirm the denial of JMOL on the counterfeiting claim and the award of damages.
On the patent-invalidity claim, the basis of the jury’s finding that Dr. Elist was the true inventor was his contribution of the same ideas we now determine (in connection with the trade-secret claims) were generally known and thus cannot constitute an inventive contribution. We thus reverse the denial of JMOL on patent invalidity.
Accordingly, we affirm-in-part, vacate-in-part, and reverse-in-part. We also decide in a separate opinion today a companion case, No. 2025-1843, related to the costs and fees for the district-court proceedings.
International Medical Devices, Inc. v. Cornell (Nonprecedential)
This case is related to another appeal, No. 2025-1580, of the same district court case which we decide today in a separate opinion. No. 2025-1580 concerns the district court’s judgment of liability. This case concerns costs and attorneys’ fees.
As we describe in the companion opinion, Plaintiffs International Medical Devices, Inc. (“IMD”), Menova International, Inc. and Dr. James Elist (collectively “plaintiffs”), manufacture and sell the Penuma® cosmetic penile implant. Plaintiffs sued Dr. Robert Cornell, Mr. Richard Finger, Dr. Run Wang, and a number of associated individuals and entities (collectively “defendants”) in the Central District of California, asserting misappropriation of trade secrets, breach of contract, and counterfeiting. The district court entered judgment that defendants misappropriated each trade secret, that Dr. Cornell breached a non-disclosure-agreement contract, that defendants owed a reasonable royalty and exemplary damages for the trade-secret and breach-of-contract claims, that Dr. Wang owed nominal damages for breaching a consulting services agreement, that Dr. Cornell and his medical practice owed damages for a counterfeiting claim, and that two of defendants’ patents were invalid for failure to name an inventor. The district court also entered a permanent injunction enjoining defendants from using the trade secrets.
In the companion case, we reverse the district court judgment as to the trade-secret, Dr. Cornell’s breach-ofcontract, and patent claims but affirm as to the counterfeiting claim. The defendants did not appeal certain aspects of the district court judgment, including a judgment of liability for copyright infringement and Dr. Wang’s breach of contract.
Afolayan v. Department of Justice (Nonprecedential)
This case returns to us for a second time. Lisa Afolayan petitioned the Bureau of Justice Assistance’s denial of death benefits following the death of her husband, Agent Nathaniel Afolayan. In Ms. Afolayan’s first petition for review, we remanded the case for the Bureau to determine whether the climatic conditions at the time of Agent Afolayan’s death were unusual, nonroutine, or unusually adverse. On remand from this court, the Bureau determined that because the climatic conditions on April 30, 2009, in Artesia, New Mexico, were not unusual, nonroutine, or unusually adverse, Agent Afolayan did not sustain a compensable injury. We affirm.