The Gillette Company v. Provost, et al. (Lawyers Weekly No. 12-071-17)

In prior rulings, the Court dismissed or granted partial summary judgment against all of The Gillette Company’s claims. Most recently the Court decided that the remaining Defendants are entitled to summary judgment on Gillette’s claims that four of its former employees helped ShaveLogic, Inc., develop a new disposable cartridge shaving razor using Gillette’s confidential information. The only remaining claims to be decided are ShaveLogic’s counterclaims that Gillette intentionally interfered with prospective business relations and violated c. 93A, by threatening to bring and then filing baseless legal claims in an attempt to keep ShaveLogic from entering the market for so-called wet-shaving products.
When the Court granted partial summary judgment in Defendants’ favor on Gillette’s “confidential information” claims, it did not enter separate and final judgment under Mass. R. Civ. P. 54(b) because doing so would be inconsistent with the appellate courts’ strong policy against piecemeal appeals.1 Gillette therefore has no right to appeal the Court’s interlocutory decision granting partial summary judgment in Defendants’ favor on what had been Gillette’s remaining claims.2
Gillette has now asked the Court to report its summary judgment decision for interlocutory appellate review under Mass. R. Civ. P. 64(a). The Court will DENY this request for the reasons discussed below.
1 See Long v. Wichett, 50 Mass. App. Ct. 380, 388-404 (2000) (separate judgment held inconsistent with “bedrock policy against premature and piecemeal appeals”).
2 See Morrissey v. New England Deaconess Ass’n—Abundant Life Communities, Inc., 458 Mass. 580, 594 (2010) (in absence of separate and final judgment, “no appeal can be taken from a trial judge’s partial ‘judgment’ on a claim prior to entry of a final judgment disposing of all claims against all parties to the action”).
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Rule 64(a) authorizes a trial court to report an interlocutory order to the appeals court for immediate review. However, “[s]uch a report should be reserved for novel and difficult issues, the appellate decision of which may expedite resolution of the case.” Morrison v. Lennett, 415 Mass. 857, 859 (1993). “Interlocutory matters should be reported only where it appears that they present serious questions likely to be material in the ultimate decision, and that subsequent proceedings in the trial court will be substantially facilitated by so doing.” Globe Newspaper Co. v. Massachusetts Bay Transp. Auth. Ret. Bd., 412 Mass. 770, 772 (1992), quoting John Gilbert Jr. Co. v. C.M. Fauci Co., 309 Mass. 271, 273 (1941).
Gillette argues that the summary judgment decision in this case turned on the resolution of two unsettled questions of law that should be reviewed by the Appeals Court before ShaveLogic’s counterclaims go to trial. The Court is not convinced.
1. Third-Party Patent Disclosures. Gillette believes that the Court erred in ruling that disclosure of a design concept by a third-party in a patent establishes that the concept is not confidential. Although Gillette concedes that a third-party patent disclosure defeats any claim of confidentiality if the disclosure is well known to others, it argues that information can still be protected as confidential if it is disclosed in an obscure third-party patent that is not generally known in the relevant field.
This issue does not warrant an interlocutory report and review for two reasons.
To begin with, the principle that a business cannot seek to protect as confidential any information that is known by someone outside the business, even if it is not generally known in the industry, is well established under Massachusetts law. See, e.g., Augat, Inc. v. Aegis, Inc., 409 Mass. 165, 170 (1991) (sales volume “known outside the business” by several securities analysts was not confidential). For example, an employee is free to carry away his or her memory of customers’ names, needs, and habits and to use that information to solicit business from those very customers. Such “remembered information” is not confidential because the information itself, as distinguished from an employer’s compilation of such information into a list or database, is known to the customers and thus not kept secret by the employer. American Window Cleaning Co. of Springfield, Mass. v. Cohen, 343 Mass. 195, 199 (1961) (“Remembered information as to the plaintiff’s prices, the
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frequency of service, and the specific needs and business habits of particular customers was not confidential.”); accord Woolley’s Laundry v. Silva, 304 Mass. 383, 391-392 (1939); May v. Angoff, 272 Mass. 317, 320 (1930). There is no good reason why the sharing of information with a few securities analysts as in Augat, or between one customer and one service provider as in American Window, would destroy any claim of confidentiality but disclosure of information in a public patent would not.
In any case, the legal question flagged by Gillette regarding third-party patent disclosures is immaterial because Gillette concedes that the general concepts of designing razors using a front-loading engagement, a magnetic attachment, or an elastomeric pivot are not confidential to Gillette. In its prior decision, the Court noted that Gillette had made this concession during the summary judgment oral argument. It nonetheless went on to explain why the undisputed summary judgment record was consistent with Gillette’s concession. The Court discussed third-party patent disclosures only as part of its explanation of why it made sense for Gillette to concede that these three general design concepts were not confidential. Those parts of the Court’s decision played no other role in its analysis. More recently, during oral argument on Gillette’s motion for a report under Rule 64, Gillette expressly reiterated its concession that these general design concepts are not confidential as a matter of fact. It therefore does not matter whether the Court’s prior discussion of third-party patent disclosures was correct or incorrect as a matter of law.
As the Court explained in its prior summary judgment ruling, the ShaveLogic defendants were entitled to judgment in their favor as a matter of law because Gillette could not muster any evidence any evidence that ShaveLogic used any Gillette confidential information in developing any product. That prior ruling did not turn on any novel and difficult issue of law. It turned Gillette’s inability to any present evidence to support its claims.
Gillette reiterates its prior argument that the expert opinion of its expert witness, that misuse of Gillette confidential information gave ShaveLogic a head start in designing its razor, creates a triable jury question. That argument is still incorrect for the reasons that the Court discussed in its prior decision. Although Gillette’s expert opined that Defendants must have used Gillette confidential
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information to design ShaveLogic’s razors, he reached that conclusion based on his mistaken assumption that the general design concepts of front-loading engagements, magnetic attachments, and an elastomeric pivot or loop are confidential information that belong to Gillette. That assumption was incorrect, as Gillette again conceded during oral argument on its Rule 64 motion for a report.
In sum, since Gillette’s arguments regarding the legal significance of third-party patent disclosures are completely immaterial—in light of Gillette’s repeated concession that the concepts of front-loading engagements, magnetic attachments, and elastomeric pivots are not confidential—they provide no reason to report the summary judgment decision for interlocutory appellate review. See Globe Newspaper Co., 412 Mass. at 772-773 (discharging report because appeal from interlocutory decision would not dispose of central issue material to ultimate decision).
2. Obvious Combination of Disclosed Razor Design Features. The second issue that Gillette believes merits interlocutory appellate review concerns the Court’s prior ruling that, given the evidence that the ideas of designing a razor using a front-loading engagement with the razor cartridge or of attaching the cartridge to the handle at a single point were both well-known in the industry, it would have been obvious to anyone skilled in the art that one could combine the two concepts and design a front-end loading razor that attaches to the cartridge at a single point.
Gillette contends that the Court made an error of law because obviousness plays no part in whether information is confidential under Massachusetts law. It also contends that the Court made an error of fact because no record evidence demonstrated that such a combination was obvious. Neither of these contentions justifies interlocutory review of the summary judgment decision.
With respect to the first point, the principle that obvious concepts are not confidential does not raise any novel or difficult question of law that would merit interlocutory review. Obvious engineering or design concepts are not confidential information. See Dynamics Research Corp. v. Analytic Sciences Corp., 9 Mass. App. Ct. 254, 267 (1980) (concepts that would be obvious to an inertial guidance engineer were not protectable as trade secrets). Since obvious concepts are not confidential, obvious combinations of them are not confidential either. See Strategic Directions
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Grp., Inc. v. Bristol-Myers Squibb Co., 293 F.3d 1062, 1065 (8th Cir. 2002) (obvious combination of known elements not a trade secret); Julie Research Labs., Inc. v. Select Photographic Eng’g, Inc., 998 F.2d 65, 67 (2d Cir. 1993) (particular combination of design choices not a trade secret if “obvious, widely known, easy for others to discover legitimately, or disclosed” publicly by manufacturer).
With respect to the second point, the Court’s prior opinion was not as clear and precise as it should have been. The issue before the court was not whether the summary judgment record demonstrated that combining front-loading engagements and a single point of attachment was an obvious design option. Rather, the issue was whether Gillette could present any evidence that such a combination was not obvious.
This is not a patent infringement case, in which a defendant charged with infringement would have the burden of proving that a particular patent claim was obvious and thus not patentable. Instead, Gillette had the burden of proving its claims that Defendants misused Gillette’s confidential information, which includes the burden of proving that any concepts reflected in ShaveLogic’s razor designs would not have been obvious to someone skilled in the art.
As a result, Gillette’s failure to muster any evidence that a combination of the well-known concepts of front-loading engagements and single points of attachment was not obvious means that Defendants were entitled to summary judgment on that aspect of Gillette’s claims. See Kourouvacilis v. General Motors Corp., 410 Mass. 706, 715 (1991) (“If the nonmoving party cannot muster sufficient evidence to make out its claim, a trial would be useless and the moving party is entitled to summary judgment as a matter of law.” (quoting Celotex Corp. v. Catret, 477 U.S. 317, 328 (1986) (White, J., concurring)).
Plaintiff’s motion to report the recent summary judgment decision under Mass. R. Civ. P. 64 is DENIED.
June 9, 2017
Kenneth W. Salinger
Justice of the Superior Court

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