Iconics, Inc. v. Massaro, et al.

Filing 661

Judge Douglas P. Woodlock: MEMORANDUM ORDER entered denying #543 defendants' supplemental Motion summary judgment (Woodlock, Douglas)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

ICONICS, INC.
Plaintiff,
v.
SIMONE MASSARO,
CHRISTOPHER VOLPE, VENTO
INDUSTRIES, INC., BAXENERGY GmbH
And BAXENERGY ITALIA S.r.L.,
Defendants.

)
)
)
)
)
)
)
)
)
)
)
)

CIVIL ACTION NO.
11-11526-DPW

MEMORANDUM AND ORDER
July 19, 2017
Defendants Simone Massaro, BaxEnergy GmbH, Christopher
Volpe, BaxEnergy Italia, and Vento Industries have moved [Dkt.
No. 543] for summary judgment as to plaintiff Iconics’ trade
secret misappropriation claims.1
Iconics alleges that defendants misappropriated its trade
secrets in developing the Energy Studio Pro product.

To

establish misappropriation of trade secrets under Massachusetts
law, a plaintiff must show “1) the information is a trade

1

I denied Iconics’ motion for summary judgment and defendants’
motion for summary judgment as to other claims by Iconics in my
June 27, 2016 Memorandum and Order, but I reserved judgment on
the trade secret claims as I awaited further specifications of
the disputed secrets. Iconics, Inc. v. Massaro, 192
F. Supp. 3d 254, 262 (D. Mass. 2016). The relevant facts and
procedural history of this case are set forth in that Memorandum
and Order. Id. at 259-62.

secret; 2) the plaintiff took reasonable steps to preserve the
secrecy of the information; and 3) the defendant used improper
means, in breach of a confidential relationship, to acquire and
use the trade secret.”

Incase Inc. v. Timex Corp., 488 F.3d 46,

52 (1st Cir. 2007); see also J.T. Healy & Son, Inc. v. James A.
Murphy & Son, Inc., 260 N.E.2d 723, 730-32 (Mass. 1970).2

For

the core first element, Massachusetts defines a trade secret as
“any formula, pattern, device or compilation of information
which is used in one’s business, and which gives him an
opportunity to obtain an advantage over competitors who do not
know or use it.”

J.T. Healy & Son, Inc., 260 N.E.2d at 729

(citing Restatement (First) of Torts § 757, comment b).

But, as

the name suggests, a trade secret must be a secret; “[m]atters
of public knowledge or of general knowledge in an industry
cannot be appropriated by one as his secret.”

Id.

There are three asserted trade secrets remaining at issue
in this case; these relate to the core architecture, data
intake, and workflow.

In their motion for summary judgment,

2

Massachusetts has both a statute and a common law tort
concerning misappropriation of trade secrets, but the liability
analysis for both claims is “effectively the same.” Bruno Int’l
Ltd. v. Vicor Corp., No. CV 14-10037-DPW, 2015 WL 5447652, at
*11 (D. Mass. Sept. 16, 2015) (citing Incase Inc., 488 F.3d at
52 n.10 and Protégé Software Servs., Inc. v. Colameta, 30 Mass.
L. Rptr. 127, 2012 WL 3030268, at *11 n.25 (Mass. Super. Ct.
July 16, 2012)). Iconics does not press separate analyses and
appears to rely on the common law tort.
2

defendants open two lines of attack.

First, they argue that

they did not misappropriate Iconics’ asserted trade secrets.
Second, defendants argue that the asserted subjects are not in
fact trade secrets, either because Iconics publicly disclosed
them or because they involve the sort of public or general
knowledge beyond trade secret protection.
I consider the arguments concerning each of the asserted
trade secrets in turn.
I. CORE ARCHITECTURE
Iconics’ first asserted trade secret concerns its core
architecture.

In its Narrative Description of asserted trade

secrets, Iconics defines the core architecture trade secret as
“the presence and arrangement of” several specified components,
“the functionality of those components, and how they interact
with and relate to one another.”

The narrative description

provides a graphic representation of how Iconics implements the
core architecture trade secret and lists the eight components
that are a part of the implementation.

Iconics explains how its

core architecture “has been developed over a number of years”
and therefore “reflects innumerable small tradeoffs and
optimizations.”

According to Iconics, the core architecture

trade secret would be particularly useful to a software
developer in the early stages of development, because the new

3

developer could utilize these benefits without having to invest
the time and energy it took Iconics to realize them.
A.

Misappropriation
Iconics does not dispute that its core architecture trade

secret was publicly disclosed on April 9, 2009, when an earlier
Iconics patent application was published.

Atl. Research Mktg.

Sys., Inc. v. Troy, 659 F.3d 1345, 1357 (Fed. Cir. 2011)
(applying Massachusetts law and concluding “[t]hat which is
disclosed in a patent cannot be a trade secret”).

Iconics

claims, however, that Massaro misappropriated the core
architecture trade secret during the brief window of time
between his departure from Iconics in January 2009 and the
public disclosure on April 9, 2009.
Defendants argue that Iconics has presented no direct
evidence that Massaro worked on any code employing the core
architecture trade secret before April 9, 2009.

They note that

the earliest code potentially relevant to the asserted trade
secret was not checked in until February 2010.

Responding to

Iconics’ claim that Massaro’s company AnteaSoft may have written
some code incorporating three of the eight components of the
core architecture before April 2009, defendants assert that use
of three components would not qualify as misappropriation of the
trade secret.

Defendants contend the core architecture trade

secret must be viewed as all eight components and their
4

interrelations.

See American Airlines, Inc. v. KLM Royal Dutch

Airlines, Inc., 114 F.3d 108, 111-12 (8th Cir. 1997) (expert’s
testimony that “the specific combination of all five elements
constituted a trade secret” meant combination of fewer than five
elements would not constitute the trade secret).
In response, Iconics adduces evidence it contends indicates
that the full core architecture was misappropriated between
January 2009 and April 9, 2009.

It points to several

communications between Massaro and Mr. Bax in February 2009
regarding software Massaro was developing for Bax Wind Power,
including one email where Massaro stated he was working on the
“architectural overview” of the software.

Iconics also explains

that it cannot identify any relevant code developed before
February 2010 because defendants have failed to turn over any
code or early design documents from that time period.

Finally,

setting aside the question whether defendants misappropriated
before April, 9, 2009, Iconics’ expert Christian Hicks opines
that BaxEnergy employs the core architecture trade secret in
Energy Studio Pro, basing his conclusion on both BaxEnergy’s
source code and its technical design.

In their initial motion

for summary judgment, defendants by contrast cite the report of
their expert Arthur Zatarain, who concludes that BaxEnergy does
not employ the core architecture trade secret.

5

Drawing all inferences in Iconics’ favor, a reasonable jury
could find that defendants misappropriated the core architecture
trade secret before April 9, 2009.

Even if Iconics lacks direct

evidence in the source code showing misappropriation, a jury
could reasonably rely on the February 2009 communications to
support the view that Massaro had employed the core architecture
trade secret to structure the new software he was developing for
Bax Wind Power before April 9, 2009.

Data Gen. Corp. v. Grumman

Sys. Support Corp., 825 F. Supp. 340, 358-59 (D. Mass. 1993),
aff’d in relevant part, 36 F.3d 1147 (1st Cir. 1994) (jury
permitted to find trade secret misappropriation even if
plaintiff failed to identify the source code embodying the
alleged trade secret).3

That evidence, coupled with the Hicks

expert report, is sufficient to defeat defendants’ motion for
summary judgment on this claim.

The competing interpretations

of BaxEnergy’s architecture arrangements between Hicks and
Zatarain, as well as the rivaling views of the February 2009
communications, must be resolved by the jury at trial.
B.

Public Knowledge and Disclosure
Defendants reference two sets of materials that they assert

disclose the core architecture trade secret.

The first set

3

This is particularly true here, since Iconics claims that the
source code would show only the implementation of the core
architecture trade secret, not the trade secret itself.
6

comes from a 2008 presentation Iconics demonstrated at a
customer event and includes diagrams of the Genesis64
architecture.

Defendants assert that this presentation

discloses six or seven of the components in the core
architecture trade secret, as well as their relationships.

The

second set comes from an April 2008 release of Genesis 32
version 9.1, which has manuals and presentations that defendants
claim disclose every component of Iconics’ system.

Although

defendants concede that Iconics expert has raised two or three
distinctions between these 2008 materials and a diagram showing
the implementation of the core architecture trade secret, they
argue that these 2008 materials collectively disclose the core
architecture trade secret.
Iconics responds that its expert Hicks testified at his
deposition that none of these 2008 materials disclose the core
architecture trade secret and further notes that defendants fail
to explain how these documents disclose the core architecture
trade secret. Iconics asserts that even assuming these documents
disclose aspects of the core architecture trade secret
individually, defendants do not explain how these documents
could logically be combined to arrive at the complete core
architecture trade secret.

Sutra, Inc. v. Iceland Exp., No.

CIV.A. 04-11360-DPW, 2008 WL 2705580, at *4 (D. Mass. July 10,
2008) (“‘A trade secret can exist in a combination of
7

characteristics and components, each of which, by itself, is in
the public domain, but the unified process, design and operation
of which, in unique combination, affords a competitive advantage
and is a protectable secret.’”) (quoting Integrated Cash Mgmt.
Servs. v. Digital Transactions, Inc., 920 F.2d 171, 174 (2d Cir.
1990)).

In their reply brief, defendants provide no further

explanation of how the 2008 diagrams in combination disclose the
full core architecture and instead retreat to the conclusory
assertion that “the pictures don’t lie.”
Drawing all inferences in Iconics’ favor, a reasonable jury
could find that the assorted 2008 documents do not disclose the
core architecture trade secret.

In his deposition, Hicks

explained how the 2008 materials do not contain sufficient
technical information to disclose the core architecture trade
secret and also noted that the diagrams in these materials at
times conflict with each other.

Such reliable and grounded

expert opinion distinguishing customer-oriented mass-market
materials from the full technical details of the core
architecture trade secret is sufficient by itself to raise a
genuine dispute of material fact to defeat summary judgment.4

4

The Second Circuit, when presented with a substantially similar
issue, found that a “user-oriented description” of a software
product did not disclose the software’s architecture because
“[t]he defendants have not shown that the limited information
available in the promotional literature contains sufficient
technical detail to constitute disclosure of the product's
8

Based on defendants’ failure to explain adequately how the
documents can be read together, a reasonable jury could
independently find that the 2008 documents disclose only aspects
of the core architecture and not the full core architecture
trade secret.

Sutra, Inc., 2008 WL 2705580, at *4.

I therefore deny defendants’ motion for summary judgment as
to the core architecture trade secret.
II. DATA INTAKE
Iconics’ second asserted trade secret concerns data intake.
Iconics defines the data intake trade secret in its narrative to
be, in its simplest form, “a single component for unifying
various operations between a client application and an
application server for various types of local and remote data
sources.”

Iconics further specifies both the functions that the

component handles and the types of data sources covered by the
trade secret.

The component unifies “the requesting, releasing,

receiving updates, and writing values for” five identified data
sources: constant values, local aliases, local simulation, local
expressions, and remote OPC UA data.

architecture.” Integrated Cash Mgmt. Servs., Inc., 920 F.2d at
173-74. The court, citing expert testimony in the record,
credited a finding that the “specifications used by ICM to make
the parts of that package work together” were not in the public
domain. Id.
9

In an effort to explain its data intake secret in layman’s
terms, Iconics analogizes the design of data intake systems to
the design of a home theater system.

A home theater system

could be structured so that the various entertainment sources,
such as a DVD player, a satellite television feed, or a video
game console, are all connected directly to the television.
Under this design, a consumer would have to operate three
separate remotes, one for each entertainment source.
Alternatively, a home theater system could be structured so that
the entertainment sources connect to a central receiver, which
in turn passes the audio and video signals to the television.
Under this alternative design, a consumer could use a single
universal remote device to control all three entertainment
sources.

Such a design would be the simplest for the consumer,

but would require the system designer to create a component
capable of receiving not only data from all three entertainment
sources, but also input from the universal remote related to all
three entertainment sources.
Iconics claims its data intake secret acts like the central
receiver in the second home theater system design.

It explains

that Iconics’ DataClient, which is an implementation of its data
intake trade secret, allows a user to access and perform
operations on simulated data, OPC UA data, or the other types of
data sources asserted in the trade secret through the same
10

single component, just as the central receiver allows the
television viewer to access and perform operations on the data
from the DVD player, the satellite feed, or the video game
console.

Iconics asserts that the primary benefit of its data

intake secret is that it allows clients to customize the system
to fit their individual needs.
A.

Specificity of the Alleged Trade Secret
As a threshold matter, defendants seem to argue that

Iconics has failed to define its data intake trade secret with
adequate specificity.5

“‘A plaintiff has no cognizable trade

secret claim until it has adequately identified the specific
trade secrets that are at issue.’” Sutra, 2008 WL 2705580, at *4
(quoting Cambridge Internet Solutions v. Avicon Grp., No.991841, 1999 WL 959673, at *2 (Mass. Super. Ct. Sept. 21, 1999).
Although it can be “understandably difficult when describing
complex scientific concepts” to speak both clearly and with
particularity, Alnylam Pharm., Inc. v. Dicerna Pharm., Inc., No.
MICV20154126, 2016 WL 4063565, at *3 (Mass. Super. Ct. Apr. 6,
2016), a court should not have to “sift through technical data
to distill out a trade secret.”

TouchPoint Solutions, Inc. v.

5

Defendants raise this argument only obliquely and when they do,
it is for the most in regard to Iconics’ entire trade secret
claim rather than the data intake secret claim in particular. I
will, nevertheless, discuss specificity specifically in the
context of the alleged data intake trade secret.
11

Eastman Kodak Co., 345 F. Supp. 2d 23, 28 (D. Mass. 2004).
“[T]he plaintiff must be clear about what information is
protectable.”

Id.

Defendants argue that Iconics has altered its definition of
the data intake trade secret throughout this litigation.
Defendants claim that Iconics initially defined the data intake
trade secret as a client-side component that unifies operations,
similar to the definition Iconics posits in the narrative.

But,

defendants assert, after some discovery Iconics redefined its
data intake trade secret as a server-side component in order to
have the trade secret cover other elements of BaxEnergy’s
system.

Finally, defendants claim that Iconics attempted to

return to its client-side component definition after published
patent applications revealed these server components to be
publicly disclosed.
Discovery disputes such as this demonstrate why “[p]recise
identification of the alleged trade secrets is a crucial
component of trade secret litigation.”

Charles Tait Graves and

Brian D. Range, Identification of Trade Secret Claims in
Litigation: Solutions for a Ubiquitous Dispute, 5 NW. J. TECH. &
INTELL. PROP. 68, 68-69 (2006).

Otherwise, a trade secret

litigation plaintiff may “alter its list of trade secret claims
as the case proceeds,” leaving defendants “spend[ing] months

12

disproving one set of allegations only to face a new,
replacement set as the close of discovery nears.”

Id.

Defendants are correct that Iconics has failed at times in
this case to explain with precision what exactly the data intake
trade secret does and how it could be identified in either
Iconics’ products or BaxEnergy’s Energy Studio Pro.

However,

Iconics’ narrative description, provided in response to my June
27, 2016 order, Iconics, Inc., 192 F. Supp. 3d at 262,
sufficiently addresses these concerns, defining the data intake
trade secret both with technical specificity and “with clarity
that can be understood by a lay person.” Staffbridge, Inc. v.
Gary D. Nelson Assoc., Inc., No. 024912BLS, 2004 WL 1429935, at
*4 (Mass. Super. Ct. June 11, 2004).

Despite any earlier

difficulties, I find Iconics has now described its alleged data
intake trade secret with enough particularity for a reasonable
jury to identify whether it has a valid trade secret of this
kind.
B.

Misappropriation
Defendants argue that they did not misappropriate the data

intake trade secret, differentiating Energy Studio Pro’s design
from the trade secret in two ways.

First, defendants claim the

client-side component of Energy Studio Pro handles only a single
type of data, whereas the data intake trade secret unifies
operations on multiple types of data.
13

Second, they claim Energy

Studio Pro uses two separate components, one server-side
component and one client-side, whereas the data intake trade
secret uses a single component.

In response, Iconics asserts

that BaxEnergy’s client-side component, OPCDataClient, does in
fact unify data from the types of local and remote data sources
covered by the trade secret.

Iconics explains that even though

the data coming into OPCDataClient is expressed as a single data
type, this single data type represents information from various
sources.

Finally, Iconics points to the supplemental Hicks

report, where after analyzing the code of Iconics’ DataClient
and BaxEnergy’s OPCDataClient, he concludes that the
OPCDataClient employs the data intake trade secret.
Once again, drawing all inferences in Iconics’ favor, a
reasonable jury could find that defendants misappropriated the
data intake trade secret.

Based on the definition in the

narrative description, the key functionality of the data intake
trade secret is the unifying of operations into a single
component for various types of “data sources.” (emphasis added).
Even if, in Energy Studio Pro’s system, a separate server-side
component first translates the data arriving from the various
sources covered by the trade secret into a single data type, a
reasonable jury still could find that the OPCDataClient unifies
operations on that data into a single component.

That

distinction, along with the well-grounded conclusions of the
14

Hicks report, is sufficient to preclude summary judgment on this
claim.
C.

Public Knowledge and Disclosure
Defendants point to a wide range of materials that they

claim either publicly disclose the data intake trade secret or
render the data intake trade secret public or general knowledge
within their industry.
729.

J.T. Healy & Son, Inc., 260 N.E.2d at

Defendants first claim that the standardization efforts of

the group Windows for Science, Engineering, and Manufacturing
(WinSEM) disclose the data intake trade secret.

Defendants

admit, and Iconics emphasizes, that the WinSEM standards do not
address the types of data sources outlined in the trade secret.
But, defendants argue that because the WinSEM standards allow
for customization as to data types, they could be capable of
implementing the types of data sources in the trade secret.
Defendants’ argument is without merit.

The fact that

industry standards would allow a user to arrive at the trade
secret does not mean that the trade secret is disclosed, for as
previously discussed, a trade secret can be based in elements
“‘each of which, by itself, is in the public domain, but the
unified process, design and operation of which, in unique
combination, affords a competitive advantage and is a
protectable secret.’”

Sutra, Inc., 2008 WL 2705580, at *4

(quoting Integrated Cash Mgmt. Servs. 920 F.2d at 174).
15

Because

defendants merely speculate as to whether any other WinSEM user
came upon Iconics’ “unique combination,” I deny summary judgment
as to the WinSEM disclosures.
Similarly, defendants argue that a different industry
standard makes the data intake trade secret general knowledge.
The OPC Foundation, which sets standards in the automation
industry, has a component called the OPC Client that defendants
claim has the same functions as the data intake trade secret.
Defendants compare the three modules of the standard OPC Client
to the implementation of the data intake trade secret in
Iconics’ Data Client component and conclude that Data Client has
the same structure and allows for the same operations to be
performed.

Iconics responds that defendants did not show any

implementation of the standard OPC Client that supports the
various types of data sources in the trade secret.

Iconics also

asserts that the standard OPC Client cited by defendants shows a
component that interacts with only a single data source, rather
than the multiple types of data sources covered by the data
intake trade secret.

Finally, Iconics notes that its system

already contains a standard OPC Client, called DataWorX,
separate from its Data Client and that it would be redundant for
the system to have DataWorX and Data Client if they performed
the same function.

16

As with the defendants’ WinSEM disclosure argument, the OPC
standard argument is unavailing.

The types of data sources

described in the data intake trade secret are an essential part
of the trade secret.

In Atlantic Wool Combing Co. v. Norfolk

Mills, Inc., after the district court concluded that the
plaintiff’s device could not receive trade secret protection
because “(1) its essential mechanical concepts were already
embodied in another well-known machine that performed a not very
different function, and (2) the adaption of that familiar
machine . . . [was] a relatively simple undertaking for a
competent technician,” the First Circuit reversed.
866, 868 (1st Cir. 1966).

357 F.2d

The First Circuit stated that “[w]hat

some other skilled person could or might have done is not
controlling” in a trade secret case “so long as the plaintiff
did in fact design for its own exclusive use and withheld from
general knowledge a new and different machine.”

Id. at 869.

The improved design of the plaintiff’s new machine embodied the
“[c]ommercially valuable special knowledge which the plaintiff
developed through the exercise of skill and ingenuity, through
experimentation and through the expenditure of money and effort
over a period of time.”

Id.

Here, read in a light most favorable to Iconics, a
reasonable jury could conclude that Iconics’ Data Client, which
has the ability to interact with multiple specific types of data
17

sources rather than a single data source, constitutes a “new and
different machine” from the standard OPC Client and that Iconics
sought to withhold this design from general knowledge.

Atl.

Wool Combing Co., 357 F. 2d at 869; see also Diomed, Inc. v.
Vascular Sol., Inc., 417 F. Supp. 2d 137, 144 n.5 (D. Mass.
2006) (“[T]he standards of novelty or invention required for
patentability are higher than the standard of secrecy required
for trade secret.”) (emphasis in original).

Moreover, a

reasonable jury could conclude that the presence of DataWorX in
Iconics’ system further indicates that Data Client performs
additional functions beyond a standard OPC Client and that those
additional functions reflect the investment of time and
resources Iconics put into developing and honing its system.
Atl. Wool Combing Co., 357 F. 2d at 869.

I therefore deny

summary judgment as to the OPC Client disclosure.
Defendants next claim two Iconics programs disclose the
data intake trade secret.

Defendants assert that a programming

interface within Iconics DataWorX application, titled
AutoDwxRuntimeLib, is a public disclosure of the data intake
trade secret because AutoDwxRuntimeLib is a single component
that unifies the same operations listed in the trade secret.

In

response, Iconics points to deposition testimony by Hicks, where
he maintained that AutoDwxRuntimeLib does not disclose the data
intake trade secret because it does not provide data to a user
18

or client application.6

Iconics also attempts to distinguish the

operations available in AutoDwxRuntimeLib and the data intake
trade secret.

Defendants argue that nothing in Iconics’

original pleading of the data intake trade secret mentions that
the secret must involve providing data to a user or client
application.

Defendants may be correct as to some earlier

definition of the data intake trade secret.

Under the narrative

description, the clarified statement of Iconics’ trade secrets
that now governs this case, however, the simple definition of
the data intake secret is “a single component for unifying
various operations between a client application and an
application server for various types of local and remote data
sources.”

(emphasis added).

Drawing all inferences in Iconics’

favor, a reasonable jury could find that the data intake trade
secret necessarily involves a client or user application and
could therefore conclude that AutoDwxRuntimeLib does not
disclose the data intake trade secret.
Finally, defendants claim that Iconics’ product ActiveX
ToolWorX publicly discloses the data intake trade secret.
ActiveX ToolWorX allows users to create custom animated
graphics, link the animation to data, and use that animation in

6

 Hicks testified that AutoDwxRuntimeLib discloses “how to create

a piece of software to help configure a DataWorX server as
opposed to a user application for actually observing and
displaying data to users.”  
19

a client application, which defendants argue matches the
functionality of the data intake trade secret.

Iconics responds

that ActiveX ToolWorX is not capable of performing some of the
operations identified in the trade secret, explaining how a user
could not “release” data sources using ActiveX ToolWorX.
Iconics also points to testimony from its chief software
architect distinguishing between ActiveX ToolWorX and the data
intake trade secret.

In their reply brief, defendants claim

that some parts of ActiveX ToolWorX manual indicate that it can
in fact “release” data sources, but they also note that Hicks
would not concede that ActiveX ToolWorX had the capability to
perform a release operation.
There remains a genuine dispute of material fact over the
operational capabilities of ActiveX ToolWorX.

Reyes-Orta v.

Puerto Rico Highway and Transp. Authority, 811 F.3d 67, 73 (1st
Cir. 2016) (“A ‘genuine’ dispute exists when a jury can
reasonably interpret the evidence in the nonmovant’s favor.”).
If ActiveX ToolWorX cannot perform one of the key functions
identified in the data intake trade secret, it cannot disclose
the trade secret.

Atl. Wool Combing Co., 357 F. 2d at 869.

Reading the evidence in the light most favorable to Iconics, a
reasonable jury could rely on Iconics’ chief software architect
and the views of Hicks to conclude that ActiveX ToolWorX is

20

unable to release data and therefore does not disclose the data
intake trade secret.
For all the reasons discussed above, I will deny summary
judgment as to the data intake trade secret claims.
III. WORKFLOW
Iconics’ third asserted trade secret concerns workflow.

In

its narrative description, Iconics explains that a workflow is a
series of actions that takes place in response to an event, such
as an alarm sounding in response to a sudden failure of a wind
turbine.

The workflow trade secret does not cover the response

itself, but instead encompasses the process “by which workflows
are automatically initiated.”

For the workflow trade secret,

that automatic process involves:
the capability to dynamically provide key process
information as parameters to the transaction at transaction
invocation time by utilizing event information, which
triggers the specific transaction, to provide specific
parameters to the transaction and directly influence the
transaction’s workflow, accomplished via dedicated data
schema, dedicated event modeling and event propagation
techniques. (emphasis in original).
Iconics identifies the bolded text as the “key elements” of the
trade secret.

Using the workflow trade secret, a system can

determine when a triggering event occurs, what workflows should
respond to the event, and what information about the event
should be sent to the necessary workflows.

After defining the

workflow trade secret, Iconics separately lists the benefits of

21

the secret.

In that section, Iconics notes that one of its

primary benefits is its modularity, which allows for greater
customization of systems using the workflow trade secret.
A.

Misappropriation
Defendants’ misappropriation argument appears to be that

the workflow trade secret necessarily requires a multi-component
modular workflow system, while BaxEnergy’s system uses only a
single component.

According to defendants, if Iconics’ workflow

trade secret is broad enough to include both multi-component and
single component systems, then Iconics claims a monopoly over
all workflow design.

Iconics responds that the narrative

definition of the workflow trade secret does not require
modularity; the narrative mentions modularity only as a benefit
of the workflow trade secret.

Iconics goes on to argue that

defendants’ system is in fact a multi-component modular system.
In their reply brief, defendants claim, without citation to case
law, that if a system’s design does not realize the benefits of
a design protected as a trade secret, then as a matter of law
the system must be materially different from the trade secret.7
It may be that, read in a light most favorable to Iconics,
a reasonable jury could find that defendants’ workflow
implementation is a multi-component modular system.

But such a

7

For its part, Iconics states that it is not aware of any case
law supporting this method of defining trade secrets.
22

conclusion puts the cart before the horse, because defendants
seek to invert the proper trade secret analysis.

To return to

basic definitions, a trade secret is “any formula, pattern,
device or compilation of information which is used in one’s
business, and which gives him an opportunity to obtain an
advantage over competitors who do not know or use it.”
Healy & Son, Inc., 260 N.E.2d at 729.

J.T.

The advantage obtained

need not be substantial; “any advantage, however small or
ephemeral, is sufficient” to create a trade secret. Advanced
Micro Devices, Inc. v. Feldstein,  No. CV 13-40007-TSH, 2013 WL
10944934, at *8 (D. Mass. May 15, 2013).

If a misappropriator

uses a trade secret even to some small benefit, but fails to
implement it in a way that maximizes its value, it has still
misappropriated the secret.
Drawing all inferences in Iconics’ favor, a reasonable jury
could find that defendants used the workflow trade secret to
create its workflow system, but failed to implement the secret
in a way that realized one of its benefits.

Even if a jury were

to credit defendants’ argument that its system is not modular,
it could still conclude that defendants’ workflow system is
simply an inferior implementation of Iconics’ workflow trade
secret.

Such a conclusion would have additional support in the

first Hicks report, where he asserts that BaxEnergy’s system
employs features from the workflow trade secret that serve no
23

purpose in BaxEnergy’s system.

Although the dispute over

whether defendants employ a multiple-component or single
component system is likely sufficient to preclude summary
judgment, I find summary judgment equally inappropriate because
a reasonable jury could find that defendants misappropriated the
workflow trade secret but implemented it in an imperfect manner.
B.

Public Knowledge and Disclosure
Defendants raise two reasons why the workflow trade secret

is either public knowledge or has been publicly disclosed.

The

first is based upon defendants’ attempted redefinition of the
workflow trade secret to require modularity.

This argument is

unresponsive to Iconics’ actual definition of the workflow trade
secret, which mentions modularity only as a benefit of the trade
secret, and I will not grant summary judgment on this ground.
As to the second, defendants argue that Iconics claims a trade
secret over all queues in software.

Iconics responds that its

workflow trade secret is far narrower and covers only event
propagation techniques that involve interactions between a
trigger thread, trigger runtime, workflow/transaction manager,
and a central communication queue.

I find that Iconics has

presented a more specific definition of its workflow trade

24

secret than defendants hypothesize and I find no basis to grant
defendants’ motion for summary judgment on such grounds.8
IV. CONCLUSION
For the reasons discussed in greater detail above, I deny
defendants’ motion [Dkt. No. 543] for summary judgment as to
Iconics’ trade secret misappropriation claims.

/s/ Douglas P. Woodlock
DOUGLAS P. WOODLOCK
UNITED STATES DISTRICT

8

Because defendants’ invocation of the Jet Spray analysis is
based on these inaccurate definitions of Iconics’ workflow trade
secret, I do not find defendants’ reliance on that analysis
compelling.
25