Alifax Holding Spa v. Alcor Scientific Inc. et al

Filing 25

MEMORANDUM AND ORDER denying without prejudice 10 Defendants' Motion to Dismiss. So Ordered by Chief Judge William E. Smith on 9/28/2015. (Jackson, Ryan)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
___________________________________
)
)
ALIFAX HOLDING SPA; and SIRE
)
ANALYTICAL SYSTEMS SRL,
)
)
Plaintiffs,
)
)
v.
)
C.A. No. 14-440 S
)
ALCOR SCIENTIFIC, INC.; and
)
FRANCESCO A. FRAPPA,
)
)
Defendants.
)
___________________________________)
MEMORANDUM AND ORDER
WILLIAM E. SMITH, Chief Judge.
Plaintiff Alifax Holding SpA (“Alifax”) brought this action
against

Defendants,

Francesco

A.

Frappa

(“Frappa”),

a

former

employee of Sire Analytical Systems Srl (“Sire”) (a subsidiary
of Alifax), and Alcor Scientific, Inc. (“Alcor”), Frappa’s new
employer,

alleging

patent

infringement

(Count

One),

misappropriation of trade secrets (Count Two), and breach of a
confidential relationship (Count Three).
ECF No. 1.)
Federal

Rules

(Compl. ¶¶ 3-4, 59-74,

Defendants moved, pursuant to Rule 12(b)(6) of the
of

Civil

Procedure,

to

dismiss

Counts

Two

and

Three; Defendants have also moved, pursuant to Rule 12(f) of the
Federal Rules of Civil Procedure, to strike the component of
Alifax’s

prayer

for

relief

that

seeks

imposition

constructive trust in one of Alcor’s patents.

of

a

(ECF No. 10.)

After

holding

argument

on

Defendants’

motion,

the

Court

permitted Alifax to file an amended complaint to address a realparty-in-interest concern.

Alifax has since filed its amended

complaint, which adds Sire as a party plaintiff and asserts the
same three counts as Alifax’s original complaint. 1
Compl. ¶¶ 2, 54-75, ECF No. 20.)
also filed supplemental briefs.
In

ruling

on

(See Am.

Defendants and Plaintiffs have
(ECF Nos. 21-22.)

Defendants’

motion

to

dismiss

under

Rule

12(b)(6), the Court must view the complaint in the light most
favorable

to

Plaintiffs,

taking

all

well-pled

factual

allegations as true and affording Plaintiffs the benefit of all
reasonable inferences to be drawn from those allegations.

See

Schatz v. Republican State Leadership Comm., 669 F.3d 50, 55-56
(1st

Cir.

2012).

To

survive

a

Rule

12(b)(6)

motion,

the

complaint must plead a plausible entitlement to relief; in other
words, “a plaintiff must plead[ ] factual content that allows
the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged.”

Alex & Ani, LLC v. Elite

Level Consult., LLC, 31 F. Supp. 3d 365, 370-71 (D.R.I. 2014)
1

With the addition of Sire, it is unnecessary to consider
the primary argument voiced in Defendants’ motion: that Alifax
was not the real party in interest to assert claims arising from
Frappa’s conduct, an argument Defendants characterized as one
implicating considerations of standing. (See Defs.’ Mot. 8, 1011, ECF No. 10-1.)
As Frappa’s former employer, Sire is the
real party in interest (and plainly has standing) to assert
claims relating to Frappa’s alleged malfeasance during (and in
the immediate aftermath of) his employment with Sire.
2

(quoting Sanchez v. Pereira-Castillo, 590 F.3d 31, 48 (1st Cir.
2009)).
elements

On
of

the
a

other

cause

hand,

of

“[t]hreadbare

action,

statements, do not suffice.”

supported

recitals

by

mere

of

the

conclusory

Id. (quoting Ashcroft v. Iqbal,

556 U.S. 662, 678 (2009)).
I.

Count Three
Defendants first argue that the claim asserted in Count

Three – breach of a confidential relationship – is preempted by
the Rhode Island Uniform Trade Secrets Act (“RIUTSA”), see R.I.
Gen. Laws §§ 6-41-1 to 6-41-11, which forms the basis of the
claim asserted in Count Two (see Am. Compl. ¶¶ 60-69, ECF No.
20).

(See Defs.’ Mot. 16-17, ECF No. 10-1; Defs.’ Supplemental

Mem. 2, ECF No. 21.)

Defendants also assert that Count Three

fails because it is premised on Frappa’s conduct that occurred
after he left Sire’s employ.
10-1.)

(See Defs.’ Mot. 15-16, ECF No.

Finally, Defendants argue that Plaintiffs have not pled

sufficient facts to establish that either Frappa or Alcor owed a
duty of confidentiality to Alifax.

(See id. at 17-19; Defs.’

Supplemental Mem. 2-3, ECF No. 21.)
Although

these

arguments

might

eventually

meritorious, they cannot be accepted at this juncture.

prove
Each

rests on the premise that Rhode Island law applies to Count

3

Three. 2

(See

Supplemental

Defs.’

Mem.

1,

Mot.

ECF

No.

15-19,
21.)

ECF

No.

10-1;

Plaintiffs,

by

Defs.’

contrast,

assert that Italian law applies to Count Three and that, under
Italian law, the Amended Complaint states a cognizable claim for
breach of a confidential relationship.
14, ECF No. 15.)
issue

with

(See Pls.’ Opp’n 9-10,

At the hearing, Defendants appeared to take

Plaintiffs’

position

that

federal

law

applies

to

Count One, Rhode Island law applies to Count Two, and Italian
law applies to Count Three.
However,

Defendants’

assumption

that,

because

Count

Two

asserts a Rhode Island statutory claim, Rhode Island law must
also

apply

to

the

common

law

claim

asserted

in

Count

Three

overlooks “the principle of depecage.”

Putnam Res. v. Pateman,

958 F.2d 448, 464-65 (1st Cir. 1991).

As the First Circuit has

explained:
In legal parlance, depecage erects the framework under
which different issues in a single case, arising out
of a common nucleus of operative facts, may be decided
according to the substantive law of different states.
Although the Rhode Island Supreme Court has yet to
pledge
express
allegiance
to
the
principle
of
depecage, the court’s decisions make it clear that
Rhode Island, like most other jurisdictions, adheres
to the principle in the tort context.

2

Although the RIUTSA contains a preemption provision, it
displaces only “conflicting tort, restitutionary, and other law
of this state providing civil remedies for misappropriation of a
trade secret.” R.I. Gen. Laws § 6-41-7(a) (emphasis added).
4

Id. (citations omitted); see also La Plante v. Am. Honda Motor
Co., 27 F.3d 731, 741 (1st Cir. 1994); Oyola v. Burgos, 864 A.2d
624,

628

(R.I.

“questions

are

2005)

(explaining

issue-specific”);

that

conflict-of-laws

Restatement

(Second)

of

Conflict of Laws § 145 cmt. d (1971) (“Each issue is to receive
separate

consideration

if

it

is

one

which

would

be

resolved

differently under the local law rule of two or more of the
potentially interested states.”).
Therefore, the substantive law applicable to Count Three
cannot

be

automatically

inferred

from

the

substantive

law

applicable to Count Two; instead, to determine the law governing
Count

Three,

the

Court

must

conduct

Island’s choice-of-law framework.
adequately

briefed

or

argued

respect to Count Three.
framework

and

the

an

analysis

under

Rhode

However, the parties have not

the

choice-of-law

issues

with

A brief examination of the governing

facts

alleged

in

the

Amended

Complaint

demonstrates that the requisite analysis cannot be conducted at
this time.
Rhode

Island’s

interest-weighing

analysis,

see

Magnum

Defense, Inc. v. Harbour Grp. Ltd., 248 F. Supp. 2d 64, 69
(D.R.I.

2003),

entails

close

examination

of

“the

particular . . . facts” to “determine therefrom the rights and
liabilities of the parties in accordance with the law of the
state that bears the most significant relationship to the events
5

and parties.”

Harodite Indus., Inc. v. Warren Elec. Corp., 24

A.3d 514, 534 (R.I. 2011) (quoting Cribb v. Augustyn, 696 A.2d
285, 288 (R.I. 1997)).
jurisdiction,

a

In order to identify the appropriate

court

must

examine

several

“policy

considerations,” 3 as well as additional, tort-specific factors:
(1) the place where the injury occurred; (2) the place where the
conduct

causing

“residence,
business

the

injury

nationality,

of

relationship,

the
if

place

parties”;
any,

occurred;
of

the

incorporation

and

between

(3)

(4)

the

the

parties

and

place
is

domicile,
place
where

centered.

of
the
Id.

(quoting Brown v. Church of Holy Name of Jesus, 252 A.2d 176,
179 (R.I. 1969)).
The

facts

reasonable

alleged

inferences

to

in

the

be

Amended

drawn

Complaint

therefrom)

do

strongly towards either Rhode Island or Italian law.

(and
not

the
point

On the one

hand, Plaintiffs are Italian companies, Frappa worked for Sire
in Italy, and he now works for Alcor in Italy.
¶¶ 1-3, ECF No. 20.)
these

allegations

(See Am. Compl.

A permissible inference to be drawn from
is

that

Frappa

confidential information in Italy.

3

obtained

Plaintiffs’

On the other hand, however,

The policy considerations are: (1) predictability of
results; (2) maintenance of interstate and international order;
(3) simplification of the judicial task; (4) advancement of the
forum’s governmental interests; and (5) application of the
better rule of law.
See Harodite Indus., Inc. v. Warren Elec.
Corp., 24 A.3d 514, 534 (R.I. 2011).
6

Alcor

is

Amended

a

Rhode

Complaint

breached

his

Island
does

corporation

not

fiduciary

allege

duty

to

(id.

the

¶

location

Plaintiffs

confidential information to Alcor.

at

by

4),

and

where

the

Frappa

disclosing

the

Cf. Magnum Defense, 248 F.

Supp. 2d at 69 (“In a misappropriation of trade secrets case
such as the present one, the defendants’ wrongful conduct is
said to take place where the defendants misused the plaintiff’s
confidential

information

for

their

benefit.”

(quoting

Scully

Signal Co. v. Joyal, 881 F. Supp. 727, 742 (D.R.I. 1995))).
Thus,

at

this

early

juncture

and

with

the

absence

of

adequate choice-of-law briefing from the parties, the Court is
unwilling to determine what law applies to Count Three.

Because

Defendants’ arguments for dismissal of that count all rely on
the assumption that Rhode Island law governs, Defendants’ motion
is denied with respect to that count.

See In re Volkswagen &

Audi Warranty Extension Litig., 692 F.3d 4, 8 n.2 (1st Cir.
2012)

(district

premised

on

a

court

denied

choice-of-law

a

motion

issue

to

dismiss

because

that

that

was

issue

was

premature until some discovery occurred); Walker v. Unum Life
Ins.

Co.

(similar).

of

Am.,

530

F.

Supp.

2d

351,

354

(D.

Me.

2008)

Rather, the issue of what law applies to Count Three

would be more suitably addressed at the summary judgment stage,
once the parties have had a full opportunity to develop the
record.
7

II.

Count Two
With respect to Count Two, Defendants argue that Plaintiffs

have

failed

to

identify

any

protectable

sufficiently allege misappropriation.
No. 10-1.)

trade

secrets

or

to

(Defs.’ Mot. 12-15, ECF

Neither argument has merit.

Under the RIUTSA, a

“trade secret” is
information . . . that: (i) [d]erives independent
economic value, actual or potential, from not being
generally
known
to,
and
not
being
readily
ascertainable by proper means by, other persons who
can obtain economic value from its disclosure or use;
and (ii) [i]s the subject of efforts that are
reasonable under the circumstances to maintain its
secrecy.
R.I. Gen. Laws § 6-41-1(4).

The Amended Complaint identifies

two groups of Plaintiffs’ trade secrets: information relating to
a project known as “Mecca”; and information relating to the use
of ultrasound waves to disrupt and redistribute red-blood cells.
(See Am. Compl. ¶¶ 25-31, ECF No. 20.)

Defendants point out

that the Mecca project was made public in Alifax’s patent filing
(Defs.’ Mot. 12, ECF No. 10-1), which Defendants have attached
as Exhibit C to their motion.

(ECF No. 10-4.)

patent filing is dated February 6, 2014.

However, the

(Id. at 2.)

The

Amended Complaint alleges that information relating to the Mecca
project remained confidential until that patent filing.
Compl.

¶

30,

ECF

September 1, 2011.

No.

20.)

Frappa

(Id. at ¶ 8.)

8

left

Sire’s

(Am.

employ

on

Therefore, according to the

Amended

Complaint,

the

information

was

“not

. . .

generally

known to, and not . . . readily ascertainable by proper means
by, other persons.” 4

R.I. Gen. Laws § 6-41-1(4)(i).

Defendants also argue that Plaintiffs failed to allege that
the identified trade secrets were “the subject of efforts that
are reasonable under the circumstances to maintain its secrecy.”
R.I. Gen. Laws § 6-41-1(4)(ii).

(See Defs.’ Mot. 13, ECF No.

10-1; Defs.’ Reply 9-10, ECF No. 16; Defs.’ Supplemental Mem. 34, ECF No. 21.)

However, the Amended Complaint alleges that

“[c]ommunications, such as email messages and product drawings,
stipulated

that

the

information

confidential company information.”

contained

in

them

was

(Am. Compl. ¶ 38, ECF No.

20.)
With no citation to authority, Defendants contend that, as
a matter of law, marking communications as confidential cannot
alone constitute reasonable steps to maintain secrecy.

(Defs.’

Mot. 13, ECF No. 10-1; Defs.’ Reply 9-10, ECF No. 16.)

Because

Defendants wholly abdicated their responsibility to adequately
4

At oral argument, Defendants took a somewhat different
tack. Noting that the Complaint alleges that the Mecca project
was briefly suspended after Frappa left Sire’s employment and
then restarted and completed after he left, Defendants argue
that the CPS technology that resulted from the Mecca project did
not exist prior to Frappa’s departure from Sire. Although this
may be one plausible reading of the Complaint, it is not a
reading that the Court can accept at this juncture.
A
reasonable inference that can (and, at this stage, must) be
drawn from the allegations in the Amended Complaint is that
Frappa knew of the CPS technology of the Mecca project.
9

develop this argument, it is not worthy of consideration. 5
United

States

v.

Zannino,

895

F.2d

1,

17

(1st

Cir.

See
1990)

(“[I]ssues adverted to in a perfunctory manner, unaccompanied by
some effort at developed argumentation, are deemed waived.

It

is not enough merely to mention a possible argument in the most
skeletal way, leaving the court to do counsel’s work, create the
ossature for the argument, and put flesh on its bones . . . .
Judges

are

not

expected

to

be

mindreaders.

Consequently,

a

litigant has an obligation to spell out its arguments squarely
and

distinctly,

quotations

or

forever

omitted)).

hold

its

Parenthetically,

peace.”
the

(citations

Court

notes

and
that

Defendants’ unsupported argument that, as a rule of law, marking
documents as confidential cannot qualify as reasonable efforts
to maintain secrecy appears inconsistent with the RIUTSA, which
requires

an

assessment

of

whether

the

“reasonable under the circumstances.”
1(4)(ii) (emphasis added).

efforts

employed

were

R.I. Gen. Laws § 6-41-

In their supplemental memorandum,

Defendants argue that Sire waived its trade secret protection
with respect to the information by sharing it with Alifax, its
corporate parent.

(See Defs.’ Supplemental Mem. 4, ECF No. 21.)

5

Curiously, Defendants chastise Plaintiffs in their Reply
for failing to cite “any case law where marking documents as
‘confidential’ was alone sufficient.” (Defs.’ Reply 10, ECF No.
16.)
Defendants have it backwards.
It is not Plaintiffs’
obligation (or the obligation of this Court, for that matter) to
unearth cases that contradict an argument for which no legal
authority has been cited in support.
10

However, this argument is unaccompanied by a single citation to
authority to support it, and, for this reason, the Court will
not

consider

it.

See

Zannino,

895

F.2d

at

17.

For

these

reasons, the Amended Complaint identifies trade secrets under
the RIUTSA.
Defendants’

argument

that

Plaintiffs

failed

to

allege

misappropriation of trade secrets (Defs.’ Mot. 13-15, ECF No.
10-1) fares no better.

Under the RIUTSA, “misappropriation”

means:
(i) Acquisition of a trade secret of another by a
person who knows or has reason to know that the trade
secret was acquired by improper means; or
(ii) Disclosure or use of a trade secret of another
without express or implied consent by a person who:
(A) Used improper means to acquire knowledge of the
trade secret; or
(B) At the time of disclosure or use, knew or had
reason to know, that his or her knowledge of the trade
secret was:
(I) Derived from or through a person who had utilized
improper means to acquire it;
(II) Acquired under circumstances giving rise to a
duty to maintain its secrecy or limit its use; or
(III) Derived from or through a person who owed a duty
to the person seeking relief to maintain its secrecy
or limit its use; or
(C) Before a material change of his or her position,
knew or had reason to know, that it was a trade secret
and that knowledge of it had been acquired by accident
or mistake.
R.I. Gen. Laws § 6-41-1(2).
to

“include[

inducement

of

]

theft,
a

breach

The RIUTSA defines “improper means”

bribery,
of

a

misrepresentation,

duty

11

to

maintain

breach

or

secrecy,

or

espionage through electronic or other means.”

R.I. Gen. Laws

§ 6-41-1(1).
Before the Amended Complaint was filed, Defendants argued
that the Complaint does not identify the “improper means” used
by Defendants and, to the extent that the improper means are
premised on Frappa’s breach of a duty to Alifax to maintain the
secrecy of the trade secrets, see id. § 6-41-1(1), “it cannot
reasonably be inferred from the Complaint that Frappa owed any
contractual, statutory[,] or common law duty to Alifax” because
Frappa was employed by Sire and not Alifax.
14-15, ECF No. 10-1.)

(See Defs.’ Mot.

With the Amended Complaint’s addition of

Sire as a party plaintiff, this argument is no longer a ground
for dismissing Count Two, at least as to Sire.
¶ 33, ECF No. 20.)

(See Am. Compl.

Moreover, even if Defendants still assert

this argument with respect to Alifax (or Sire, for that matter),
Count Two should not be dismissed on this ground.
Under Rhode Island law, 6 “a fiduciary relationship arises
when

one

party

‘rightfully

reposes

trust

and

confidence’

in

another.”

T.G. Plastics Trading Co. v. Toray Plastics (Am.),

Inc.,

F.

958

Supp.

2d

315,

327

(D.R.I.

2013)

(quoting

A.

Teixeira & Co. v. Teixeira, 699 A.2d 1383, 1387 (R.I. 1997)).
6

For present purposes, this Court assumes, without
deciding, that Rhode Island law applies to the issue of whether
Frappa owed a duty to Alifax for purposes of the RIUTSA claim
asserted in Count Two.
But cf. supra Part I (discussion of
depecage).
12

Determining

whether

such

a

relationship

exists

“is

a

fact-

intensive inquiry,” A. Teixeira, 699 A.2d at 1387, and “[t]here
are

no

hard

and

fast

rules

about

when

a

confidential

relationship will be found,” Fleet Nat’l Bank v. Liuzzo, 766 F.
Supp. 61, 68 (D.R.I. 1991) (quoting Simpson v. Dailey, 496 A.2d
126, 129 (R.I. 1985)).

“The court may consider a variety of

factors, including the reliance of one party upon the other, the
relationship of the parties prior to the incidents complained
of, the relative business capacities or lack thereof between the
parties, and the readiness of one party to follow the other's
guidance in complicated transactions.”

Liuzzo, 766 F. Supp. at

68 (quoting Simpson, 496 A.2d at 129).

An employer can assert a

breach-of-fiduciary-duty
circumstances.

claim

against

an

employee

in

some

See Long v. Atlantic PBS, Inc., 681 A.2d 249,

252-53 (R.I. 1996); cf. Cahill v. Antonelli, 390 A.2d 936, 939
(R.I. 1978) (“The existence of an agency supports the finding
that a confidential relationship was established between brother
and sister, as an agent always stands in the position of a
fiduciary

to

his

principal.”).

If

the

person

owing

the

fiduciary duty discloses confidential information of the person
to whom (or entity to which) the duty is owed, the duty may be
breached.

See Liuzzo, 766 F. Supp. at 68-69.

In this case, the Complaint alleges enough to establish, at
this stage, that Frappa acquired the confidential information
13

under circumstances giving rise to a duty to Sire and Alifax to
maintain

its

secrecy

or

limit

its

use.

During

Frappa’s

employment with Sire, he was “intimately involved” in the design
and development of Plaintiffs’ ESR analyzers and was provided
access to all of the Plaintiffs’ proprietary, confidential, and
trade-secret

information

relating

to

the

ESR

analyzers,

including information relating to the Mecca project and the use
of ultrasound waves.
20.)

(Am. Compl. ¶¶ 24-25, 27-28, 31, ECF No.

Plaintiffs

information

as

confidential

took

such,

intensive

nature

sufficient,
fiduciary

and

information

persons or entities.

at

duty

to

its
was

to

mark

employees
not

to

this

the

be

stage,
protect

inquiry,
to

shared

these

establish

Plaintiffs’

confidential

understood

(See id. at ¶¶ 35, 38.)

of

this

steps

with

this

outside

Given the factallegations

that

trade

that

Frappa
secrets,

are

owed

a

either

because Plaintiffs “‘rightfully repose[d] trust and confidence’
in [Frappa],” T.G. Plastics, 958 F. Supp. at 327 (quoting A.
Teixeira, 699 A.2d at 1387), or because Frappa was Plaintiffs’
agent, see Cahill, 390 A.2d at 939.
Defendants next contend that the Amended Complaint “never
ties any particular trade secret to any use or disclosure by
Frappa or Alcor” and that “nowhere in the Complaint does Alifax
contend that either purported ‘trade secret’ was incorporated
into any product sold by Alcor.”
14

(Defs.’ Mot. 14, ECF No. 10-

1.)
use

But the RIUTSA does not require that the misappropriator
or

disclose

product.

the

trade

secret

or

incorporate

it

into

Rather, acquisition of a trade secret, with knowledge

that it was acquired by improper means, is sufficient.
Gen.

a

Laws

§

6-41-1(2)(i).

Moreover,

even

though

it

R.I.
is

not

required to do so, the Amended Complaint does allege that both
trade

secrets

were

used

by

Defendants;

the

Mecca

project

information was used in Alcor’s development of a competing ESR
analyzer, and the ultrasound information was used in Alcor’s
patent.

(Am. Compl. ¶¶ 45-47, ECF No. 20.)

Defendants also argue that, beyond a conclusory allegation
that Alcor knew or had reason to know that Frappa acquired the
information by improper means, there is no allegation in the
Amended

Complaint

knowledge.

establishing

that

Alcor

had

(Defs.’ Mot. 13-15, ECF No. 10-1.)

meritless.

Plaintiffs

have

sufficiently

the

requisite

This argument is

alleged

that

Frappa

owed Plaintiffs a duty to maintain secrecy; that Frappa joined
Alcor immediately after his resignation from Sire; and that,
within a year of Frappa’s departure, Alcor put out a competing
ESR analyzer and, shortly thereafter, filed an application for a
patent

that

incorporated

Plaintiffs’

ultrasound

(See Am. Compl. ¶¶ 43-47, ECF No. 20.)
case,

it

is

a

reasonable

inference

information.

At this stage of this

from

the

facts

alleged,

including the short turn-around time of Alcor’s ESR analyzer and
15

the absence of competing ESR analyzers prior to Alcor’s, that
Alcor

knew

or

should

have

known

that

disclosing Plaintiffs’ trade secrets.

Frappa

was

improperly

Cf. Astro-Med, Inc. v.

Nihon Kohden Am., Inc., 591 F.3d 1, 19 (1st Cir. 2009) (“Viewing
the evidence in the light most favorable to the verdict, it is a
logical inference that a competitor who hires away a rival’s
valued employee with access to inside information has done so in
order to use that inside information to compete with the rival,
and it is an equally logical inference that once Plant became a
Nihon Kohden employee, he sought to justify its hiring decision
by

revealing

and

using

the

information

Nihon

Kohden

had

bargained for.”).
For these reasons, Defendants’ motion to dismiss Count Two
for failure to state a claim is denied.
III. Constructive Trust
Finally,

Defendants

argue

that

this

Court

should

strike

Plaintiffs’ request for a constructive trust in Alcor’s patent
because there is no authority for such a remedy.
19-21, ECF No. 10-1.)

(Defs.’ Mot.

Under Rhode Island law, “[t]he underlying

principle of a constructive trust is the equitable prevention of
unjust enrichment of one party at the expense of another in
situations
fraud

or

in
in

relationship.”

which

legal

title

violation

of

Connor

Schlemmer,

v.

a

to

16

property

fiduciary
996

was

obtained

or

confidential

A.2d

98,

109

by

(R.I.

2010) (quoting Dellagrotta v. Dellagrotta, 873 A.2d 101, 111
(R.I.

2005)).

“To

demonstrate

that

the

imposition

of

a

constructive trust is appropriate, ‘a plaintiff is required to
show by clear and convincing evidence (1) that a fiduciary duty
existed between the parties and (2) that either a breach of a
promise or an act involving fraud occurred as a result of that
relationship.’”

Id. (quoting Manchester v. Pereira, 926 A.2d

1005, 1013 (R.I. 2007)).
Defendants
imposition

of

assert
a

that

there

constructive

is

trust

(Defs.’ Mot. 20, ECF No. 10-1.)

no
in

case
these

law

supporting

circumstances.

However, in Bausch & Lomb, Inc.

v. Alcon Labs., Inc., 64 F. Supp. 2d 233, 245 (W.D.N.Y. 1999),
Alcon’s former employee was exposed to confidential information
during his employment with Alcon, left to take a position with
Bausch & Lomb, and disclosed this information to Bausch & Lomb.
Alcon alleged that Bausch & Lomb “made use of this information
in obtaining [a particular] patent.”

Id.

Alcon brought claims

for misappropriation of trade secrets and unfair competition,
and it sought a constructive trust in Bausch & Lomb’s patent.
Id.

Bausch & Lomb moved for summary judgment with respect to

Alcon’s constructive-trust claim.

Id.

The court denied the

motion, finding that Alcon had sufficient evidence to withstand
summary judgment for a constructive trust under New York law,

17

which

is

similar

to

constructive trusts.

Rhode

Island

law

on

the

elements

of

See id. at 251-54.

Although the facts of this case and Bausch & Lomb might not
be

identical,

there

are

enough

similarities

between

the

two

cases that, if Alcon could withstand summary judgment in Bausch
& Lomb, Plaintiffs can withstand Defendants’ motion to strike at
the pleadings stage.
IV.

Conclusion
For these reasons, Defendants’ motion to dismiss Counts Two

and

Three

and

to

strike

the

request

for

constructive trust is DENIED WITHOUT PREJUDICE.

IT IS SO ORDERED.

William E. Smith
Chief Judge
Date: September 28, 2015

18

imposition

of

a