United States District Court, D. Massachusetts
MEMORANDUM & ORDER
NATHANIEL M. GORTON, UNITED STATES DISTRICT JUDGE
present dispute arises from the outcome of a nine-day jury
trial involving the claims of Covidien LP and Covidien
Holding Inc. (collectively, “Covidien” or
“plaintiff”) against Brady Esch
(“defendant” or “Esch”),
Covidien's former employee. Pending before the Court is
the motion of Covidien for entry of judgment, declaratory
judgment, other post-trial relief and a permanent injunction
(Docket No. 333).
late stage of litigation, both the parties and the Court are
well acquainted with the facts. As a result, the Court
provides only an abbreviated factual summary before
proceeding to the merits of the pending post-trial dispute.
Esch, a highly-compensated, global marketing director, began
working for Covidien in 2009, when it acquired his employer
at the time, VNUS Technologies. In December, 2009, Esch
entered into a “Non-Competition, Non-Solicitation, and
Confidentiality Agreement” (“the Employment
Agreement”) with Covidien. Following his termination in
2013, Esch signed a “Separation of Employment Agreement
and General Release” (“the Separation
Agreement”) which reaffirmed certain provisions of the
February, 2014, Esch commissioned the incorporation of
Venclose Inc., which was to become a direct competitor to
Covidien. One month later, he filed Provisional Patent
Application No. 61/970, 498 (“the ‘498 Patent
Application”) which describes the design, technology
and improvement to venous RF ablation devices. In 2015, Esch
filed Utility Patent Application No. 14/670, 338 (“the
‘338 Patent Application”) and a Foreign PCT
Application (“the PCT Patent Application”)
(collectively, “the Patent Applications”).
January, 2017, this Court issued a preliminary injunction in
favor of Covidien enjoining Esch and his agents, etc. from
making, developing, manufacturing or selling products that
disclose or use any confidential information from Covidien.
2019, the judicial officer assigned to this session of the
Court presided over a nine-day jury trial on Covidien's
claims that Esch breached the Employment and Separation
Agreements by 1) failing to disclose to Covidien
“Inventions” reflected in the Patent
Applications, 2) disclosing Covidien's confidential
information in the Patent Applications and 3) breaching his
covenant of good faith and fair dealing.
jury returned a verdict for Covidien on its breach of
confidentiality claims under the Employment and Separation
Agreements and awarded Covidien $794, 892.24 in damages. The
jury also found, however, that Esch breached neither his
obligation to disclose “Inventions” to Covidien
nor his covenant of good faith and fair dealing.
The Verdict Form
Verdict Form submitted to the jury posed eight questions
(Docket No. 316). Questions 1 and 2, and subparts 1A and 2A,
asked the jury whether Esch breached his confidentiality
obligations to Covidien under the Employment Agreement and
the Separation Agreement, respectively and, if so, whether
Covidien had proven damages resulting from such breach. The
jury answered Questions 1, 1A, 2 and 2A affirmatively.
3 asked the jury whether Esch breached his obligation to
disclose “Inventions” to Covidien under the
Employment Agreement and it answered in the negative.
Pursuant to the instruction following Question 3, the jury
did not answer Question 3A regarding damages for failing to
disclose “Inventions” and proceeded to Question
4. The jury answered Question 4 in the negative, i.e., that
Esch did not breach the implied covenant of good faith and
fair dealing. The jury awarded breach of contract damages to
Covidien in response to Question 5 after which there was the
If you answer [Question] 3A “YES”, proceed to
Question 6. Otherwise, your deliberations are complete.
not answered Question 3A “Yes”, the jury left the
remaining questions, Questions 6, 7 and 8, unanswered.
6, 7 and 8, which were to be considered if the jury answered
Question 3A in the affirmative, asked the jury to determine
whether Esch took steps to reduce to practice any
“Inventions” in the Patent Applications. The
failure of the jury to answer those questions forms the
substance of the current dispute.
Jury Charge Conference, Covidien did not object to the
proposed wording of the Verdict Form. On the following
morning, before the jury charge, Covidien did, however, file
a written objection to the Verdict Form, requesting an
alternative structure of the first five questions (Docket No.
311). In that objection, Covidien did not mention Questions
6, 7 and 8 but now argues that its proposed revision to the
first five questions would have directed the jury to answer
those questions regardless of its previous answers.
also points out that 1) after the jury charge but before the
jury was sent to deliberate, its counsel requested the Court
to instruct the jury to answer Questions 6, 7 and 8
regardless of any previous answers and 2) it objected once
more after the verdict was returned but before the jury was
discharged and requested again that the Court instruct the
jury to continue deliberations and to answer Questions 6, 7
Motion for Entry of Judgment, Declaratory Judgment, Other
Post-Trial Relief and a Preliminary Injunction
seeks the following remedies: 1) entry of judgment on its
claims against Esch for breach of confidentiality under the
Employment Agreement and the Separation Agreement; 2)
declaratory judgment that Esch be required to assign any
Invention reflected in the Patent Applications to Covidien;
3) prejudgment interest, post-judgment interest, costs and
attorneys' fees; and 4) a permanent injunction barring
Esch from continuing to use or disclose Covidien's
responds that Covidien's motion is not only procedurally
improper but also requests relief to which Covidien is not
entitled. Esch does not object to entry of judgment on
Covidien's breach of confidentiality claims under both
the Employment and Separation Agreements and the
corresponding damages awarded by the jury.
claims that Covidien's motion is procedurally improper
because it seeks judgment on matters outside the scope of the
jury's verdict or, in the alternative, attempts to raise