Fleet Engineers, Inc. v. Mudguard Technologies, LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FLEET ENGINEERS, INC.,
Plaintiff-Appellee
v.
MUDGUARD TECHNOLOGIES, LLC,
Defendant
TARUN SURTI,
Defendant-Appellant
______________________
2018-2351
______________________
Appeal from the United States District Court for the
Western District of Michigan in No. 1:12-cv-01143-PLM,
Chief Judge Paul L. Maloney.
______________________
Decided: February 25, 2019
______________________
G EORGE T HOMAS WILLIAMS , III, McGarry Bair PC,
Grand Rapids, MI, for plaintiff-appellee.
T ARUN S URTI, Brentwood, TN, pro se.
______________________
Before L OURIE, BRYSON, and MOORE, Circuit Judges.

-- 1 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 2
P ER CURIAM .
Tarun Surti appeals from a decision of the U.S. District
Court for the Western District of Michigan granting sum-
mary judgment in favor of Fleet Engineers, Inc. on his
claims of infringement of U.S. Patent No. RE44,755, breach
of contract, and misappropriation of trade secrets. We hold
that the district court properly granted summary judgment
as to the breach of contract and misappropriation of trade
secrets claims. We vacate the grant of summary judgment
of noninfringement and remand for further proceedings.
BACKGROUND
Mr. Surti is the inventor and owner of the RE’755 pa-
tent and the president of Mudguard Technologies. The
RE’755 patent relates to “a mud flap for preventing spray
from the wheel of a vehicle on a wet roadway from impair-
ing the vision of drivers of other vehicles.” RE’755 patent
at 1:12–15. According to the specification, the invention
“separates air, water and road debris thrown up by a tire
or wheel and directs the water and debris to the ground
while allowing the air to pass through the air outlets.” Id.
at 4:19–22. Claim 1 of the RE’755 patent recites (emphasis
added):
1. A mudflap for preventing spray from a wheel of
a vehicle on a wet roadway from impairing the vi-
sion of drivers of other vehicles, comprising a verti-
cally extending flap which is mounted to the rear of
the wheel with a front side of the flap facing the
wheel and a rear side facing away from the wheel,
a plurality of laterally spaced, vertically extending
vanes defining a plurality of vertically extending
channels on the front side of the flap for directing
water and debris from the wheel in a downward di-
rection toward the ground and not to the rear or
sides of the flap, and vertically extending slotted
openings in the channels of a size permitting air to

-- 2 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 3
pass through the openings to the rear of the flap
and preventing water and debris from doing so.
Fleet develops, manufactures, and sells after-market
products for the trucking industry. In July 2010, Mud-
guard and Fleet entered into a “Distributor Agreement” for
Mr. Surti’s mud flap, the V-Flap, shown below. J.A. 312,
500.
J.A. 435. A few months later, the Distributor Agreement
was terminated. In February 2012, Fleet introduced its
own mud flap, the AeroFlap. There are three different con-
figurations of the AeroFlap, shown below.
J.A. 444.
In April 2012, U.S. Patent No. 8,146,949 issued with
Mr. Surti as the sole named inventor and owner. In June,
Mr. Surti sent Fleet a letter through counsel asserting that
the AeroFlap infringed claims of the ’949 patent. Mr. Surti
also informed some of Fleet’s customers that the AeroFlap
was an infringing product.
In October 2012, Fleet sought a declaratory judgment
of noninfringement and invalidity and asserted a state-law

-- 3 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 4
claim for tortious interference with business relationships.
Mr. Surti, proceeding pro se, counterclaimed for patent in-
fringement, breach of contract, and misappropriation of
trade secrets. During the early stages of litigation,
Mr. Surti indicated in his Statement of Claims Infringed
and Infringing Products that he was asserting claims 1–2,
5, 8–9, and 13 of the ’949 patent, but he expressly reserved
the right to supplement the disclosures in that Statement.
A couple weeks prior, Mr. Surti filed for a reissuance of the
’949 patent, which reissued as the RE’755 patent on Feb-
ruary 11, 2014. The RE’755 patent did not alter the origi-
nally issued claims 1–17, but added claims 18–25. Fleet
amended its pleading to assert that “it does not infringe
any valid claim of the [RE]’755 reissue patent.” J.A. 294.
Mr. Surti amended his counterclaim to assert infringement
of “the claims of the [RE]’755 reissue [p]atent.” J.A. 395.
However, no amended Statement of Claims Infringed and
Infringing Products was ever filed.
The district court entered default judgment against
Mudguard. The remaining parties cross-moved for sum-
mary judgment. The district court granted summary judg-
ment on noninfringement. It also granted summary
judgment that Fleet did not breach a contract with
Mr. Surti or misappropriate Mr. Surti’s trade secrets. On
motion from Fleet, the district court dismissed Fleet’s
claims as to invalidity of the RE’755 patent claims with
prejudice and tortious interference against Mr. Surti with-
out prejudice.
Mr. Surti appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
D ISCUSSION
We review a grant of summary judgment according to
the law of the regional circuit, here the Sixth Circuit. Mi-
crosoft Corp. v. Geotag, Inc., 817 F.3d 1305, 1313 (Fed. Cir.
2016). The Sixth Circuit reviews a grant of summary judg-
ment de novo. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915,

-- 4 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 5
919 (6th Cir. 2003). “Summary judgment is proper where
there exists no issue of material fact and the moving party
is entitled to judgment as a matter of law.” Id. at 920 (cit-
ing Fed. R. Civ. P. 56). We construe “all reasonable factual
inferences in favor of the nonmoving party.” Id. “[S]um-
mary judgment will not lie if the dispute about a material
fact is genuine, that is, if the evidence is such that a rea-
sonable jury could return a verdict for the nonmoving
party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986).
I. P ATENT I NFRINGEMENT
While we are sympathetic to the fact that the district
court is handling a complex patent case involving a pro se
patent owner, the district court erred in granting summary
judgment of noninfringement. In granting summary judg-
ment, the district court determined that the AeroFlap does
not contain three limitations of the RE’755 patent claims.
First, the district court held the AeroFlap does not have the
claimed “vanes” because its channels are formed from de-
pressions in the surface of its mud flap, rather than from
vanes that protrude from the surface. Second, it held these
depressions in the AeroFlap do not prevent water and de-
bris from passing through slotted openings. Third, to the
extent the AeroFlap has the claimed “vanes,” “channels,”
or “slotted openings,” it held they are not “vertically ex-
tending.” The district court’s analysis of these limitations
was erroneous.
As an initial matter, we see no error in the district
court’s construction of “vane.” The court defined “vane” as
“a relatively thin, rigid structure, like a blade, that is at-
tached to another structure or surface.” J.A. 29. It clari-
fied that this means “a vane must protrude or rise from the
rear wall of the mud flap.” J.A. 30. The specification de-
scribes vanes as “protruding” and having a rounded front
edge and tapered lateral surfaces that “direct air, water
and debris into the channels.” ’755 patent at 2:30–34, 3:21.

-- 5 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 6
It further states that “[t]he vanes stiffen the flap and min-
imize the curl-up to enhance the downward flow of the wa-
ter and debris.” Id. at 4:27–29. This description is
consistent with the district court’s construction.
We agree with Mr. Surti, however, that a genuine issue
of fact exists as to whether the AeroFlap has the claimed
vanes. The district court based its conclusion that the
AeroFlap does not have “vanes” on the fact that its
channels are created from depressions in the front surface
of the mud flap, rather than structures that protrude from
a surface. Though AeroFlap’s vanes are flush with the
front surface of the mud flap, a reasonable jury could
conclude that they protrude from the rear wall of the
channels. The construction of vanes does not require that
the vanes protrude beyond all other surfaces on the mud
flap. Moreover, in making its determination that the
accused mud flap does not have vanes, the district court at
times compared the accused product to Mr. Surti’s
commercial embodiment (V-Flap) rather than the claim
limitations. See J.A. 31 (noting that the V-Flap “contains
a series of structures that look very much like wiper blades
for the windshield of a car (vanes), which are all attached
to a flat panel (rear wall) creating channels” before
concluding that the AeroFlap does not have “thin, blade-
like structures”); see also id. (stating in its doctrine-of-
equivalents analysis that “[w]hen compared side-by-side,
the cross sections of the two mud flaps are substantially
different”). The district court’s analysis of whether
AeroFlap’s “depressions” perform the claimed functions of
the “channels” also focused on a comparison of the accused
product to Mr. Surti’s V-Flap. See J.A. 32 (concluding that
“[u]nlike [Mr.] Surti’s mud flap, where the channel allows
the water and debris to flow down the face of the mud flap,
Fleet’s depressions trap the water and debris”).
“[I]nfringement is determined on the basis of the claims,
not on the basis of a comparison with the patentee’s
commercial embodiment of the claimed invention.” Int’l

-- 6 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 7
Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 772
(Fed. Cir. 1993) (quoting ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1578 (Fed. Cir. 1984)). On remand,
the district court should assess infringement by comparing
the accused products to the invention as claimed, not to Mr.
Surti’s product.
We also agree with Mr. Surti that there was a genuine
issue of fact which precluded summary judgment as to the
“vertically extending” limitation. Mr. Surti argues Aero-
Flap’s lower section has “vertically extending” channels
and slotted openings. While the district court relied on the
fact that “[t]he majority of the structures on Fleet’s mud
flap are at a 45 degree angle,” J.A. 32, it is undisputed that
two out of the three accused products, identified as Part
Nos. 033-08002 and 033-08004, also have vertically extend-
ing channels and slotted openings at the bottom. During
claim construction, the parties disputed whether the term
“vertically extending vanes defining a plurality of verti-
cally extending channels” requires the channels to extend
the length of the mud flap without interruption. The dis-
trict court concluded that it does not, as there is “no length
requirement for either the vane or the channel.” J.A. 263.
According to this construction, the vertical extensions do
not have to span the entire mud flap in order for infringe-
ment to exist. As the claims at issue are open-ended “com-
prising” claims, the presence of unclaimed elements (such
as vanes or channels at an angle) does not necessarily ne-
gate infringement. We conclude that a reasonable jury
could find that the presence of some channels that are ver-
tically extending across the bottom of the AeroFlap may
satisfy this limitation.
We note that there also appears to be confusion be-
tween the court and the parties as to which claims are at
issue. Before the RE’755 patent issued, Mr. Surti indicated
in his Statement of Claims Infringed and Infringing Prod-
ucts that he was asserting claims 1–2, 5, 8–9, and 13 of the
’949 patent. Following the issuance of RE’755, Mr. Surti

-- 7 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 8
amended his counterclaim and asserted infringement of
“the claims of the [RE]’755 reissue [p]atent.” J.A. 395. And
in his summary judgment briefing below, Mr. Surti specif-
ically discussed infringement of claims 1 and 19 of the
RE’755 patent. In contrast, Fleet took the position that the
originally asserted claims of the ’949 patent were the only
claims at issue in the litigation. There is no agreement as
to representative claims.
It is not entirely clear from the district court’s sum-
mary judgment opinion which claims it considered. The
decision notes that claims 18–25, which were added in the
RE’755 patent, are consistent with its claim construction
order addressing disputed terms in the ’949 patent claims.
The opinion also focuses for non-infringement on limita-
tions that only appear in claims 18 and 25. See J.A. 32
(discussing whether the AeroFlap’s depressions “substan-
tially prevent” or “prevent a majority of the water and de-
bris collected in them from passing through the slotted
openings”). At another point, however, it notes that claims
1, 5, 9, and 13 all require vertically extending vanes, chan-
nels, and slotted openings, even though claims 2 and 8,
which were undisputedly asserted, and claims 18, 21, and
25 also contain these limitations. Finally, the opinion
never addresses infringement of claim 19, one of the claims
specifically briefed below.
Without deciding infringement as to this claim, we note
that at least claim 19 appears to lack each of the limita-
tions that formed the basis for granting summary judg-
ment. Courts are required to liberally construe pleadings
filed pro se. Erickson v. Pardus, 551 U.S. 89, 94 (2007).
Under this standard, Mr. Surti’s amended counterclaim
could be treated as asserting all newly issued claims of the
RE’755 patent, including claim 19, which he specifically ar-
gued in his summary judgment briefing and which the dis-
trict court did not address. On remand, the district court
should determine which claims are being asserted and

-- 8 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 9
conduct its infringement analysis with regard to each of
those claims and their respective limitations.
In light of the above errors, we vacate the grant of sum-
mary judgment of noninfringement and remand for further
proceedings consistent with this opinion.
II. BREACH OF CONTRACT
Mr. Surti appeals the grant of summary judgment in
favor of Fleet on his breach of contract claim. Under Mich-
igan law, Mr. Surti must establish the existence of a valid
contract with Fleet. Miller-Davis Co. v. Ahrens Constr.,
Inc., 495 Mich. 161, 178 (2014). The two contracts in the
record, a “Confidentiality and Non-Compete Agreement”
and a “Distributor Agreement,” are between Fleet and
Mudguard, not Mr. Surti. Because Mr. Surti has failed to
present evidence of a contract between him and Fleet, an
essential element of his claim, summary judgment was ap-
propriate.
III. MISAPPROPRIATION OF T RADE SECRETS
Mr. Surti appeals the grant of summary judgment in
favor of Fleet on his misappropriation of trade secrets
claim. Mr. Surti asserted misappropriation of trade secrets
related to intellectual property, manufacturing, and mar-
keting. The district court granted summary judgment for
three reasons. First, Mr. Surti cannot raise a claim on be-
half of Mudguard. Second, he failed to identify with suffi-
cient specificity which of his trade secrets were
misappropriated. Third, information disclosed in the
RE’755 patent is not a trade secret.
We agree that summary judgment was appropriate.
Under Michigan law, “misappropriation” of a trade secret
includes:
(i) Acquisition of a trade secret of another by a per-
son who knows or has reason to know that the
trade secret was acquired by improper means.

-- 9 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 10
(ii) Disclosure or use of a trade secret of another
without express or implied consent by a person who
did 1 or more of the following:
(A) Used improper means to acquire
knowledge of the trade secret.
(B) At the time of disclosure or use, knew
or had reason to know that his or her
knowledge of the trade secret was derived
from or through a person who had utilized
improper means to acquire it, acquired un-
der circumstances giving rise to a duty to
maintain its secrecy or limit its use, or de-
rived from or through a person who owed a
duty to the person to maintain its secrecy
or limit its use.
(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 mis-
take.
Mich. Comp. Laws. § 455.1902(b). “[A]n alleged trade se-
cret must be identified clearly, unambiguously, and with
specificity.” Compuware Corp. v. IBM, 259 F. Supp. 2d
597, 605 (E.D. Mich. 2002) (internal quotation marks omit-
ted). The only information that Mr. Surti identifies with
sufficient specificity is related to his design for his mud
flap, which was included in his patent application, which
published on March 3, 2011, nearly a year prior to Fleet
introducing the AeroFlap. Information is not a trade secret
unless “efforts that are reasonable under the circum-
stances” are used “to maintain its secrecy.” Mich. Comp.
Laws § 455.1902(d)(ii). Placing that information in a pa-
tent application is a failure to use such reasonable efforts.
See Foster v. Pitney Bowes Corp., 549 F. App’x 982, 989
(Fed. Cir. 2013) (applying a similar requirement under

-- 10 of 11 --

FLEET ENGINEERS, INC. v. MUDGUARD TECHNOLOGIES, LLC 11
Pennsylvania law). We thus affirm the grant of summary
judgment as to the misappropriation of trade secret claim.
IV. T ORTIOUS I NTERFERENCE IN B USINESS RELATIONS
Mr. Surti attempts to appeal the judgment against
Mudguard for tortious interference with business rela-
tions. But Mudguard is not an appellant. Mr. Surti cannot
appeal on behalf of Mudguard. Thus, the judgment against
Mudguard must stand.
CONCLUSION
For the foregoing reasons, we vacate the district court’s
grant of summary judgment of noninfringement, remand
for further proceedings, and otherwise affirm.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.

-- 11 of 11 --