Josef Maatuk v. Emerson Electric, Inc., Bernd Zimmerman, Prasad Khadkikar, Does 1-10, Inclusive

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
JOSEF MAATUK,
Plaintiff-Appellant
v.
EMERSON ELECTRIC, INC., BERND ZIMMERMAN,
PRASAD KHADKIKAR, DOES 1-10, INCLUSIVE,
Defendants
THERM-O-DISC,
Defendant-Appellee
______________________
2019-1615
______________________
Appeal from the United States District Court for the
Northern District of Ohio in No. 1:16-cv-03023-TMP, Mag-
istrate Judge Thomas M. Parker.
______________________
Decided: August 14, 2019
______________________
J OSEF MAATUK, Los Angeles, CA, pro se.
D AVID U TYKANSKI, Harness, Dickey & Pierce, PLC,
Troy, MI, for defendant-appellee.
______________________

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MAATUK v. EMERSON ELECTRIC, INC. 2
Before P ROST , Chief Judge, P LAGER and HUGHES , Circuit
Judges.
P ER CURIAM.
This case involves a business relationship in fluid sen-
sor technology that ended in 1999. Pro se appellant, Dr.
Josef Maatuk, appeals two decisions from the United
States District Court for the Northern District of Ohio
granting summary judgment to Therm-O-Disc. Maatuk v.
Emerson Elec. (Maatuk I), No. 1:16-CV-03023, 2017 WL
9485679 (N.D. Ohio Nov. 14, 2017) (R. & R. adopted by
2018 WL 562934); Maatuk v. Emerson Elec., Inc. (Maatuk
II), No. 1:16-CV-03023, 2019 WL 425605 (N.D. Ohio Feb. 4,
2019). Dr. Maatuk claims that Therm-O-Disc breached a
confidential disclosure agreement in 1999 and is liable for
trade secret misappropriation and unjust enrichment. He
claims that he is entitled to be listed as a joint inventor on
U.S. Patent No. 7,775,105. Because Dr. Maatuk previously
litigated and lost his trade secret misappropriation claim
and failed to provide evidence that he made more than an
insignificant contribution to the conception of the ’105 pa-
tent, we affirm.
I
In 1997, Dr. Maatuk entered into a confidential disclo-
sure agreement with Therm-O-Disc (TOD) to allow TOD to
evaluate Dr. Maatuk’s multi-functional liquid sensor tech-
nology for a potential licensing agreement. The agreement
included a provision stating that it would be construed ac-
cording to Ohio law. Between 1997 and 1999, Dr. Maatuk
corresponded with Prasad Khadkikar and Bernd Zimmer-
mann, TOD employees, and provided TOD with a sample
probe, prototypes, and other information for constructing
his sensor. Dr. Maatuk never discussed turbidity sensors
with any of TOD’s employees.
In mid-1999, TOD informed Dr. Maatuk that it would
not license his liquid sensor technology. The parties broke

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MAATUK v. EMERSON ELECTRIC, INC. 3
off their relationship, and Dr. Maatuk threatened to sue
TOD for breaching the confidential disclosure agreement
and infringing his U.S. patents.
TOD filed a complaint for declaratory judgment in the
U.S. District Court for the Northern District of Ohio, seek-
ing judgment that it did not breach the confidential disclo-
sure agreement or infringe Dr. Maatuk’s patents. On
August 28, 2000, Dr. Maatuk subsequently sued TOD in
the U.S. District Court for the Central District of Califor-
nia, asserting breach of the confidential disclosure agree-
ment, trade secret misappropriation, fraud, and
negligence. Dr. Maatuk’s suit was transferred to the
Northern District of Ohio, which consolidated it with the
declaratory judgment suit. The Northern District of Ohio
ultimately ruled in favor of TOD. Dr. Maatuk appealed to
this court, and we affirmed on August 1, 2003. Therm-O-
Disc, Inc. v. Maatuk, 73 F. App’x 391, 392 (Fed. Cir. 2003).
On December 10, 2003, Mr. Khadkikar and Mr. Zim-
mermann conceived the idea for a multi-functioned sensor
that combined a turbidity sensor with a fluid level sensor.
On April 21, 2004, they filed a provisional patent applica-
tion for their invention, which eventually issued as U.S.
Patent No. 7,775,105. The ’105 patent “incorporates a com-
bination of more than one of a fluid level sensing compo-
nent or a fluid flow rate sensing component, a turbidity
sensing component, a temperature sensing component and
a pressure sensing component.” ’105 patent col. 1 ll. 59–
63. Each claim requires a turbidity sensor and at least one
other fluid sensor.
On August 17, 2016, Dr. Maatuk sued TOD and other
parties in the Central District of California, asserting cor-
rection of inventorship for the ’105 patent, misappropria-
tion of trade secrets, and unjust enrichment. On December
15, 2016, the case was transferred to the Northern District
of Ohio. After transfer, the district court granted the

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MAATUK v. EMERSON ELECTRIC, INC. 4
motion in part, finding the claims time-barred under the
Ohio Uniform Trade Secrets Act.
The parties conducted fact and expert discovery with
regards to Maatuk’s correction of inventorship claim. At
the close of discovery, TOD moved for summary judgment.
The court granted the motion, explaining that Dr. Maatuk
did not produce “any evidence that he worked with Khad-
kikar and Zimmermann to arrive at a definite and perma-
nent idea of a multi-function sensor that integrated a
turbidity sensor with other sensor modules.” Maatuk II,
2019 WL 425605, at *9. Because the “invention described
in the ’105 patent is the integration of a turbidity sensor
with . . . other sensors into a single multi-function sensor
device,” Dr. Maatuk’s inability to show any collaboration or
work on turbidity sensors precluded finding him a joint in-
ventor. Id. The court also found that Dr. Maatuk’s alleged
contributions did not constitute a contribution to the con-
ception of the ’105 patent.
Dr. Maatuk appeals the grant of both summary judg-
ment motions. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
II
“We review a district court’s grant of summary judg-
ment de novo.” Ekchian v. Home Depot, Inc., 104 F.3d
1299, 1302 (Fed. Cir. 1997). “Summary judgment is appro-
priate when there is no genuine issue of material fact and
the moving party is entitled to judgment as a matter of
law.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1472
(Fed. Cir. 1997).
A.
We first address the district court’s determination that
Dr. Maatuk’s trade secrets and unjust enrichment claims
were time-barred.

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MAATUK v. EMERSON ELECTRIC, INC. 5
“We apply the trade secret law of the appropriate
state,” in this case, Ohio, as was stipulated in the confiden-
tial disclosure agreement. Ultimax Cement Mfg. Corp. v.
CTS Cement Mfg. Corp., 587 F.3d 1339, 1355 (Fed. Cir.
2009). “An action for misappropriation shall be com-
menced within four years after the misappropriation is dis-
covered or by the exercise of reasonable diligence should
have been discovered. For the purposes of this section, a
continuing misappropriation constitutes a single claim.”
Ohio Rev. Code § 1333.66; see also Ohio Rev. Code
§ 1333.63 (making unjust enrichment a statutory remedy
for misappropriation). Under Ohio’s “single claim” ap-
proach, the limitations period begins to run once the
wronged party becomes aware of a breach of a confidential
relationship. See Kehoe Component Sales Inc. v. Best
Lighting Prod., Inc., 796 F.3d 576, 583 (6th Cir. 2015).
Subsequent breaches do not create a new cause of action
because “it is the relationship between the parties at the
time the secret is disclosed that is protected, and that the
fabric of the relationship once rent is not torn anew with
each added use or disclosure, although the damage suffered
may thereby be aggravated.” Id. (cleaned up).
We agree that Dr. Maatuk’s trade secret misappropri-
ation claim is time-barred. As the district court explained,
“[u]nder Sixth Circuit precedent, Maatuk’s trade secret
misappropriation claim accrued at the latest when he in-
structed his attorney to send [a] cease and desist letter to
TOD and then filed [his first lawsuit]” on August 28, 2000,
because it shows he was cognizant of a breach in the confi-
dential disclosure agreement. Maatuk I, 2017 WL
9485679, at *7. His claims having accrued in 2000, at the
latest, his August 17, 2016, suit falls well outside the four-
year statutory period provided by Ohio law.
Dr. Maatuk argues that his claims should be preserved
under Amalgamated Indus. Ltd. v. Tressa, Inc., 69 F. App’x
255 (6th Cir. 2003). He contends that, under Amalga-
mated, a party bringing a trade secrets claim may backdate

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MAATUK v. EMERSON ELECTRIC, INC. 6
the claim for subsequent discoveries of misappropriation.
We reject this characterization.
Amalgamated was the second case stemming from the
misappropriation of trade secrets related to hair color
shade formulas. Id. at 257. The plaintiff prevailed in its
initial litigation, and the court awarded it a prospective li-
censing fee based on the revenue derived from any product
incorporating the secret formula. After the statute of limi-
tations had passed, the plaintiff discovered that the de-
fendant had expanded its product line to include additional
shades incorporating the misappropriated secret formula.
Id. at 258. The Sixth Circuit held that the plaintiff was not
time-barred from relief. Id. at 263.
Amalgamated did not find that a plaintiff can use an
earlier trade secrets misappropriation claim to toll the stat-
ute of limitations for a subsequent misappropriation claim
arising from the same alleged breach of a confidential dis-
closure agreement. The Sixth Circuit explained in Allied
Erecting that, “at its core, [Amalgamated was] about en-
forcing the prior judgment and awarded relief.” Allied
Erecting & Dismantling Co. v. Genesis Equip. & Mfg., Inc.,
805 F.3d 701, 708 (6th Cir. 2015). In cases where the pre-
vious request “for prospective injunctive relief or royalties
was flatly denied . . . [t]here is no prospective relief . . . to
enforce . . . .” See id. As such, the Amalgamated exception
only applies when the plaintiff has already received pro-
spective relief and is seeking to enforce the earlier judg-
ment. But where a party alleges misappropriation of
different trade secrets years after discovery of the breach
of confidentiality, the claim is barred by the statute of lim-
itations regardless of whether the plaintiff brought an un-
successful suit in the first instance. See id. Therefore, we
affirm the determination that Dr. Maatuk’s trade secret
claims are barred by the statute of limitations.

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MAATUK v. EMERSON ELECTRIC, INC. 7
B.
We now turn to Dr. Maatuk’s correction of inventorship
claim.
“Section 256 creates a cause of action in the district
courts for correction of non-joinder of an inventor on a pa-
tent . . . .” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352,
1358 (Fed. Cir. 2004) (citing 35 U.S.C. § 256). Because
“[c]onception is the touchstone of inventorship,” Burroughs
Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed.
Cir. 1994), “a joint inventor must contribute to the inven-
tion’s conception,” CODA Dev. S.R.O. v. Goodyear Tire &
Rubber Co., 916 F.3d 1350, 1358 (Fed. Cir. 2019). The joint
inventor’s contribution must be more than “insignificant in
quality[] when that contribution is measured against the
dimension of the full invention.” Fina Oil, 123 F.3d at
1473. “Contributions to realizing an invention may not
amount to a contribution to conception if they merely ex-
plain what was then state of the art.” Eli Lilly, 376 F.3d
at 1359 (internal quotation marks omitted).
Dr. Maatuk argues that he contributed a cost-effective
configuration for the heater and thermocouples to measure
the temperature, fluid-level, and pressure in the ’105 pa-
tent. He also claims that he conceived of the idea of a
multi-function sensor using a single substrate and arrang-
ing the sensor’s thermocouples in parallel. As such, he
claims that he is entitled to be listed as an inventor on the
’105 patent. We disagree.
While Dr. Maatuk claims that he contributed multiple
limitations to the ’105 patent, he has not provided evidence
as to how these ideas were significant to the ’105 patent’s
conception. The sensor configuration for a heater and ther-
mocouples used in the ’105 patent was disclosed in U.S. Pa-
tent 6,546,796, a patent filed by Mr. Zimmermann and
published in 2002—more than a year before Mr. Khadkikar
and Mr. Zimmermann conceived of the idea for the ’105 pa-
tent. The ’796 patent also discloses the concept of having

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MAATUK v. EMERSON ELECTRIC, INC. 8
multiple sensors on a single substrate. Thus, Dr. Maatuk’s
first two claimed contributions were disclosed in the prior
art when Mr. Khadkikar and Mr. Zimmermann conceived
the ’105 patent.
Dr. Maatuk also presented no evidence that a parallel
thermocouple configuration was new or significant. Dr.
Maatuk argues that he contributed the idea of arranging
thermocouples in parallel in the ’105 patent because Claim
2, when read broadly, can be construed to cover a parallel
configuration. The fact that the parallel configuration was
not explicitly stated in the claims, however, shows that it
is insignificant when compared to the dimensions of the full
patent, which provides a means of creating a multi-func-
tion sensor combining a turbidity sensor with at least one
other fluid sensor.
Dr. Maatuk further disputes the date that Mr. Khad-
kikar and Mr. Zimmermann conceived of the idea for the
’105 patent. He argues that the only evidence supporting
this date is Mr. Khadkikar’s affidavit, which states he and
Mr. Zimmermann conceived the idea on December 10,
2003. But Dr. Maatuk provides no evidence contesting this
date, so he fails to create any material dispute as to the
date of conception.
III
Because Dr. Maatuk’s trade secret misappropriation
claims accrued when he filed his initial complaint in 2003
and the statute of limitations in Ohio is four years, his
trade secret misappropriation and unjust enrichment
claims are time-barred. Further, because Dr. Maatuk pro-
vided no evidence that he made a non-insignificant contri-
bution to the conception of the ’105 patent, he failed to
create a genuine dispute of material fact as to inventorship.
Therefore, we affirm the district court’s grants of summary
judgment.
AFFIRMED

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