Alifax Holding Spa v. Alcor Scientific Inc. et al

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
___________________________________
)
ALIFAX HOLDING SPA, 	)
)
Plaintiff, 	)
)
v. 	) 	C.A. No. 14-440 WES
)
ALCOR SCIENTIFIC INC.; and 	)
FRANCESCO A. FRAPPA, 	)
)
Defendants. 	)
___________________________________)
MEMORANDUM AND ORDER
WILLIAM E. SMITH, Chief Judge.
Before 	the 	Court 	are 	the 	parties’ 	cross 	motions 	for 	summary
judgment. 	Defendants 	Alcor 	Scientific 	Inc. 	and 	Francesco 	Frappa
seek 	summary 	judgment 	on 	Counts 	I, 	II 	and 	IV 	of 	Plaintiff 	Alifax
Holding SpA’s Second Amended and Supplemental Complaint and Counts
I 	and 	II 	of 	the 	Defendants’ 	Amended 	Counterclaim 	(ECF 	Nos. 	142,
143). 	Alifax 	moves 	for 	summary 	judgment 	on 	Count 	III 	of 	the
Amended 	Counterclaim 	(ECF 	Nos. 	159, 	166). 	The 	Court 	has 	closely
reviewed this action’s voluminous and complex record. 	After care-
ful consideration, and as set forth herein, the Defendants’ Motion
for Partial Summary Judgment is DENIED, and Plaintiff’s Motion for
Partial Summary Judgment is GRANTED.
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I. 	Background
Alifax 	is 	an 	Italian 	corporation 	that 	develops 	and 	produces
clinical 	diagnostic 	instruments.1 	Pl.’s 	Statement 	of 	Disputed
Facts 	(“PSDF”) 	¶ 	3, 	ECF 	No. 	167; 	see 	also 	Second 	Am. 	& 	Suppl.
Compl. 	¶ 	1, 	ECF 	No. 	68. 	Among 	Alifax’s 	products 	are 	instruments
known 	as 	erythrocyte 	sedimentation 	rate 	(“ESR”) 	analyzers. 	ESR
measures 	how 	quickly 	red 	blood 	cells 	(erythrocytes) 	descend 	and
sediment 	in 	a 	patient 	blood 	sample 	and 	is 	commonly 	considered 	to
detect 	nonspecific 	inflammation. 	PSDF 	¶¶ 	13-14. 	Whereas 	the
traditional 	way 	of 	calculating 	ESR 	— 	the 	Westergren 	method 	— 	re-
quires 	one 	to 	two 	hours 	of 	testing, 	Alifax’s 	instruments 	produce
an 	ESR 	value 	in 	under 	one 	minute. 	See 	id.; 	Pl.’s 	Statement 	of
Additional 	Disputed 	Facts 	(“PSADF”) 	¶ 	1, 	ECF 	No. 	176-2; 	Defs.’
Resp. 	to 	Pl.’s 	Statement 	of 	Undisputed 	Facts 	(“DSDF”) 	¶ 	20, 	ECF
No. 170-4.
Alifax holds two patents pertaining to ESR measurement. 	PSDF
¶¶ 6, 10, 12. 	U.S. 	Patent No. 6,632,679 (“’679 Patent”) protects
a 	diagnostic 	method 	for 	quickly 	measuring 	a 	blood 	sample’s 	ESR.
See 	Second 	Am. 	& 	Suppl. 	Compl. 	Ex. 	A, 	ECF 	No. 	68-1. 	U.S. 	Patent
No. 	7,005,107 	(“’107 	Patent”) 	covers 	the 	apparatus 	designed 	to
1 The Court presents the undisputed facts herein — as it must
— 	in 	the 	light 	most 	favorable 	to 	the 	nonmovant. 	See, 	e.g.,
Theriault 	v. 	Genesis 	HealthCare 	LLC, 	890 	F.3d 	342, 	348 	(1st 	Cir.
2018).
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carry out the patented method. 	See id. at Ex. B. 	The Court issued
its 	claim 	construction 	ruling 	concerning 	these 	patents 	in 	April
2014. 	See 	Alifax 	Holding 	SpA 	v. 	Alcor 	Sci. 	Inc. 	(Alifax 	I), 	No.
CV 14-440 S, 2017 WL 1533430, at *1 (D.R.I. Apr. 27, 2017).
Defendant 	Francesco 	Frappa 	is 	another 	principal 	player. 	It
is unnecessary to repeat Frappa’s personal history with Alifax and
its 	former 	subsidiary, 	Sire 	Analytical 	S.r.l., 	in 	detail 	here.2
See Alifax Holding SpA v. Alcor Sci. Inc. (Alifax II), No. CV 14-
440 	WES, 	2019 	WL 	317638, 	at 	*1-3 	(D.R.I. 	Jan. 	8, 	2019). 	It 	is
enough to understand that Sire employed Frappa for nearly a decade
and that his duties included hardware and software development as
well as work on Alifax’s ESR analyzers, including the development
of a plastic capillary photometer sensor. 	See id. 	at *1-2; DSDF
¶ 	24; 	Galiano 	Aff. 	¶ 	13, 	ECF 	No. 	162. 	Frappa 	departed 	Alifax 	in
late 	2011 	and 	by 	May 	2012 	was 	working 	with 	Rhode 	Island-based
competitor 	Alcor 	on 	that 	company’s 	ESR 	instrument. 	Alifax 	II,
2019 WL 317638, at *2; see also PSDF ¶ 1. 	Before leaving, Frappa
forwarded 	certain 	information 	concerning 	an 	“anemia 	factor” 	and
myeloma from his Sire email account to a personal account. 	Alifax
2 	Over 	the 	course 	of 	this 	litigation 	Sire 	merged 	completely
into 	Alifax. 	See 	Alifax 	II, 	2019 	WL 	317638, 	at 	*1 	n.3. 	Unless
otherwise 	noted, 	the 	Court 	refers 	herein 	to 	both 	entities 	simply
as “Alifax.”
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II, 	2019 	WL 	317638, 	at 	*2; 	Defs.’ 	Resp. 	to 	Pl.’s 	Statement 	of
Additional Undisputed Facts (“DSADF”) ¶¶168-70, ECF No. 171-6.
Within a year of Frappa’s arrival, Alcor began promoting and
producing its own ESR analyzer: the iSED. 	See Second Am. & Suppl.
Compl. 	¶ 	43; 	Defs.’ 	Ans. 	to 	Pl.’s 	Second 	& 	Suppl. 	Am. 	Compl. 	&
First Am. Countercl. (“Ans.”) ¶ 43, ECF No. 71. 	The iSED applies
the 	principles 	of 	syllectrometry 	and 	— 	like 	Alifax’s 	analyzers 	—
produces an ESR value in just twenty seconds. 	See PSDF ¶¶ 37, 55;
DSADF 	¶ 	147; 	Ans. 	¶ 	43. 	In 	layman’s 	terms, 	the 	iSED 	detects
changes in optical density as light passes through a blood sample.
Blood 	is 	pumped 	through 	the 	device’s 	light-measuring 	component,
the flow is abruptly stopped, and red blood cells begin to aggre-
gate. 	See 	PSDF 	¶¶ 	21, 	57; 	DSADF 	¶ 	140. 	As 	aggregation 	occurs,
the device processes the changing optical density data. 	See PSDF
¶¶ 21, 57; DSADF ¶ 140. 	The graphical depiction of this data (the
transmittance 	of 	light 	over 	time) 	yields 	a 	characteristic 	shape
known as a syllectogram:
See 	PSDF 	¶¶ 	21, 	23, 	57. 	Alcor 	describes 	the 	area 	under 	the 	syl-
lectogram’s 	curve 	(the 	diagram’s 	shaded 	portion) 	as 	the 	sample’s
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“aggregation index.” 	Id. ¶¶ 23, 57. 	The aggregation index can be
correlated 	to 	reference 	values 	from 	traditional 	Westergren 	tests
to determine a blood sample’s ESR.3 	Id. ¶ 57. 	It is undisputed
that 	the 	iSED 	does 	not 	expressly 	measure, 	record, 	or 	report 	any
measurement 	for 	the 	viscosity, 	elasticity, 	or 	density 	of 	blood.
Id. ¶¶ 46-54.
Optical density measurements are converted to an ESR value by
an 	algorithm 	contained 	in 	the 	iSED’s 	software. 	See 	id. 	¶ 	128.
Like most computer programs, this software evolved over time. 	Id.
¶¶ 	127-130. 	It 	is 	undisputed, 	however, 	that 	at 	some 	early 	(but
as-yet undefined) stage of development the iSED software’s source
code included in its conversion algorithm the same unusual numer-
ical 	constants 	(2.2, 	1000, 	-3 	and 	^1.9) 	used 	in 	the 	code 	for
Alifax’s ESR analyzers. 	See id. ¶¶ 124-25, 127; DSADF ¶ 167. 	This
specific software iteration was labeled “Version 104A.”4 	See PSDF
¶ 127. 	Alcor contends that the edition of Version 104A containing
the 	Alifax 	constants 	was 	a 	“pre-production 	version 	that 	never
shipped in any functional iSED machine.” 	Defs.’ Mem. In Supp. of
Mot. 	for 	Partial 	Summ. 	J. 	(“Defs.’ 	Mem.”) 	25-26, 	ECF 	No. 	142-1.
3 	The 	iSED 	production 	units 	are 	specifically 	correlated 	to
“the Fabry-corrected Westergren result.” DSADF ¶ 146.
4 	The 	parties 	refer 	to 	the 	disputed 	code 	as 	both 	“Version
104A” 	and 	“Version 	1.04A.” 	For 	consistency, 	the 	Court 	will 	use
the former.
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It is undisputed, however, that Alcor sold at least some iSED units
to customers with software identified as “Version 104A” installed.5
See DSADF ¶¶ 175-177.
In the midst of this litigation, Alifax filed three copyright
registration 	applications. 	See 	PSDF 	¶¶ 	111-114. 	These 	three 	ap-
plications 	matured 	into 	copyright 	registrations. 	See 	id. 	The
copyrights 	cover 	source 	code 	and 	other 	materials, 	including 	its
conversion algorithm and constants, that Alifax alleges it uses in
its ESR analyzers. 	Second Am. & Suppl. Compl. ¶ 78.
II. 	Legal Standard
In the crucible of summary judgment, the Court must assay the
parties’ evidence “to ascertain whether a need for trial exists.”
Theriault, 	890 	F.3d 	at 	348. 	A 	trial 	may 	be 	averted 	if 	a 	movant
shows “there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” 	Garcia-Garcia
v. 	Costco 	Wholesale 	Corp., 	878 	F.3d 	411, 	417 	(1st 	Cir. 	2017)
(quoting 	Ameen 	v. 	Amphenal 	Printed 	Circuits, 	Inc., 	777, 	F.3d 	63,
5 	As 	further 	explained 	herein, 	the 	record 	shows 	that 	the
Version 	104A 	identifier 	may 	have 	been 	used 	for 	multiple 	early
iterations 	of 	code, 	only 	one 	or 	some 	of 	which 	may 	have 	contained
Alifax’s 	purportedly 	proprietary 	constants. 	See, 	e.g., 	DSADF 	¶¶
175-182; Frappa Decl. ¶ 3, ECF No. 171-7; Defs.’ Mem. 25-26. 	Even
a cursory review of the docket for this action reveals that source
code related discovery has been fraught. 	Such discovery has con-
tinued 	for 	months 	after 	the 	parties 	filed 	their 	dispositive 	mo-
tions. 	The Court’s conclusions herein, however, are based solely
on the record as it existed when the parties’ filed their motions.
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69 	(1st 	Cir. 	2015)) 	(quotation 	marks 	omitted); 	see 	also 	Fed. 	R.
Civ. P. 56. 	A fact is “[m]aterial” if it “might affect the outcome
of the suit under the governing law.” 	Audette v. Town of Plymouth,
858 	F.3d 	13, 	19–20 	(1st 	Cir. 	2017) 	(quoting 	Mulloy 	v. 	Acushnet
Co., 	460 	F.3d 	141, 	145 	(1st 	Cir. 	2006)). 	A 	dispute 	is 	“genuine”
if 	“there 	is evidence that 	would 	allow 	a 	reasonable 	jury 	to 	find
for 	the 	non-moving 	party.” 	Id. 	at 	20. 	A 	court 	may 	consider 	the
entire factual record in making these decisions. 	Fed. R. Civ. P.
56(c).
A nonmovant can withstand the scrutiny of summary judgment by
producing 	“definite, 	competent 	evidence” 	of 	a 	genuinely 	disputed
material fact of such probative force that, “if it is credited, a
factfinder 	could 	resolve 	the 	case 	in 	favor 	of 	the 	nonmovant.”
Murray v. Kindred Nursing Ctrs. W. LLC, 789 F.3d 20, 25 (1st Cir.
2015) (quotation marks omitted). 	An examining court is obliged to
construe 	the 	record 	“in 	the 	light most hospitable 	to 	the nonmov-
ing party” and to draw “all reasonable inferences in that party’s
favor.” 	Theriault, 890 F.3d at 348 (quotation marks omitted). 	A
nonmovant 	cannot, 	however, 	rely 	on 	bald 	assertions, 	improbable
inferences, or unsupported speculation to preserve its claims for
trial. 	Garcia-Garcia, 878 F.3d at 417.
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III. Discussion
A. 	Alcor’s Motion for Summary Judgment
Alifax 	characterizes 	the 	Defendants’ 	motion 	as 	a 	“blunder-
buss.” 	Pl.’s 	Mem. 	in 	Opp’n 	to 	Defs.’ 	Mot. 	for 	Partial 	Summ. 	J.
(“Pl.’s 	Opp’n”) 	1, 	ECF 	No. 	167. 	The 	description 	is 	apt. 	The
Defendants seek a favorable judgment on almost every claim in this
action: 	patent 	infringement, 	invalidity, 	trade 	secret 	misappro-
priation, 	and 	copyright 	infringement. 	The 	Court 	considers 	these
claims one by one.
1. 	Patent Infringement
Alifax alleges that the iSED infringes on claims 1-3, 6, and
8 of the ’679 Patent and claims 1, 2, and 4-6 of the ’107 Patent.6
See PSDF ¶¶ 4, 8; Pl.’s First Supp. Disclosure of Asserted Claims
and 	Infringement 	Contentions 	1, 	ECF 	No. 	145-2. 	Infringement 	al-
legations 	require 	a 	two-part 	analysis. 	See 	Playtex 	Prods., 	Inc.
v. 	Procter 	& 	Gamble 	Co., 	400 	F.3d 	901, 	905–06 	(Fed. 	Cir. 	2005).
First, 	the 	Court 	must 	interpret 	the 	scope 	and 	meaning 	of 	the 	as-
serted patent claims. 	Id. 	The Court’s claim construction ruling
for 	this 	action 	is 	memorialized 	in 	Alifax 	I, 	2017 	WL 	1533430, 	at
*1 (D.R.I. Apr. 27, 2017). 	Second, the “properly construed claims”
must 	be 	compared 	“to 	the 	allegedly 	infringing 	device.” 	Playtex
6 Alifax no longer appears to contend that the iSED infringes
on claim 9 of the ’107 Patent. 	See PSDF ¶ 8.
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Prods., 	400 	F.3d 	at 	906. 	That 	is 	the 	task 	at 	hand. 	Alcor 	can
only prevail on its motion if such a comparison shows that “on the
correct 	claim 	construction, 	no 	reasonable 	jury 	could 	[find] 	in-
fringement on the undisputed facts or when all reasonable factual
inferences are drawn in favor of [Alifax].” 	Netword, LLC v. Cen-
traal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001).
At trial, Alifax has the burden of showing that the iSED meets
each claim limitation of the ’679 and ’107 patents, either liter-
ally or 	under 	the 	doctrine 	of 	equivalents. 	Playtex 	Prod., 	400
F.3d 	at 	906 	(Fed. 	Cir. 	2005); 	Intellicall, 	Inc. 	v. 	Phonometrics,
Inc., 	952 	F.2d 	1384, 	1389 	(Fed. 	Cir. 	1992) 	(“[I]nfringement 	re-
quires 	that 	every 	limitation 	of 	a 	claim 	be 	met 	literally 	or 	by 	a
substantial 	equivalent.”) 	These 	are 	factual 	inquiries. 	DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1013
(Fed. 	Cir. 	2006). 	And 	genuinely 	disputed 	factual 	issues 	are 	not
appropriate 	for 	resolution 	on 	summary 	judgment. 	Thus, 	the 	Court
is mindful of the Federal Circuit’s admonition to take “great care”
when weighing summary judgment on an infringement claim. 	Cole v.
Kimberly-Clark Corp., 102 F.3d 524, 528 (Fed. Cir. 1996); see also
D.M.I., Inc. v. Deere & Co., 755 F.2d 1570, 1573 (Fed. Cir. 1985)
(“[A] motion for summary judgment of infringement or noninfringe-
ment should be approached with a care proportioned to the likeli-
hood of its being inappropriate.”).
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Concerning the ’679 Patent, the Court has construed the lim-
itation 	from 	the 	asserted 	claims 	“processed 	to 	obtain 	said 	speed
of sedimentation, viscosity, elasticity and density” to mean “pro-
cessing the acquired optical density or absorbance data to obtain
the 	speed 	of 	sedimentation, 	viscosity, 	elasticity 	and 	density.”
Alifax I, 2017 WL 1533430, at *5 (emphasis added). 	The Court has
similarly 	construed 	the 	limitation 	“determine[ing] 	the 	speed 	of
sedimentation, viscosity, elasticity and density” of the asserted
claims in the ’107 Patent to mean “processing the acquired optical
density 	or 	absorbance 	data 	to 	obtain 	the 	speed 	of 	sedimentation,
viscosity, elasticity and density, by comparing the data with nu-
merical constants stored in the memory of a processing unit.” 	Id.
at 6 (emphasis added).
“Obtaining 	a 	parameter 	in 	the 	context 	of 	the 	patents-in-
suit,” 	Alcor 	argues, 	“means 	obtaining 	a 	numerical 	value 	for 	that
parameter.” 	Defs.’ 	Reply 	in 	Supp. 	of 	Mot. 	for 	Summ. 	J. 	(“Defs.’
Reply”) 5, ECF No. 171-2. 	It is undisputed that the iSED does not
measure, 	record, 	or 	report 	any 	measurement 	for 	the 	viscosity,
elasticity, 	or 	density 	of 	blood. 	PSDF 	¶¶ 	46-54. 	Thus, 	Alcor
reasons that the iSED does not “obtain” these parameters and does
not 	infringe 	on 	either 	patent. 	Defs.’ 	Mem. 	11. 	There 	is 	a 	good
measure of logical appeal in this argument. 	It depends, however,
upon reading limitations into the claims that do not exist. 	None
of 	the 	asserted 	claims, 	as 	construed 	by 	the 	Court, 	include 	the
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limitation 	that 	the 	iSED 	measures, 	calculates, 	records, 	reports,
or 	obtains 	a 	“numerical 	value” 	for 	the 	parameters 	of 	viscosity,
elasticity, and density of blood. 	See Alifax I, 2017 WL 1533430,
at 	*5-6. 	The 	Court’s 	claim 	construction 	simply 	does 	not 	support
Alcor’s argument.
How 	then 	might 	the 	iSED 	“obtain” 	the 	viscosity, 	elasticity,
and 	density 	of 	a 	blood 	sample? 	Alifax’s 	expert, 	Dr. 	Brian 	Ber-
geron, provides an answer that is at least plausible, if oblique.
He opines that the “correlated parameters” (viscosity, elasticity,
and 	density) 	are 	a 	“function 	of 	data 	obtained 	from 	the 	[iSED’s]
optical 	density 	readings”; 	thus 	by 	processing 	optical 	density
measurement 	data 	the 	iSED 	“obtains 	the 	correlated 	parameters.”
Expert 	Report 	of 	Brian 	Bergeron, 	M.D. 	(“Bergeron 	Report”) 	¶ 	21,
ECF No. 144-11; DSADF ¶¶ 140-142; see also Pl.’s Opp’n 4. 	He also
purports 	to 	explain 	how 	these 	three 	parameters 	are 	functions 	of
optical 	density 	data 	in 	his 	sworn 	report. 	Bergeron 	Report 	¶ 	21.
The 	Court’s 	observation 	that 	“the 	[’679 	Patent’s] 	specification
informs 	that 	the 	viscosity, 	elasticity, 	and 	density 	of 	the 	blood
sample are parameters that are considered correlated to the speed
of 	sedimentation 	of 	the 	blood 	sample” 	accords 	with 	the 	substance
of Dr. Bergeron’s proposed conclusion. 	Alifax I, 2017 WL 1533430,
at *5.
Alcor and its expert reject this rationale and criticize Dr.
Bergeron’s conclusions. 	See, e.g., Kyotmaa Decl. ¶¶ 9-12, ECF No.
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171-5; 	Defs.’ 	Reply 	5. 	But 	Alcor 	has 	not 	moved 	to 	exclude 	Dr.
Bergeron’s opinions under Daubert v. Merrell Dow Pharmaceuticals,
Inc., 509 U.S. 579 (1993), or its progeny. 	His sworn conclusions
are supported by articulated facts and reasoning; the Court has no
basis 	to 	find 	that 	he 	is 	unqualified 	to 	provide 	such 	opinions.
See Hayes v. Douglas Dynamics, Inc., 8 F.3d 88, 92 (1st Cir. 1993)
(holding that to defeat summary judgment an expert affidavit must
“include the factual basis and the process of reasoning which makes
the conclusion viable”); Garside v. Osco Drug, Inc., 895 F.2d 46,
50 	(1st 	Cir. 	1990) 	(holding 	“[e]xpert 	opinion 	is 	admissible 	and
may 	defeat 	summary 	judgment” 	so 	long 	as 	“it 	appears 	that 	the 	af-
fiant is competent to give an expert opinion.” (emphasis omitted)).
At this juncture Alifax is entitled to the benefit of all reason-
able 	inferences. 	Theriault, 	890 	F.3d 	at 	348. 	And 	it 	is 	the
function of the finder of fact at trial, not the Court at summary
judgement, 	to 	resolve 	such 	evidentiary 	conflicts. 	Anderson 	v.
Liberty 	Lobby, 	Inc., 	477 	U.S. 	242, 	249 	(1986); 	Scripps 	Clinic 	&
Research Found. v. Genentech, Inc., 927 F.2d 1565, 1581 (Fed. Cir.
1991) (reversing summary judgment of infringement based on exist-
ence of disputed “questions of scientific and evidentiary fact”),
overruled 	on 	other 	grounds 	by 	Abbott 	Labs. 	v. 	Sandoz, 	Inc., 	566
F.3d 	1282, 	1293 	(Fed. 	Cir. 	2009). 	Consequently, 	the 	Court 	finds
that 	summary 	judgment 	is 	precluded 	on 	the 	issue 	of 	non-infringe-
ment. 	See Fed. R. Civ. P. 56(a).
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2. 	Patent Invalidity
Alcor also seeks summary judgement on Counts I and II of the
Defendants’ Counterclaim.7 	Countercl. ¶¶ 39-42. 	It calls on the
Court 	to 	declare 	the 	’679 	and 	’107 	patents 	invalid 	because 	their
common specification fails to satisfy the written description and
enablement 	requirements 	under 	35 	U.S.C. 	§ 	112.8 	Defs.’ 	Mem. 	12.
Both 	arguments 	fail 	for 	the 	same 	reason: 	these 	requirements 	are
measured 	by 	an 	objective 	standard, 	and 	a 	material 	dispute 	exists
concerning the knowledge, training, and experience of a “person of
ordinary skill in the art.”
Succeeding on a claim of invalidity under Rule 56 is an uphill
battle. 	Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1316
(Fed. 	Cir. 	2002) 	(“The 	burden 	of 	proving 	invalidity 	on 	summary
judgment 	is 	high.”). 	Patents 	are 	presumed 	valid. 	35 	U.S.C. 	§
282. 	This presumption can only be overcome if a challenging party
produces 	“such 	clear 	and 	convincing 	evidence 	. 	. 	. 	that 	no 	rea-
sonable jury could find otherwise.” Eli Lilly & Co. v. Barr Lab.,
Inc., 	251 	F.3d 	955, 	962 	(Fed. 	Cir. 	2001); 	see 	also 	High 	Concrete
7 As the Defendants correctly note, an invalid patent cannot
be infringed, thus granting summary judgment on Counts I and II of
its 	Counterclaim 	would 	be 	an 	alternative 	basis 	to 	grant 	summary
judgment 	in 	its 	favor 	on 	Count 	I 	of 	Alifax’s 	Second 	Amended 	and
Supplemental Complaint. 	Defs.’ Mem. 17.
8 	Alcor 	moves 	only 	on 	these 	two 	grounds 	for 	the 	purposes 	of
summary judgment and reserves the right to assert other bases for
invalidity at trial.
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Structures, 	Inc. 	v. 	New 	Enter. 	Stone 	& 	Lime 	Co., 	Inc., 	377 	F.3d
1379, 1382 (Fed. Cir. 2004). 	Again, “all justifiable inferences”
must be drawn in favor of Alifax. 	See Schumer, 308 F.3d at 1315.
The 	written 	description 	and 	enablement 	requirements 	are 	two
distinct 	prerequisites 	mandated 	by 	35 	U.S.C. 	§ 	112. 	See 	Ariad
Pharm., 	Inc. 	v. 	Eli 	Lilly 	& 	Co., 	598 	F.3d 	1336, 	1340 	(Fed. 	Cir.
2010). 	The 	written 	description 	requirement 	“is 	part 	of 	the 	quid
pro 	quo 	of 	the 	patent 	grant 	and 	ensures 	that 	the 	public 	receives
a meaningful disclosure in exchange for being excluded from prac-
ticing an invention for a period of time.” 	Ariad Pharm., 598 F.3d
at 1354. 	A description suffices if “the disclosure . . . reason-
ably 	conveys 	to 	those 	skilled 	in 	the 	art 	that 	the 	inventor 	had
possession 	of 	the 	claimed 	subject 	matter 	as 	of 	the 	filing 	date.”
Id. at 1351. 	Answering this factual question “requires an objec-
tive 	inquiry 	. 	. 	. 	from 	the 	perspective 	of 	a 	person 	of 	ordinary
skill 	in 	the 	art.” 	Id. 	As 	for 	§ 	112’s 	second 	requirement, 	a
specification is “enabled” if “one skilled in the art, after read-
ing the specification, could practice the claimed invention with-
out 	undue 	experimentation.” 	See 	AK 	Steel 	Corp. 	v. 	Sollac, 	344
F.3d 	1234, 	1244 	(Fed. 	Cir. 	2003). 	Thus, 	with 	respect 	to 	both
requirements, 	the 	patents 	must 	be 	scrutinized 	from 	an 	objective
point 	of 	view 	— 	that 	is, 	from 	the 	perspective 	of 	a 	“person 	of
ordinary 	skill 	in 	the 	art.” 	See 	Ariad 	Pharm., 	598 	F.3d 	at 	1354;
Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166
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F.3d 	1190, 	1196 	(Fed. 	Cir. 	1999) 	(“[W]ith 	respect 	to 	enablement
the 	relevant 	inquiry 	lies 	in 	the 	relationship 	between 	the 	speci-
fication, 	the 	claims, 	and 	the 	knowledge 	of 	one 	of 	ordinary 	skill
in the art.”); In re Vaeck, 947 F.2d 488, 496 n.23 (Fed. Cir. 1991)
(“The 	first 	paragraph 	of 	§ 	112 	requires 	nothing 	more 	than objec-
tive enablement.”).
This common denominator is Alcor’s stumbling block. 	Alcor’s
expert, Dr. Harri Kytomaa, opines on one hand that a “person having
ordinary 	skill 	in 	the 	art” 	would 	have 	“a 	bachelor’s 	degree 	[in]
mechanical engineering or a related field” or no degree whatsoever
but “at least five years of experience . . . in medical devices .
. 	. 	.” 	Pl.’s 	Statement 	of 	Additional 	Undisputed 	Facts 	(“PSAUF”)
Ex. U, Kytomaa Dep. at 42:11-43:9, ECF No. 167. 	Dr. Bergeron, on
the other hand, opines that such a person would have:
a 	Ph.D. 	in 	a 	field 	related 	to 	medical 	diag-
nostic testing, or an M.D. and at least three
years of training or experience developing or
using 	medical 	diagnostic 	devices, 	or 	an 	M.S.
in a field related to medical diagnostic test-
ing 	and 	at 	least 	five 	years 	of 	training 	or
experience 	developing 	or 	using 	medical 	diag-
nostic devices.
Id. 	at 	Ex. 	F, 	Bergeron 	Rebuttal 	Report 	¶ 	22. 	These 	differences
are material. 	“[I]f there is conflicting evidence as to what one
of 	ordinary 	skill 	in 	the 	art 	would 	have 	known,” 	a 	multitude 	of
courts have found, “resolution of that conflict is not appropriate
on 	a 	motion 	for 	summary 	judgment.” 	Scanner 	Techs. 	Corp. 	v. 	Icos
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Vision Sys. Corp., N.V., 253 F. Supp. 2d 624, 633 (S.D.N.Y. 2003)
(quotation 	marks 	omitted) 	(denying 	summary 	judgment 	on 	written
description 	and 	enablement 	issues); 	see 	also 	Am. 	Tech. 	Ceramics
Corp. v. Presidio Components, Inc., No. 14-CV-6544(KAM)(GRB), 2018
WL 	1525686, 	at 	*15 	(E.D.N.Y. 	Mar. 	27, 	2018) 	(finding 	conflict
between expert opinions “alone creates a disputed issue of material
fact 	as 	to 	the 	sufficiency 	of 	the 	written 	description 	because 	a
reasonable 	finder 	of 	fact 	could 	conclude 	. 	. 	. 	that 	defendant
cannot 	prove 	indefiniteness 	by 	clear 	and 	convincing 	evidence”);
Intellectual 	Ventures 	I, 	LLC 	v. 	Canon 	Inc., 	143 	F. 	Supp. 	3d 	143,
178 	(D. 	Del. 	2015) 	(“The 	disagreement 	between 	the 	experts 	on
whether one of ordinary skill could practice the invention without
undue experimentation and whether the inventors had possession of
the 	invention 	present 	genuine 	disputes 	of 	material 	fact 	better
left to the province of the jury.”).9
3. 	Trade Secret Misappropriation
Alifax 	alleges 	that 	the 	Defendants 	misappropriated 	three
trade secrets in violation of R.I. Gen. Laws § 6-41-1 et seq., the
Rhode Island Uniform Trade Secrets Act (“RIUTSA”): 	(1) the use of
a plastic capillary photometer sensor (“CPS”) in an automated ESR
9 Alifax argues that it is in fact entitled to summary judgment
concerning the sufficiency of any written description. 	Pl.’s Opp’n
8. 	As 	Alcor 	observes, 	tucking 	this 	request 	into 	an 	opposition
memorandum 	is 	improper. 	The 	Court 	will 	not 	entertain 	Alifax’s
invitation.
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analyzer; (2) software and firmware concerning the acquisition and
conversion 	of 	photometric 	measurements 	to 	an 	ESR 	value; 	and 	(3)
certain 	information 	concerning 	myeloma 	and 	an 	“anemia 	factor.”
See 	generally 	Pl.’s 	Opp’n 	12-20. 	Under 	RIUTSA, 	a 	“trade 	secret”
is defined as:
[I]nformation, 	including 	a 	formula, 	pattern,
compilation, 	program, 	device, 	method, 	tech-
nique, or process, that:
(i) 	Derives 	independent 	economic 	value, 	ac-
tual or potential, from not being gener-
ally 	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) Is 	the 	subject 	of 	efforts 	that 	are 	rea-
sonable under the circumstances to main-
tain its secrecy.
R.I. Gen. Laws § 6-41-1(4). 	Misappropriation includes the acqui-
sition 	of 	a 	trade 	secret 	“by 	a 	person 	who 	knows 	or 	has 	reason 	to
know 	that 	the 	trade 	secret 	was 	acquired 	by 	improper 	means.” 	Id.
§ 	6-41-1(2)(i). 	“Improper 	means” 	are 	in 	turn 	defined 	as 	“theft,
bribery, misrepresentation, breach or inducement of a breach of a
duty to maintain secrecy, or espionage through electronic or other
means.” 	Id. 	§ 	6-41-1(1). 	RIUTSA 	also 	prohibits 	disclosure 	or
use of another’s trade secret without consent by a person who (1)
used “improper means” to acquire it, or (2) “knew or had reason to
know” that the trade secret was “[d]erived from or through a person
who 	owed 	a 	duty 	to 	the 	person 	seeking 	relief 	to 	maintain 	its
secrecy.” Id. § 6-41-1(2)(ii)(B).
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i. 	The Capillary Photometer Sensor
The Defendants argue that because “[c]lear, plastic photome-
ters used to measure properties of fluids have been on the market
for decades,” Alcor’s particular use of a plastic CPS is “generally
known” 	and 	not 	protectable 	under 	RIUTSA. 	Defs.’ 	Mem. 	19. 	The
Defendants also repeatedly fault Alifax for failing to produce an
expert who opines that the CPS constitutes a trade secret. 	Id. at
18. 	The Court is unpersuaded by these arguments.
Alifax’s alleged trade secret is not, as Alcor describes it,
the generic use of a plastic CPS to “measure properties of fluids.”
Id. 	at 	19. 	It 	is 	narrower: 	the 	use 	of 	a 	plastic 	CPS 	“in 	an
automated system that takes photometric readings of a blood sample
in 	a 	capillary 	tube 	following 	the 	stoppage 	of 	a 	pump—in 	other
words, 	as 	part 	of 	an 	automated 	ESR 	analyzer.” 10 	Pl.’s 	Opp’n 	13;
see also Pl.’s Second Am. Identification of Misappropriated Trade
Secrets ¶ 1, ECF No. 137-27(describing CPS trade secret as “[u]sing
a 	plastic 	capillary 	photometer 	sensor 	. 	. 	. 	as 	the 	place 	where
photometric 	measurements 	are 	taken 	to 	be 	used 	in 	the 	calculation
of 	erythrocyte 	sedimentation 	rate 	(“ESR”) 	and 	related 	parame-
10 	Alifax 	has 	abandoned 	any 	claim 	that 	the 	Defendants 	misap-
propriated 	trade 	secrets 	concerning 	“the 	means 	of 	creating 	the
capillary 	channel 	in 	the 	plastic 	block 	or 	the 	use 	of 	screws 	with
Teflon washers to connect the block to the Teflon tubing.” 	Pl.’s
Opp’n 13 n.2.
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ters”). 	The “generally known” use of a plastic CPS in other fluid-
measurement applications does not, in and of itself, vitiate this
contention. 	As the Second Circuit held in its oft-cited ruling in
Imperial Chem. Indus. Ltd. v. Nat’l Distillers & Chem. Corp., 342
F.2d 	737, 	742 	(2d 	Cir. 	1965), 	“a 	trade 	secret 	can 	exist 	in 	a
combination 	of 	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 competi-
tive 	advantage 	and 	is 	a 	protectable 	secret.” 	See 	also 	Water
Servs., 	Inc. 	v. 	Tesco 	Chems., 	Inc., 	410 	F.2d 	163, 	173 	(5th 	Cir.
1969) 	(holding 	protectable 	trade 	secret 	consisted 	of 	“the 	appli-
cation of known techniques and the assembly of available components
to create the first successful system in the industry”).
Alifax’s marshalling of the evidence showing that its use of
a plastic CPS in an ESR analyzer was not generally known, and thus
had 	some 	independent 	economic 	value, 	is 	relatively 	anemic. 	The
Court 	has 	nevertheless 	parsed 	the 	record 	and 	concludes 	that 	—
drawing, 	as 	it 	must, 	all 	reasonable 	inferences 	in 	Alifax’s 	favor
— 	a 	juror 	could 	reasonably 	find 	that 	its 	use 	of 	a 	plastic 	CPS 	as
a 	component 	of 	its 	automated 	ESR 	analyzer 	constituted 	a 	trade
secret. 	It 	is 	undisputed 	that 	the 	plastic 	CPS 	was 	intended 	to
remedy 	variables 	in 	the 	optical 	path 	created 	when 	Teflon 	tubing
was used for the reading chamber. 	PSDF ¶ 86. 	Although the record
before 	the 	Court 	is 	meager, 	Alifax’s 	officers 	testified 	that 	the
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company 	“invented 	capillary 	photometry” 	and 	that 	its 	application
of the CPS in this case was novel or new. 	See PSAUF Ex. J, Galiano
Dep. 	at 	9:3-19; 	DSUF 	Ex. 	24, 	Spezzotti 	Dep., 	at 	148:5-20. 	It 	is
undisputed that Frappa was Alifax’s Senior Manager of hardware and
software/firmware 	design, 	and 	Alifax 	contends 	that 	he 	worked 	on
the 	CPS 	project 	— 	codenamed 	“Mecca” 	— 	before 	his 	departure 	from
Alifax. DSDF ¶ 24; Galiano Aff. ¶ 13. 	In particular, Frappa worked
on a detailed internal report on the development and testing of a
plastic reading cell. 	See PSAUF Ex. I; DSADF ¶ 162.11
Despite 	the 	Defendants’ 	suggestion 	to 	the 	contrary, 	expert
testimony is not required to show the existence of a trade secret.12
Such 	a 	determination 	is 	made 	“on 	a 	case-by-case 	basis, 	like 	any
other 	case 	arising 	under 	any 	other 	area 	of 	law.” 	BladeRoom 	Grp.
Ltd. 	v. 	Emerson 	Elec. 	Co., 	331 	F. 	Supp. 	3d 	977, 	982 	(N.D. 	Cal.
2018). 	Trade secret misappropriation claims are commonly pursued
without expert testimony. 	See, e.g., Bimbo Bakeries USA, Inc. v.
Botticella, 	613 	F.3d 	102, 	110 	(3rd 	Cir. 	2010) 	(affirming 	order
granting preliminary injunction where district court held, without
11 	The 	Defendants 	argue, 	among 	other 	things, 	that 	Alifax 	has
no evidence that the iSED “uses” the CPS trade secret it allegedly
misappropriated. 	Use, 	however, 	is 	not 	required 	under 	RIUTSA. 	§
6-41-1(2)(i) (defining misappropriation to include acquisition by
improper means).
12 	The 	Defendants 	cite 	no 	law 	whatsoever 	in 	support 	of 	this
argument.
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noting reliance on an any expert testimony, that recipe for English
muffins 	constituted 	protectable 	trade 	secret 	as 	plaintiff 	“pro-
duce[d] bread ‘from scratch’”); Patriot Rail Corp. v. Sierra R.R.
Co., No. 2:09-cv-0009-TLN-AC, 2015 WL 4662720, at *6-8 (E.D. Cal.
Aug. 	5, 	2015) 	(finding 	fact 	witness 	testimony 	and 	documents 	sup-
ported 	the 	jury’s 	determination 	that 	trade 	secrets 	existed 	and
were misappropriated); StrikePoint Trading, LLC v. Sabolyk, No. SA
CV071073DOC(MLGx), 	2011 	WL 	13187269, 	at 	*4 	(C.D. 	Cal. 	Nov. 	21,
2011) (affirming verdict as jury heard sufficient testimony about
the amount of time, money, and labor plaintiff expended to develop
and 	maintain 	its 	client 	list, 	as 	well 	as 	efforts 	to 	keep 	it 	se-
cret); 	Henkel 	Corp. 	v. 	Cox, 	386 	F. 	Supp. 	2d 	898, 	902 	(E.D. 	Mich.
2005) (finding, without citing expert testimony, that formula for
unreleased product had independent economic value and was a trade
secret). 	Alifax’s 	failure 	to 	proffer 	an 	expert 	opinion 	here 	is
therefore not dispositive of its CPS-related trade secret claim.
ii. 	The Software/Firmware Trade Secrets
Alifax’s claims of software and firmware trade secret misap-
propriation have dwindled over time. 	See Pl.’s Opp’n 15 n.3. 	The
Court understands that only two such theories remain: 	the alleged
misappropriation 	of 	(1) 	the 	“means 	of 	[optical] 	signal 	acquisi-
tion,” and (2) the means of converting photometric measurements to
an ESR value, i.e. the conversion algorithm and its “very unusual
constants.” 	See 	Mot. 	Hearing 	Tr. 	32:17-33:19, 	Sept. 	25, 	2018
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(describing 	remaining 	software/firmware 	trade 	secret 	claims);
Pl.’s Opp’n 14-15.
Alcor 	presses 	a 	preemption 	defense 	to 	nullify 	both 	allega-
tions. 	Section 301(a) of the Copyright Act provides that all state
law causes of action that are substantively equivalent to a federal
copyright 	infringement 	claim 	are 	preempted. 	17 	U.S.C. 	§ 	301(a);
see 	also 	Data 	Gen. 	Corp. 	v. 	Grumman 	Sys. 	Support 	Corp., 	36 	F.3d
1147, 	1164 	(1st 	Cir. 	1994), abrogated 	on 	other 	grounds 	by Reed
Elsevier, 	Inc. 	v. 	Muchnick, 	559 	U.S. 	154 	(2010). 	However, 	“if 	a
state cause of action requires an extra element, beyond mere cop-
ying, 	preparation 	of 	derivative 	works, 	performance, 	distribution
or 	display, 	then 	the 	state 	cause 	of 	action 	is 	qualitatively 	dif-
ferent 	from, 	and 	not 	subsumed 	within, 	a 	copyright 	infringement
claim 	and 	federal 	law 	will 	not 	preempt 	the 	state 	action.” 	Data
Gen. Corp., 36 F.3d at 1164 (quotation marks omitted).
The 	First 	Circuit 	is 	one 	of 	many 	courts 	that 	have 	rejected
Alcor’s argument. 	A claim of trade secret misappropriation under
state law “that requires proof of a breach of a duty of confiden-
tiality” 	is 	not 	preempted 	by 	the 	Copyright 	Act 	“because 	partici-
pation 	in 	the 	breach 	of 	a 	duty 	of 	confidentiality 	— 	an 	element
that forms no part of a copyright infringement claim — represents
unfair 	competitive 	conduct 	qualitatively 	different 	from 	mere 	un-
authorized 	copying.” 	Id. 	at 	1165; 	accord 	GlobeRanger 	Corp. 	v.
Software AG U.S., Inc., 836 F.3d 477, 486-87 (5th Cir. 2016) (“Be-
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cause trade secret law protects against not just copying but also
any taking that occurs through breach of a confidential relation-
ship or other improper means, all ten circuits that have considered
trade secret misappropriation claims have found them not preempted
by 	the 	Copyright 	Act.”) 	(and 	cases 	cited 	therein). 	The 	apparent
inability of Alifax’s Rule 30(b)(6) witness to articulate the fac-
tual distinctions between its trade secret and copyright infringe-
ment 	causes 	of 	action 	(Alcor’s 	only 	support 	for 	this 	defense) 	is
irrelevant. 	See 	Defs.’ 	Mem. 	23. 	In 	Alifax 	II, 	the 	Court 	found
that 	Frappa 	owed 	Alifax 	“a 	post-employment 	duty 	of 	loyalty 	pro-
hibiting 	the 	disclosure 	or 	use 	of 	Alifax’s 	confidential 	or 	pro-
prietary 	information 	in 	a 	manner 	that 	was 	likely 	to 	[injure]
Alifax’s 	business.” 	Alifax 	II, 	2019 	WL 	317638, 	at 	*11. 	Alifax
alleges that, at a minimum, Alcor knew or had reason to know that
Frappa owed such duties to Alifax. 	See Second Am. & Suppl. Compl.
¶¶ 64-65. 	The RIUTSA claim is thus not preempted.
Turning to the RIUTSA claims’ substance, the Court finds that
summary judgment is again inappropriate. 	The Court disagrees with
the 	Defendants’ 	assertion 	that 	Dr. 	Bergeron 	“conceded 	at 	deposi-
tion 	that 	acquiring 	a 	signal 	and 	converting 	the 	signal 	. 	. 	. 	is
not 	a 	trade 	secret.” 	Defs.’ 	Mem. 	20-21. 	Dr. 	Bergeron 	was 	asked
whether 	the 	first 	sentence 	of 	Paragraph 	45 	of 	his 	report 	“is 	a
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trade 	secret.”13 	PSAUF 	Ex. 	A, 	Bergeron 	Dep. 	at 	94:18-20. 	His
response 	— 	“[t]hat 	statement 	is 	not 	a 	trade 	secret 	as 	far 	as 	I
know,” 	id. 	at 	94:21-22 	— 	is 	hardly 	an 	ironclad 	admission. 	It 	is
at 	best 	susceptible 	of 	multiple 	interpretations, 	including 	that
the statement in his report was not a trade secret. 	In any event,
Dr. Bergeron opines:
[I]t 	was 	not 	generally 	known 	and 	would 	not
have been readily ascertainable how to acquire
signal data for a blood sample . . . . As one
who 	designs 	and 	builds 	instruments, 	I 	expect
that it would take a skilled engineer—but with
no previous experience designing ESR analyzers
based 	on 	stop-flow 	capillary 	technology—at
least one entire month working full time just
to 	program 	the 	signal 	acquisition 	feature 	of
the instrument.
Bergeron 	Report 	¶ 	44; 	see 	also 	Bergeron 	Dep. 	at 	89:1-18. 	As 	for
whether converting optical signals to an ESR value could constitute
a trade secret, Dr. Bergeron’s report further belies Alcor’s con-
tention, even if it is inconsistent with other evidence. 	Bergeron
Report ¶ 46 (“[A]n algorithm that would produce such commercially
acceptable 	results 	was 	not 	generally 	known 	to 	or 	readily 	ascer-
tainable by workers in the field using proper means.”) 	The Court
is not poised to resolve such disputes under Rule 56. 	See Ander-
13 	The 	statement 	read: 	“Assuming 	that 	this 	signal 	could 	be
acquired, 	one 	would 	then 	have 	to 	convert 	the 	signal 	data 	into 	a
value that correlates with that of a standard or modified Wester-
gren test.” 	Bergeron Report ¶ 45, ECF No. 145-11.
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son, 	477 	U.S. 	at 	249; 	Scripps 	Clinic 	& 	Research 	Found., 	927 	F.2d
at 1581.
The Defendants’ additional argument is that Alifax’s conver-
sion algorithm and unique constants could not be used in the iSED
device 	because 	“specific 	conversion 	parameters 	. 	. 	. 	are 	device
dependent” 	is 	also 	unavailing. 	Defs.’ 	Mem. 	21. 	Assuming 	for
argument’s sake the validity of the Defendants’ underlying propo-
sition, 	this 	conclusion 	has 	no 	bearing 	on 	Alifax’s 	misappropria-
tion 	claim. 	It 	is 	undisputed 	that 	Alifax’s 	conversion 	algorithm
and 	constants 	(an 	alleged 	trade 	secret) 	were 	incorporated 	into
some 	iteration 	of 	the 	source 	code 	for 	Version 	104A 	of 	the 	iSED’s
software. 	See PSDF at ¶¶ 124-25, 127, 131; DSADF ¶ 167; see also
DSADF 	Ex. 	B., 	Smith 	Decl. 	¶¶ 	5-6, 	ECF 	No. 	171-11. 	A 	fact 	finder
could 	therefore 	reasonably 	conclude 	that 	Alcor 	at 	least 	acquired
this 	trade 	secret 	during 	the 	iSED’s 	development. 	Acquisition 	by
improper means, even without disclosure or use, is actionable under
RIUTSA. 	See R.I. Gen. Laws § 6-41-1(2)(i).
iii. The Myeloma and Anemia Factor Information
There is uncontroverted evidence that Frappa sent information
concerning 	myeloma 	and 	an 	“anemia 	factor” 	to 	a 	personal 	email
account 	in 	the 	waning 	days 	of 	his 	employment 	with 	Alifax. 	See
DSADF 	¶ 	168; 	PSAUF 	Ex. 	M, 	Frappa 	Dep. 	at 	112:13-17. 	One 	email
attached 	“a 	nice 	memo 	containing 	a 	condensate 	[sic] 	of 	known 	in-
formation available on the Internet” written by an Alifax employee
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concerning 	myeloma. 	Frappa 	Dep. 	at 	113:5-11; 	DSADF 	¶ 	170; 	PSAUF
Ex. N (myeloma email attachment). 	Another email attached a spread-
sheet with “a substantial quantity of data” concerning an “anemia
factor” 	related 	to 	tests 	on 	an 	ESR 	analyzer. 	Frappa 	Dep. 	at
106:21-111:3. 	As the Court has already explained, whether Frappa
or Alcor disclosed or used this information to develop the iSED is
not dispositive if it was allegedly acquired by “improper means.”
See R.I. Gen. Laws § 6-41-1(2)(i).
Alcor 	nevertheless 	casts 	doubt 	on 	whether 	the 	transmitted
information, much of which was publicly available, embodies a trade
secret. 	Public 	availability 	alone, 	however, 	does 	not 	disqualify
internal 	compilations 	from 	RIUTSA 	protection. 	Like 	the 	Uniform
Trade Secrets Act, the statute specifically contemplates the pro-
tection 	of 	information 	formatted 	as 	a 	“compilation.” 	See 	R.I.
Gen. Laws § 6-41-1(4). 	As the Eighth Circuit explained in AvidAir
Helicopter 	Supply, 	Inc. 	v. 	Rolls-Royce 	Corp., 	663 	F.3d 	966, 	972
(8th 	Cir. 	2011), 	“[c]ompilations 	of 	non-secret 	and 	secret 	infor-
mation 	can 	be 	valuable 	so 	long 	as 	the 	combination 	affords 	a 	com-
petitive advantage and is not readily ascertainable.” 	The quantum
of 	non-public 	information 	in 	the 	compilation 	is 	moreover 	irrele-
vant. 	Id. 	(“[T]he 	effort 	of 	compiling 	useful 	information 	is, 	of
itself, entitled to protection even if the information is otherwise
generally known.” (quoting N. Elec. Co. v. Torma, 819 N.E.2d 417,
426 	(Ind. 	Ct. 	App.2004)); 	Penalty 	Kick 	Mgmt. 	Ltd. 	v. 	Coca 	Cola
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Co., 	318 	F.3d 	1284, 	1291 	(11th 	Cir. 	2003) 	(“[E]ven 	if 	all 	of 	the
information 	is 	publicly 	available, 	a 	unique 	combination 	of 	that
information, which adds value to the information, also may qualify
as a trade secret.”).
Alifax’s evidence supporting this theory of misappropriation
is 	— 	again 	— 	sparse. 	In 	late 	August 	2012, 	Frappa 	travelled 	to
Rhode 	Island 	to 	meet 	with 	Alcor’s 	founder, 	who 	was 	interested 	in
a potential working relationship. 	See Alifax II, 2019 WL 317638,
at *2. 	Upon returning to Italy, he notified Alifax of his intent
to 	resign 	as 	of 	September 	1, 	2011, 	but 	explained 	that 	he 	would
remain at the company for the two-month notice period set forth in
his contract. 	Id. 	It was during this period, and just four days
before 	his 	departure, 	that 	Frappa 	forwarded 	the 	disputed 	infor-
mation to a personal email account. 	See DSADF ¶ 168; Frappa Dep.
at 	112:13-17. 	Frappa 	knew 	when 	he 	sent 	the 	messages 	that 	he 	was
going 	to 	work 	for 	Alcor, 	Frappa 	Dep. 	at 	104:6-9, 	and 	he 	conceded
at deposition that the compilations had some value, id. at 106:21-
111:3, 	113:5-11, 	114:24-115:4. 	This 	narrative 	is 	thin, 	but 	the
Court 	cannot 	say 	that 	no 	juror 	could 	reasonably 	find 	that, 	as
internally compiled and maintained by Alifax, the myeloma and ane-
mia 	factor 	information 	had 	some 	independent 	economic 	value 	con-
ferring a competitive advantage on the company.
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4. Copyright Infringement
The 	Defendants’ 	last 	salvo 	targets 	Alifax’s 	copyright 	in-
fringement claim. 	Alifax alleges that Alcor willfully copied the
company’s 	conversion 	algorithm 	(with 	its 	recognizable 	constants)
into 	the 	iSED’s 	source 	code 	to 	convert 	optical 	signals 	to 	an 	ESR
value.14 	PSDF ¶ 124. 	To prevail, Alifax must prove at trial (1)
control 	of 	a 	valid 	copyright, 	and 	(2) 	copying 	of 	the 	original
elements 	of 	the 	work 	by 	Alcor. 	See 	Airframe 	Sys., 	Inc. 	v. 	L-3
Commc’ns 	Corp., 	658 	F.3d 	100, 	105 	(1st 	Cir. 	2011); 	Coquico, 	Inc.
v. Rodriguez-Miranda, 562 F.3d 62, 66 (1st Cir. 2009). 	The first
prong is not in dispute. 	Alifax holds copyright registrations for
the 	allegedly 	duplicated 	source 	code 	at 	issue. 	See 	PSDF 	¶¶ 	111-
114. 	No 	party 	has 	suggested 	that 	Alifax’s 	source 	code 	was 	not
copyrightable. 	The unanswered question is whether Alcor is enti-
tled to a judgment that, as a matter of law, it did not unlawfully
copy the protected material.
Not every instance of copying constitutes copyright infringe-
ment. 	Johnson 	v. 	Gordon, 	409 	F.3d 	12, 	17-18 	(1st 	Cir. 	2005)
14 	This cause of 	action is alleged only against Alcor. 	See
Second 	Am. 	& 	Suppl. 	Compl. 	¶¶ 	77-85. 	Furthermore, 	whatever 	its
original strategy may have been, Alifax no longer alleges a sepa-
rate 	theory 	of 	infringement 	based 	on 	the 	so-called 	“2006 	Source
Code Module,” a section of Alcor’s code identifying Frappa as its
author and stating “Copyright: Alifax Tech.” 	See Pl.’s Opp’n 20;
Defs.’ Mem. 24. 	Alifax suggests that the 2006 Source Code Module
is merely evidence of willfulness. 	Pl.’s Opp’n 20.
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(citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361 (1991)). 	The copying must be wrongful, and such a finding is
based on a two-part test. 	First, Alifax must demonstrate “actual
copying,’” i.e., “that, as a factual matter, the putative infringer
copied 	the 	protected 	work.” 	Coquico, 	Inc., 	562 	F.3d 	at 	66-67.
Second, 	Alifax 	must 	prove 	Alcor’s 	coping 	“was 	so 	egregious 	as 	to
render the allegedly infringing and infringed works substantially
similar.” 	Id. at 66. 	As the First Circuit instructed in Johnson,
“[t]he substantial similarity requirement focuses holistically on
the 	works 	in 	question 	and 	entails 	proof 	that 	the 	copying 	was 	so
extensive 	that 	it 	rendered 	the 	works 	so 	similar 	that 	the 	later
work represented a wrongful appropriation of expression.” 409 F.3d
at 	18. 	This 	quality 	ordinarily 	must 	be 	evaluated 	from 	the 	per-
spective of “the ordinary observer.”15 	Airframe Sys., 658 F.3d at
106. 	De minimis copying — the reproduction of “such a small amount
of the plaintiff’s work . . . that the two works cannot be said to
be substantially similar” — is not actionable infringement. 	Sit-
uation 	Mgmt. 	Sys. 	v. 	ASP 	Consulting 	LLC, 	560 	F.3d 	53, 	58-59 	(1st
15 	As 	the 	First 	Circuit 	highlighted 	in 	Airframe 	Systems:
“Where, as here, the copyrighted work involves specialized subject
matter such as a computer program, some courts have held that the
ordinary observer is a member of the work’s intended audience who
possesses 	specialized 	expertise.” 	658 	F.3d 	106 	n.7 	(quotation
marks omitted). 	The First Circuit does not appear to have ironed
the wrinkles out of this standard, but it is unnecessary to do so
here.
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Cir. 	2009) 	(citing 	2 	Nimmer 	& 	Nimmer, 	Nimmer 	on 	Copyright 	§
8.01[G], 	at 	8-26 	(2008)).16 	Given 	the 	fact-intensive 	nature 	of
these criteria, summary judgment on copyright infringement issues
is “unusual.” 	Segrets, Inc. v. Gillman Knitwear Co., 207 F.3d 56,
62 (1st Cir. 2000).
Here, 	Alifax 	has 	produced 	direct 	evidence 	of 	“actual 	copy-
ing.” 	Dr. 	Bergeron 	and 	Alcor’s 	code 	expert, 	Daniel 	Smith, 	each
observed the Alifax constants in the iSED software’s source code.
See 	PSDF 	¶¶ 	124, 	127; 	DSADF 	¶¶ 	167, 	174; 	PSAUF 	Ex. 	K, 	Smith 	Dep.
at 121:12-123:20, ECF No. 167. 	The constants were observed in the
source 	code 	for 	software 	identified 	as 	“Version 	104A.” 	See 	PSDF
¶¶ 	124-25, 	127; 	DSADF 	¶¶ 	167, 	174; 	Smith 	Dep. 	at 	121:12-123:20.
Alcor nevertheless contends that it did not infringe Alifax’s cop-
yright 	registration 	as 	(1) 	the 	constants 	were 	only 	present 	in 	a
“pre-production” iteration of Version 104A that “never shipped in
any functional iSED machine,” and (2) due to different electronics
and 	mechanical 	engineering, 	conversion 	constants 	are 	necessarily
device specific; Alifax’s constants are not fungible data and would
16 Put another way, de minimis copying is “a technical viola-
tion 	of 	a 	right 	so 	trivial 	that 	the 	law 	will 	not 	impose 	legal
consequences.” 	Ringgold 	v. 	Black 	Entm’t 	Television, 	Inc., 	126
F.3d 70, 74 (2d Cir. 1997); see also UpdateCom, Inc. v. FirstBank
P.R., 	Inc., 	No. 	CIV. 	10-1855 	SCC, 	2014 	WL 	346436, 	at 	*3 	(D.P.R.
Jan. 	30, 	2014) 	(finding 	“11 	lines 	of 	5,000, 	or 	about 	0.22%—con-
stituted de minimis copying in the absence of other evidence.”).
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not work in any device sold to a customer. 	Defs.’ Mem. 26; Defs.’
Reply 19.
After carefully reviewing the record, the Court cannot grant
summary 	judgment 	on 	either 	basis. 	Regarding 	Alcor’s 	first 	argu-
ment, there is evidence that an iteration of Version 104A contained
the protected work. 	See PSDF ¶¶ 124, 127; DSADF ¶¶ 167, 174; Smith
Dep. at 121:12-123:20. 	It is also undisputed that Alcor’s records
show that at least one iSED — and possibly more17 — was sold with
software 	identified 	as 	“Version 	1.04A” 	installed. 	DSADF 	¶ 	177;
PSAUF Ex. L, ECF No. 167. 	The parties have produced dueling expert
opinions concerning whether the “Version 104A” containing Alifax’s
protected constants could be the same software installed on one or
more iSED units when sold. 	See DSADF ¶ 185; PSAUF Ex. P, Bergeron
Decl.; Smith. Decl. ¶¶ 5-9. 	It is not the Court’s role to select
a victor at this stage.
Alcor’s 	argument 	that 	conversion 	constants 	are 	device 	spe-
cific (and thus useless to anyone else even if copied) would side-
17 	The 	document 	Alcor 	produced 	listing 	all 	the 	iSED 	instru-
ments it sold to customers includes the software installed at the
time of manufacture or “as [of] the date of service, whichever is
later.” 	DSADF Ex. A, Frappa Decl. ¶ 7. 	Alcor does not appear to
genuinely 	dispute 	that 	until 	October 	2013, 	iSED 	units 	were 	sold
with some iteration of Version 104A installed, though it disputes
whether 	Alifax’s 	conversion 	constants 	were 	present 	in 	that 	soft-
ware. 	See DSADF ¶ 182.
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step 	these 	complications. 	However, 	as 	the 	parties 	should 	be
acutely aware, the record before the Court concerning the evolution
of 	Version 	104A 	is 	muddy 	and 	unsettled. 	For 	example, 	it 	is 	un-
disputed 	that 	tests 	to 	correlate 	the 	iSED’s 	method 	of 	measuring
ESR to the standard Westergren methodology were conducted December
2012 and January 2013 with an iSED prototype. 	DSADF ¶ 188. 	It is
unclear, 	and 	the 	parties 	dispute, 	what 	software 	version 	the 	pro-
totype 	device 	ran.18 	See 	DSADF 	¶¶ 	186-191. 	The 	test 	protocol
designated 	the 	software 	as 	“software 	version 	1.00.” 	Id. 	¶ 	189.
But 	at 	his 	deposition, 	Frappa 	could 	not 	recall 	what 	was 	meant 	by
“software 	version 	1.00” 	and 	explained 	that 	“[in] 	the 	very 	early
stages of development of the software, the tracking of the changes
were not kept in a religious way.”19 	Frappa Dep. 61:14-62:5. 	He
further described version 1.00 as the “very, very first code writ-
ten 	for 	the 	analyzer,” 	while 	noting 	that 	the 	code 	identified 	in
the test protocol may have been incorrect. 	Id. at 71:17-72:8. At
the 	same 	time, 	it 	is 	undisputed 	that 	the 	“first 	version” 	of 	the
iSED’s software incorporated Alifax’s constants. 	See PSDF ¶¶ 124,
18 	The 	dates 	of 	these 	tests 	appear 	to 	predate 	all 	the 	so-
called “commit” files submitted by Alcor from its code repository
in 	an 	attempt 	to 	demonstrate 	that 	iSED 	units 	in 	March 	2013 	were
not sold with an iteration of Version 104A that contained Alifax’s
constants. 	See Frappa Decl. ¶¶ 17-19.
19 	Frappa’s 	affidavit 	in 	support 	of 	summary 	judgment 	is 	more
confident 	and 	contends 	that 	the 	prototype 	ran 	software 	that 	did
not include Alifax’s constants. 	See generally Frappa Decl.
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127; 	DSADF 	¶¶ 	167, 	174; 	Smith 	Dep. 	at 	121:12-123:20, 	Reasonable
jurors 	could 	interpret 	these 	facts 	to 	find 	that 	Alcor 	made 	some
use of Alifax’s conversion constants. 	Thus, the record before the
Court is not ripe for summary judgment.
The Court perceives the core of Alcor’s non-infringement ar-
guments to be a de minimis copying defense expressed in technical
terms. 	In 	other 	words, 	any 	alleged 	use 	Alcor 	could 	have 	made 	of
Alifax’s protected work was trivial, and “the law does not concern
itself with trifles.” Ringgold, 126 F.3d at 74. 	Such a conclusion
may 	reflect 	a 	rational 	interpretation 	of 	the 	evidence, 	but 	based
on the present state of the record, a final determination must be
reserved for a jury.
A. Alifax’s Motion for Partial Summary Judgment
Alifax 	moves 	for 	summary 	judgment 	on 	Count 	III 	of 	Alcor’s
counterclaim, 	which 	alleges 	that 	Alifax 	intentionally 	interfered
with Alcor’s prospective contractual relations by filing this ac-
tion, 	which 	has 	in 	turn 	“caused 	distributors 	to 	withdraw 	from
negotiations 	with 	Alcor.” 	Ans. 	¶ 	47. 	The 	gravamen 	of 	Alcor’s
cause 	of 	action 	is 	that 	Alifax’s 	claims 	of 	patent 	infringement,
trade secret misappropriation, and copyright infringement are “ob-
jectively baseless” and that this action was filed to serve anti-
competitive ends. 	Id. ¶ 46; Defs.’ Opp’n to Pl.’s Mot. for Summ.
J. 	1, 	ECF 	No. 	180. 	Alifax’s 	principle 	basis 	for 	judgment 	in 	its
favor 	is 	the 	Noerr-Pennington 	doctrine 	— 	a 	rule 	established 	to
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protect a litigant’s constitutional right to petition the govern-
ment for redress. 	Pl.’s Mot. for Summ. J. 12-14, ECF No. 166.
The 	Court 	agrees 	that 	the 	Noerr-Pennington 	doctrine 	should
control 	here. 	The 	doctrine 	was 	born 	from 	twin 	antitrust 	cases,
see Eastern Railroad Presidents Conference v. Noerr Motor Freight,
Inc., 	365 	U.S. 	127 	(1961) 	and 	United 	Mine 	Workers 	v. 	Pennington,
381 U.S. 657 (1965), but is rooted in fundamental First Amendment
principles. 	Sosa 	v. 	DIRECTV, 	Inc., 	437 	F.3d 	923, 	929 	(9th 	Cir.
2006) 	(stating 	the 	doctrine 	“derives 	from 	the 	First 	Amendment’s
guarantee 	of 	“the 	right 	of 	the 	people 	. 	. 	. 	to 	petition 	the 	Gov-
ernment for a redress of grievances.” (quoting U.S. Const. amend.
I.)). 	As described by the Ninth Circuit in Theme Promotions, Inc.
v. News America Marketing FSI, 546 F.3d 991, 1006 (9th Cir. 2008),
“[t]he essence of the Noerr–Pennington doctrine is that those who
petition 	any 	department 	of 	the 	government 	for 	redress 	are 	immune
from statutory liability for their petitioning conduct.” 	The pro-
tection offered by this form of immunity includes petitioning ac-
tivities 	in 	“all 	departments 	of 	the 	Government,” 	including
bringing 	legitimate 	disputes 	in 	U.S. 	courts. 	Cal. 	Motor 	Transp.
Co. v. Trucking Unlimited, 404 U.S. 508, 510 (1972).
Alcor 	urges 	the 	Court 	to 	cabin 	the 	doctrine’s 	applicability
to 	the 	facts 	of 	its 	origin 	— 	antitrust 	cases. 	The 	Court 	is 	un-
persuaded. 	Noerr-Pennington immunity has a broad “constitutional
foundation.” 	Sosa, 437 F.3d at 930; 	Amarel v. Connell, 102 F.3d
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1494, 1518 (9th Cir. 1996), as amended (Jan. 15, 1997) (describing
Noerr-Pennington 	as 	a 	“general 	rule” 	that 	includes 	“the 	approach
of citizens . . . to administrative agencies . . . and to courts”
(quotation 	marks 	omitted); 	Whelan 	v. 	Abell, 	48 	F.3d 	1247, 	1254
(D.C. 	Cir. 	1995) 	(“As Noerr–Pennington rests 	on 	the 	conclusion
that the filing of claims in court . . . is part of the protected
right 	to 	petition, 	it 	is 	hard 	to 	see 	any 	reason 	why 	. 	. 	. 	common
law 	torts 	. 	. 	. 	might 	not 	in 	some 	of 	their 	applications 	be 	found
to violate the First Amendment.”). 	As the Third Circuit concluded,
“the 	purpose 	of Noerr–Pennington as 	applied 	in 	areas 	outside 	the
antitrust 	field 	is 	the 	protection 	of 	the 	right 	to 	petition.” 	We,
Inc. v. City of Phila., 174 F.3d 322, 327 (3d Cir. 1999). 	Courts
across the country have thus applied the doctrine to other causes
of 	action, 	including 	common 	law 	torts 	such 	as 	tortious 	interfer-
ence, 	that 	could 	chill 	the 	constitutional 	right 	of 	petition.20
See, 	e.g., 	Theme 	Promotions, 	546 	F.3d 	at 	1006–07 	(9th 	Cir. 	2008)
(applying Noerr-Pennington to claim for tortious interference with
prospective economic advantage under California law); Pers. Dep’t,
Inc. 	v. 	Prof’l 	Staff 	Leasing 	Corp., 297 	F. 	App’x. 	773, 	779 	(10th
20 As the U.S. District Court for the District of Massachusetts
recently observed, “The First Circuit has not decided whether the
Noerr-Pennington 	doctrine 	is 	applicable 	to 	state 	law 	claims 	as 	a
matter 	of 	federal 	law.” 	United 	Food 	& 	Commercial 	Workers 	Unions
& 	Emp’rs 	Midwest 	Health 	Benefits 	Fund 	v. 	Novartis 	Pharm. 	Corp.,
No. 15-CV-12732, 2017 WL 2837002, at *9 (D. Mass. June 30, 2017),
aff’d, 902 F.3d 1 (1st Cir. 2018).
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Cir. 	2008) 	(holding 	that 	Noerr–Pennington 	can 	provide 	immunity
from liability arising from a tortious interference claim); Int’l
Bhd. 	of 	Teamsters, 	Local 	734 	Health 	& 	Welfare 	Tr. 	Fund 	v. 	Philip
Morris 	Inc., 	196 	F.3d 	818, 	826 	(7th 	Cir. 	1999) 	(“Although 	the
Noerr–Pennington 	doctrine 	originated 	in 	antitrust 	law, 	its 	ra-
tionale is equally applicable to RICO suits.”); Video Int’l Prod.,
Inc. v. Warner–Amex Cable Commc’ns, Inc., 858 F.2d 1075, 1084 (5th
Cir. 	1988) 	(applying 	Noerr-Pennington 	to 	tortious 	interference
with contract claim); Sierra Club v. Butz, 349 F. Supp. 934, 938-
39 (N.D. Cal. 1972) (applying Noerr-Pennington to contractual in-
terference claim).21
Alcor’s 	contentions 	that 	the 	Rhode 	Island 	Supreme 	Court 	has
not 	fully 	embraced 	the 	Noerr-Pennington 	principles 	or 	that 	the
Rhode 	Island 	Limits 	on 	Strategic 	Litigation 	Against 	Public 	Par-
ticipation (“Anti-SLAPP”) statute, R.I. Gen. Laws § 9-33-1 et seq.,
displaces 	this 	doctrine 	are 	untenable. 	Like 	many 	of 	the 	courts
cited 	above, 	the 	Rhode 	Island 	Supreme 	Court 	recognized 	in 	Pound
Hill 	Corp. 	v. 	Perl 	that 	“[a]lthough 	the 	[Noerr-Pennington] 	doc-
21 	Alcor 	cites 	a 	statement 	from 	this 	Court’s 	ruling 	in 	In 	re
Loestrin 24 Fe Antitrust Litig., 261 F. Supp. 3d 307, 338 (D.R.I.
2017), as support for its position. 	The Court stated, “Generally,
under the Noerr–Pennington doctrine, a Sherman Act violation can-
not 	be 	predicated 	upon 	mere 	attempts 	to 	influence 	the 	passage 	or
enforcement 	of 	laws.” 	Id. 	(quotation 	marks 	omitted). 	The 	Court
did not specifically hold that Noerr-Pennington could not apply to
state-law tort claims. 	Id. at 348.
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trine arose in a context of application of the antitrust statutes,
it 	is 	based 	upon 	the 	First 	Amendment 	right 	to 	petition 	the 	gov-
ernment 	for 	redress 	of 	grievances.” 	668 	A.2d 	1260, 	1263 	(R.I.
1996). 	In 	Hometown 	Properties, 	Inc. 	v. 	Fleming, 	the 	Court 	unam-
biguously 	stated, 	“This 	Court 	has 	adopted 	the 	Noerr–Pennington
premise and has applied its protection to common-law tort claims.”
680 A.2d 56, 60 (R.I. 1996). 	Count III of Alcor’s counterclaim is
a common law tort claim.
Furthermore, nowhere in the Rhode Island Supreme Court’s rel-
evant rulings does the Court purport to limit the applicability of
Noerr-Pennington 	to 	issues 	of 	“public 	concern,” 	as 	Alifax 	sug-
gests. 	The 	“private” 	nature 	of 	such 	cases 	is 	commonplace. 	See,
e.g., 	Theme 	Promotions, 	Inc., 	546 	F.3d 	at 	1006–07 	(a 	dispute 	be-
tween 	an 	advertiser 	and 	a 	publisher 	concerning 	whether 	right 	of
first refusal agreements between publisher and packaged goods com-
panies violate antitrust law or constituted tortious interference
with prospective economic advantage). 	The frequent invocation of
this doctrine in actions related to matters of public concern does
not necessarily limit its applicability to actions involving such
matters. 	As the Supreme Court acknowledged in Hometown Properties,
the Rhode Island Anti-SLAPP statute compliments the Noerr-Penning-
ton doctrine by “protect[ing] valid petitioning activities.” 	680
A.2d at 61. 	The statute cannot, however, displace a doctrine drawn
from 	a 	federal 	constitutional 	right 	to 	petition. 	See 	Theme 	Pro-
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motions, Inc., 546 F.3d at 1007 (holding as “Noerr–Pennington pro-
tects 	federal 	constitutional 	rights, 	it 	applies 	in 	all 	contexts,
even where a state law doctrine advances a similar goal”).
The 	Court 	also 	finds 	that 	the 	“sham 	exception” 	to 	Noerr-
Pennington 	immunity 	is 	inapplicable 	as 	a 	matter 	of 	law. 	Sham
petitioning activities are not entitled to protection. 	See Noerr
Motor Freight, Inc., 365 U.S. at 144. 	The criteria for identifying
such nonsense lawsuits are well-defined. 	An action is considered
a 	“sham” 	if 	it 	is 	(1) 	objectively 	baseless, 	and 	(2) 	subjectively
motivated by a desire to abuse process rather than obtain judicial
relief. 	Prof’l 	Real 	Estate 	Inv’rs, 	Inc. 	v. 	Columbia 	Pictures
Indus., 	Inc., 	508 	U.S. 	49, 	60-61 	(1993). 	A 	lawsuit 	is 	only 	“ob-
jectively baseless” if “no reasonable litigant could realistically
expect 	success 	on 	the 	merits,” 	id., 	and 	a 	finding 	of 	objective
merit 	obviates 	the 	need 	to 	inquire 	as 	to 	motive. 	See 	id. 	at 	57
(“[A]n 	objectively 	reasonable 	effort 	to 	litigate 	cannot 	be 	sham
regardless of subjective intent.”).
A 	legion 	of 	federal 	courts, 	including 	the 	Federal 	Circuit,
have held that a denial of summary judgment precludes a finding of
objective 	baselessness 	as 	a 	matter 	of 	law. 	See, 	e.g., 	Beckman
Instruments, 	Inc. 	v. 	LKB 	Produkter 	AB, 	892 	F.2d 	1547, 	1551 	(Fed.
Cir. 1989) (“find[ing] it difficult to agree that [an] inequitable
conduct defense was ‘baseless’ when it survived a motion for sum-
mary 	judgment 	and 	was 	rejected 	only 	after 	findings 	were 	made 	on
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disputed facts”); Twin City Bakery Workers & Welfare Fund v. Astra
Aktiebolag, 207 F. Supp. 2d 221, 224 (S.D.N.Y. 2002) (“[A]llowing
claims 	of 	infringement 	of 	four 	of 	the 	six 	asserted 	patents 	to
proceed 	beyond 	summary 	and 	two 	of 	the 	four 	to 	proceed 	through
trial, 	preclude 	any 	contention 	that 	defendants’ 	litigation 	is 	so
baseless 	as 	not 	to 	warrant 	Noerr-Pennington 	immunity.”);
Nobelpharma 	Ab 	v. 	Implant 	Innovations, 	Inc., 	930 	F. 	Supp. 	1241,
1255 (N.D. Ill. 1996) (denial of motion for summary judgment “fore-
closed” the argument that the patent infringement lawsuit was ob-
jectively baseless); Gen-Probe, Inc. v. Amoco Corp., Inc., 926 F.
Supp. 	948, 	958 	(S.D. 	Cal. 	1996) 	(“A 	denial 	of 	summary 	judgment
means 	that 	the 	nonmoving 	party 	has 	produced 	enough 	evidence 	that
a 	rational 	jury 	could 	find 	in 	its 	favor. 	A 	party 	with 	sufficient
evidence to support a jury finding in its favor has probable cause
to bring a lawsuit.”).
The 	Court 	has 	denied 	the 	Defendants’ 	request 	for 	summary
judgment 	on 	the 	three 	claims 	Alcor 	contends 	are 	unfounded. 	If
reasonable minds can differ concerning the Defendants’ liability,
the same reasonable minds could not conclude that Alifax could not
“realistically expect success on the merits.” 	Prof’l Real Estate
Inv’rs, 508 U.S. at 60-61; see also Avitech, LLC v. Embrex, Inc.,
WMN-04-3082, 2008 WL 11287093, *5 (D. Md. Aug. 19, 2008) (holding
that 	if 	a 	reasonable 	jury 	could 	find 	infringement, 	“a 	reasonable
jury could not find that [patentee] could not have held a reason-
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able 	belief 	that 	there 	was 	a 	chance 	that 	its 	infringement 	claim
would succeed”). 	Accordingly, as a matter of law Alifax is enti-
tled to judgment in its favor on Count III of Alcor’s First Amended
Counterclaim.
IV. 	Conclusion
Alifax 	has 	avoided 	“the 	swing 	of 	the 	summary 	judgment 	ax,”
United States v. One Lot of U.S. Currency ($68,000), 927 F.2d 30,
32 (1st Cir. 1991) (Selya, J.), at times by a whisker. 	Regardless,
having found that reasonable minds could differ as to the veracity
of 	Alifax’s 	claims, 	this 	action 	falls 	squarely 	within 	the 	First
Amendment’s 	petitioning 	protections 	as 	articulated 	under 	the 	No-
err-Pennington doctrine. 	Consequently, for the foregoing reasons,
the Defendants’ Motion for Partial Summary Judgment (ECF Nos. 142,
143) is DENIED, and Plaintiff’s Motion for Partial Summary Judgment
on Count III of the First Amended Counterclaim (ECF Nos. 159, 166)
is GRANTED.
IT IS SO ORDERED.
William E. Smith
Chief Judge
Date: 	March 26, 2019
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