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November 13, 2000


The opinion of the court was delivered by: Armstrong, District Judge.


This matter comes before the Court on (1) the Motion of defendants Aha! Software Corporation (hereinafter "Aha!") and Greg Stikeleather for Summary Judgment on Plaintiffs' Second, Third, Fourth, Fifth, and Sixth Claims; (2) the Motion of Defendant Microsoft Corporation (hereinafter "Microsoft") for Partial Summary Judgment on Counts Two and Six; and (3) the Motion of plaintiffs Mitchell D. Forcier and Marathon Development Corporation (hereinafter "Marathon") for Leave to file Second Amended Complaint. Having read and considered all the papers filed in connection with this motion, having considered the arguments advanced by the parties and being fully informed, the Court GRANTS defendants' Motions for Summary Judgment of plaintiffs' second, third, fourth, fifth, and sixth claims, but DENIES defendant Aha!'s request for sanctions, GRANTS plaintiffs' Motion for Leave to further Amend their complaint to include certain miscellaneous allegations, but DENIES the motion to the extent that plaintiffs seek to include a claim for tortions interference, and GRANTS the parties request for an order permitting defendants to file amended answers and counterclaims.


Plaintiff Mitchell D. Forcier alleges that he pioneered the development of ink processing technology, which allows pen-based computer systems to process electronic ink in a manner analogous to how word processing programs manipulate typed text. (First Amended Complaint (hereinafter "FAC") ¶¶ 14-15)

Subsequently, Greg Stikeleather left GO to form Aha! In February, 1991, he asked Forcier to join his new company. Forcier did not immediately accept. (FAC ¶ 18) In June of 1991, however, he agreed to disclose information to Aha! concerning "a Pen-Based Script, Text and Drawing processor" that he had developed pursuant to a new confidentiality agreement executed on June 21, 1991. (Forcier Dec. ¶ 11, Ex. 4; Stikeleather Dec. ¶ 5, Ex. 2) This agreement also contained a time limit. According to its terms, the "obligation of confidentiality [was to] expire three (3) years from the date of the last disclosure" made pursuant to it. The agreement also expressly excluded information that entered "the public domain" through no fault of Aha! Greg Stikeleather signed the agreement on behalf of Aha! (Id.)

Following the execution of this document, Aha! and Forcier discussed the possibility of Forcier's going to work for Aha! On September 17, 1991, Forcier signed a letter agreeing to become an employee of Aha! (Farnham Dec. ¶ 3, Ex. B, 139:3-19; Forcier Dec. ¶ 18) This agreement did not last, however, and on October 14, 1991, Forcier terminated his relationship with Aha! (Stikeleather Dec. ¶ 7, Ex. 4; Forcier Dec. ¶ 19) Forcier did not disclose any further information to Aha! that he considered confidential or trade secret after October 10, 1991. (Vandenberg Dec. ¶ 1, Ex.s 2, 3 (at 43:6-13), 4 (at 16:13-14)).

About a year later, on October 1, 1992, an international Patent Cooperation Treaty ("PCT") patent application that Forcier had filed was published. (Vandenberg Dec. ¶ 1, Ex. 5) That patent application disclosed fifteen or seventeen of Forcier's alleged trade secrets. (Vandenberg Dec. ¶ 1, Ex.s 5, 6, and 7; Lundwall Dec., Ex. B) Forcier understood that the applications would be available for the public to see once they were published. (Vandenberg Dec. ¶ 1, Ex. 7 at 18:18-24) Between February and May of 1993, he also sent copies of the application to several companies, including Microsoft, Apple, and IBM, advising them that the information contained in the application was in "the public domain". (Id., Ex.s 8-11)

Several months later, on May 20, 1993, Aha! filed a patent application for its InkWriter product with the U.S. Patent and Trademark Office. (Vandenberg Dec., ¶ 1, Ex. 14) Plaintiff alleges that this application contained seven of his trade secrets. (Lundwall Dec., Ex. B)

Then, on June 14, 1993, Aha! announced the impending release of the InkWriter product (described as a technology to process handwriting and edit handwritten letters and words). (Stikeleather Dec. ¶ 9, Ex. 6) Following this announcement, the product, was the subject of numerous newspaper articles describing its technology and functionality. (Stikeleather Dec. ¶ 10, Ex.s 7-8)

On June 15, 1993, the U.S. Patent and Trademark Office issued Forcier a patent (No. 5,220, 649 ("649")). (Forcier Dec. ¶ 25; Vandenberg Dec. ¶ 1, Ex. 15) That patent disclosed seventeen of Forcier's alleged trade secrets. (Lundwall Dec., Ex. B)

On June 22, 1993, Forcier sent Aha! a letter enclosing a copy of his PCT application and advising it of his patent. He told Aha! that it would have to pay royalties to sell products that incorporated his patented claims, but made no express reference to the 1991 non-disclosure agreement or to any allegation that Aha! had violated the agreement by using information covered by it. (Forcier Dec. ¶ 25, Ex. 10) Aha!'s attorneys wrote back a week later denying that the company was infringing any rights delimited in Forcier's U.S. Patent or PCT application. (Vandenberg Dec.Ex. 17)

About one month later, on July 27, 1993, the U.S. Patent and Trademark Office issued a second patent to Forcier (No. 5,231,698 ("698")). (Vandenberg Dec.Ex. 18). This patent also disclosed about 17 of Forcier's alleged trade secrets. (Lundwall Dec.Ex. B)

In October, 1993, Forcier read an article in Byte magazine reporting that the Aha! InkWriter product was commercially available. (Vandenberg Dec.Ex.s 19 & 20 (at 23:25); Forcier Dec. ¶ 27) He had his wife order a copy of the software. (Vandenberg Dec.Ex. 20, 23:25) The software arrived in November, 1993 with a 100-page user s manual and a 12-page quick-reference guide. (Id. Ex.s 23 and 24) The inside page of the manual indicated that Aha! had a patent pending on the product. (Id. Ex. 23, bate stamp FOR 002764)

At some point between November 1993 and January 1994, Forcier spent a day testing the software. Based on the results, he became concerned that some of the information that he had disclosed had been incorporated into the product. (Vandenberg Dec., Ex. 25, 21:5-22:7; Forcier Dec. ¶ 27) Forcier alleges that Aha!'s InkWriter product specifically used three of his alleged trade secrets. (Vandenberg Dec., Ex.s 25 (at 102:13-24, 103:11-14) & 36 (p. 3)). He suspected that it might use others as well. (Id. Ex. 25 at 24:8-18, 25:24-26:8, 39:21-40)

Rather than take immediate action to protect his alleged trade secrets, however, Forcier decided to test the software further. In order to do so, he needed to obtain another device to run the software. He had rented such a device previously. Now, he was advised by the AT & T salesperson with whom he spoke that the product line was being discontinued and the devices no longer were available. (Forcier Dec. ¶¶ 27-28)

Accordingly, on April 15, 1994, Forcier's attorney sent Aha! a letter stating that it appeared the device that ran the software was no longer available and asking whether Aha! still was selling the software. Forcier's counsel's letter said nothing about the 1991 non-disclosure agreement or any violation of it. (Forcier Dec. ¶ 29, Ex. 11) On May 17, 1994, Aha! responded with a letter denying that its software infringed Forcier's patents and stating that it believed the device to run the software still could be purchased. (Forcier Dec. ¶ 29, Ex. 12) Aha!'s letter did not say whether the software still was available.

Forcier did not contact Aha! again after this, nor did he notify it in any way that he believed the company had violated their 1991 confidentiality agreement. until he filed suit in 1999. (Vandenberg Dec., Ex. 28, 70:17-71:9) He claims he understood from newspaper and magazine articles at the time that the bottom was falling out of the pen-based computing market. (Forcier Dec. ¶ 30) In late-1994, he drove by Aha!'s offices, did not see the company's sign or any cars that he recognized in the parking lot, and concluded that the company must have gone out of business. For that reason, he claims, he decided not to pursue legal action. (Forcier Dec. ¶¶ 31-32)

During June and July of 1994, the second version of Aha!'s InkWriter product received further national attention. (Vandenberg Dec.Ex. 29) Thereafter, on December 8, 1994, Aha!'s InkWriter-related international patent application was published. (Id. Ex. 30) Forcier claims that this application disclosed all of his trade secrets that had not previously been published by his own patents. (Id., Ex.s 6, 7 (at 109:9-22), 36 (at 2)) By December 31, 1994, all of Forcier's alleged trade secrets had been described either in the patents or published patent applications that he and Aha! filed. (Id., Ex.s 7 (at 109:9-22), 36 (at 2))

Between December, 1994 and May, 1995, Aha!'s third version of the InkWriter product received national press attention. (Id. Ex. 31) In June, 1995, it's fourth version of the product garnered further attention. (Id. Ex. 32) Then, on March 26, 1996, Aha! sold its InkWriter product line and rights to its pending patent applications to defendant Microsoft Corporation. Aba! and Microsoft publicly announced the sale in a press release dated April 8, 1996. (Stikeleather Dec. ¶ 18, Ex. 15; Vandenberg Dec.Ex. 33) The same month, Microsoft hired two former Aha! employees (Dan Altman and Charlton Lui) and put them to work incorporating and developing Aha!'s ink processing technology into Microsoft products and assisting in filing and prosecuting patent applications related to that technology. (Lundwall Dec.Ex.s E (at 28-29, 21-33, 35-36, 58-61, 220-21) & F (at 94-99, 103-07, 127-29))

Forcier claims that he heard of the sale several months later and, only then, realized that Aha! had not gone out of business. (Forcier Dec. ¶ 33) His attorney contacted Microsoft in July 1996 to advise it of his claims that Aha! had misappropriated his technology and infringed his patents. (Forcier Dec. ¶¶ 36-38, Ex.s 15-17) Forcier's attorney and Microsoft conferred by letter and telephone but reached no agreement concerning Forcier's claims. (Forcier Dec. ¶ 36)

In April 1999, Forcier filed suit against Aha! and Microsoft (and others) alleging inter alia (1) misappropriation of trade secrets and unfair competition as against both Aha! and Microsoft, and (2) breach of contract, fraud, and constructive fraud as against Aha! (FAC ¶¶ 36-57) Aha! and Microsoft filed motions for summary judgment with respect to these claims.

Plaintiff also has filed a motion for leave to file a second amended complaint ("SAC") so that he may add (1) a claim for tortious interference with contract against Microsoft, and (2) clarification concerning the relief sought against Microsoft. Microsoft opposes the first, but not the second, proposed amendment. Microsoft and all other parties have stipulated, however, that the defendants be permitted to file Amended Answers and Counterclaims. They seek an order from the Court granting them permission to do so.


A. Defendants' Motions for ...

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