Advanced Fluid Systems Inc v. Kevin Huber

PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_____________

Nos. 19-1722 and 19-1752
_____________

ADVANCED FLUID SYSTEMS, INC.

v.

KEVIN HUBER; INSYSMA (Integrated Systems and
Machinery, LLC);
LIVINGSTON & HAVEN LLC; CLIFTON B. VANN, IV;
THOMAS AUFIERO

Livingston & Haven, LLC; Clifton B. Vann, IV; Thomas
Aufiero,
Appellants in No.
19-1722

Kevin Huber; INSYSMA,
Appellants in No.
19-1752
_______________

On Appeal from the United States District Court
for the Middle District of Pennsylvania
(D.C. No. 1-13-cv-03087)
District Judge: Hon. Christopher C. Conner
 _______________

Argued
January 15, 2020

Before: JORDAN, GREENAWAY, JR., and KRAUSE,
Circuit Judges.

(Filed: April 30, 2020)
_______________

Ronald L. Hicks, Jr. [ARGUED]
Carolyn B. McGee
Porter Wright Morris & Arthur
6 PPG Place – 3rd Fl.
Pittsburgh, PA 15222
Counsel for Appellants Livingston & Haven, LLC;
Clifton B. Vann, IV; Thomas Aufiero

Jonathan Z. Cohen
Conrad O’Brien
1500 Market Street
West Tower, Ste. 3900
Philadelphia, PA 19102
Counsel for Appellants Kevin Huber and
INSYSMA (Integrated Systems and Machinery, LLC)

David G. Concannon
200 Eagle Road – Ste. 116
Wayne, PA 19087

2
Zahra R. Dean
Robert J. LaRocca [ARGUED]
Kohn Swift & Graf
1600 Market Street – Ste. 2500
Philadelphia, PA 19103
Counsel for Appellee
______________

OPINION OF THE COURT
_______________

JORDAN, Circuit Judge.

This sorry story of disloyalty and deception piled upon
deception resulted in verdicts against the wrongdoers. They’re
not happy about that, but, when the tale is told, it’s clear that
the result is entirely justified. In brief summary, Kevin Huber
stole confidential information from his employer Advanced
Fluid Systems, Inc. (“AFS”), first for the benefit of an AFS
competitor, Livingston & Haven, LLC (“Livingston”), with
whom Huber wanted to ingratiate himself, and then, in another
twist of deceit, for a company he created, Integrated Systems
and Machinery, LLC (“INSYSMA”; together with Huber, the
“Huber Parties”), to compete against both AFS and Livingston.
When the facts began to come to light, AFS brought suit
against the Huber Parties and Livingston, as well as Livingston
employees Clifton B. Vann IV and Thomas Aufiero (together
with Livingston, the “Livingston Parties”), alleging various
claims under federal and state law, including principally trade
secret misappropriation claims under the Pennsylvania
Uniform Trade Secrets Act (the “Trade Secrets Act” or the
“Act”). There was one other defendant, Orbital Sciences
Corporation (“Orbital”), the company from which AFS,

3
Livingston, and INSYSMA were all trying to get business.
AFS settled with Orbital before trial, and it is not one of the
Appellants here. All of the other defendants are.

On summary judgment, the District Court held as a
matter of law that the Huber Parties were liable under the Trade
Secrets Act for misappropriating AFS’s trade secrets. Then,
following a bench trial, the Court held the Livingston Parties
jointly and severally liable with the Huber Parties for that
misappropriation, and it held all Appellants except Aufiero and
INSYSMA liable for breach of fiduciary duty or aiding and
abetting that breach. As remedies for the tortious conduct, the
Court awarded compensatory damages from all Appellants,
exemplary damages under the Act from Huber, and, based on
the breach of fiduciary duty, punitive damages from all
Appellants except INSYSMA and Aufiero. 1

1
The terms “exemplary damages” and “punitive
damages” are synonymous, see Damages, Black’s Law
Dictionary (11th ed. 2019) (noting punitive damages are
“[a]lso termed exemplary damages”), but the Trade Secrets Act
uses the former term while common law causes of action tend
to invoke the latter. See 12 Pa. Const. Stat. § 5304(b)
(permitting court to award “exemplary damages” if “willful
and malicious misappropriation exists”); Hutchison ex rel.
Hutchison v. Luddy, 870 A.2d 766, 773 (Pa. 2005) (“This Court
found that an award of punitive damages was proper for claims
sounding in breach of fiduciary duty, as well as intentional
withholding of information and fraudulent
misrepresentation.”).

4
 Appellants bring a host of issues to us. Their central
argument, however, is that AFS’s claim for trade secrets
misappropriation must fail because AFS does not “own” the
purported trade secrets at issue. Beyond their core grievance,
Appellants also attack the District Court’s rulings that the
claimed trade secrets are actually protectable under the Trade
Secrets Act, that the Livingston Parties were not prejudiced by
their counsel’s conduct at and following the trial, and that the
damages awards were warranted. In a thorough opinion, the
District Court properly rejected Appellants’ ownership
argument on the ground that the Act only requires that a
plaintiff lawfully possess the trade secrets it wishes to
vindicate. In similarly persuasive decisions, the Court
dismissed Appellants’ various remaining challenges as
inconsistent with the record, untimely, legally deficient, or
some combination thereof. We agree with all of those
conclusions and will affirm the Court’s rulings and judgment
in their entirety.

I. BACKGROUND 2

A. Factual Background

“AFS distributes, manufactures, and installs hydraulic
components and hydraulic systems” that use pressurized fluids

2
We derive this factual summary primarily from the
District Court’s post-trial findings of fact and conclusions of
law. See Fed. R. Civ. P. 52(a)(6) (“Findings of fact, whether
based on oral or other evidence, must not be set aside unless
clearly erroneous ….”); Newark Branch, N.A.A.C.P. v. City of
Bayonne, 134 F.3d 113, 119 (3d Cir. 1998) (“In a bench trial,
the court shall find the facts and state separately its conclusions

5
to move heavy machinery for complex operations and
engineering projects. Advanced Fluid Sys., Inc. v. Huber, 295
F. Supp. 3d 467, 470 (M.D. Pa. 2018) (hereinafter, “Post-Trial
Op.”). Huber was employed at AFS as a full-time sales
engineer between November 2006 and October 2012.
Livingston is a competitor of AFS’s and designs, assembles,
and installs hydraulic fluid systems. Vann is the chief
executive officer of Livingston’s holding company and
Livingston’s president. Aufiero worked at AFS from 1989
through January 2011, when he left to become a regional sales
manager at Livingston.

In September 2009, AFS entered into a three-year
contract with the Virginia Commonwealth Space Flight
Authority (the “Space Flight Authority” or the “Authority”) to
build, install, and maintain a hydraulic system for the NASA
rocket launch facility on Wallops Island, Virginia. From that

of law thereon and those [f]indings of fact ... shall not be set
aside unless clearly erroneous.”) (internal quotation marks
omitted and alteration in original). With respect to the facts
pertinent to the District Court’s decision on summary
judgment, we view them in the light most favorable to the non-
moving parties, see Lawrence v. City of Philadelphia, 527 F.3d
299, 310 (3d Cir. 2008) (“It is well established that [on
summary judgment] the court must view all evidence and draw
all inferences in the light most favorable to the non-moving
party .… The rule is no different where there are cross-motions
for summary judgment.”), though that is still highly
unflattering for Appellants. Our summary of the procedural
history draws from the entire record, including the District
Court’s memorandum resolving the parties’ post-judgment
requests for relief.

6
island, Orbital launches its Antares rocket, employing the
hydraulic system designed and installed by AFS. The Antares
rocket services and supplies the International Space Station.
Huber was intimately involved in the development of the
Wallops Island hydraulic system, eventually becoming its “de
facto project manager[.]” Id. at 473.

AFS supplied the Space Flight Authority with a
comprehensive package of engineering drawings generated
during the design and installation of the hydraulic system.
Pursuant to the contract (the “Agreement”) between AFS and
the Authority, all materials generated during performance of
the Agreement were to be deemed “work for hire” and the
“exclusive property” of the Authority. Advanced Fluid Sys.,
Inc. v. Huber, No. 1:13-CV-3087, 2017 WL 2445303, at *2
(M.D. Pa. June 6, 2017) (hereinafter, “Summary Judgment
Op.”). All drawings that AFS delivered to the Authority
pursuant to the Agreement included an AFS title block with a
confidentiality stamp. In tension with the ownership
stipulation in the Agreement, the confidentiality stamp read:
“This drawing discloses propriety and confidential data of
Advanced Fluid Systems, Inc., and may not be used disclosed
or released, in whole or in part, for any purpose outside the
authorized recipient, without signed authorization, and must be
returned upon request.” Post-Trial Op., 295 F. Supp. 3d at 484.

In September of 2012, the Space Flight Authority
experienced financial difficulty. As a result, Orbital acquired
control of the launch system, including the hydraulic system
that AFS had designed and manufactured. AFS did not execute
a non-disclosure agreement with Orbital, but Orbital
maintained a practice of only disclosing AFS’s drawings on a
need-to-know basis.

7
 Around this same time, Huber, while still working for
AFS, began communicating with the Livingston Parties about
the Wallops Island hydraulic system. He claimed that Orbital
was unhappy with AFS and was seeking new vendors to
service the system. He also took affirmative steps to help the
Livingston Parties familiarize themselves with the system and,
more generally, with Orbital’s operations on Wallops Island.
He arranged tours and began sending the Livingston Parties
various confidential AFS internal documents and engineering
drawings. To communicate with Huber, the Livingston Parties
created a commercial Dropbox folder, installed a virtual
private network on Huber’s AFS laptop, and provided him with
a Livingston email address.

Orbital did eventually seek bids with respect to two
aspects of the hydraulic system: a “gripper arms replacement”
project and a “cylinder upgrade” project. Regarding the
gripper arms contract, Huber, while still employed by AFS,
worked closely with the Livingston Parties to prepare a bid. At
the same time, he was also playing a key role in the bid
presented by AFS, which he succeeded in inflating by over
$130,000 to ensure that Livingston’s bid was more
competitive. Not surprisingly, Livingston was awarded the
gripper arms contract. During the ensuing design process,
Livingston’s team relied extensively on confidential
engineering drawings that AFS had created and Huber stole.

As to the cylinder upgrade project, Huber again stacked
the deck against AFS by failing to disclose key information
about what Orbital was looking for, encouraging AFS to
submit a bid only for Orbital’s non-preferred option, and by
working with the Livingston Parties to develop a proposal

8
based on confidential AFS documents that, again, he had
provided.

In October 2012, Huber’s penchant for deceit led to
another twist. Unbeknownst to Livingston or AFS, he formed
his own business entity, INSYSMA, intending to submit a
competing bid for the cylinder upgrade contract. That same
month, he downloaded nearly 98 gigabytes of AFS’s
proprietary files to an external hard drive, including its
engineering drawings, bills of materials, and other documents
for the hydraulic system, documents pertaining to AFS’s
gripper arms quote, and all of its pending and past project files
dating back to 1993. He then tendered his notice of resignation
to AFS.

Following his resignation, Huber continued to work
with Livingston on its gripper arms design and its cylinder
assembly bids, sharing with the Livingston team many of the
files he had taken from AFS. Livingston’s preparatory efforts
and eventual bids relied heavily on drawings generated by AFS
in the design of the Wallops Island hydraulic system, as well
as other insider knowledge gathered from Huber. Eventually,
and to the Livingston Parties’ great surprise, Orbital awarded
the cylinder contract to neither AFS nor Livingston but to
INSYSMA.

B. Procedural History

“AFS commenced this action on December 24, 2013,
initially naming Huber, [INSYSMA], Livingston, Vann,
Aufiero, and Orbital as defendants.” Advanced Fluid Sys., Inc.
v. Huber, 381 F. Supp. 3d 362, 370 (M.D. Pa. 2019)
(hereinafter, “Post-Judgment Op.”). AFS and Orbital reached

9
a settlement agreement pursuant to which AFS dismissed
Orbital from the lawsuit in exchange for Orbital’s agreement
to grant AFS a subcontract for certain work on the hydraulic
system. The settlement agreement, which does not identify
Orbital as a joint-tortfeasor with Appellants, explicitly states
that “no money is being paid” by Orbital pertaining to items of
damages asserted by AFS against Appellants in this case.
(App. at 2222.)

The claims that AFS asserted under federal law were
either all dismissed or abandoned through motions practice and
amended pleadings. Ruling on motions to dismiss, the District
Court determined that AFS had standing 3 to assert trade secret
misappropriation claims under Pennsylvania law against
Appellants because AFS had adequately alleged lawful
possession of the relevant trade secrets and “that ownership, in
the traditional sense, is not prerequisite to a trade secret
misappropriation claim.” Advanced Fluid Sys., Inc. v. Huber,
28 F. Supp. 3d 306, 323 (M.D. Pa. 2014) (hereinafter, “MTD
Op.”). Later, on summary judgment, the Court concluded as a
matter of law that the information at issue qualified as trade

3
The District Court recognized that the standing issue
here is one of statutory standing, which requires
“determin[ing], using traditional tools of statutory
interpretation, whether a legislatively conferred cause of action
encompasses a particular plaintiff’s claim.” Lexmark Int’l, Inc.
v. Static Control Components, Inc., 572 U.S. 118, 127 (2014);
cf. Commw. of Pa. v. Janssen Pharma., 8 A.3d 267, 275 (Pa.
2010). Here, the question is whether ownership of the trade
secret is an element of a claim for misappropriation under the
Act.

10
secrets and that the Huber Parties were liable under the Trade
Secrets Act for misappropriating it.

The District Court convened a six-day bench trial on
AFS’s remaining claims, specifically the claims for trade secret
misappropriation against the Livingston Parties, and the claims
for breach of fiduciary duty and aiding and abetting breach of
fiduciary duty. At trial, the Livingston Parties were
represented by Philip J. Morin, Esquire, of the law firm Florio
Perrucci Steinhardt & Fader, LLC. Morin and his firm were
chosen by Livingston’s insurer. During the trial, Morin
informed the Court, on the record at a side bar, that he was not
admitted to practice before it. He also disclosed his
disciplinary history, including a public reprimand in New
Jersey and a reciprocal suspension imposed by New York in
2015. In response to the Court’s question of whether he was
then “credentialed and fully admitted in both jurisdictions,”
Morin stated that he “was authorized to practice in New Jersey
but that New York required him to file a motion for
reinstatement, which was pending.” Post-Judgment Op., 381
F. Supp. 3d at 371. The Court instructed Morin to file the
appropriate paperwork and permitted him to continue to
represent the Livingston Parties at trial without further
discussion.

After the trial, the Court issued an order directing the
parties to file proposed findings of fact and conclusions of law
within 30 days of receiving the official transcript, which
deadline the parties later extended by stipulation, with the
Court’s approval. AFS and the Huber Parties timely filed their
respective post-trial submissions, but the Livingston Parties
never filed any, nor did they request an extension of time to do

11
so. Morin did not disclose to the Livingston Parties that he had
missed the filing deadline.

In its post-trial findings of fact and conclusions of law,
the Court found that the Livingston Parties were liable for
misappropriating AFS’s trade secrets, that Huber had breached
a duty of loyalty to AFS, and that Livingston and Vann, but not
Aufiero, aided and abetted that breach. The Court awarded
AFS compensatory damages from all Appellants, based on lost
profits, exemplary damages under the Act against Huber alone
for his trade secret theft, and punitive damages against Huber,
Livingston, and Vann, jointly and severally, stemming from
Huber’s breach of fiduciary duty.

Appellants then filed scattershot post-trial motions
invoking subsections of Federal Rules of Civil Procedure 52,
59, and 60, claiming, among other objections, that: (i) the
Livingston Parties were entitled to a new trial because of the
misconduct and negligence of their insurer-retained counsel;
(ii) the evidence did not support a punitive damages award
against the Livingston Parties; (iii) the District Court
incorrectly failed to reduce its compensatory damages award
by the amount of AFS’s settlement with Orbital; and (iv)
certain additional costs were improperly excluded from the
District Court’s lost-profits analysis. After thorough analysis,
the Court denied the post-trial motions in their entirety. This
timely appeal followed.

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II. DISCUSSION 4

A. AFS’s Trade Secret Misappropriation
Claims 5

The first and predominant issue in this appeal is whether
AFS, by virtue of its Agreement with the Space Flight
Authority – a contract that explicitly designates the
confidential information at issue in this case as the Authority’s
“exclusive property” – can maintain a trade secret
misappropriation claim under Pennsylvania law. Appellants
argue that AFS cannot, for three reasons: first, AFS does not
“own” the claimed trade secrets; second, even if the Trade
Secrets Act does not require ownership as a prerequisite for
standing to sue, AFS still lacks standing because it did not
“lawfully possess” the trade secrets; and, third, what AFS
argues are trade secrets cannot properly be designated as such
because inadequate measures were taken to ensure their
continued secrecy. None of those positions is persuasive.

4
The District Court had jurisdiction pursuant to 28
U.S.C. §§ 1331 and 1332. We have jurisdiction under 28
U.S.C. § 1291.
5
We exercise de novo review over the District Court’s
legal determinations that fee simple ownership of a trade secret
is not a prerequisite to a misappropriation claim under the
Trade Secrets Act and that AFS had protectable trade secrets
as a matter of law. See Simpson v. Att’y Gen., 913 F.3d 110,
113 (3d Cir. 2019) (summary judgment); Blunt v. Lower
Merion Sch. Dist., 767 F.3d 247, 266 (3d Cir. 2014) (standing).

13
 In a closely reasoned opinion, the District Court
considered what interest a plaintiff must have in a trade secret
to have standing under the Trade Secrets Act to bring an action
for misappropriation. After examining the text of the Act and
surveying cases from other jurisdictions that have adopted
some version of the Uniform Trade Secrets Act, the District
Court explained why it is appropriate to follow the reasoning
set forth in DTM Research, L.L.C. v. AT & T Corp., 245 F.3d
327 (4th Cir. 2001).

In DTM, the United States Court of Appeals for the
Fourth Circuit held that a party asserting a misappropriation
claim under Maryland’s Uniform Trade Secrets Act need only
demonstrate lawful possession of a trade secret, and not
“ownership in its traditional sense[,]” to maintain such a claim.
DTM, 245 F.3d at 333. That holding was based on the premise
that “[t]he proprietary aspect of a trade secret flows, not from
the knowledge itself, but from its secrecy[,]” because “[i]t is
the secret aspect of the knowledge that provides value to the
person having the knowledge. … While the information
forming the basis of a trade secret can be transferred, as with
personal property, its continuing secrecy provides the value,
and any general disclosure destroys the value.” Id. at 332
(internal quotation marks omitted).

In other words, while ownership of the sort traditionally
associated with real or personal property is sufficient to
maintain a trade secret misappropriation claim because the
complete bundle of rights related to trade secrets includes the
right to enjoy the value of the information’s secrecy, it is not a
necessary condition. A per se ownership requirement for
misappropriation claims is flawed since it takes account neither
of the substantial interest that lawful possessors of the secrets

14
have in the value of that secrecy, nor of the statutory language
that creates the protection for trade secrets while saying
nothing of ownership as an element of a claim for
misappropriation.

Although DTM involved Maryland’s version of the
Uniform Trade Secrets Act, we, like the District Court, agree
with the Fourth Circuit’s cogent explanation of why lawful
possession of a trade secret can, under circumstances like this,
be sufficient to maintain a misappropriation claim, even absent
ownership. The relevant language of the Act, which on its face
lacks any ownership requirement, is functionally identical to
that of its Maryland counterpart. 6 And, while DTM’s rationale
rejects the notion that trade secrets are just like tangible
property, it still rests on the premise that trade secrets are a
species of property, a view entirely consistent with
Pennsylvania’s common law prior to the enactment of its
version of the uniform act. See Heraeus Med. GmbH v.
Esschem, Inc., 927 F.3d 727, 738 (3d Cir. 2019)
(“Pennsylvania courts have adopted the ‘property’ view of
trade secrets, under which the basis of a claim for trade secret

6
In addition, as the District Court correctly recognized,
“[n]either the commentary to the uniform law nor [the Trade
Secrets Act]’s legislative history include[s] any specific
reference to legal ownership of the trade secrets as a
prerequisite to a cause of action.” MTD Op., 28 F. Supp. 3d at
318. On the contrary, as a leading treatise recognizes, “because
the gravamen of [a Uniform Trade Secrets Act]
misappropriation action is wrongful acquisition or improper
use of information gained from a plaintiff, possession, as
opposed to ownership, suffices.” 4 Roger M. Milgrim & Eric
E. Bensen, Milgrim on Trade Secrets § 15.01 (2020).

15
misappropriation is the violation of a property right[.]”).
Again, the point is not that ownership is irrelevant. The point
is that it is not the sole kind of interest that is relevant and
subject to protection. Appellants’ briefing is devoid of any
serious challenge to DTM’s reasoning. 7 Their argument, such
as it is, lacks merit, and we reject it.

7
The Huber Parties merely note that the District Court
was the first Pennsylvania court, state or federal, to follow
DTM and that a district court in the Western District of
Pennsylvania had held that a non-owner could not pursue a
trade secret claim under Pennsylvania law. Huber Parties’
Opening Br. at 24 (citing Transp. Compliance Assocs. Inc. v.
Hammond, No. 2:11-CV-1602, 2012 WL 1435445, at *3
(W.D. Pa. Apr. 25, 2012), modified on reconsideration, 2012
WL 8017416 (W.D. Pa. May 3, 2012)). We are not troubled
that the District Court was the first to follow DTM, particularly
since it appears to be the first Pennsylvania court to actually
analyze whether Pennsylvania law includes an “ownership”
requirement. For example, and as the District Court observed,
Hammond “cursorily adopts an ownership approach without
any discussion of the nature of trade secrets or the source of
their value[,]” and, in support of that approach, relies entirely
on a case that “did not turn on an ownership inquiry[.]” MTD
Op., 28 F. Supp. 3d at 322 n.8. Other cases Appellants have
relied on and that appear to adopt an ownership requirement
were decided before adoption of the Trade Secrets Act and
similarly lack any meaningful analysis of the ownership issue.
More significantly, they address the issue of whether the party
claiming misappropriation owned a trade secret, not the
distinct question of whether other interests, such as lawful
possession, can be sufficient to sustain a claim. See, e.g.,
Gruenwald v. Advanced Comput. Applications, Inc., 730 A.2d

16
 Appellants’ second contention, that AFS did not
lawfully possess the information it claims as trade secrets, is
similarly unavailing. The gist of this argument is that the
transfer of rights to the trade secrets effectuated by the
Agreement included the transfer of any right to possess those
trade secrets, thereby foreclosing AFS from lawfully
possessing them. But that ignores the uncontroverted record
that AFS not only physically retained possession of the
drawings and other information constituting the trade secrets;
it also was required to use, and in fact did use, those trade
secrets to fulfill its obligations under the Agreement and in
contracts that AFS and Orbital entered into after the
Agreement. Moreover, despite necessarily being aware that
AFS physically retained and was using the trade secrets to
fulfill its contractual obligations, the “owner” 8 of those secrets
never once objected to, or even so much as questioned, AFS’s
retention or use of those secrets. It did not even push back
when AFS affixed to documents containing the secrets a

1004, 1012–13 (Pa. Super. Ct. 1999) (analyzing whether
former employee retained “ownership” of technologies he
created during scope of employment with former employer);
Varo, Inc. v. Corbin Mfg. Co., 50 F.R.D. 376, 378 (E.D. Pa.
1970) (noting “[m]ere possession is insufficient to establish the
fact of ownership” where “Plaintiff’s sole position is that the
defendant corporation is not the owner of the trade secrets”).
8
Because AFS states in its brief that it “conveyed legal
title to its work product to the [Authority],” Appellee’s Br. at
47, we need not opine on any residual ownership interest it
might otherwise claim and will treat the Authority as the
owner.

17
confidentiality notice asserting that AFS had an ownership
interest in them.

Ownership of a trade secret – or any intellectual
property for that matter – undoubtedly imbues the owner with
the authority to give others lawful possession, including by
merely consenting to that possession. Such possessory rights
were given to AFS, even if a full ownership interest was not.
The course of conduct evident in the record shows that AFS
clearly had permission to hold and use the secrets. True, had
the Agreement contained an explicit license for AFS’s benefit,
any dispute about lawful possession could have been avoided.
See Metso Minerals Indus. v. FLSmidth-Excel LLC, 733 F.
Supp. 2d 969, 971–72 & n.4 (E.D. Wis. 2010) (holding non-
exclusive license to use trade secrets at issue constituted
“lawful possession” of that information). But Appellants cite
no authority for the proposition that one who retains and uses
a trade secret owned by another for that owner’s benefit, with
that owner’s knowledge, and, at a minimum, with that owner’s
implied consent, does not lawfully possess that trade secret. 9
We decline to adopt such a counter-intuitive rule of law.

9
In that regard, the District Court correctly
distinguished BlueEarth Biofuels, LLC v. Hawaiian Elec. Co.,
No. CIV. 09-00181 DAE-KSC, 2011 WL 2116989 (D. Haw.
May 25, 2011), aff’d, 531 F. App’x 784 (9th Cir. 2013). In that
case, the court held that the plaintiff could not sustain a
misappropriation claim because it had “transferred, without
reservation, all of the relevant confidential information and
trade secrets” pursuant to an agreement. Id. at *21. Unlike the
plaintiff in BlueEarth, however, AFS “remains in possession
of and continues to use the trade secrets.” MTD Op., 28 F.
Supp. 3d at 323.

18
 Finally, Appellants urge that the District Court erred in
holding as a matter of law that the claimed trade secrets are
protectable under the Trade Secrets Act. They say that, at a
minimum, there was a genuine dispute of material fact
regarding the reasonableness of the measures taken to ensure
the secrecy of the information at issue. More particularly,
Appellants point to the fact that the information was provided
by AFS to the Space Flight Authority, a public entity subject
to a state open-records law, without a formal non-disclosure or
confidentiality agreement. On the summary judgment record
before us, however, we are not persuaded that a reasonable trier
of fact could find that AFS’s interactions with the Authority,
or with Orbital, extinguished AFS’s protectable interest in the
trade secrets.

Consistent with its approach throughout this lengthy
litigation, the District Court fully explained its rationale for
concluding that AFS could claim trade secret protection as a
matter of law, applying the six-part framework that
Pennsylvania courts adopted from the Restatement First of
Torts § 757. 10 See Bimbo Bakeries USA, Inc. v. Botticella, 613
F.3d 102, 109 (3d Cir. 2010) (citing Crum v.
Bridgestone/Firestone N. Am. Tire, LLC, 907 A.2d 578, 585

10
As we noted in Bimbo Bakeries, although [the Act]
“displaced Pennsylvania’s common law tort for
misappropriation of trade secrets, [] there is no indication that
the statute effected a substantive shift in the definition of trade
secret.” 613 F.3d at 109 n.7 (internal quotation marks and
citation omitted).

19
(Pa. Super. Ct. 2006)). 11 As part of its analysis, the Court
explained that the Space Flight Authority “honored AFS’s
proprietary designation and did not disclose its information
except as needed for operation of the [Wallops Island]
Hydraulic System.” Summary Judgment Op., 2017 WL
2445303, at *11.

Based on our own review of the record, we agree with
that assessment. The record shows that, even if the Authority
did not contractually bind itself to do so, it nevertheless
believed it had an obligation to preserve the confidentiality of
AFS’s designs, and at all relevant times it conducted itself in a
manner consistent with that belief.

Appellants’ assertions regarding the Authority’s
theoretical freedom to disclose AFS’s trade secrets, pursuant
to Virginia’s open records law or otherwise, are entirely
speculative. They cite no evidence that the Authority failed to
take reasonable steps to ensure the confidentiality of the trade
secrets, or that it ever did disclose those secrets to anyone to
whom disclosure was not essential for the development or
maintenance of the Antares launch system at Wallops Island.
Similarly, Appellants cite no evidence that the Authority was

11
The District Court found that only the second factor,
which addresses the extent to which AFS employees were
privy to its confidential information, militated against trade
secret status because AFS employees were not required to sign
confidentiality agreements. We agree with the District Court
that, under the specific facts of this case, this single factor does
not raise a genuine dispute of material fact as to whether AFS
possessed trade secrets as a matter of law because the other five
factors weigh decisively in the opposite direction.

20
ever actually subject to a records request relating to AFS’s
trade secrets, that the probability of such a request was
anything more than extremely remote, or how the Authority
may have handled such a request if one were made. Indeed,
conspicuously absent from the record is any hint as to why, if
AFS’s trade secrets were so readily obtainable from the Space
Flight Authority, Appellants felt it necessary to engage in a
coordinated, clandestine campaign of tortious conduct to
obtain them.

Therefore, we are in accord with the District Court’s
conclusion that Appellants failed to raise a genuine dispute of
material fact as to whether the confidential drawings and other
information that they had a hand in stealing were not in fact
and in law trade secrets. Appellants’ arguments opposing
AFS’s trade secrets misappropriation claims thus fail. 12

B. Conduct of Livingston Parties’ Counsel 13

The Livingston Parties take issue with the District
Court’s denial of their request for a new trial based on the

12
The Livingston Parties also argue that AFS cannot
bring a misappropriation claim because it “did not stand to
incur a loss if the trade secrets were misappropriated[.]”
Livingston Parties Reply Br. at 9. That argument, raised for
the first time in a reply brief, is forfeited. Haberle v. Borough
of Nazareth, 936 F.3d 138, 141 n.3 (3d Cir. 2019).
13
The District Court denied the Livingston Parties’
motion for a new trial made pursuant to Federal Rules of Civil
Procedure 59(a)(1)(B), 60(b)(1), 60(b)(3), and 60(b)(6). We
review that denial for abuse of discretion. See Lazaridis v.

21
conduct of their lead trial counsel, Mr. Morin. Shortly
following the entry of judgment against them, the Livingston
Parties discovered that Morin had failed to gain formal
authorization to practice before the District Court and also had
failed to submit any post-trial proposed findings of fact and
conclusions of law. According to the Livingston Parties, the
first failure amounted to a fraud on the Court and the second to
“excusable neglect,” both of which should entitle them to a
new trial. The District Court addressed those arguments in full
and properly rejected them.

First, the Livingston Parties complain that Morin
represented them at trial despite never being admitted pro hac
vice, thereby violating the District Court’s Local Rules and
engaging in the unauthorized practice of law. In so
complaining, however, they fail to address – in fact, they
simply ignore – our precedent regarding the application of
local rules.

“[A] district court can depart from the strictures of its
own local procedural rules where (1) it has a sound rationale
for doing so, and (2) so doing does not unfairly prejudice a
party who has relied on the local rule to his detriment.” United
States v. Eleven Vehicles, Their Equip. & Accessories, 200
F.3d 203, 215 (3d Cir. 2000). The District Court had a sound

Wehmer, 591 F.3d 666, 669 (3d Cir. 2010) (Rule 59); Budget
Blinds, Inc. v. White, 536 F.3d 244, 251 (3d Cir. 2008) (Rule
60). “[A] court abuses its discretion when its ruling is founded
on an error of law or a misapplication of law to the facts.”
Montrose Med. Grp. Participating Sav. Plan v. Bulger, 243
F.3d 773, 780 (3d Cir. 2001) (quotation marks and citation
omitted).

22
rationale for overlooking Morin’s technical non-compliance: it
already had sufficient information to determine whether he
should be admitted to practice pro hac vice, and it did not wish
to further delay a case that was ready for trial and had taken
four years to get to that point. Moreover, the District Court
correctly explained that the Livingston Parties could not have
relied to their detriment on the District Court’s Local Rules
regarding pro hac vice admissions because the “essential
purpose” of those rules is to assist the Court, not to “protect an
interest of the parties.” Post-Judgment Op., 381 F. Supp. 3d at
380–81.

Under the circumstances, the District Court did not
abuse its discretion by refusing the Livingston Parties’ request
to grant the extraordinary relief of a new trial, particularly since
Morin’s non-compliance with the District Court’s Local Rules
was essentially technical, not substantive, in nature. Everyone
in the case, including the Livingston Parties, knew of Morin’s
role in the litigation and accepted it. 14

Still pressing the point, however, the Livingston Parties
say that Morin perpetrated a fraud on the District Court and on
them by misleading the Court about the discipline he was
subject to in New York, by failing to advise them of his
disciplinary history and inability to practice before the Court,

14
At least through the trial, the Livingston Parties seem
to have been satisfied. They fail to identify a single thing
Morin did or failed to do during the trial itself that prejudiced
them. Cf. Post-Judgment Op., 381 F. Supp. 3d at 371–72
(noting that Morin “zealously represented” the Livingston
Parties at trial, made a “well stated” Rule 52(c) motion on their
behalf and contributed to the case being “well tried[.]”).

23
and by “using Pennsylvania licensed attorneys who were never
known by the Livingston Parties to have entered an appearance
on their behalf.” Livingston Parties Opening Br. at 28. As for
the first and third of those assertions, the record is plainly to
the contrary. The District Court pointed out that Morin had
disclosed his suspension from practicing law in New York, and
that there was a pending motion for his reinstatement in that
jurisdiction. Those disclosures were accurate in all relevant
respects and were not misleading. And it is certainly not
believable that the Livingston Parties were unaware that other
attorneys at Morin’s firm had entered appearances on their
behalf. Those other attorneys were present and assisted during
depositions, pretrial proceedings, and trial, and they had signed
the Livingston Parties’ pretrial pleadings and motions.

Regarding the Livingston Parties’ contention that Morin
defrauded them by not disclosing his disciplinary status, the
District Court did not abuse its discretion in determining that
Morin did not commit a fraud. The Court determined that his
conduct was, by all appearances, based on a “mistaken but
good faith belief that reinstatement in New York would be a
routine matter[.]” Post-Judgment Op., 381 F. Supp. 3d at 375.
Nor did the District Court abuse its discretion by declining to
grant the Livingston Parties a new trial based on their own
counsel’s purported failure to fully disclose his disciplinary
history to them. The Livingston Parties bear the responsibility
for knowing who represents them. It does not matter that
Morin was chosen by their insurer.

We do not minimize the seriousness of Morin’s failure
to file post-trial submissions to summarize the Livingston
Parties’ legal positions. But any harm those parties suffered
from the absence of those submissions was mitigated by the

24
Court’s awareness of the arguments they say should have been
advanced. Indeed, the arguments had largely been advanced
in one form or another over the course of the drawn-out
proceedings. As the District Court noted, a detailed pretrial
submission was filed and “raised many of the arguments that
the Livingston defendants now claim, through new counsel,
that Attorney Morin failed to present to the court.” Post-
Judgment Op., 381 F. Supp. 3d at 376 n.6. And, of course, the
parties’ positions on various issues were evident through the
course of trial. The District Court expressly disclaimed that
Morin’s failure to file a post-trial submission altered the
outcome of this case, and the Court’s extensive efforts to
independently assess the merits of AFS’s claims and anticipate
and address the Livingston Parties’ well-known arguments,
despite the lack of post-trial briefing from those parties, is
apparent on the face of both the Court’s Post-Trial and Post-
Judgment Opinions. For example, rather than simply adopt
positions advocated by AFS, the Court after careful analysis
declined to find that the Livingston Parties’ involvement in
trade secret misappropriation was willful or malicious, or that
Aufiero was liable to AFS for punitive damages.

Finally, the Livingston Parties maintain that Morin’s
failure to file post-trial briefing constitutes “excusable neglect”
entitling them to a new trial. The District Court, consistent
with our precedent, faithfully balanced the four relevant factors
established by the Supreme Court in Pioneer Investment
Services Co. v. Brunswick Associates. Ltd. Partnership, 507
U.S. 380 (1993), 15 for determining whether excusable neglect

15
The four factors are: “the danger of prejudice to the
[non-movant], the length of the delay and its potential impact
on judicial proceedings, the reason for the delay, including

25
warrants setting aside a final judgment. It explained why the
balance in this case fell decidedly against doing so.
Specifically, the Court found that AFS would endure
considerable prejudice by having to retry the case, because
even a timely post-trial submission from Morin would not have
changed the outcome of the case. Moreover, a new trial would
constitute a “disruption to efficient judicial administration,”
given the substantial time and resources the Court had already
dedicated to the matter. Post-Judgment Op., 381 F. Supp. 3d
at 377. The Court also found that the failure to submit post-
trial briefing was not “excusable,” notwithstanding the
personal difficulties Morin was dealing with at the time,
because, among other reasons, the Livingston Parties had
several other attorneys listed as counsel of record, all of whom

whether it was within the reasonable control of the movant, and
whether the movant acted in good faith.” Id. at 395. As the
District Court noted, because it independently reached and
assessed the merits of this case, irrespective of the lack of post-
trial briefing from the Livingston Parties, there is an argument
to be made that Morin’s failure to file post-trial briefing does
not implicate the “excusable neglect” standard contemplated
by Federal Rule of Civil Procedure 60(b)(1). Because we agree
with the District Court that the Livingston Parties are not
entitled to relief under Rule 60(b)(1), even assuming it applies,
we do not reach the question of whether a party can claim
excusable neglect when a district court independently
adjudicates an issue on the merits, notwithstanding that party’s
failure to make a relevant filing.

26
could have and should have been aware of the post-trial
briefing deadline. 16 Id. at 377–78.

We discern no abuse of discretion in the District Court’s
analysis, all of which is well supported by the record and
consistent with governing legal principles. While problems
associated with Morin’s representation of the Livingston
Parties may give rise to claims in another tribunal, the Court
here acted well within its discretion in determining that any
flaws in the representation did not entitle the Livingston Parties
to the extraordinary relief of a new trial.

C. Punitive Damages Award Against Vann and
Livingston 17

In the next issue presented for review, Vann and
Livingston contend that the District Court erred in awarding

16
For that same reason, we reject the Livingston
Parties’ argument that they were “effectively abandoned” by
counsel. Livingston Parties’ Opening Br. at 35. There is no
support for the assertion that Morin was the only attorney
responsible for their case, or that the other attorneys who
entered an appearance on their behalf were incapable of
representing their interests.
17
“Review of the District Court’s damages calculation
is a mixed question of law and fact.” VICI Racing, LLC v. T-
Mobile USA, Inc., 763 F.3d 273, 293 (3d Cir. 2014). We accept
the District Court’s findings of fact unless clearly erroneous,
but exercise plenary review over the Court’s choice,
interpretation, or application of legal principles. Id.

27
punitive damages against them both because the record lacks
evidence that their conduct was egregious enough to justify the
imposition of such damages and because the District Court
incorrectly relied on their lack of remorse. Again, we are
unpersuaded.

It is patently incorrect to say that the record lacks
enough evidence to sustain an award of punitive damages
against Vann and Livingston. The District Court noted that
Vann approved a compensation package for Huber that
incentivized Huber to do damage to AFS, when Vann well
knew that Huber remained within AFS’s employ and that he
was “working directly against AFS’s interests” by “attempting
to steer business toward Livingston and away from AFS[.]”
Post-Judgment Op., 381 F. Supp. 3d at 387–88. Moreover, the
compensation package that Vann approved for Huber was just
one aspect of Vann’s “continued engagement and
communication with, and encouragement of, Huber,” 18 despite
Vann’s claiming to have been “alarmed” by the fact that
“Huber was working on behalf of both AFS and Livingston
contemporaneously[.]” Id. at 387. Given Vann’s actual
knowledge of Huber’s attempts to move business from AFS to
Livingston and of the wrongfulness of Huber’s actions, 19 the

18
Examples include attending in-person meetings with
Huber and Vann’s knowledge that “as early as February that
Livingston employees were sharing documents on Dropbox
and collaborating with Huber.” Post-Trial Op., 295 F. Supp.
3d at 490.
19
As an executive himself, Vann knew and “expressly
confirmed his understanding of an employee’s duty of loyalty
to their employers.” Post-Trial Op., 295 F. Supp. 3d at 490.

28
Under Pennsylvania law, employees, in addition to officers or
directors, may owe their employers fiduciary duties. See
AmQuip Crane Rental, LLC v. Crane & Rig Servs., LLC, 199
A.3d 904, 915 (Pa. Super. Ct. 2018) (salesman breached duty
of loyalty to employer by helping co-workers breach their
noncompetition agreements with employer); Reading Radio,
Inc. v. Fink, 833 A.2d 199, 211 (Pa. Super. Ct. 2003) (radio
station manager breached duty of loyalty to employer by not
enforcing noncompetition agreements); see also Solid Wood
Cabinet Co. v. Partners Home Supply, Civil Action No. 13-
3598, 2015 WL 1208182, at *6 (E.D. Pa. Mar. 13, 2015)
(“Pennsylvania law dictates that employees owe their
employers a duty of loyalty.”); Synthes, Inc. v. Emerge Med.,
Inc., 25 F. Supp. 3d 617, 667 (E.D. Pa. 2014) (same); Crown
Coal & Coke Co. v. Compass Point Res., LLC, Civil Action
No. 07-1208, 2009 WL 891869, at *5 (W.D. Pa. Mar. 31, 2009)
(“Under Pennsylvania law, an employee is an agent of his
employer and owes his employer a duty of loyalty.”).
Relatedly, confidential relationships also can give rise to
fiduciary duties under Pennsylvania law. “[T]he essence of [a
confidential] relationship is trust and reliance on one side, and
a corresponding opportunity to abuse that trust for personal
gain on the other. Accordingly, [a confidential relationship]
appears when the circumstances make it certain the parties do
not deal on equal terms, but, on the one side there is an
overmastering influence, or, on the other, weakness,
dependence or trust, justifiably reposed[.]” PTSI, Inc. v. Haley,
71 A.3d 304, 311 (Pa. Super. Ct. 2013) (quoting Weiley v.
Albert Einstein Med. Ctr., 51 A.3d 202, 218 (Pa. Super. Ct.
2012)) (alterations in original). Here, the record plainly shows
that Huber acted as AFS’s agent, and that they shared a
confidential relationship in that AFS trusted Huber, and was

29
record easily supports the inference that Vann and the company
he led, Livingston, appreciated that their continued
encouragement and facilitation of Huber’s misdeeds would
directly result in harm to AFS. The record also supports the
inference that their decision to nevertheless encourage and
facilitate Huber’s wrongdoing in the face of that known harm
was at the very least recklessly indifferent to AFS’s rights.

Under Pennsylvania law, such conduct can support a
punitive damages award. See, e.g., Hutchison ex rel.
Hutchison v. Luddy, 870 A.2d 766, 770 (Pa. 2005) (explaining
that punitive damages may be awarded where conduct is
“outrageous” because of “reckless indifference to the rights of
others[,]” and the conduct at issue was “intentional, reckless or
malicious”) (citations and quotation marks omitted); SHV
Coal, Inc. v. Cont’l Grain Co., 587 A.2d 702, 705 (Pa. 1991)
(upholding punitive damages award where employee
deliberately diverted contract to new employer during his last
week of employment with previous employer). Thus, Vann’s
and Livingston’s argument that the punitive damages award
entered against them lacks adequate factual support is wholly
unpersuasive. 20

dependent on him, to handle trade secret information as well as
to procure new client relationships and maintain existing ones.
Huber has not at any point contended that he did not owe AFS
a fiduciary duty of loyalty.
20
Vann and Livingston also contend that the record
does not support punitive damages because the District Court
found that they did not act with malice or intent to harm with
respect to AFS’s trade secret misappropriation claim. That
argument misses the mark because it ignores that AFS’s trade

30
 We also have little difficulty rejecting Vann’s and
Livingston’s assertion that the District Court improperly
awarded punitive damages against them because of their lack
of remorse for their misconduct. To the extent the District
Court considered Vann’s and Livingston’s contrition (or, more
precisely, the total absence thereof) for their actions in
determining whether their conduct warranted the imposition of
punitive damages, it is clear that the Court did so only to the
extent it was suggestive of their state of mind at the time of
their wrongdoing. There was no error in considering Vann’s
and Livingston’s attitude for that purpose. See In re Lemington
Home for the Aged, 777 F.3d 620, 635 (3d Cir. 2015)
(upholding award of punitive damages where defendants’
“state of mind was illuminated by their own testimony at

secret misappropriation claim and its claim for aiding and
abetting a breach of fiduciary duty were separate and distinct
causes of action. The District Court correctly explained that
“AFS’s substantive claims targeted different—albeit, at times,
overlapping—conduct. In deciding whether to award enhanced
damages, and in what amount, we examined different
aggravating conduct under each claim. The distinction, in our
view, lies in defendants’ states of mind and the nature of their
actions. Defendants’ misappropriative conduct, while knowing
and unlawful under the statute, might fairly be characterized
(with limited exceptions) as passive and acquiescent. Their
tortious conduct, per contra, was active, deliberate, and
willful; it endured without pause for the better part of a year;
and the defendants to date fail to appreciate the gravity of their
wrongdoing.” Post-Judgment Op., 381 F. Supp. 3d at 391. On
appeal, Vann and Livingston fail to rebut the District Court’s
persuasive rejection of their position.

31
trial[,]” which testimony allowed “the jury to infer that they
had acted culpably and continued to avoid recognizing the
gravity of their misconduct”).

D. Set-off of Orbital Settlement 21

Next, all Appellants argue that the District Court
improperly failed to set-off the value of AFS’s settlement with
Orbital from the compensatory damages it awarded to AFS, as
purportedly mandated by the Pennsylvania Uniform
Contribution Among Tortfeasors Act (“PUCATA”).
According to Appellants, they are entitled to a set-off under
PUCATA because Orbital was a joint-tortfeasor. The District
Court held that Appellants had failed to put either AFS or the
Court on notice that a “setoff theory was fair game at trial[.]”
Post-Judgment Op., 381 F. Supp. 3d at 383. We agree.

The Huber Parties carry the ball for the Appellants on
this issue and assert that it is not forfeited, for four reasons: (i)
they were not required to file a formal pleading requesting set-
off; (ii) AFS was on notice that Appellants would seek set-off
of the Orbital settlement; (iii) Orbital’s status as a joint
tortfeasor was tried by the parties’ implied consent; and (iv)
Federal Rule of Civil Procedure 52(a)(5) permits them to, for

21
The District Court held that Appellants failed to
provide fair notice to AFS that they would be seeking setoff
with respect to the Orbital settlement. “We review a District
Court’s decision as to the waiver of an affirmative defense for
abuse of discretion.” In re Asbestos Prods. Liab. Litig. (No.
VI), 921 F.3d 98, 104 (3d Cir. 2019).

32
the first time, raise the set-off issue after judgment. 22 Those
arguments, individually and collectively, fail.

As to the first argument, whether or not Appellants were
obligated to formally plead set-off under PUCATA is beside
the point. The District Court did not hold that Appellants
forfeited their set-off argument solely because they neglected
to plead it. Rather, the Court noted the Appellants’ complete
failure to raise the issue at any point in the litigation, up to and
including trial. Appellants cite no case in which a party
seeking to set off the amount of a co-defendant’s settlement
against a damages award did not plead, attempt to plead, or
otherwise squarely raise that issue before judgment was
rendered.

As shown by cases on which Appellants themselves
rely, the party invoking PUCATA must provide some clear
indication that, even if it did not plead the set-off, it actually
raised the issue in some fashion. See Kilbride Invs. Ltd. v.
Cushman & Wakefield of Pennsylvania, Inc., Civil Action No.
13-5195, 2019 WL 3713878, *6–7 (E.D. Pa. Aug. 6, 2019)
(denying the plaintiff’s pre-trial motion to voluntarily dismiss
a defendant where co-defendant objected on the grounds that
dismissal would inhibit its ability to claim an “offset” from the
to-be-dismissed defendant where issue of joint tortfeasor status
had “been an actively debated issue for well over a year,” and
the court had previously “ordered briefing on the narrow issue
of joint tortfeasor status between the then-remaining

22
The Livingston Parties do not address in their
briefing the question of whether they forfeited this issue before
the District Court by failing to raise it before judgment was
entered.

33
defendants”); Nat’l Liberty Life Ins. Co. v. Kling P’ship, 504
A.2d 1273, 1277–78 (Pa. Super. Ct. 1986) (denying pre-trial
motion specifically raising issue of contribution and indemnity
from settling co-defendants). 23

Second, the contention that Appellants did not waive the
set-off issue because “AFS was on adequate and early notice
that [Appellants] would seek a set-off of the Orbital settlement
agreement[,]” is belied by the record and Appellants’ conduct.
Huber Parties Opening Br. at 40. None of the examples cherry-
picked by Appellants from the voluminous record makes any
mention of either set-off or joint-tortfeasor liability. To the
extent those examples speak to anything beyond the
undisputed fact that AFS reached a settlement with Orbital and
that Orbital was dismissed from this case, we agree with the
District Court that they suggest only that Appellants sought to
use the settlement agreement to impugn the objectivity and
credibility of testimony and other evidence provided by Orbital
sources. 24 Significantly, the Huber Parties’ briefing has no

23
Appellants’ reliance on Mazer v. Lipshutz, 360 F.2d
275 (3d Cir. 1966), is likewise misplaced. The release at issue
in that case, although not pled, nevertheless was considered on
appeal because the release had been admitted into evidence in
two different, consecutive trials involving the parties, without
objection. Id. at 277.
24
See Livingston Parties’ Statement of Facts and
Conclusions of Law (ECF 247-2) at ¶¶ 142–43 (noting that
AFS dismissed Orbital from suit after settling and arguing the
settlement consideration should not be considered evidence of
AFS’s competence to perform work); Huber Parties’ Trial
Exhibit List (ECF 295) at 7 (identifying settlement agreement

34
explanation as to why, if set-off was truly an issue before the
District Court, not a single defendant murmured a negative
word about Orbital’s dismissal from the case, despite those co-
defendants having the burden of proving that Orbital was a
joint-tortfeasor. 25 In belatedly raising the issue for the first

and release as exhibit); App. at 2221–40 (copies of the
settlement agreement and related AFS/Orbital commercial
agreement); App. at 2800–01 (trial testimony of Orbital
employee pertaining to cooperation provision in AFS/Orbital
settlement agreement); App. at 3015–16 (trial testimony of
AFS employee regarding profitability of contract with Orbital
resulting from settlement); App. at 4726 (Huber Parties’
requested finding of facts and conclusions of law highlighting
cooperating provision in AFS’s settlement agreement with
Orbital); App. at 4762 (same); App. at 5777–78 (noting that
AFS dismissed Orbital from suit after settling and emphasizing
Orbital promised in settlement agreement to cooperate with
AFS in AFS’s pursuit of its claims against the other defendants
in this case).
25
See Montgomery Cty. v. Microvote Corp., 320 F.3d
440, 450 (3d Cir. 2003) (holding defendants waived their Rule
60(b) claim to set-off plaintiff’s settlement with purported
joint-tortfeasor where, inter alia, “[defendants] did not attempt
to keep [the settling defendant] in the case in order to apportion
liability, nor did they request substitution of a settlement that
delineated [the settling defendant]’s pro-rata share of liability”
and “the settlement did not mention the non-settling
defendants’ liability”); Rocco v. Johns-Manville Corp., 754
F.2d 110, 115 (3d Cir. 1985) (“One would have expected the
nonsettling defendants to either have requested substitution of
[releases in which the plaintiff agrees to a pro rata reduction

35
time after trial and judgment, Appellants, without justification,
unreasonably deprived AFS of a fair opportunity to address it
at trial or any time prior thereto.

For largely the same reasons, the assertion that the issue
of set-off was tried by the parties’ “implied consent”
necessarily fails. “[I]mplied consent depends on three factors:
‘whether the parties recognized that the unpleaded issue
entered the case at trial, whether the evidence that supports the
unpleaded issue was introduced at trial without objection, and
whether a finding of trial by consent prejudiced the opposing
party’s opportunity to respond.’” Liberty Lincoln-Mercury,
Inc. v. Ford Motor Co., 676 F.3d 318, 327 (3d Cir. 2012)
(quoting Douglas v. Owens, 50 F.3d 1226, 1236 (3d
Cir.1995)). At a minimum, Appellants cannot satisfy the first
or third criteria because the record shows that neither AFS nor
the District Court was aware that set-off was an issue at trial,
and that lack of awareness unfairly deprived AFS of an
opportunity to present evidence on the issue of whether Orbital
and Appellants were joint-tortfeasors. See Post-Judgment Op.,
381 F. Supp. 3d at 383 (“[N]o defendant ever so much as hinted
that the isolated evidence on which they now rely–the AFS-
Orbital settlement agreement, AFS’s initial verified complaint
in this case, and an isolated passage … [of] trial testimony–was
introduced for the purpose of establishing Orbital as a joint
tortfeasor.”).

equal to the settlement amount from any judgment awarded
against nonsettling defendants] or judicial determination of
liability. The nonsettling defendants took no action, apparently
acquiescing in the settling part[y’s] absence from the trial. That
failure to act may be considered a waiver of any benefit from
the [settling defendant’s release] or the amounts paid for [it].”).

36
 Finally, there is no merit in the contention that Federal
Rule of Civil Procedure 52(a)(5) somehow excuses
Appellants’ complete failure to raise the set-off issue before
judgment was entered. Rule 52(a)(5) allows a party to
“question the sufficiency of the evidence supporting” a finding
of fact that a district court actually makes. Fed. R. Civ. P.
52(a)(5). The Court did not make any relevant findings
regarding set-off, including whether Orbital was a joint-
tortfeasor. And that, undoubtedly, was because the issue was
never raised.

Rule 52(a)(5) does not, as the Huber Parties necessarily
argue, contemplate new or additional findings of fact, nor does
it sanction the injection of an entirely new and previously
unintroduced legal theory into proceedings. The Huber Parties
cite no authority that would sustain their novel construction of
Rule 52(a)(5), and we reject it, as it runs contrary both to the
plain language of the rule and to the general notions of fairness,
equity, and finality in dispute resolution that pervade the
Federal Rules of Civil Procedure. Accordingly, the District
Court did not err in excluding the Orbital settlement from its
compensatory damages calculation.

E. Lost Profit Damages Calculation 26

Finally, the Huber Parties challenge the District Court’s
calculation of the lost profits awarded to AFS as damages for

26
The Huber Parties challenge the District Court’s
factual determination that certain costs should be excluded
from its lost profits damages award. We review that factual
determination for clear error. VICI Racing, 763 F.3d at 293.

37
the trade secrets misappropriation. The Court’s damages
figure was based in part on the terms of a contract that Orbital
awarded to INSYSMA instead of AFS. The Huber Parties
contend that the Court erred as a factual matter in failing to
account for approximately $470,000 in costs contemplated by
the contract when determining AFS’s lost profits. That
argument too fails.

Although the Orbital-INSYSMA contract may have
contemplated that INSYSMA would undertake certain work
that Huber testified would have cost INSYSMA approximately
$470,000, there is ample evidence that Huber himself did not
believe the work in question was actually encompassed by and
a part of the contract. Moreover, it is undisputed that
INSYSMA never performed that work. AFS, not INSYSMA,
completed it, and that occurred only after Orbital had to sue
INSYSMA because INSYSMA initially refused to deliver the
underlying materials for the work.

The District Court’s lost profits analysis ultimately
rested on the amount INSYSMA actually was paid under the
contract for the work it actually performed. The Huber Parties
are not entitled to a reduction in damages for expenses they
never incurred and apparently were not obligated to incur.

III. CONCLUSION

For the foregoing reasons, we will affirm the rulings
and judgment of the District Court.

38