Covidien LP v. Esch

United States Court of Appeals
For the First Circuit

No. 20-1515

COVIDIEN LP; COVIDIEN HOLDING INC.,

Plaintiffs, Appellants,

v.

BRADY ESCH,

Defendant, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Nathaniel M. Gorton, U.S. District Judge]

Before

Howard, Chief Judge,
Thompson, Circuit Judge,
and Gelpí, Chief District Judge.

Mark C. Fleming, with whom Tasha J. Bahal, Adam M. Cambier,
Matthew C. Tymann, and WilmerHale LLP were on brief, for
appellants.
Lita M. Verrier, with whom Andrew L. Margulis and Ropers
Majeski, PC were on brief, for appellee.

April 8, 2021

 Of the District of Puerto Rico, sitting by designation.
 GELPÍ, Chief District Judge. This appeal arises from a

contract action under Massachusetts law brought by appellants

Covidien LP and Covidien Holding Inc. (collectively, "Covidien")

against appellee Brady Esch, a former employee who assigned medical

device patent rights to a company he subsequently founded.

Following a nine-day trial, a jury found that Esch incurred in a

breach of confidential information and awarded Covidien

$794,892.24 in damages. Next, Covidien moved for a declaratory

judgment asking that Esch be required to assign to it the

inventions he made subsequently. The district court denied this

request. Before this Court is Covidien's appeal of said post-

trial ruling. Finding that the district court did not abuse its

discretion, we affirm.

I.

A. Factual Background

Brady Esch began working for Covidien, a global

healthcare company and manufacturer of medical devices and

supplies, in 2009 when Covidien acquired his former employer, VNUS

Technologies. In December 2009, Esch signed a Non-Competition,

Non-Solicitation, and Confidentiality Agreement ("Employment

Agreement"). During his employment, Esch's work focused on the

field of Endovenous ("EV") products or venous radiofrequency

("RF") ablation devices, which are used to treat superficial venous

disease, commonly known as "varicose veins." Esch spent much of

- 2 -
his time at the company working with an eight-person team on a

confidential global project, Project Cattleya, aimed at developing

features for a new medical device to treat varicose veins.

In 2013 Esch, who then served as Director of Global

Strategic Marketing, was terminated and signed a Separation of

Employment Agreement and General Release ("Separation Agreement").

The same incorporated provisions from Esch's Employment Agreement.

Subsection II.A of the Employment Agreement provides

that Esch must disclose to Covidien all "Inventions" created during

his employment with the company or within one year after leaving

the company. Specifically, it reads:

You shall promptly disclose to the Company all
Inventions (as defined in Subsection II.B),
which are made or conceived by you, either
alone or with others, during the term of your
employment with the Company, whether or not
during working hours. Such Inventions directly
or indirectly relate to matters within the
scope of your duties or field of
responsibility during your employment with the
Company, or are aided by the use of the time,
materials, facilities, or information of the
Company. You will not assert any rights under
or to any Inventions as having been made or
acquired prior to being employed by the
Company unless such Inventions have been
identified to the Company in writing on a
document signed by you at the time of hire. In
addition, in order to avoid any dispute as to
the date on which Inventions were made or
conceived by you, they shall be deemed to have
been made or conceived during your employment
with the Company if you take affirmative steps
to have them reduced to practice either during
the term of your employment or within one year
after separation from employment.

- 3 -
Subsection II.B of the Employment Agreement broadly defines

"Invention" to include "whether or not patentable or

copyrightable, the conception, discovery or reduction to practice

of any new idea, technology, device, method, design, trade secret,

composition of matter or any improvement thereto." Subsection

II.C of the Employment Agreement further provides that Esch:

[A]gree[s] that all Inventions that are, or
are deemed to be, made or conceived by [him]
during employment with the Company shall, to
the extent permitted by law, be the exclusive
property of the Company and [he] hereby
assign[s] to the Company [his] entire
worldwide right, title, and interest in and to
any and all such Inventions.

Additionally, Subsection I.A of the Employment Agreement provides

that Esch agrees not to disclose "to any other person or

organization, or make or permit any use of" any of Covidien's

"Confidential Information," which is defined in Subsection I.B.

Section 4(d) of the Separation Agreement, in turn,

establishes that "any provisions of [the Employment Agreement]

concerning the disclosure or ownership of inventions, methods,

processes or improvements shall continue in full force and effect

and shall not be superseded by any provision [thereof]." Section

4(d) further reiterates that Esch shall continue to abide by all

previous agreements with respect to non-disclosure of

"Confidential Information."

Shortly after Esch left Covidien, in February 2014, he

- 4 -
incorporated Venclose Inc. ("Venclose"), a closely-held company

that would manufacture and sell a medical device to treat varicose

veins. In March 2014, Esch filed Provisional Patent Application

No. 61/970,498 ("the '498 Patent Application") which described the

design, technology, and improvement to venous RF ablation devices.

Then, in 2015, Esch and several other inventors filed Utility

Patent Application No. 14/670,338 ("the '338 Patent Application")

and a Foreign Patent Cooperation Treaty Application with the United

States Patent and Trademark Office ("USPTO"), PCT/US2015/022849

("the PCT Patent Application") (all three collectively, "Patent

Applications"). He also filed a document with the USPTO that

assigned all rights to the '338 Patent Application to Venclose.

B. Procedural Background

In November 2016, Covidien filed a five-count complaint

against Esch in the United States District Court seeking

declaratory judgment to the effect that Esch assign his rights,

title, and interest in the Patent Applications to Covidien (Count

I). Additionally, Covidien alleged that Esch breached his

obligations under the Employment and/or Separation Agreements by

failing to disclose "Inventions" (Count II), failing to abide by

an implied covenant of good faith and fair dealing (Count III),

and disclosing "Confidential Information" (Counts IV and V).

The district court issued a preliminary injunction in

favor of Covidien, enjoining Esch and his agents from making,

- 5 -
developing, manufacturing, or selling products that disclose or

use any "Confidential Information" belonging to Covidien.

From May 13 to 23, 2019, the district court conducted a

jury trial as to Covidien's claims pertaining to the Employment

and Separation Agreements. Before trial commenced, both parties

submitted their proposed special verdict forms. The verdict form

ultimately tendered by the district court to the jury posed eight

questions. Questions 1 and 2 inquired the jury whether Esch

breached his confidentiality obligations to Covidien under the

Employment and Separation Agreements, respectively. If answered

in the affirmative, the jury was next asked to decide in Questions

1A and 2A, whether Covidien had proven damages resulting from said

breach.

Question 3 of the verdict form inquired the jury whether

Esch breached his obligation to disclose "Inventions" to Covidien

under the Employment Agreement. If the jury answered "Yes" to the

same, then it would proceed to answer Question 3A regarding the

existence of damages for failing to disclose "Inventions." If,

however, the jury answered "No" to Question 3, the verdict form

directed it to answer Question 4, to wit, whether Esch breached

the implied covenant of good faith and fair dealing. If Question

4 was answered affirmatively, then the jury would move to Question

4A regarding the existence of damages. Question 5 instructed the

jury to award the amount of damages, if any, to Covidien as a

- 6 -
result of Esch's breach(es). Following Question 5, the verdict

form provided the following instructions:

If you answer 3A "YES", proceed to Question 6.
Otherwise, your deliberations are complete.

Assignment of "Inventions"

6. Has Covidien proved that Mr. Esch took
steps to reduce to practice any "Inventions"
in the '498 provisional patent before November
1, 2014?

Yes ______ No ______

7. Has Covidien proved that the "Inventions"
in the '498 provisional patent are found in
the '338 non-provisional patent application?

Yes ______ No ______

8. Has Covidien proved that the "Inventions"
in the '498 provisional patent are found in
the PCT patent application?

Yes ______ No ______

On May 21, 2019, during the jury charge conference, the

district court heard arguments regarding its special verdict form.

At the time, Covidien did not object to same. However, when the

district court specifically asked Covidien "Anything else?,"

Covidien indicated that "nothing else other than just for the

record to reflect that my proposed edits [to the verdict form]

would be global as far as confidential as well as damages."

Nonetheless, the following morning, before the jury charge,

Covidien filed a written objection to the special verdict form.

The motion requested several modifications to the verdict form,

- 7 -
mainly, that the jury proceed to answer question 5 even if the

jury answered Questions 1 through 4 in the negative. Notably,

Covidien's motion did not request that the jury be instructed to

answer Questions 6, 7, and 8.

The district court declined the invitation and informed

the parties:

I've adopted the – mainly just ordinary
changes that have been requested by
[Covidien]. I've used the Plaintiffs' name, as
I have also used the Defendant's name.
The Court has also listed Questions 1, 2,
and 3 under a single heading of "Contract
Claims" rather than using the separate
headings for each. And I have deleted the word
"confidential" [in] front of the word
"inventions" in Questions 3, 6, 7 and 8. Any
comments?

Covidien responded: "Nothing further from [us], Your Honor."

After the jury charge, yet before the jury was sent to

deliberate, Covidien requested at sidebar that the district court

instruct the jury to answer Questions 6, 7, and 8 regardless of a

"Yes" or "No" answer. Esch opposed, stating that the district

court's special verdict form was "logically laid out" and

"consistent with the law." The district court did not rule on the

matter and sent the jury to deliberate.

Following one day of deliberation, the jury reached a

verdict finding that Esch breached his confidentiality obligations

to Covidien under the Employment and Separation Agreements

(Questions 1 and 2) and awarded Covidien $794,892.24 in damages

- 8 -
(Questions 1A, 2A, and 5). The jury also found that Esch neither

breached his obligation to disclose "Inventions" (Question 3) to

Covidien nor his covenant of good faith and fair dealing (Question

4). Given that the jury answered "No" to Question 3, it did not

have to answer Question 3A (damages resulting of a breach to

disclose "Inventions"), which in turn instructed that Questions 6

through 8 not be answered.

Before the jury was discharged, Covidien petitioned the

district court to instruct it to resume deliberations and respond

to Questions 6, 7, and 8. Covidien argued that "[t]he duty to

disclosure and the affirmative steps to reduce inventions to

practice arise under different paragraphs of the agreement" and

that it was "a matter of the objections we filed." The district

court indicated that Covidien had the verdict form "now for a day"

and "saw the instruction that [it] gave to the jury that at Page

3, in bold, it says 'If you answer 3A yes, proceed to Question 6.

Otherwise, your deliberations are complete.'" The district court

highlighted that it did not "know what could be clearer than that."

The district court further noted that the record was preserved,

however, determined it could not inform the jury that it had

"inconsistently followed [the] verdict form when [it] followed it

to the letter."

Upon conclusion of the jury trial, Covidien moved for

declaratory judgment and other post-trial relief. Regarding

- 9 -
declaratory judgment, it requested that Esch be required to assign

any "Inventions" described in the Patent Applications to Covidien.

The district court issued a Memorandum and Order denying

Covidien's request for declaratory judgment, reasoning that "[t]o

agree with Covidien's logic, the jury would have had to reach the

inconsistent conclusion that Esch's publication of Covidien's

confidential information in the '338 Patent Application was

simultaneously a breach of confidentiality and in satisfaction of

his duty to disclose Inventions to Covidien." Covidien LP v.

Esch, 427 F. Supp. 3d 152, 157 (D. Mass. 2019). The district

court, in turn, considered that "the only alleged conduct relevant

to disclosure of any potential Inventions was the publication of

the '338 Patent Application," which the jury found to be a breach

of Esch's obligation of confidentiality under the Employment

Agreement. Id. at 158. Consequently, the district court held

that "[c]ommon sense dictates that neither party anticipated that

a breach of confidentiality under the Employment Agreement would,

in turn, satisfy Esch's obligation to disclose Inventions to

Covidien." Id. For such reason, Covidien's proposed reading of

the verdict was "internally inconsistent" and the jury's

"decisive" negative answer to Question 3 could only be read as a

factual finding that no "Inventions" were made that are encompassed

under the Employment Agreement. Id.

This appeal followed.

- 10 -
 II.

On appeal, Covidien posits that the district court's

denial of the motion for declaratory judgment was erroneous and

warrants reversal as the evidence presented at trial established

that Esch indeed took affirmative steps to reduce an "Invention"

to practice. Moreover, Covidien argues that the jury's verdict

concerning Esch's obligation to disclose "Inventions" was simply

not dispositive to the assignment thereof. Alternatively,

Covidien moves to reverse the jury's verdict that Esch did not

fail to disclose "Inventions." We analyze Covidien's arguments

in turn, detailing additional facts when necessary.

A. Post-Trial Declaratory Judgment

Covidien argues that it is entitled to a post-trial

equitable declaratory judgment, pursuant to the assignment

provisions of the Employment Agreement, since the evidence

presented at trial supports its contractual breach claim.

The Declaratory Judgment Act "has been understood to

confer on federal courts unique and substantial discretion in

deciding whether to declare the rights of litigants." Wilton v.

Seven Falls Co., 515 U.S. 277, 286 (1995). A declaratory judgment

requires a trial court to make factual and legal distinctions "upon

a circumspect sense of its fitness informed by the teachings and

experience concerning the functions and extent of federal judicial

power." Id. at 287 (quoting Pub. Serv. Comm'n. of Utah v. Wycoff

- 11 -
Co., Inc., 344 U.S. 237, 243 (1952)); see also MedImmune, Inc. v.

Genentech, Inc., 549 U.S. 118, 136 (2007). Thus, if

"considerations of practicality and wise judicial administration"

advise against it, a trial court may choose, in its discretion,

not to grant a declaratory judgment. Wilton, 515 U.S. at 288.

Our review of a district court's granting or withholding

declaratory judgment "is conducted under a standard slightly more

rigorous than abuse of discretion." Nat'l. R.R. Passenger Corp.

v. Providence and Worcester R.R. Corp., 798 F.2d 8, 10 (1st Cir.

1986).1 We have described this standard as a "middle ground,"

"independent" or "substantial deference" approach which is "more

rigorous than abuse of discretion, but less open-ended than de

novo review." Ernst & Young v. Depositors Econ. Prot. Corp., 45

F.3d 530, 534 (1st Cir. 1995)("We have captured a middle ground,

expressing our preference for a standard of independent review

when passing upon a trial court's discretionary decision to eschew

declaratory relief."); Fuller Co. v. Ramon I. Gil, Inc., 782 F.2d

1 We have used different terms to describe the appropriate
standard of review for denial of a declaratory judgment action.
Compare Hartford Fire Ins. Co. v. Rhode Island Pub. Transit Auth.,
233 F.3d 127, 130 (1st Cir. 2000) (applying a simple "abuse of
discretion" standard), with Díaz-Fonseca v. Puerto Rico, 451 F.3d
13, 39 (1st Cir. 2006) (applying a "slightly more rigorous" than
abuse of discretion standard)(quoting Natl. R.R. Passenger Corp.,
798 F.2d at 10). See also Rossi v. Gemma, 489 F.3d 26, 38 n.21
(1st Cir. 2007) (explaining our apparent inconsistency in post-
Wilton cases). Under either approach, nonetheless, we reach the
same result herein.
- 12 -
306, 309 (1st Cir. 1986)("[I]ts determination is still entitled to

substantial deference.").

Our standard of review "requires attentively digest[ing]

the facts and the district court's stated reasons." El Día, Inc.

v. Hernández Colón, 963 F.2d 488, 492 (1st Cir. 1992); Am. Home

Assurance Co. v. Insular Underwriters Corp., 494 F.2d 317, 320

(1st Cir. 1974) ("This scope of review necessarily entails

consideration of the reasons underlying dismissal.").

Particularly, if we determine that "a different result should have

been reached, then we will reverse or modify the judgment below."

El Día, Inc., 963 F.2d at 492. Nonetheless, if "the decisional

scales tip in favor of the district court's solution, or if the

scales are in equipoise, then the judgment will stand." Id.

"Bluntly put, we cede some deference to the trier, especially as

to findings of fact, but we will not hesitate to act upon our

independent judgment if it appears that a mistake has been

made." Id.

In this case, there are two unique procedural aspects

that add layers to our review. First, the declaratory judgment

sought by Covidien is equitable in nature. A basic tenant of

equity jurisprudence "is the ability to assess all relevant facts

and circumstances and tailor appropriate relief on a case by case

basis." Id. at 497 (quoting Rosario-Torres v. Hernández-Colón,

889 F.2d 314, 321 (1st Cir. 1989)). "Simply because

- 13 -
an equitable remedy may be available does not necessarily mean

that it must automatically issue." Id. Second, and most

important, the precise form of declaratory relief sought follows

three years of litigation concluded by a nine-day jury trial.

Covidien requests that we evaluate and weigh in all evidence

submitted before the jury as to the matter. We decline to take

this path, which goes beyond the scope of our "slightly more

rigorous than abuse of discretion" standard of review and would

amount to a de novo review of the jury verdict itself.

Our "middle ground" independent approach warrants

"digesting" the procedural facts of this case and assessing the

district court's reasoning for denying a post-trial equitable

declaratory judgment. First, we must consider whether the special

verdict form and the jury instructions were adequate and whether

the trial court's decision not to modify these constitutes a

reversible error. Second, we must determine whether the district

court's factual inference that no "Inventions" were made under the

terms of the Employment Agreement is permissible and internally

consistent with the jury's verdict.

B. Verdict Form and Jury Instructions

Covidien adduces that, contrary to the district court's

rationale for denying the declaratory judgment, the jury's verdict

concerning Esch's obligation to disclose "Inventions" was not

dispositive to the assignment provisions. Such proposition is

- 14 -
premised on the district court's refusal to instruct the jury, at

the charge conference as well as following deliberation, to answer

Questions 6 through 8, regardless of a "Yes" or "No" answer to

Question 3 (whether Esch breached his obligation to disclose

"Inventions"). Covidien contends that if such instruction had

been provided, we would specifically know the jury's position as

to whether Esch took affirmative steps to reduce an "Invention" to

practice.

"A verdict form must be reasonably capable of an

interpretation that would allow the jury to address all factual

issues essential to the judgment." Sánchez-López v. Fuentes-

Pujols, 375 F.3d 121, 134 (1st Cir. 2004) (quoting Sheek v. Asia

Badger, Inc., 235 F.3d 687, 699 (1st Cir. 2000)). "To determine

whether the issues were fairly presented to the jury, we examine

the [district] court's instructions and the wording of the verdict

form as a whole." Id.; see also Santos v. Posadas de Puerto Rico

Associates, Inc., 452 F.3d 59, 65 (1st Cir. 2006) ("[I]nstructions,

coupled with a minimalist set of verdict forms, hardly can be

considered misleading.").

A jury instruction error is reviewed de novo "if

properly preserved, [and will be] revers[ed] only if the rejected

instruction was substantively correct, essential to an important

issue in the case, and not substantially covered in the charge

given." Rodríguez v. Señor Frog's de la Isla, Inc., 642 F.3d 28,

- 15 -
36 (1st Cir. 2011) (internal citations omitted). Pursuant to Fed.

R. Civ. P. 51(c)(2), generally, an objection is properly preserved

if made before the trial court charges the jury. Booker v. Mass.

Dept. of Pub. Health, 612 F.3d 34, 40–41 (1st Cir. 2010). We

conclude that Covidien preserved the underlying issue for

appellate review and, thus now turn to the special verdict form

itself and the instructions given to the jury.

The structure of the special verdict form gave the jury

"a simple, easily understood outlet through which to express its

conclusions" by answering "Yes" or "No" to each proposed question.

Santos, 452 F.3d at 65. It also logically identified each of Esch's

obligations regarding the Employment or Separation Agreements,

respectively. In fact, the special verdict form's final version

is nearly identical to the proposed verdict form Covidien initially

submitted. The verdict form plainly included in Questions 1, 2

and 3 language allusive to the terms of the Employment and

Separation Agreements. The inclusion of this language reasonably

directed the jury to the applicable sections of the contracts for

them to address "all factual issues essential to the judgment."

Sánchez-López, 375 F.3d at 134.

We next scrutinize the structure of the special verdict

form as to Questions 6, 7, and 8. Considered "as a whole,"

Questions 6, 7, and 8 are consistent with the applicable law in

these specific causes of actions. Section II of the Employment

- 16 -
Agreement titled "Inventions" describes in three paragraphs Esch's

contractual obligation regarding the disclosure and assignment of

all "Inventions," while also defining the latter term. Paragraph

A contains both Esch's disclosure and assignment obligations.

Paragraph A specifically provides that Esch "shall promptly

disclose to the Company all Inventions" and it also establishes

that he "will not assert any rights under or to any Inventions,"

where he "made or conceived" such "Inventions" "during the term of

[his] employment with the Company." Paragraph A goes on to deem

any "Inventions" for which Esch took "affirmative steps to have

them reduced into practice" within a year of his separation from

Covidien as having been made or conceived by him during his

employment there. In Paragraph C, the assignment obligation is

restated and expanded by language to the effect that Esch "hereby

assign[s] to the Company [his] entire worldwide right, title, and

interest in and to any and all such Inventions." Given that

Section II of the Employment Agreement contains any and all

obligations relating to "Inventions" and assignment, there was no

need for the jury to answer Questions 6,7, and 8 if it found that

Esch did not breach his obligation to disclose "Inventions,"

because the jury could have decided whether there were "Inventions"

when deliberating the disclosure issue. The special verdict form

was reasonable and logically redacted and explicitly indicated

that Question 3 must be answered "under the terms of the Employment

- 17 -
Agreement." This unmistakably directed the jury to consider and

weigh the evidence presented during trial according to the terms

of the entire Employment Agreement, including both the disclosure

and assignment obligations detailed in Section II.

On appeal, no one disputes that Massachusetts law

governs the terms of the Employment and Separation Agreements

dispute. Covidien LP v. Esch, 378 F. Supp. 3d 119 (D. Mass. May

6, 2019). As a matter of law, the sections of the Employment and

Separation Agreements applicable to the issue before us are

unambiguous. Balles v. Babcock Power Inc., 70 N.E.3d 905, 911

(Mass. 2017); Seaco Ins. Co. v. Barbosa, 761 N.E.2d 946, 951 (Mass.

2002); see also Edmonds v. U.S., 642 F.2d 877, 881 (1st Cir. 1981).

It is, hence, the courts' prerogative to determine their proper

interpretation. A.L. Prime Energy Consultant, Inc. v.

Massachusetts Bay Transportation Auth., 95 N.E.3d 547, 553 (Mass.

2018); see also Nadherny v. Roseland Prop. Co., Inc., 390 F.3d 44,

48–49 (1st Cir. 2004).

During its charge to the jury, the district court

sufficiently addressed the Employment and Separation Agreements

under applicable Massachusetts law. The definition of

"Inventions" and the assignment provisions were particularly

explained. The district court specifically instructed the jury

that: "An invention is reduced to practice when it has been tested

sufficiently to show that it will work for its intended purpose or

- 18 -
when it is fully described in a patent application filed within

the United States Patent and Trademark Office." Such explanation

mirrors that of the Employment Agreement terms and references any

finding about affirmatively reducing to practice an "Invention" to

the descriptions detailed in the Patent Applications. Similarly,

the district court instructed the jury that information revealed

in the Patent Applications could be considered a confidentiality

breach, according to the Employment and Separation Agreements.

These instructions were not objected to by Covidien.

We hold that the objection preserved by Covidien

requesting the jury to answer Questions 6, 7, and 8 regardless of

the response to Question 3, was neither "substantively correct"

nor "essential to an important issue" and was an instruction

"substantially covered in the charge." Rodríguez, 642 F.3d at 36;

Sheek, 235 F.3d at 698. Hence, the special verdict form and the

district court's rejection of Covidien's proposed instruction do

not amount to a reversible error.

C. Inconsistent Verdict

In its Memorandum and Order denying declaratory relief,

Covidien LP, 427 F. Supp. 3d at 158, the district court explained

that the only conduct relevant to disclosing any potential

"Inventions" was the publication of the '338 Patent Application.

The district court determined that the publication of the '338

Patent Application amounted, in the jury's eyes, to a breach of

- 19 -
Esch's confidentiality obligation under the Employment Agreement.

Id. The district court further reasoned that it would be

inconsistent for the jury to find that publishing the '338 Patent

Application was "simultaneously" a breach of confidentiality and

a satisfaction of Esch's obligation to disclose "Inventions" to

Covidien. Id. Thus, the verdict can only be consistently

interpreted as determinative that Esch's compliance with his duty

to disclose any potential "Invention" implies that no "Inventions"

were made under the Employment Agreement's term. If there were

no "Inventions," then there was no need to answer Questions 6, 7,

and 8 because an "Invention," as contractually defined, had to be

made for Esch to assign it to Covidien.

"Where there is a view of the case that makes the jury's

answers to special interrogatories consistent, they must be

resolved that way. For a search for one possible view of the case

which will make the jury's finding inconsistent results in a

collision with the Seventh Amendment." Atlantic & Gulf

Stevedores, Inc. v. Ellerman Lines, Ltd., 369 U.S. 355, 364 (1962).

Moreover, "it is the duty of the courts to attempt to harmonize

the answers [to special interrogatories], if it is possible under

a fair reading of them." Gallick v. Baltimore & Ohio R. Co., 372

U.S. 108, 119 (1963); see also Santiago-Negrón v. Castro-Dávila,

865 F.2d 431, 443 (1st Cir. 1989) ("[W]e must determine . . .

whether the first answers [to special interrogatories] can be made

- 20 -
consistent under any view of the case.").

When considering apparent inconsistent verdicts, we note

that other Circuits have required, on Seventh Amendment grounds,

that district courts sitting in equity follow necessary factual

implications in jury verdicts and that any findings not necessarily

implied by, but nonetheless consistent with, the verdict is left

to the trial judge. See, e.g., Teutscher v. Woodson, 835 F.3d

936, 944 (9th Cir. 2016) ("[I]n a case where legal claims are tried

by a jury and equitable claims are tried by a judge, and those

claims are based on the same facts, the trial judge must follow

the jury's implicit or explicit factual determinations in deciding

the equitable claims." (internal quotations marks, citation, and

alteration omitted)); Miles v. Indiana, 387 F.3d 591, 599-600 (7th

Cir. 2004) (similar); Bartee v. Michelin N. Am., Inc., 374 F.3d

906, 912-13 (10th Cir. 2004) (similar).

Covidien relies on this logic and advances that the

district court erred because the jury technically could have found

that Esch both violated the confidentiality provision by

publishing the Patent Applications and satisfied his duty to

disclose any "Inventions" that were described therein by doing the

same. In other words, Covidien argues that the district court was

not bound by the verdict and had discretion to makes its own

factual finding since the jury's decision does not necessarily

reflect a determination that Esch did not make an "Invention."

- 21 -
 We disagree. The jury's verdict did necessitate a

finding that there were no "Inventions" and was not simply a

plausible inference among various that the district court could

have drawn. The district court was required to attempt to

reconcile apparent inconsistencies in the jury verdict. See

Thomas & Betts Corp. v. New Albertson's, Inc., 915 F.3d 36, 59

(1st Cir. 2019). See also Gallick, 372 U.S. at 119 ("[W]e must

attempt to reconcile the jury's findings, by exegesis if

necessary"). Covidien has not made, and has therefore waived, any

argument that the district court arrived at an erroneous conclusion

that it was legally impossible for Esch to fulfill his duty of

disclosure by violating his duty of confidentiality. See Rivera-

Díaz v. Humana Ins. of Puerto Rico, Inc., 748 F.3d 387, 391 (1st

Cir. 2014) ("[A]bsent the most extraordinary circumstances, legal

theories not raised squarely in the lower court cannot be broached

for the first time on appeal.") (quoting Teamsters Union, Local

No. 59 v. Superline Transp. Co., 953 F.2d 17, 21 (1st Cir. 1992)).

Likewise, Covidien contests the district court's

reasoning that the '338 Patent Application was the only disclosure

that the jury could have found. However, public disclosure by way

of the '338 Patent Application was the only hypothetical

alternative jury finding on disclosure that Covidien raised in its

memorandum of law before the district court. Since Covidien

"makes no argument . . . that any error here constituted plain

- 22 -
error," it also waived said argument. Thomas & Betts, 915 F.3d

at 58 (citing U.S. v. Zannino, 895 F.2d 1, 17 (1st Cir. 1990)).

Finally, the potential jury verdict inconsistency we are

asked to determine is not between two irreconcilable jury findings.

Rather, it is one between a jury finding of breach of

confidentiality and the district court's inference about the

jury's finding — a satisfaction of the disclosure obligation —

that tacitly found no "Inventions" were made. Although Covidien

has presented an alternate reading to the jury's findings, this

also does not entail that "a different result should have been

reached." El Día, Inc., 963 F.2d at 492.

The district court's inference was not only permissible

but also necessary and consistent with the jury's findings as to

the confidentiality and disclosure obligations contained in the

Employment and Separation Agreements. As previously discussed,

the jury instructions meticulously tied together the concepts of

breach of confidentiality and duty to disclose "Inventions" under

the Employment and Separation Agreements vis-à-vis the submissions

and information detailed in the Patent Applications. In this

regard, we confer considerable discretion and deference to the

district court's explanation and common-sense approach and

reasoning. "[T]he scales are in equipoise" or of little weight,

and the ruling must stand. Id.

- 23 -
 Conclusion

The district court found that the jury's decision not to

answer Questions 6, 7, and 8 was "decisive" to its ruling. We

hold that the district court did not abuse its discretion in

denying Appellants' post-trial declaratory judgment request.

For the foregoing reasons, we affirm the district

court's judgment entered on December 13, 2019.

- 24 -