United States Court of Appeals
for the Federal Circuit
__________________________
ATLANTIC RESEARCH MARKETING SYSTEMS,
INC.,
Plaintiff-Appellant,
v.
STEPHEN P. TROY, JR. AND TROY INDUSTRIES,
INC.,
Defendants-Cross Appellants.
__________________________
2011-1002, -1003
__________________________
Appeal from the United States District Court for the
District of Massachusetts in case no. 07-CV-11576, Judge
Patti B. Saris.
__________________________
Decided: October 6, 2011
__________________________
PAUL J. HAYES, Hayes Bostock & Cronin LLC, of An-
dover, Massachusetts, argued for plaintiff-appellant.
With him on the brief was DEAN G. BOSTOCK.
DAMIAN R. LAPLACA, Donovan Hatem, LLP, of Boston,
Massachusetts, and THOMAS P. MCNULTY, Lando & Anas-
tasi, LLP, of Cambridge, Massachusetts, argued for
defendants-cross appellants.
ATLANTIC RESEARCH v. TROY 2
__________________________
Before PROST, MAYER, and O’MALLEY, Circuit Judges.
PROST, Circuit Judge.
Atlantic Research appeals from the grant of summary
judgment by the United States District Court for the
District of Massachusetts invalidating claims 31-36 of
U.S. Reissue Patent No. 39,465 (“’465 patent”) for failing
to meet the written description and best mode require-
ments. Because the district court did not err in invalidat-
ing these claims on written description grounds, we
affirm. We decline to address the best mode issue.
Additionally, Stephen P. Troy, Jr. and Troy Indus-
tries, Inc. (collectively, “Troy”) cross-appeal from the
district court’s denial of the following motions: Troy’s
Motion for Judgment as a Matter of Law regarding state
law claims arising from an alleged misappropriation of a
trade secret; Troy’s Motion for a Mistrial on the grounds
that the court improperly charged the jury and failed to
adequately address a jury taint issue; and Troy’s Motion
for Remittitur. We affirm the district court’s denial of
Troy’s Motion for Judgment as a Matter of Law. But
because the district court did not properly address the
jury taint issue, we vacate the jury’s verdict and reverse
the district court’s denial of Troy’s Motion for a Mistrial.
Finally, we decline to address the remittitur issue in light
of our decision to vacate the jury verdict.
I
A
This case is about weapons technology and a business
relationship gone sour. Atlantic Research is an arms
3 ATLANTIC RESEARCH v. TROY
manufacturing company that focuses on accessories for
small arms weaponry, including handguards that attach
to military rifles. Richard Swan founded Atlantic Re-
search in 1980, co-owns it with his wife, and is the named
inventor of twenty-four patents in the weapons field. Mr.
Swan’s patents include U.S. Patent No. 6,499,245 (“’245
patent”) and its reissue, the ’465 patent, both of which
claim a handguard device. Atlantic Research includes
among its customers the United States military.
Mr. Swan met Stephen Troy in early 2002. Mr. Troy
soon became a distributor for Atlantic Research. Their
business relationship continued to develop, and eventu-
ally Mr. Troy became an employee of Atlantic Research.
He signed a nondisclosure agreement as part of his em-
ployment. Involved in all aspects of Atlantic Research’s
business, Mr. Troy soon became Mr. Swan’s “right-hand
man.” Mr. Swan familiarized Mr. Troy with Atlantic
Research’s products and explained to him how and why
products were designed as they were. This included
showing Mr. Troy the prototypes of each of Atlantic
Research’s products.
In early 2003, Mr. Troy and Mr. Swan attended a
weapons industry show to promote Atlantic Research’s
products. Sometime prior to the show, Mr. Troy began
developing a weapons product for his own company, Troy
Industries. Mr. Swan was aware of this and allowed Mr.
Troy to promote his product from Atlantic Research’s
booth at the trade show. Mr. Swan, however, learned at
the show that Mr. Troy had registered for a booth of his
own for the following year. Things quickly deteriorated
after that, and Mr. Swan terminated Mr. Troy’s employ-
ment with Atlantic Research at the end of February.
Almost immediately thereafter, Troy Industries prepared
a proposal in response to a broad solicitation from the
ATLANTIC RESEARCH v. TROY 4
Crane Naval Warfare Center. The proposal described a
free-floating handguard system for use with rifles.
Free-floating handguards, and the means by which
they attach to rifles, are at the heart of this case. The
free-floating handguard, as explained in the background
of one of the patents at issue, solves to the problem of how
to better equip military rifles. Ancillary devices, such as
integrated laser systems, could not be attached directly to
the barrel of a rifle without potentially damaging both the
rifle and the added device; the device could cause the
barrel to bend and the extreme heat from the barrel could
damage the added device. A handguard that surrounded
the barrel of the firearm without touching the barrel
avoided these problems.
Troy Industries never submitted the proposal to
Crane, deciding it did not have the capability to create
physical prototypes at that time. In 2004, however, Troy
began offering handguards that attached to rifles solely
by clamping to the barrel nut. The barrel nut, which
screws onto a threaded receiver on the upper receiver, is
used to attach the barrel to the upper receiver. Troy’s
handguards competed with those of Atlantic Research.
Mr. Troy testified that he came up with the idea for the
single-clamp handguard in July of 2003 while vacationing
with his family in Turkey. Mr. Troy sought a patent for
this invention in 2005, and U.S. Patent No. 7,216,451
issued in May of 2007, with Mr. Troy as the named inven-
tor.
Atlantic Research filed a complaint against Troy on
August 23, 2007. The complaint consisted of two general
categories of claims. First, Atlantic Research alleged that
Troy infringed the ’465 patent claiming a handguard
device. Second, Atlantic Research alleged that Troy
5 ATLANTIC RESEARCH v. TROY
misappropriated its trade secrets, and was liable under
various additional related Massachusetts state law
claims. The district court bifurcated the case along those
lines.
B
Turning to the patent claims, Atlantic Research ac-
cused Troy of infringing the ’465 patent, a reissue of the
’245 patent. Troy, through its defenses and counter-
claims, alleged that the ’465 patent was invalid. The
district court agreed with Troy, finding claims 31-36 of
the ’465 patent invalid for failing to meet the written
description and best mode requirements at the summary
judgment stage. Regarding written description, the court
concluded that the ’465 patent specification did not dis-
close a handguard that attached solely to the barrel nut of
the gun, but construed the asserted claims (claims 31-36)
to cover such an invention. Because the asserted claims
covered subject matter not disclosed in the specification,
the court invalidated these claims.
Atlantic Research’s trade secret claim survived sum-
mary judgment, and the court set the matter down for
trial. Ultimately, the district court presided over a two
week trial addressing whether Atlantic Research pos-
sessed a valid trade secret and, if so, whether Mr. Troy
wrongly appropriated that trade secret.
Mr. Swan identified a free-floating handguard that
attached to a weapon solely at the barrel nut as his al-
leged trade secret. Mr. Swan testified that he created a
handguard prototype incorporating this design on Janu-
ary 20, 1999, at an Atlantic Research facility. Sergeant
Major Martin Barreras, a Force Modernization Officer
with the Army, was also present when Mr. Swan created
ATLANTIC RESEARCH v. TROY 6
the prototype. Both men described how Mr. Swan created
the prototype by altering an existing handguard. Mr.
Swan did not further develop the prototype at this time
though, believing that the military would not approve of
some of the alterations. The actual prototype was intro-
duced at trial.
Mr. Swan alleged that he disclosed the free-floating
single-clamp handguard design to Mr. Troy while Mr.
Troy was employed by Atlantic Research, and that Mr.
Troy later used this information to create his own prod-
ucts. Mr. Troy testified to the contrary, contending that
he had come up with the idea for the single-clamp hand-
guard while vacationing in Turkey. The dispute went to
the jury, which found in favor of Atlantic Research. The
jury concluded that Troy was liable for misappropriation
of trade secrets and breach of a fiduciary duty and
awarded Atlantic Research $1,813,465 in damages.
Following the trial, Troy sought to have the jury’s
verdict set aside, reversed, and altered. Troy first filed a
motion for a mistrial on two separate but related grounds.
Troy alleged that a mistrial was required because the
district court had twice charged the jury with coercive
instructions that were contrary to law. Troy also alleged
that the district court had failed to properly address
potential jury taint arising from the presence of extrane-
ous evidence in the jury room during deliberations. These
events are described in detail in Part IV.A of the opinion.
The district court denied the motion, concluding that a
mistrial was not warranted.
Second, Troy sought a judgment notwithstanding the
verdict, renewing the arguments set forth in its Motion
for Judgment as a Matter of Law filed prior to the verdict.
Troy contended that the court was required to find in its
7 ATLANTIC RESEARCH v. TROY
favor because Atlantic Research had failed to identify a
trade secret. Third, Troy filed a Motion for Remittitur,
contending that the jury improperly calculated damages.
The district court denied both motions.
Atlantic Research appealed from the district court’s
summary judgment decision invalidating claims 31-36 of
the ’465 patent. Troy cross-appealed from the district
court’s rulings regarding the trade secret trial. We have
jurisdiction over this appeal under 28 U.S.C. § 1295(a)(1).
II
We turn first to Atlantic Research’s appeal of the dis-
trict court’s grant of summary judgment invalidating
claims 31-36 of the ’465 patent under 35 U.S.C. § 112 for
failing to meet the written description requirement. See
Atl. Research Mktg. Sys., Inc. v. Troy, 711 F. Supp. 2d
218, 224 (D. Mass. 2010). As noted above, facing a claim
that its product infringed Atlantic Research’s ’465 patent,
Troy contended that this patent was invalid.
The invention disclosed in the ’465 patent involves a
“sleeve” accessory that attaches to a firearm, as shown
below. The accessory consists of three primary compo-
nents: a receiver sleeve, an upper handguard piece, and a
bottom handguard piece. The receiver sleeve, depicted by
numbers 2, 3, and 4, attaches through its rear portion (4)
to the top of the firearm. The front portion of the receiver
sleeve extends down the firearm’s barrel. This front
portion connects to the upper handguard piece, repre-
sented by numbers 50 and 51. The bottom handguard
piece, referenced by number 70, attaches to the upper
handguard piece. The handguard pieces are not physi-
cally connected to the gun barrel. Instead, the receiver
sleeve is “self supported” by its connection to the top of
ATLANTIC RESEARCH v. TROY 8
the gun. ’465 patent col.2 l.19-20. The area on the top of
the gun where the receiver sleeve attaches is called the
“receiver top.”
Although the receiver sleeve is “self supported” by its
connection to the receiver top, “additional support may be
provided by . . . a special yoke about the barrel nut of the
firearm.” Id. col.2 ll.30-36. The yoke, also referred to as a
“clamp” at trial, provides this additional support by
engaging the firearm’s barrel nut. See id. col.3 ll.3-9.
This engagement occurs roughly in the area denoted by
numbers 52 and 63 in the drawing below.
The two support points in the invention (at the re-
ceiver sleeve and the barrel nut) permit the upper and
bottom handguard pieces to surround the barrel of the
gun without touching it. As explained earlier, this design
enables a firearm user to operate ancillary devices such
as integrated laser devices in complete isolation from the
9 ATLANTIC RESEARCH v. TROY
gun barrel, thereby protecting these devices from the heat
and shock associated with firing the weapon. See id. col.1
ll.38-50. This design also prevents the barrel from bend-
ing under the weight of the handguard and attached
devices. See id. col.1 ll.41-44.
Atlantic Research contends that Troy’s Modular Rail
Forend (“MRF”) product infringes claims 31-36 of the ’465
patent. The MRF product, like the disclosures in the ’465
patent, is a free-floating handguard accessory (i.e., a
handguard accessory that surrounds, but does not touch,
the gun barrel). This product, however, attaches to the
firearm in only one location: the barrel nut. The MRF
product does not have a receiver sleeve attachment point.
Of the asserted claims, claim 31 is the only independ-
ent claim, with claims 32-36 depending therefrom. Claim
31 reads:
31. A system for attaching modular enhancements
to a firearm, said firearm having a receiver, said
receiver having a top and a barrel receiving recep-
tacle at a forward end thereof, said firearm fur-
ther including a barrel received in said barrel
receiving receptacle and a barrel nut received
around an outer surface of said barrel receiving
receptacle to retain said barrel within said barrel
receiving receptacle, said system comprising:
an upper handguard piece having a forward end
and a rearward end, and further having a dovetail
rail extending longitudinally between the forward
end and the rearward end;
a U-shaped supporting yoke removably secured to
said rearward end of said upper hand guard, said
ATLANTIC RESEARCH v. TROY 10
U-shaped supporting yoke including engagement
surfaces configured to cooperatively engage an
outer surface of said barrel nut and thereby sup-
port said upper handguard piece relative to said
barrel nut, wherein said upper handguard piece
extends from said forward end of said upper re-
ceiver forwardly above said barrel without engag-
ing said barrel.
While claim 31 explicitly claims a barrel nut support
point, it mentions nothing about a receiver sleeve support
point. Before reaching the written description question,
the district court construed claim 31 as permitting the
barrel nut to provide complete support for the handguard
accessory. 1 See Atl. Research Mktg. Sys., Inc. v. Troy, 616
F. Supp. 2d 157, 168 (D. Mass. 2009). The court then
concluded, however, that the ’465 specification “does not
describe a handguard that can be supported solely by
clamping to the barrel nut,” and instead “describes an
invention that is supported by both the barrel nut and
attachment to the upper receiver via a receiver sleeve.”
Atl. Research Mktg., 711 F. Supp. 2d at 221. After con-
struing claim 31 to cover the barrel nut-only attachment
design, but then finding that the specification did not
disclose such a design, the court invalidated claims 31-36
for failing to meet the written description requirement of
35 U.S.C. § 112. Id. at 224.
On appeal, Atlantic Research argues that the district
court erred by construing claim 31 to cover a handguard
device supported solely by the barrel nut of the gun,
asserting that this construction conflicts with the specifi-
1 More specifically, the district court construed the
“support” claim term to mean “to bear the weight of, or to
hold up either completely or partially.”
11 ATLANTIC RESEARCH v. TROY
cation, which does not disclose a barrel nut-only attach-
ment design. Under the claim construction proposed by
Atlantic Research, the barrel nut only has to provide
partial support for the handguard accessory, not complete
support, which would leave room for the receiver sleeve to
provide support as well. According to Atlantic Research,
if claim 31 were construed in this manner, it would not
fail on written description grounds because the specifica-
tion does in fact teach an invention where the barrel nut
and receiver sleeve each provide partial support for the
handguard accessory.
Troy responds that the district court properly con-
strued claim 31 and did not err in invalidating claims 31-
36 on written description grounds. In particular, Troy
contends that Atlantic Research received the claim con-
struction it requested (i.e., one that permits the barrel nut
to provide complete support), emphasizing that Atlantic
Research argued at the Markman hearing that the hand-
guard is “supported by the barrel nut with or without the
receiver sleeve” and that the receiver sleeve “could pro-
vide additional support but not necessary support.”
According to Troy, Atlantic Research needed this broad
construction to mount a colorable charge of infringement
against the accused products, which undisputedly attach
to and receive support from only the barrel nut.
For the reasons stated below, we conclude that the
district court properly granted summary judgment invali-
dating claims 31-36 for failing to meet the written de-
scription requirement. While “[c]ompliance with the
written description requirement is a question of fact,” this
issue is “amenable to summary judgment in cases where
no reasonable fact finder could return a verdict for the
non-moving party.” PowerOasis, Inc. v. T–Mobile USA,
Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008). A district
ATLANTIC RESEARCH v. TROY 12
court’s grant of summary judgment of invalidity for lack
of written description is reviewed de novo. See Crown
Packaging Tech., Inc. v. Ball Metal Beverage Container
Corp., 635 F.3d 1373, 1380 (Fed. Cir. 2011).
The written description requirement, set forth in 35
U.S.C. § 112, ¶ 1, states: “The specification shall contain a
written description of the invention, and of the manner
and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in
the art . . . to make and use the same.” An adequate
written description “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “[T]he hallmark of written description is disclo-
sure.” Id. The specification “must describe an invention
understandable to [a] skilled artisan and show that the
inventor actually invented the invention claimed.” Id.
“The purpose of the written description requirement is to
ensure that the scope of the right to exclude, as set forth
in the claims, does not overreach the scope of the inven-
tor’s contribution to the field of art as described in the
patent specification.” In re Katz Interactive Call Process-
ing Patent Litig., 639 F.3d 1303, 1319 (Fed. Cir. 2011)
(internal quotation marks omitted).
“[C]laim construction is inherent in any written de-
scription analysis.” Id.; see also Koninklijke Philips Elecs.
N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326, 1336
(Fed. Cir. 2010) (“A district court must base its analysis of
written description under § 112, ¶ 1 on proper claim
construction.”). This court reviews a district court’s claim
construction de novo. Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc). “To ascer-
tain the scope and meaning of the asserted claims, we
13 ATLANTIC RESEARCH v. TROY
look to the words of the claims themselves, the specifica-
tion, the prosecution history, and any relevant extrinsic
evidence.” Retractable Techs. v. Becton, Dickinson & Co.,
No. 2010-1402, 2011 WL 2652448, at *5 (Fed. Cir. July 8,
2011) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1315-
17 (Fed. Cir. 2005) (en banc)).
Here, the ’465 specification discloses an invention
with two support points, one at the receiver sleeve and
one at the yoke/barrel nut. See ’465 patent col.10 ll.56-59.
The ’465 specification also appears to disclose an inven-
tion where the receiver sleeve provides complete support
for the handguard accessory. See id. col.2 ll.30-36. But as
the district court explained and as Atlantic Research
admitted at oral argument, the specification does not
disclose an invention where the yoke/barrel nut attach-
ment point provides complete support for the handguard
accessory. See Oral Arg. at 7:32-7:49, available at
http://www.cafc.uscourts.gov/oral-argument-
recordings/2011-1002/all (At oral argument, Atlantic
Research’s counsel represented that he “agree[d] wholly
with the judge’s conclusion that the specification does not
disclose supporting the handguard . . . completely with a
barrel nut.”).
While the specification does not disclose a handguard
accessory completely supported by the barrel nut, the
district court properly construed claims 31-36 as covering
such a design. To construe the claims otherwise would
ignore the plain meaning of the “words of the claims
themselves.” See Phillips, 415 F.3d at 1314. A compari-
son between claims 31-36 and the other claims in the ’465
patent (i.e., claims 1-30) clearly indicates that the inven-
tor, Mr. Swan, intended for claims 31-36 to cover a hand-
guard accessory completely supported by a single
attachment point at the barrel nut.
ATLANTIC RESEARCH v. TROY 14
Specifically, claims 1-29 explicitly require two at-
tachment points: one at the receiver sleeve and the other
at the barrel nut. Claim 30 explicitly requires a receiver
sleeve attachment point and provides great detail regard-
ing a “supporting element.” Claims 31-36, however,
added on reissue, mention nothing about a receiver sleeve
attachment point. Instead, these claims disclose only a
yoke/barrel nut attachment point that “support[s]” the
upper handguard piece. That claims 1-30 contain a
receiver sleeve limitation and claims 31-36 do not is
telling, especially in an invention where the support
points are such critical features. These “substantive
differences” between claims “can be a ‘useful guide in
understanding the meaning of particular claim terms.’”
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632
F.3d 1246, 1254 (Fed. Cir. 2011) (quoting Phillips, 415
F.3d at 1314). Here, the discrepancies between claims 1-
30 and 31-36 strongly suggest that Mr. Swan did not want
to import a receiver sleeve limitation into claims 31-36.
Instead, he attempted through reissue to obtain claims
covering a single-attachment design with the yoke/barrel
nut attachment providing complete support.
We acknowledge that the specification is “always
highly relevant to the claim construction analysis” and “is
the single best guide to the meaning of a disputed term.”
Phillips, 415 F.3d at 1314. In this particular case, how-
ever, construing claims 31-36 to only cover subject matter
disclosed in the specification would involve permitting the
receiver sleeve to provide support for the handguard
accessory (in addition to the barrel nut). As explained,
such a construction would eviscerate the plain meaning of
claim language and ignore substantive differences be-
tween claims regarding an issue that is a focal point of
the invention. Therefore, importing a receiver sleeve
limitation into claims 31-36 is not appropriate.
15 ATLANTIC RESEARCH v. TROY
Moreover, as noted above Atlantic Research argued at
the Markman hearing that the handguard accessory is
“supported by the barrel nut with or without the receiver
sleeve” and that the receiver sleeve “could provide addi-
tional support but not necessary support.” In other
words, Atlantic Research sought a claim construction in
district court that would cover a barrel nut-only design,
perhaps to support its infringement arguments against
the accused products (the accused products undisputedly
attach to and receive support from only the barrel nut).
Now, however, having lost on written description
grounds, Atlantic Research argues for a construction that
precludes the barrel nut-only attachment design. We
view such tactics with “extreme disfavor.” See N. Telecom
Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1290 (Fed. Cir.
2000) (“[W]e look with extreme disfavor on appeals that
allege error in claim constructions that were advocated
below by the very party now challenging them.” (internal
quotation marks omitted)). While we do not address
whether Atlantic Research is judicially estopped from
asserting contradictory claim construction arguments on
appeal, we note that these inconsistencies undermine
Atlantic Research’s current claim construction argument.
We must now incorporate the barrel nut-only claim
construction into the written description analysis. As
mentioned, it is undisputed that the written description
for the ’465 patent does not disclose to a person of ordi-
nary skill in the art an invention where the yoke/barrel
nut attachment point provides complete support for the
handguard accessory. See Oral Arg. at 7:32-7:49 (At oral
argument, Atlantic Research’s counsel represented that
he “agree[d] wholly with the judge’s conclusion that the
specification does not disclose supporting the handguard .
. . completely with a barrel nut.”). Claims 31-36, however,
clearly cover such a design. Put differently, claims 31-36
ATLANTIC RESEARCH v. TROY 16
exceed in scope the subject matter that inventor Mr.
Swan chose to disclose to the public in the written de-
scription. Therefore, we hold that the district court
properly granted summary judgment invalidating claims
31-36 for failing to satisfy the written description re-
quirement of 35 U.S.C. § 112. Mr. Swan used the reissue
process to impermissibly obtain claims unsupported by
the written description. Our holding and the analysis
used to reach it are consistent with this court’s precedent.
See, e.g., ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d
1368, 1376-1380 (Fed. Cir. 2009).
Our holding is also reinforced by the fact that Mr.
Swan viewed his barrel nut-only attachment design as a
trade secret when he filed the patent application contain-
ing the disclosures that he later relied upon for his reis-
sue claims, as illustrated by the positions taken by
Atlantic Research throughout the trade secret portion of
the case (discussed in more detail in Part III below).
Specifically, Mr. Swan relied on the ’245 patent specifica-
tion for the reissue claims in the ’465 patent. The specifi-
cations of both patents, with the exception of the claims,
are nearly identical. When Mr. Swan filed the application
that led to the ’245 patent, he was keeping the barrel nut-
only attachment design from the public as a trade secret.
See Trial Tr. vol. 2, 131, June 16, 2009; Trial Tr. vol. 3, p.
89, June 17, 2009. Indeed, Atlantic Research contended
at trial, as it had to in order to succeed on its trade secret
claim, that the barrel nut-only attachment design was not
disclosed in the ’245 patent. Mr. Swan cannot now “have
it both ways” by reaching back and relying on the disclo-
17 ATLANTIC RESEARCH v. TROY
sures in the ’245 patent to claim an invention he was
purposely shielding from the public. 2
III
Next, Troy contends that the district court erred in
denying its Motion for Judgment as a Matter of Law on
Atlantic Research’s trade secret claims. 3 This court
reviews a district court’s denial of judgment as a matter of
law according to regional circuit law. See Uniloc USA,
Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir.
2011). The First Circuit reviews the denial of a motion for
judgment as a matter of law de novo, “viewing the evi-
dence in the light most favorable to the nonmoving party.”
Marcano Rivera v. Turabo Med. Ctr. P’ship, 415 F.3d 162,
167 (1st Cir. 2005). We will overturn the jury’s verdict
only if “the evidence points so strongly and overwhelm-
ingly in favor of the moving party that no reasonable jury
could have returned a verdict adverse to that party.” Id.
Atlantic Research’s trade secret claims are a matter of
Massachusetts state law, and we therefore apply that law
in reviewing the district court’s decision. See Ultimax
Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d
1339, 1355 (Fed. Cir. 2009).
2 Because claims 31-36 are invalid for failing to sat-
isfy the written description requirement, we decline to
reach the district court’s best mode ruling.
3 Troy appeals the denial of both the pre-verdict
judgment as a matter of law and the post-verdict judg-
ment notwithstanding the verdict. The standard of
review is the same for both motions. Censullo v. Brenka
Video, Inc., 989 F.2d 40, 42 (1st Cir. 1993). For simplic-
ity, we refer to them collectively as the judgment as a
matter of law.
ATLANTIC RESEARCH v. TROY 18
Under Massachusetts law,
[w]hoever embezzles, steals or unlawfully takes,
carries away, conceals, or copies, or by fraud or by
deception obtains, from any person or corporation,
with intent to convert to his own use, any trade
secret, regardless of value, shall be liable in tort to
such person or corporation for all damages result-
ing therefrom.
Mass. Gen. Laws. ch. 93A, § 42.
A trade secret is defined as,
anything tangible or intangible or electronically
kept or stored, which constitutes, represents, evi-
dences or records a secret scientific, technical,
merchandising, production or management infor-
mation, design, process, procedure, formula, in-
vention or improvement.
Id. ch. 266, § 30. The range of what may be considered a
trade secret is broad. The focus is whether what is
claimed as the trade secret is in fact secret. See Jet Spray
Cooler, Inc. v. Crampton, 282 N.E.2d 921, 925 (Mass.
1972).
Troy advances several arguments for judgment as a
matter of law in its favor. First, Troy contends that
Atlantic Research failed to identify any alleged trade
secrets at trial. But Mr. Swan, Atlantic Research’s presi-
dent and founder, testified that “nobody had ever at-
tached directly, and only to the barrel nut for a
handguard system that was free-float. That was a trade
secret right there.” Therefore, Troy’s argument is without
merit.
19 ATLANTIC RESEARCH v. TROY
Troy next contends that the “concept” of clamping a
handguard to a gun at the barrel nut cannot be a trade
secret because the ’245 patent discloses this type of de-
vice. A trade secret is secret. A patent is not. That
which is disclosed in a patent cannot be a trade secret.
See, e.g., On-line Techs., Inc. v. Bodenseewerk Perkin-
Elmer GMBH, 386 F.3d 1133, 1141 (Fed. Cir. 2004);
Prescott v. Morton Int’l, Inc., 769 F. Supp. 404, 406 (D.
Mass. 1990) (applying Massachusetts law). Indeed, Troy
argues that the district court actually adopted Troy’s
position as its own at a pretrial hearing.
Troy’s argument illustrates the inherent tension At-
lantic Research created by contending that Troy misap-
propriated trade secrets, while simultaneously asserting
that the products Troy developed with the misappropri-
ated trade secrets infringed its patent. In response, Troy
contended that Atlantic Research’s patent disclosed the
trade secret, but also contended that the patent asserted
against it was invalid for failing to disclose a written
description of a handguard that attaches solely at the
barrel nut. These conflicting positions left little room for
either party to prevail on both claims.
The district court recognized that the conflicting posi-
tions put the parties on the “horns of a dilemma.” The
court correctly concluded that Atlantic Research would
have to demonstrate at trial that the alleged trade secret
was “something beyond” what was disclosed in the ’245
patent. The district court did not, as Troy contends,
explicitly find that the alleged trade secret was disclosed
in the ’245 patent. Whether Atlantic Research had a
trade secret and whether it was “something beyond” what
was disclosed in the ’245 patent were matters for the jury
to decide. The court informed the jury that the ’245
patent described a handguard that was supported by
ATLANTIC RESEARCH v. TROY 20
attaching to a weapon at two points. The court then
instructed the jury that “[o]nly if you find that the trade
secret . . . is not present or disclosed in the ’245 patent
may you conclude that such information is a protectable
trade secret.” Troy’s second contention, like its first, is
without merit.
Troy’s remaining arguments for judgment as a matter
of law amount to disagreements with the jury’s view of
the weight of the evidence, arguments which need not
detain us long. Troy contends that Atlantic Research
failed to introduce any evidence of its alleged trade secret.
But Atlantic Research introduced into evidence the proto-
type created on January 20, 1999, which it alleged embod-
ied the trade secret. Mr. Swan’s and Sergeant Major
Barreras’s testimonies were in accord. Viewing the
evidence in a light most favorable to Atlantic Research,
we cannot say that no reasonable jury could have been
persuaded that Atlantic Research was in possession of its
alleged trade secret. We therefore affirm the district
court’s denial of Troy’s Motion for a Judgment as a Matter
of Law.
IV
Following the jury’s verdict, Troy moved for a mistrial
on two grounds. The district court denied the motion, and
Troy renews its arguments on appeal. First, Troy con-
tends that the district court erred as a matter of law by
giving two improper Allen charges, named for Allen v.
United States, 164 U.S. 492 (1896), and improperly co-
erced the jury to reach a unanimous verdict. Second, Troy
contends that the district court failed to properly investi-
gate and remedy the possibility of jury taint due to the
presence of extraneous evidence in the jury room during
deliberations.
21 ATLANTIC RESEARCH v. TROY
A
The events unfolded at trial as follows. At approxi-
mately 2pm on the second day of deliberations, the jury
sent two questions to the court, and shortly thereafter
requested trial transcripts. The first question concerned
what could be done about a possible business hardship of
one of the jurors. The second question stated:
If we cannot reach a unanimous decision after ex-
hausting all points presented to each other during
our deliberation, do we have an idea of how long
deliberations will continue if we are still at an im-
passe every day?
After the question was presented to the court, the
judge conferred with both sides as to the proper course.
The judge stated, “[s]o I think at this point what I’ll do is
I’ll bring them in and tell them we’ll be getting them the
transcripts, that it’s not time to give up yet.” Counsel for
Troy responded “Great.”
The judge then instructed the jury:
It’s too soon to give up on deliberating. It’s an im-
portant case. There’s a lot of time put into it and
maybe the transcripts will help break a logjam. I
also encourage you, if there are any legal ques-
tions or questions to get through to write it out,
because that, at times, really helps clarify for peo-
ple on one side or the other of the dispute what’s
holding up—but it may also be that these tran-
scripts do the trick.
ATLANTIC RESEARCH v. TROY 22
Sometime that afternoon, the jury informed the Court-
room Deputy Clerk that it was deadlocked 9-1. The judge
and both parties were likewise informed.
The following day, the third day of deliberations, the
jury sent another note to the court, which stated:
We are currently stuck in a deadlock. It appears
we have argued all points of the case to the best of
both sides ability. We firmly feel that an [sic]
unanimous decision can not be made.
Also, a juror brought in a clamp from his/her
basement trying to make an argument. Is bring-
ing outside items allowed?
Also, some jurors feel another juror is sympathetic
to a certain side on this case, and is causing us to
not reach an [sic] unanimous decision. How
should we proceed?
After receiving the note, the judge again conferred
with counsel and informed them that she was going to
remove the clamp and give the jury an Allen charge.
Troy’s counsel objected, arguing that the judge had al-
ready given an Allen charge, but the judge disagreed. The
judge stated that she would tell the jurors “they shouldn’t
decide based on sympathy” and gave the attorneys an
opportunity to review the charge she would read.
First, the judge instructed the jury that “I need to
take [the clamp] out of the jury room.” Second, she stated
that “it says here that the one juror—at least some jurors
feel, that another juror is sympathetic to a particular
side.” The judge “remind[ed]” the jury “the case cannot be
based on sympathy. It’s got to be based on an objective
23 ATLANTIC RESEARCH v. TROY
view of the evidence.” Third, the judge proceeded to give
a complete Allen charge, reminding the jurors in both the
majority and the minority to “re-examine their positions”
and give careful consideration to the evidence; that the
plaintiff bore the burden of proof to establish each essen-
tial element of the claims; and that “it is your right to fail
to agree.” Approximately three hours later the jury asked
a question related to damages and less than an hour after
that the jury returned a verdict in favor of Atlantic Re-
search.
While the jury deliberated the judge conferred with
counsel as to what should be done about the presence of
the clamp, which, it turned out, had been in the jury room
the previous day. The judge was unclear if she could
question the jurors on “whether or not it played a role in
the process” or if her questions had to be limited to
“whether they used it.” Counsel for Atlantic Research
questioned whether the inquiry should be “made now or
done after.” The court took no action while the jury
deliberated.
Following the jury’s verdict, the court proceeded to
individually question each juror concerning the clamp.
The court limited its questions to:
(1) “What’s your name?”
(2) “What was the clamp?”
(3) “Who brought it in?” and
(4) “When was it brought in?”
Each juror was able to identify the clamp as a copper
clamp of the type used in plumbing. The juror who
brought the clamp in was identified, and he explained to
the judge that he had brought the clamp in the previous
day, but put it away after other jurors objected to its
presence.
ATLANTIC RESEARCH v. TROY 24
A few weeks after the verdict was delivered, the judge
brought the offending juror back to the court for further
questioning. The juror explained that he brought out the
clamp for “maybe ten minutes,” and that he showed it to
the jurors as an example of what a clamp was. The juror
stated that the clamp was not further discussed.
B
When a “colorable claim of jury taint surfaces during
jury deliberations, the trial court has a duty to investigate
the allegation promptly.” United States v. Bradshaw, 281
F.3d 278, 289 (1st Cir. 2002). The court must then “un-
dertake an adequate inquiry to determine whether the
alleged incident occurred and if so, whether it was preju-
dicial.” United States v. Bristol-Martir, 570 F.3d 29, 42
(1st Cir. 2009). If improper evidence was before the jury,
the court must determine “whether cognizable prejudice
is an inevitable and ineradicable concomitant of that
exposure.” Bradshaw, 281 F.3d at 290. The First Circuit
has emphasized that “the district court, in conducting its
investigation, must ensure that jury members can remain
impartial when they have been exposed to extrinsic
information that is potentially prejudicial.” Bristol-
Martir, 570 F.3d at 43.
The trial court has “wide discretion” in conducting
this inquiry and is reviewed for an abuse of discretion.
Bradshaw, 281 F.3d at 290. A decision based on an
erroneous view of the law, however, “invariably consti-
tutes an abuse of discretion.” Id. at 291. A post-verdict
inquiry is governed by Federal Rule of Evidence 606(b),
which codifies the “common law prohibition against using
jury testimony to impeach a verdict,” with the exception
where “extraneous influence has allegedly infected” the
jury. United States v. Boylan, 898 F.2d 230, 259 (1st Cir.
25 ATLANTIC RESEARCH v. TROY
1990). Because the district court failed to conduct an
adequate investigation into whether the presence of the
clamp in the jury room prejudiced members of the jury,
we vacate the jury verdict and reverse the district court’s
denial of Troy’s motion for a mistrial.
Atlantic Research contends, as an initial matter, that
Troy waived any argument concerning jury taint by
failing to seek a mistrial “promptly upon learning of the
presence of the clamp.” The district court similarly noted
that “Troy did not seek a cautionary instruction or imme-
diate voir dire.” The problem with this reasoning, though,
is that once a “colorable claim of jury taint surfaces” the
court has a “duty to investigate the allegation promptly.”
Bradshaw, 281 F.3d at 289. The district court was aware
of the presence of the clamp in the jury room prior to the
issuance of the verdict. The alleged trade secret in this
case was the ability to attach a handguard to a weapon
using a single-clamp mechanism. The term “clamp” was
used repeatedly throughout the trial. Without knowing
exactly what the extraneous ‘clamp’ was, the clamp’s
“acknowledged presence . . . in the jury room gave rise to
a colorable claim of actual prejudice.” Id. Because the
district court had notice of the possible prejudice, there
could be no “waiver” of the court’s duty to investigate.
The question then becomes “whether the trial court
investigated the claim appropriately and resolved it in a
satisfactory manner.” Id. The district court failed to take
any steps to determine the possible prejudicial effect of
the clamp prior to the issuance of the verdict; it never
even asked if the jurors could remain impartial after
viewing the clamp. By default, the court did not investi-
gate the issue in a “satisfactory manner.” This alone
warrants a reversal and a grant of a mistrial.
ATLANTIC RESEARCH v. TROY 26
In the alternative, even when examined from a post-
verdict perspective, the district court’s inquiry was still
insufficient as a matter of law. The district court denied
the motion for a mistrial because it found that the
“clamp’s presence did not result in prejudice.” Although it
is possible that the clamp did not influence any juror, the
district court’s inquiry was insufficient to allow that court
to make such a determination. The district court based
its decision on the interview with the offending juror
weeks after the incident took place. Importantly, at this
subsequent interview, the district court only questioned
the juror who brought in the clamp. It never sought to
question any of the other jurors in more detail. It is the
impact of the extraneous evidence on the other jurors,
however, that is the most important fact to determine
during this inquiry. By failing to conduct an adequate
inquiry, the district court abused its discretion.
The deficiency of the district court’s inquiry is evident
by looking at another instance of alleged jury taint ad-
dressed by the First Circuit. In Bristol-Martir, a drug
conspiracy case, the jury foreman informed the court that
a juror may have conducted outside legal research and
brought that information into the jury room. 570 F.3d at
36-38. After dismissing the offending juror, the court
determined that the jury could proceed with deliberations.
The First Circuit subsequently vacated the defendants’
conviction, finding that this inquiry was insufficient and
an abuse of discretion. Id. at 45. “[C]rucially, the district
court did not inquire, either in a group setting or on an
individual basis, as to whether jury members had been
influenced by the errant juror’s improper research and
presentation.” Id. at 43.
Similarly, the district court here failed to take the
necessary steps to determine whether members of the
27 ATLANTIC RESEARCH v. TROY
jury had been prejudiced by the presence of the clamp.
The court only asked “what” the clamp was, “who”
brought it in, and “when” it was present. The court did
not inquire as to its effect on the jurors. While discerning
what is and is not permissible under Rule 606(b) is “easier
said than done,” Boylan, 898 F.2d at 259, the First Circuit
has made clear that the trial court can and should ques-
tion the jury “on their ability to render an impartial
verdict.” Bradshaw, 281 F.3d at 292; United States v.
Hunnewell, 891 F.2d 955, 960 (1st Cir. 1989) (approving
of questions where jurors “all emphatically assured con-
tinuing impartiality”). This is true whether the court is
inquiring before or after the verdict. Boylan, 898 F.2d at
262 (approving the district court’s conclusion regarding
the “jurors’ assertions of continued impartiality” in a post-
verdict inquiry into jury taint); see also United States v.
Lara-Ramirez, 519 F.3d 76, 87 (1st Cir. 2008) (“Although
the district court has broad discretion to ‘fashion an
appropriate procedure for assessing whether the jury has
been exposed to substantively damaging information, and
if so, whether cognizable prejudice is an inevitable and
ineradicable concomitant’ of the jury’s exposure to an
improper outside influence, the judge does not have discre-
tion to refuse to conduct any inquiry at all regarding the
magnitude of the taint-producing event and the extent of
the resulting prejudice.” (emphasis added) (citation omit-
ted)).
We conclude, therefore, that the district court did not
take adequate steps to determine if the presence of the
clamp in the jury room had a prejudicial effect on the jury
as a whole. This was an abuse of discretion. This court is
cognizant of the judicial resources already spent in trying
this case. But the law of the First Circuit is clear. There-
fore, we must reverse and grant Troy’s Motion for a
Mistrial.
ATLANTIC RESEARCH v. TROY 28
C
Troy also contends that the district court erred by giv-
ing the jury two coercive Allen charges. This argument is
based on the district court’s instructions summarized
above in Part IV.A. Troy argues that there are three
aspects to the court’s instructions that render them
invalid: (1) the fact that the court gave more than one
Allen charge; (2) the fact that the instructions were given
with full knowledge that there was only one holdout on
the jury—i.e., that the jury was deadlocked at 9-1; and (3)
that the charge singled out that one juror, who the jury
described as being overly sympathetic to one side or the
other.
Despite Troy’s arguments, we do not believe there is
an absolute prohibition in the First Circuit against giving
more than one Allen charge, particularly where the first is
as cryptic as the one given here. Troy’s other objections to
the second Allen charge have more force. Given our
decision to order a new trial for the reason discussed
above, however, we do not decide this question. Similarly,
we will not address Troy’s challenge to the jury’s award of
damages.
V
Because the district court did not err in granting
summary judgment invalidating claims 31-36 of the ’465
patent for failing to meet the written description re-
quirement, we affirm. We also affirm the district court’s
denial of Troy’s Motion for Judgment as a Matter of Law
involving the trade secret-based state law claims. But we
vacate the jury’s verdict and reverse the district court’s
denial of Troy’s Motion for a Mistrial because the district
court did not properly address the jury taint issue. Fi-
29 ATLANTIC RESEARCH v. TROY
nally, we decline to address the district court’s judgments
on the best mode and remittitur matters in light of our
other decisions.
AFFIRMED-IN-PART, REVERSED-IN-PART,
AND VACATED-IN-PART