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11-3518-cv (L) Faiveley Transport v. Wabtec Corp. UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT SUMMARY ORDER RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL. 1 At a stated term of the United States Court of Appeals 2 for the Second Circuit, held at the Thurgood Marshall United 3 States Courthouse, 40 Foley Square, in the City of New York, 4 on the 6th day of February, two thousand thirteen. 5 6 PRESENT: DENNIS JACOBS, 7 Chief Judge, 8 ROSEMARY S. POOLER, 9 DENNY CHIN, 10 Circuit Judges. 11 12 - - - - - - - - - - - - - - - - - - - -X 13 FAIVELEY TRANSPORT USA, INC., 14 FAIVELEY TRANSPORT NORDIC AB, 15 FAIVELEY TRANSPORT AMIENS S.A.S., 16 ELLCON NATIONAL, INC., 17 Plaintiffs-Appellees/Cross- 18 Appellants, 19 20 -v.- 11-3518-cv (Lead) 21 11-3629-cv (XAP) 22 23 WABTEC CORPORATION, 24 Defendant-Appellant/Cross- 25 Appellee. 26 - - - - - - - - - - - - - - - - - - - - 27 1 1 FOR APPELLANT/CROSS-APPELLEE: JAMES C. MARTIN (Colin 2 E. Wrabley, Paige H. 3 Forester, on the 4 brief), Reed Smith LLP, 5 Pittsburgh, PA. 6 7 FOR APPELLEES/CROSS-APPELLANTS: ANDREW JOHN PINCUS (A. 8 John Peter Mancini, 9 Mayer Brown LLP, New 10 York, NY on the brief), 11 Mayer Brown LLP, 12 Washington, DC. 13 14 Appeal from a judgment of the United States District 15 Court for the Southern District of New York (Rakoff, J.). 16 17 UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED 18 AND DECREED that the judgment awarding damages is VACATED 19 and REMANDED to the district court for a new trial limited 20 to the issue of damages unless Faiveley agrees to a 21 remittitur reducing the amount of damages to $15 million 22 ($4.5 million in past damages, and $10.5 million in future 23 damages), plus interest. In all other respects, the 24 judgment is AFFIRMED. 25 26 Wabtec Corporation appeals from the judgment of the 27 United States District Court for the Southern District of 28 New York (Rakoff, J.), denying its motion for a judgment as 29 a matter of law, or alternatively, a new trial. The 30 Faiveley plaintiffs cross-appeal from the court’s dismissal 31 of their claim for punitive damages. We assume the parties’ 32 familiarity with the underlying facts, the procedural 33 history, and the issues presented for review. 34 Wabtec argues that the Faiveley plaintiffs lack 35 standing to bring their claims because they had no express 36 exclusive license to the trade secrets. “We review 37 questions of standing de novo.” Carver v. City of New York, 38
621 F.3d 221, 225 (2d Cir. 2010). Wabtec ignores the 39 requirements for a successful misappropriation claim, which 40 we defined in an earlier iteration of this very case: “(1) 41 that [Faiveley] possessed a trade secret, and (2) that 42 [Wabtec] used that trade secret in breach of an agreement, 43 confidential relationship or duty, or as a result of 44 discovery by improper means.” Faiveley Transport Malmo AB 45 v. Wabtec Corp.,
559 F.3d 110, 117 (2d Cir. 2009) (citation 46 omitted and emphasis added). That definition is law of the 47 case, and does not include the word “exclusive.” The 2 1 Faiveley plaintiffs were the only entities in possession of 2 the brake trade secrets in the United States. That is 3 enough for standing to sue. 4 Wabtec invokes res judicata to argue that the Tribunal 5 foreclosed any Faiveley damages on the merits. “We review 6 de novo the district court's application of the principles 7 of res judicata.” O'Connor v. Pierson,
568 F.3d 64, 69 (2d 8 Cir. 2009). The Tribunal expressly held that Malmo could 9 “only claim damages suffered by itself,” i.e., not on behalf 10 of the Faiveley plaintiffs. The Tribunal explicitly did not 11 pass judgment on the Faiveley damages, in part because the 12 Faiveley plaintiffs would potentially “still [have been] 13 entitled to claim damages against [Wabtec] before another 14 jurisdiction.” That statement can only mean that the 15 Tribunal’s disposition was not made on the merits. The 16 Tribunal’s decision not to consider Faiveley damages on the 17 merits is not res judicata to their claims here because 18 “[i]n ordinary circumstances a second action on the same 19 claim is not precluded by dismissal of a first action for 20 prematurity or failure to satisfy a precondition to suit.” 21 18A Charles Alan Wright & Arthur R. Miller, Fed. Prac. & 22 Proc. § 4437 (2d ed. 2012). 23 Wabtec also takes issue with the jury’s award of 24 damages. “Where the district court has decided whether 25 and/or to what extent the jury's verdict was excessive, its 26 decision is reviewable only for abuse of discretion.” 27 Rangolan v. County of Nassau,
370 F.3d 239, 245 (2d Cir. 28 2004). First, Wabtec argues that the Faiveley plaintiffs 29 should not be entitled to any “future” damages. However, 30 considering that the Tribunal itself awarded future damages 31 (through 2011) and also predicted that the Faiveley damages 32 would be substantially greater than those it awarded to 33 Malmo in the arbitration, the award of future damages here 34 is appropriate. The district court did not abuse its 35 discretion in affirming the jury’s future damages award of 36 $10.5 million. 37 Wabtec’s argument regarding damages for past conduct is 38 more compelling. The company contends that in calculating 39 the amount of Wabtec’s unjust enrichment, the jury did not 40 properly deduct the $4.1 million arbitration award that 41 Wabtec paid to Malmo (a $3.9 million royalty award with 42 $200,000 in interest). Faiveley’s damages expert conceded 43 on cross-examination that his calculation of $7.6 million in 44 ill-gotten Wabtec profits excluded any consideration of that 45 payment, demurring that the decision of whether to subtract 46 the arbitration royalty was “a legal question.” The jury 47 subsequently calculated Faiveley’s past damages as $7.6 3 1 million in unjust enrichment, or $4.5 million in lost 2 profits. Thus, it appears that the jury accepted the 3 expert’s $7.6 million recommendation without any adjustment 4 whatsoever, an oversight that is significant and 5 quantifiable. 6 Remittitur is appropriate when “the court can identify 7 an error that caused the jury to include in the verdict a 8 quantifiable amount that should be stricken.” Trademark 9 Research Corp. v. Maxwell Online, Inc.,
995 F.2d 326, 337 10 (2d Cir. 1993) (citation omitted). Since Wabtec effectively 11 paid a $3.9 million royalty fee for its use of the brake 12 trade secrets, this expense directly decreased the extent to 13 which Wabtec was unjustly enriched, and should have been 14 discounted from its profits. Subtracting the $3.9 million 15 amount from the $7.6 million award leaves $3.7 million. 16 However, the jury also alternatively calculated Faiveley’s 17 lost profits to be $4.5 million, a higher figure which was 18 not tainted by the oversight on the arbitration payment 19 (since the Faiveley plaintiffs’ compensatory damages were 20 expressly not addressed by the Tribunal). The Faiveley 21 plaintiffs should therefore be given the choice of either 22 [i] a remittitur, decreasing their past damages award by 23 $3.1 million to the higher compensatory amount of $4.5 24 million, or [ii] a new damages trial. See 11 Wright & 25 Miller at § 2815 (“[T]he court may condition a denial of the 26 motion for a new trial upon the filing by the plaintiff of a 27 remittitur in a stated amount. In this way the plaintiff is 28 given the option of either submitting to a new trial or of 29 accepting the amount of damages that the court considers 30 justified.”). 31 Wabtec also asserts that the district court improperly 32 excluded the testimony of one of its three expert witnesses, 33 Dr. Aly Badawy, emphasizing that the district court did not 34 sufficiently explain its decision. The district court’s 35 decision regarding the admissibility of expert testimony 36 “must be sustained unless manifestly erroneous.” Trademark 37 Research Corp.,
995 F.2d at 338. There was no manifest 38 error here. Expert testimony may be excluded if it is based 39 upon unreliable, speculative assumptions. See, e.g., 40 Boucher v. U.S. Suzuki Motor Corp.,
73 F.3d 18, 21 (2d Cir. 41 1996). Dr. Badawy’s expert testimony included sweeping 42 statements that were detached from the actual evidence. 43 While Wabtec may have understandably desired a fuller 44 explanation, the district court did not abuse its discretion 45 by excluding Dr. Badawy’s testimony in a summary ruling. 46 See, e.g., United States v. Locascio,
6 F.3d 924, 939 (2d 47 Cir. 1993) (“[W]e assume that the district court 4 1 consistently and continually performed a trustworthiness 2 analysis sub silentio of all evidence introduced at trial. 3 We will not, however, circumscribe this discretion by 4 burdening the court with the necessity of making an explicit 5 determination for all expert testimony.”). 6 Finally, the Faiveley plaintiffs cross-claim, arguing 7 that the district court should have permitted the jury to 8 consider whether to award them punitive damages. “The 9 district court's determination that punitive damages are 10 unwarranted as a matter of law is reviewed de novo.” New 11 Windsor Volunteer Ambulance Corps, Inc. v. Meyers,
442 F.3d 12101, 121 (2d Cir. 2006). The Tribunal did not characterize 13 Wabtec’s behavior in an extreme light, and expressly 14 permitted Wabtec to “continue to use its reverse engineered 15 drawings” after making its royalty damages payment. Under 16 these circumstances, the district court’s decision on 17 punitive damages is appropriate. 18 Finding no merit in the parties’ remaining arguments, 19 we VACATE the judgment awarding damages and REMAND to the 20 district court for a new trial limited to the issue of 21 damages unless Faiveley agrees to a remittitur reducing the 22 amount of damages to $15 million ($4.5 million in past 23 damages, and $10.5 million in future damages), plus 24 interest. In all other respects, the judgment is AFFIRMED. 25 26 27 FOR THE COURT: 28 CATHERINE O’HAGAN WOLFE, CLERK 29 5
Document Info
Docket Number: 11-3518-cv (L)
Citation Numbers: 511 F. App'x 54
Judges: Chin, Dennis, Denny, Jacobs, Pooler, Rosemary
Filed Date: 2/6/2013
Precedential Status: Non-Precedential
Modified Date: 8/6/2023