Xpertuniverse Inc. v. Cisco Systems, Inc. , 597 F. App'x 630 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
XPERTUNIVERSE INC.,
Plaintiff-Appellant,
v.
CISCO SYSTEMS, INC.,
Defendant-Appellee.
______________________
2014-1281
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:09-cv-00157-RGA, Judge
Richard G. Andrews.
______________________
Decided: January 21, 2015
______________________
DONALD R. DUNNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
plaintiff-appellant. With him on the brief was ALLEN M.
SOKAL.
KATHLEEN M. SULLIVAN, Quinn Emanuel Urquhart &
Sullivan, LLP, of New York, New York, argued for de-
fendant-appellee. With her on the brief were CLELAND B.
WELTON, II; and DANIEL H. BROMBERG, of Redwood
Shores, California. Of counsel on the brief were BRETT M.
2 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
SCHUMAN, Morgan, Lewis, & Bockius LLP, of San Fran-
cisco, California, and KELL M. DAMSGAARD, of Philadelph-
ia, Pennsylvania.
______________________
Before PROST, Chief Judge, MAYER, and LOURIE, Circuit
Judges.
PER CURIAM.
XpertUniverse Inc. (“XpertUniverse”) appeals a final
judgment of the United States District Court for the
District of Delaware granting judgment as a matter of law
(“JMOL”) on its claim for fraudulent concealment, see
XpertUniverse Inc. v. Cisco Sys., Inc., No. 1:09-cv-00157,
2013 WL 6118447 (D. Del. Nov. 20, 2013) (“JMOL Deci-
sion”), and summary judgment on its claims for breach of
contract and trade secret misappropriation, see XpertUni-
verse Inc. v. Cisco Sys., Inc., No. 1:09-cv-00157, 2013 WL
867640 (D. Del. Mar. 8, 2013) (“Summary Judgment
Decision”). We affirm.
BACKGROUND
XpertUniverse developed expert-location software for
corporate call centers. J.A. 1083–84. It asserts that its
technology “broke down the walls of traditional call cen-
ters—where a fixed group of individuals with a fixed set
of skills waited for calls—and allowed organizations to
capitalize and share the knowledge of their employees,
regardless of their role or location.” J.A. 6034. In the
spring of 2004, XpertUniverse demonstrated its product
at the annual “G Force” conference hosted by Genesys
Telecommunications Laboratories, Inc. (“Genesys”). J.A.
1085. According to XpertUniverse, Genesys was “very,
very impressed” with its product, J.A. 1086, and the two
“companies were rapidly forming a mutually beneficial
business partnership and were prepared to quickly go to
market because [Genesys’] router was already integrated
with [XpertUniverse’s] technology.” Br. of Plaintiff-
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 3
Appellant at 15; see also J.A. 1087. In the summer of
2004, however, Laurent Philonenko, Genesys’ chief execu-
tive officer, left Genesys and became general manager of
the Customer Contact Business Unit (“CCBU”) at Cisco
Systems, Inc. (“Cisco”). Soon thereafter, XpertUniverse
began working with Cisco to integrate its technology into
Cisco’s routers. J.A. 1086–87.
In August 2004, XpertUniverse and Cisco executed a
non-disclosure agreement, J.A. 1087–88, and by April
2005, XpertUniverse had been admitted to Cisco’s Tech-
nology Developer Partner (“TDP”) program, J.A. 1073.
Participants in the TDP program pay a small fee that
entitles them to assistance from Cisco engineers in inte-
grating their technology with Cisco products. J.A. 1613–
14. In December 2005, John Hernandez, the director of
product management at the CCBU, invited XpertUniverse
to apply for Cisco’s SolutionsPlus program. J.A. 1191.
Admission to the SolutionsPlus program was very im-
portant to XpertUniverse because it would allow Cisco’s
“army of salespeople” to sell XpertUniverse’s product at
full commission. J.A. 1190; see also J.A. 1335, 1337.
Admission to the program would also allow XpertUni-
verse’s “product to be listed in Cisco’s catalog as a Cisco
approved product.” J.A. 1190.
Cisco informed XpertUniverse that admission to the
SolutionsPlus program was “VERY selective.” J.A. 5129.
Furthermore, even if the SolutionsPlus Governance
Council (the “Governance Council” or “Council”) approved
a product, it still had to undergo a 90-day test period,
after which Cisco could decide “in its sole discretion”
whether to keep the product in the SolutionsPlus program
for a two-year period. J.A. 5151.
Working with Elizabeth Eiss, XpertUniverse’s presi-
dent, Balaji Sundara, a Cisco product manager, prepared
XpertUniverse’s SolutionsPlus application. J.A. 1343. In
April 2006, Sundara presented XpertUniverse’s applica-
4 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
tion to the Governance Council. J.A. 1343–44. The
Council, however, voted to deny the application, conclud-
ing that XpertUniverse’s platform appeared to be a “niche
product” which was not likely to result in “horizontal
revenue pull through.” J.A. 10948. The Governance
Council was also concerned that Cisco’s sales force would
have difficulty selling XpertUniverse’s technology. J.A.
11132; see also J.A. 1215.
Hernandez testified at trial that the “vast majority of
companies” underwent “multiple reviews” by the Govern-
ance Council, and that he had been confident that the
Council’s concerns about XpertUniverse’s technology
could eventually be overcome. J.A. 1621; see also J.A.
1631. In order to allay the Council’s fear that XpertUni-
verse’s technology would not generate significant revenue
for Cisco, Hernandez knew that he needed to secure a
“lighthouse account,” or lead customer, for XpertUni-
verse’s product. J.A. 1631. CitiGroup Inc. (“CitiGroup”),
which in May 2006 was close to beginning a joint pilot
project with XpertUniverse and Cisco, J.A. 1350, 5085–86,
could potentially provide such a lighthouse account, J.A.
1631. Likewise, XpertUniverse’s platform could potential-
ly be used to supply “competency based routing” for
FedEx Corporation (“FedEx”), a major Cisco client. J.A.
11065–68. Hernandez instructed Cisco’s CitiGroup team
to put together a “business case” for admitting XpertUni-
verse to the SolutionsPlus program to take back to the
Governance Council. J.A. 1631; see also J.A. 5085.
Hernandez also asked Eiss for assistance in respond-
ing to the Governance Council’s concern that Cisco’s sales
staff would have difficulty selling XpertUniverse’s prod-
uct. J.A. 11148–51. For two months, Hernandez and Eiss
worked together to develop a presentation showing that
Cisco’s own sales staff, as well as its “channel” partners,
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 5
could effectively market XpertUniverse’s technology. 1
J.A. 11077; see also J.A. 11097, 11102–03.
In the fall of 2006, Hernandez approached Carl Wiese,
an influential member of the Governance Council. J.A.
11100; see also J.A. 1657 (explaining that Wiese was the
“lead influencer” on the Council). Hernandez explained to
Wiese that both CitiGroup and FedEx could become lead
customers for XpertUniverse’s technology, J.A. 11100; see
also J.A. 1639–40. 2 He emphasized, moreover, that
making XpertUniverse a SolutionsPlus partner could
provide Cisco with significant revenue opportunities, both
in the short and the long term. J.A. 1631–32, 1638–42,
11100. On October 6, 2006, Wiese emailed Hernandez,
agreeing to support XpertUniverse’s admission to the
SolutionsPlus program. J.A. 11100.
1 At trial, Eiss testified that she was unaware until
January 2007 that the Governance Council had voted to
deny XpertUniverse’s SolutionsPlus application. J.A.
1216. Eiss conceded, however, that she had been aware
that the Council had considered XpertUniverse’s applica-
tion, but had not yet approved it. J.A. 1216 (“I knew, of
course, that we didn’t have an approval.”). Eiss further
acknowledged that she had been informed that the Coun-
cil had expressed “valid concerns” about the ability of
Cisco’s sales staff to market XpertUniverse’s product
effectively. J.A. 1215.
2 Hernandez also suggested that XpertUniverse’s
product could be sold to International Business Machines
Corporation (“IBM”). J.A. 11100. In early 2006, IBM
expressed interest in XpertUniverse’s technology, J.A.
1094, and considered offering it $20 million for a “stand-
still” agreement which would have precluded XpertUni-
verse’s sale for a year, J.A. 1095. IBM, however,
ultimately declined to make XpertUniverse an offer. J.A.
1105.
6 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
By December 2006, however, it became clear that
Hernandez would be unable to secure a lead customer for
XpertUniverse’s product. J.A. 1642. The FedEx project
never materialized and the pilot project with CitiGroup
“fell apart,” J.A. 1642, due to serious internal problems at
CitiGroup, J.A. 1106; see also J.A. 1100–01. In January
2007, Hernandez called Victor Friedman, XpertUniverse’s
founder, and informed him that he had “exhausted all
possibilities,” J.A. 1643, and that it was “the end of the
opportunity” for XpertUniverse to be admitted to the
SolutionsPlus program, J.A. 1642. Hernandez stated,
however, that Cisco still wanted XpertUniverse to partici-
pate in the TDP program, which would allow Cisco and
XpertUniverse to “validate interoperability between
[their] two solutions and jointly sell side by side in the
market place.” J.A. 10953.
Cisco introduced its own expert location products in
September 2008. J.A. 10199–200. Soon thereafter,
XpertUniverse filed suit, asserting claims against Cisco
for patent infringement, fraud, breach of the parties’
nondisclosure agreement, and trade secret misappropria-
tion. J.A. 10005–06, 10016–25, 10083–91, 10096–106.
After discovery was complete, the district court granted
Cisco’s motion for partial summary judgment on Xpert-
Universe’s claims for trade secret misappropriation and
breach of the parties’ non-disclosure agreement. Sum-
mary Judgment Decision, 2013 WL 867640, at *3–6. The
court concluded that XpertUniverse had failed to identify
all but two of its forty-six purported trade-secrets with
sufficient particularity, and that there was no evidence
that Cisco used the remaining two trade secrets in any of
its products. Id. at *4. The court determined, moreover,
that XpertUniverse failed to raise any genuine issue of
material fact on the question of whether Cisco breached
the parties’ August 2004 non-disclosure agreement by
incorporating information from XpertUniverse’s confiden-
tial documents in its products. Id. at *5–6.
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 7
The district court likewise granted summary judg-
ment against XpertUniverse on all but one of its fraud
claims. The court concluded that XpertUniverse had
raised genuine issues of material fact only on the question
of whether Cisco fraudulently concealed XpertUniverse’s
“status” in the SolutionsPlus program. Id. at *7.
Following a six-day trial, a jury found that Cisco’s Ex-
pert Advisor and Remote Expert products infringed
XpertUniverse’s U.S. Patent Nos. 7,366,709 and
7,499,903. J.A. 45–47. The jury awarded a total of
$34,383 in infringement damages. J.A. 45–47. The jury
also found that Cisco committed “fraud by concealment,”
and that XpertUniverse sustained damages of $70 million
as a result of this fraud. 3 J.A. 45.
On November 20, 2013, the district court granted Cis-
co’s motion for JMOL on the jury’s fraudulent conceal-
ment verdict. 4 JMOL Decision, 2013 WL 6118447, at *3–
6. According to the court, XpertUniverse failed to show
that Cisco’s nine-month delay in informing it about the
Governance Council’s April 2006 vote was a material non-
disclosure. Id. at *3–4. There was no evidence, moreover,
that XpertUniverse went out of business or lost its pur-
ported $70 million in market value5 because it learned of
3 The trial court declined to instruct the jury on pu-
nitive damages, ruling that Hernandez was not a Cisco
officer, director, or managing agent. J.A. 1688–89, 1752–
53.
4 The district court denied Cisco’s motion for JMOL
on the jury’s patent infringement award. JMOL Decision,
2013 WL 6118447, at *6. On appeal, neither party chal-
lenges the jury’s infringement determination or the
amount of infringement damages awarded.
5 The jury based its damages award on testimony
from Walter Bratic, XpertUniverse’s expert, who opined
that XpertUniverse had a value of “at least $70 million”
8 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
the Council’s vote in January 2007 rather than April
2006. Id. at *4–5. In the court’s view, there was “no
substantial evidence from which the jury could have
found that concealment of the ‘denial’ for nine months
caused [XpertUniverse] to forego, or lose, other valuable
partnerships, and thereby lose its entire value.” Id. at *5.
XpertUniverse then filed a timely appeal with this
court. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
A. Standard of Review
“We review grants of summary judgment and post-
verdict JMOL on state law claims under the law of the
regional circuit, since they present procedural issues not
unique to patent law.” Shum v. Intel Corp., 633 F.3d
1067, 1076 (Fed. Cir. 2010); see also Koninklijke Philips
Elects. N.V. v. Cardiac Sci. Operating Co., 590 F.3d 1326,
1332 (Fed. Cir. 2010). In the Third Circuit, a district
court’s rulings on motions for JMOL are subject to de novo
review. W.V. Realty, Inc. v. N. Ins. Co., 334 F.3d 306, 311
(3d Cir. 2003); Warren v. Reading Sch. Dist., 278 F.3d
163, 168 (3d Cir. 2002). A grant of JMOL “is appropriate
only where, viewing the evidence in the light most favora-
ble to the non-movant and giving it the advantage of
every fair and reasonable inference, there is insufficient
evidence from which a jury could reasonably find liabil-
ity.” Gagliardo v. Connaught Labs., Inc., 311 F.3d 565,
568 (3d Cir. 2002) (citations and internal quotation marks
omitted); see also Agrizap, Inc. v. Woodstream Corp., 520
F.3d 1337, 1342 (Fed. Cir. 2008).
before the Governance Council’s April 2006 vote to deny
its SolutionsPlus application, J.A. 1450, but that it had
lost all value by January 2007 when Cisco disclosed the
denial, J.A. 1467–68, 1473–74.
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 9
We exercise plenary review over a trial court’s grant
of summary judgment, applying the same standard ap-
plied by the district court. See Marten v. Godwin, 499
F.3d 290, 295 (3d Cir. 2007). Summary judgment is
appropriate when there are no genuine issues of material
fact and when, drawing all factual inferences in favor of
the nonmoving party, no “reasonable jury could return a
verdict for the nonmoving party.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986); see Lamont v. New
Jersey, 637 F.3d 177, 181 (3d Cir. 2011).
B. Fraudulent Concealment
“[T]he elements of a cause of action for fraud based on
concealment are: (1) the defendant must have concealed
or suppressed a material fact, (2) the defendant must
have been under a duty to disclose the fact to the plaintiff,
(3) the defendant must have intentionally concealed or
suppressed the fact with the intent to defraud the plain-
tiff, (4) the plaintiff must have been unaware of the fact
and would not have acted as he did if he had known of the
concealed or suppressed fact, and (5) as a result of the
concealment or suppression of the fact, the plaintiff must
have sustained damage.” Bank of Am. Corp. v. Superior
Ct., 198 Cal. App. 4th 862, 870 (2011) (citations and
internal quotation marks omitted). 6 Thus, to stake out a
claim for fraudulent concealment, XpertUniverse needed
to show not only that Cisco intentionally concealed a
material fact, but that there was a causal nexus between
the concealment and any damages it sustained. Id.; see
also Graham v. Bank of Am., N.A., 226 Cal. App. 4th 594,
609 (2014) (rejecting a claim for fraudulent concealment
where the damages incurred by the plaintiff were caused
6 The parties do not dispute that the law of the
State of California governs XpertUniverse’s fraudulent
concealment claim. See JMOL Decision, 2013 WL
6118447, at *2.
10 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
by “a decline in the overall market” rather than the
defendant’s omissions).
XpertUniverse’s fraudulent concealment claim fails as
a matter of law because there was no credible evidence
that it went out of business and lost all market value as a
result of Cisco’s nine-month delay in revealing that the
Governance Council had voted to deny its SolutionsPlus
application. While admission to the SolutionsPlus pro-
gram would have enhanced XpertUniverse’s ability to sell
its product, J.A. 1190, 1335, there was no showing that
the delay in learning of the Council’s vote caused it to
forego opportunities to enter into partnerships with
companies other than Cisco or to lose the financial sup-
port of its investors. To the contrary, as the district court
correctly determined, “the effects of finding out about the
‘denial’ in January 2007 were [not] any different, or any
more detrimental to [XpertUniverse], than finding out
about the ‘denial’ in April, 2006.” JMOL Decision, 2013
WL 6118447, at *5.
The linchpin of XpertUniverse’s fraudulent conceal-
ment claim is that the Governance Council’s April 2006
vote to deny its SolutionsPlus application was final, and
that the efforts by Hernandez and others at Cisco to
secure its admission to the program in the months follow-
ing the vote were a mere “sham” designed to prevent it
from entering into a partnership with one of Cisco’s
competitors. Reply Br. of Plaintiff-Appellant at 4. The
record, however, belies XpertUniverse’s assertion that the
Council’s April 2006 vote was “final” and foreclosed any
opportunity for it to be admitted as a SolutionsPlus
partner. See JMOL Decision, 2013 WL 6118447, at *3
(explaining that the Council’s April 2006 vote did not
mean that XpertUniverse’s SolutionsPlus application was
“terminally denied”). Hernandez presented uncontrovert-
ed testimony that many products underwent “multiple
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 11
reviews” by the Governance Council. 7 J.A. 1621. He
explained, moreover, that although the Council had
expressed concern that XpertUniverse’s platform was a
“niche product,” and that Cisco’s sales force would have
difficulty marketing it effectively, J.A. 10948, he had been
confident that he and his team could “pull together the
material to counter the [Council’s] feedback” and eventu-
ally secure XpertUniverse’s admission to the Solu-
tionsPlus program, J.A. 1631. Ross Daniels, a director of
product marketing at the CCBU, likewise testified that he
“did not view the decision at the April 19th Governance
Council meeting [as] final.” J.A. 1326. Even after the
Council’s vote, Daniels and others at the CCBU continued
to work “through multiple tracks” to get XpertUniverse
admitted to the SolutionsPlus program. J.A. 1326; see
also J.A. 5085.
Numerous Cisco emails and other documents confirm
that Hernandez continued to push for XpertUniverse’s
admission to the SolutionsPlus program in the months
following the Council’s April 2006 vote. See J.A. 5056–57,
5085–86, 11077, 11097, 11132, 11145. Hernandez in-
structed Robert DePinto, the account manager on Cisco’s
CitiGroup team, J.A. 1627, to build a “business case” for
admitting XpertUniverse to the SolutionsPlus program,
7 XpertUniverse argues that a flowchart it received
from Cisco in January 2006 indicates that “if the Council
rejects a candidate, nothing further happens.” Br. of
Plaintiff-Appellant at 19 (citing J.A. 5233). Notably,
however, a later Cisco flowchart, dated April 2006, shows
that a SolutionsPlus application may be resubmitted even
if it is initially rejected by the Governance Council. J.A.
11024. More importantly, XpertUniverse failed to rebut
Hernandez’s unequivocal testimony that, in practice,
many SolutionsPlus applications were reviewed “multi-
ple” times by the Governance Council, J.A. 1621.
12 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
J.A. 5056; see also J.A. 5085, 11132, 11142, 11145. In
addition, in June 2006 Hernandez asked Eiss, XpertUni-
verse’s president, for assistance in putting together a
presentation to counter the Governance Council’s concern
that Cisco’s sales staff would have difficulty selling Xpert-
Universe’s product. J.A. 11148–51; see also J.A. 11097,
11102–03. Furthermore, in an effort to allay the Council’s
fear that XpertUniverse’s platform was a niche product
that would not generate significant revenue for Cisco,
Hernandez worked to secure a “lighthouse account,” or
lead customer, for XpertUniverse’s technology. J.A. 1627,
1631, 11065.
In October 2006, Hernandez contacted Wiese, the
most influential member of Cisco’s Governance Council,
J.A. 1657, and explained that XpertUniverse’s technology
could be used in important projects for CitiGroup and
FedEx, two major Cisco clients, J.A. 1627. Hernandez
argued, moreover, that making XpertUniverse a Solu-
tionsPlus partner would provide Cisco not only with
significant short-term revenue opportunities, but “a long-
term play for success.” J.A. 1640; see also J.A. 1639,
11100. Shortly thereafter, Wiese emailed Hernandez,
agreeing to support XpertUniverse’s admission to the
SolutionsPlus program. J.A. 11100. We reject, therefore,
XpertUniverse’s assertion that the Council’s April 2006
vote was “final” and that the efforts, in the period be-
tween April and December 2006, to secure XpertUni-
verse’s admission to the SolutionsPlus program were a
mere “sham designed to ‘stall’ [XpertUniverse] from
discovering the finality of the Council’s decision,” Reply
Br. of Plaintiff-Appellant at 4. 8 It was only in December
8 Even if Cisco deliberately delayed in informing
XpertUniverse about the Governance Council’s April 2006
vote, moreover, this would be insufficient, standing alone,
to support a viable fraudulent concealment claim. As
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 13
2006, after the proposed projects with CitiGroup and
FedEx had fallen through, that Hernandez concluded that
it was “the end of the opportunity” for XpertUniverse to
be admitted to the SolutionsPlus program. J.A. 1642.
Significantly, moreover, although XpertUniverse
might not have been immediately informed of the Gov-
ernance Council’s April 2006 vote to “deny” its Solu-
tionsPlus application, it knew that admission to the
program was extremely competitive, J.A. 5129, and that
the Council had considered, but not yet approved, its
application, J.A. 1215–16. Indeed, in the months after the
Council’s vote, XpertUniverse was aware not only that its
SolutionsPlus application had not yet been approved, J.A.
1216, but that the Governance Council had voiced “valid
concerns” about the ability of Cisco’s sales staff to sell its
product, J.A. 1215. 9 XpertUniverse fails to show that any
difference between what it knew (that its application had
not yet been approved and that the Governance Council
doubted whether Cisco’s sales staff could effectively
market XpertUniverse’s product) and what it allegedly
did not know (that the Council had made a non-final
discussed previously, XpertUniverse needed to show not
only that Cisco intentionally concealed a material fact,
but that any damages it incurred were caused by the
concealment. See Graham, 226 Cal. App. 4th at 609.
9 Although Eiss conceded that she knew that the
Council had expressed “valid concerns” about the ability
of Cisco’s sales staff to sell XpertUniverse’s product, she
attempted to characterize these concerns as insignificant
“training and education issues.” J.A. 1215. To the con-
trary, however, because Cisco invests significant re-
sources in managing and promoting a SolutionsPlus
product, J.A. 1639, the issue of whether Cisco employees
could effectively market XpertUniverse’s technology was
clearly a very important concern.
14 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
decision to “deny” its SolutionsPlus application) material-
ly impacted its behavior. See JMOL Decision, 2013 WL
6118447, at *3. To the contrary, as the district court
correctly determined, there was no credible evidence that
XpertUniverse ‘‘would have withdrawn from [its] active
relationship with Cisco” even if it had been immediately
informed about the Council’s April 2006 vote. Id.
C. Damages
A second, and even more significant, defect in Xpert-
Universe’s fraudulent concealment claim is that it failed
to show that the nine-month delay in learning of the
Council’s vote caused it to go out of business and lose its
purported $70 million in market value. See Graham, 226
Cal. App. 4th at 608 (“For fraudulent concealment, the
plaintiff must plead and prove he or she sustained dam-
age as a result of the concealment or suppression of
fact.”). Contrary to XpertUniverse’s assertions, there was
no credible evidence that it could have “preserv[ed]” its
purported $70 million market value, Br. of Plaintiff-
Appellant at 52, even if it had been immediately informed
of the Council’s vote.
To support its claim for lost-value damages, Xpert-
Universe relied upon the testimony of its expert, Bratic.
According to Bratic, XpertUniverse was worth “at least
$70 million” before the Council’s April 2006 vote, but had
lost all market value by January 2007 when it learned of
the vote. J.A. 1450; see also J.A. 1462–64, 1467–68, 1473.
Significantly, however, Bratic failed to make any valua-
tion comparisons between XpertUniverse and other
similar ventures. Instead, he based his valuation of
XpertUniverse on the revenue projections furnished by
XpertUniverse’s own officers. J.A. 10996. These unsup-
ported projections forecasted that XpertUniverse would
experience revenue growth of more than 30,000% in the
period between 2006 and 2010, notwithstanding the fact
that it had not yet sold a product and had no contracts for
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 15
future sales, J.A. 1001, 11100–01. Given that Bratic’s
testimony was predicated upon the irrationally exuberant
revenue projections furnished by XpertUniverse man-
agement, it provided an inadequate evidentiary founda-
tion for the claim that XpertUniverse had a market value
of $70 million in April 2006. See Sargon Enter., Inc. v.
Univ. of S. Cal., 55 Cal. 4th 747, 776 (2012) (rejecting
expert testimony which assumed that the plaintiff’s
“market share would have increased spectacularly over
time to levels far above anything it had ever reached”);
Piscitelli v. Friedenberg, 87 Cal. App. 4th 953, 989 (2001)
(“[D]amages which are speculative, remote, imaginary,
contingent, or merely possible cannot serve as a legal
basis for recovery.”).
Even more fundamentally, XpertUniverse failed to
show that it suffered any diminution in market value as a
result of the nine-month delay in learning of the Council’s
vote. XpertUniverse’s lost-value damages claim hinges on
its contention that if it had been informed of the Council’s
vote in April 2006, rather than January 2007, it could
have preserved its market value by “monetiz[ing] a . . .
partnership” with CitiGroup, IBM, or Genesys. Br. of
Plaintiff-Appellant at 65. At trial, however, XpertUni-
verse failed to show that the nine-month delay in learning
of the Council’s vote caused it to forego any viable part-
nership opportunities. Although CitiGroup came close to
beginning a joint pilot project with XpertUniverse and
Cisco in May 2006, J.A. 1350, 5085–86, that project fell
through due to internal financial problems at CitiGroup. 10
J.A. 1106, 1349–51, 11058. Given that CitiGroup lacked
the resources to fund even a pilot project, J.A. 1106, there
was insufficient evidence for a reasonable jury to conclude
10 In the summer of 2006, CitiGroup underwent a
major reorganization and was forced to lay off 17,000
employees. J.A. 1101.
16 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
that CitiGroup would have been willing—or able—to
enter into any type of long-term partnership arrangement
with XpertUniverse or to invest the resources necessary
to enable it to sustain its purported $70 million market
value.
Nor was there any credible evidence that XpertUni-
verse could have preserved its market value by partnering
with Genesys or IBM. While XpertUniverse’s technology
allegedly had already been integrated with Genesys’
router, J.A. 1086–87, no Genesys witness testified that it
had any interest, in the spring of 2006, in entering into a
partnership with XpertUniverse. 11 Likewise, although
IBM “considered” paying XpertUniverse $20 million for a
standstill agreement precluding XpertUniverse’s sale for
a year, J.A. 1105, 1094–95, it ultimately declined to make
an offer, and no IBM witness testified that it would have
been willing to enter into a partnership arrangement with
XpertUniverse in the spring of 2006. There was, moreo-
ver, no showing that in April 2006 either Genesys or IBM
would have had the ability, or the desire, to invest the
resources necessary to allow XpertUniverse to effectively
11 XpertUniverse attempts to bolster its contention
that it could have entered into a successful partnership
with Genesys by pointing to a May 2006 email from
Sundara noting that there was a danger that Genesys
might try to “buy[] out” XpertUniverse. J.A. 5086. This
email, however, is insufficient to show that Genesys
would have been willing to acquire, or partner with,
XpertUniverse on terms that would have allowed it to
retain its purported $70 million market value. See JMOL
Decision, 2013 WL 6118447, at *5 (“Acquisition by
Genesys is unsupported by anything more than a Cisco
email noting a ‘risk’ of that acquisition; there is no evi-
dence that [XpertUniverse] was ever up for sale or that
Genesys had ever made a bid.”).
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 17
market its product and preserve its market value. See
JMOL Decision, 2013 WL 6118447, at *5 (emphasizing
that there was no evidence that any potential partnership
with Genesys or IBM would have “add[ed] value to [Xpert-
Universe], in April 2006 or at any other relevant time”).
More significantly, XpertUniverse fails to show that
the nine-month delay in learning of the Governance
Council’s vote destroyed any potential partnership oppor-
tunities. Even assuming arguendo that Genesys or IBM
would have been willing to enter into a partnership with
XpertUniverse in April 2006, there was no credible evi-
dence suggesting that they would not have been equally
willing to do so in January 2007. We reject XpertUni-
verse’s assertion that its ability to broker a partnership
agreement with a company other than Cisco was “de-
stroyed,” Br. of Plaintiff-Appellant at 43, because it “ex-
hausted its resources” trying to integrate its technology
with Cisco’s router in the period between April 2006 and
January 2007, id. at 66. By April 2006, XpertUniverse
was already in a precarious financial position, strapped
for cash and considering employee layoffs. J.A. 1212; see
also J.A. 11071–76. Despite operating for almost eight
years, it had no sales and no contracts for future sales.
J.A. 1106, 1200. Nor had it succeeded in producing a fully
functional product. J.A. 1106, 1200. XpertUniverse
points to no persuasive evidence showing that any addi-
tional resources it expended between April 2006 and
January 2007 trying to integrate its product with Cisco’s
router materially impacted its ability to enter into a
partnership with a company other than Cisco.
Equally unavailing is XpertUniverse’s argument that
the nine-month delay in learning of the Council’s vote
“caused [its] investors to flee,” Br. of Plaintiff-Appellant at
66. Friedman testified that his company lost the backing
of its investors because it was not admitted to the Solu-
tionsPlus program. See J.A. 1199 (“[W]e were counting on
SolutionsPlus to drive revenue . . . and [XpertUniverse]
18 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
was functioning . . . through investors that were backing
what we were doing because this was going to happen.
And so when it didn’t happen . . . the investors . . . went
away . . . .”). While being denied admission to the Solu-
tionsPlus program may well have caused XpertUniverse
to lose the backing of its investors, there was no evidence
that the nine-month delay in learning of the Council’s
vote was responsible for any erosion in investor support.
See JMOL Decision, 2013 WL 6118447, at *5 (“[I]f disclo-
sure of Cisco’s ‘denial’ in January 2007 destroyed [Xpert-
Universe], it is reasonable to wonder why disclosure of the
‘denial’ in April 2006 would not have had the same ef-
fect.”). In short, there was insufficient evidence that
learning of the Council’s vote in January 2007, rather
than April 2006, caused, or even hastened, XpertUni-
verse’s financial demise.
D. Trade Secret Misappropriation and Breach of Contract
We likewise reject XpertUniverse’s contention that
the district court erred in granting summary judgment
against it on its trade secret misappropriation and breach
of contract claims. To support a claim for trade secret
misappropriation under California law, “the information
claimed to have been misappropriated [must] be clearly
identified.” Silvaco Data Sys. v. Intel Corp., 184 Cal. App.
4th 210, 221 (2010). As the trial court correctly deter-
mined, XpertUniverse failed to identify forty-four of its
forty-six purported trade secrets with adequate specifici-
ty. See Summary Judgment Decision, 2013 WL 867640,
at *4; see also Imax Corp. v. Cinema Techs., Inc., 152 F.3d
1161, 1167–68 (9th Cir. 1998).
As to trade secrets 18 and 33, the two secrets which
the district court found had been adequately identified,
XpertUniverse, despite extensive discovery, failed to
produce any credible evidence that Cisco used either of
these secrets in its products. See Sargent Fletcher, Inc. v.
Able Corp., 110 Cal. App. 4th 1658, 1668 (2003) (“[T]o
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 19
prove misappropriation of a trade secret . . . a plaintiff
must establish (among other things) that the defendant
improperly ‘used’ the plaintiff’s trade secret.”); see also
Silvaco, 184 Cal. App. 4th at 224 (“One clearly engages in
the ‘use’ of a secret, in the ordinary sense, when one
directly exploits it for his own advantage, e.g., by incorpo-
rating it into his own manufacturing technique or prod-
uct.”). At trial, Illah Nourbakhsh, XpertUniverse’s
expert, broadly asserted that XpertUniverse’s trade
secrets were “embodied” in various Cisco products, Sum-
mary Judgment Decision, 2013 WL 867640, at *4; see also
J.A. 5622. He failed, however, to sufficiently identify any
particular information that had been incorporated into
any specific Cisco product. See Summary Judgment
Decision, 2013 WL 867640, at *4.
On appeal, XpertUniverse asserts that it presented
evidence sufficient to create a genuine issue of material
fact as to whether Cisco misappropriated trade secrets 18
and 33, which include an “architecture diagram” of Xpert-
Universe’s system “for connecting a customer to the best
available expert in an organization without negatively
affecting operations.” Br. of Plaintiff-Appellant at 5. In
support, XpertUniverse relies on color-coded flowcharts to
compare its architecture diagram to Cisco’s Expert Advi-
sor and Remote Expert products. We decline to discuss
these flowcharts in detail, as they have been marked
confidential, but conclude that they are insufficient to
show that Cisco misappropriated any XpertUniverse
trade secret. The features depicted in the flowcharts are
described in such general terms that they fail to show
that Cisco misappropriated any specific technology or
processes developed by XpertUniverse. See Altavion, Inc.
v. Konica Minolta Sys. Lab. Inc., 226 Cal. App. 4th 26, 43–
44 (2014) (“The trade secret must be described with
sufficient particularity to separate it from matters of
general knowledge in the trade or of special knowledge of
those persons who are skilled in the trade, and to permit
20 XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC.
the defendant to ascertain at least the boundaries within
which the secret lies.” (citations and internal quotation
marks omitted)). Even assuming arguendo that the color-
coded comparisons upon which XpertUniverse now relies
were properly introduced at trial, they are insufficient to
create any genuine issue of material fact as to whether
Cisco improperly used information from trade secrets 18
and 33 when developing its Remote Expert and Expert
Advisor products. See J.A. 5863–64, 5879.
We also reject XpertUniverse’s argument that the dis-
trict court erred in granting summary judgment on its
claim that Cisco breached the parties’ 2004 non-disclosure
agreement. XpertUniverse’s broad and wholly unsup-
ported allegation that “content from numerous [Xpert-
Universe] documents marked Confidential” could be found
“directly” in unspecified Cisco products, J.A. 6048, was
insufficient to preclude summary judgment on its claim
for breach of the parties’ non-disclosure agreement.
Contrary to XpertUniverse’s assertions, there is no incon-
sistency between the district court’s ruling that it raised a
genuine issue of material fact on the question of whether
Cisco used confidential information in a patent applica-
tion and the court’s determination that it failed to raise
such an issue on the question of whether Cisco used such
information in its products. 12 While Nourbakhsh identi-
fied specific XpertUniverse information that was allegedly
12 Although the trial court held that XpertUniverse
presented evidence sufficient to raise a genuine issue of
material fact on its claim that Cisco breached the parties’
non-disclosure agreement by disclosing confidential
information in a patent application, Summary Judgment
Decision, 2013 WL 867640, at *6, the court subsequently
ruled that XpertUniverse could not present this claim to
the jury because there was no evidence of any damages
resulting from the alleged breach, J.A. 1029–30.
XPERTUNIVERSE INC. v. CISCO SYSTEMS, INC. 21
disclosed in the patent application, his testimony failed to
sufficiently identify any confidential information used by
Cisco in its products. See Summary Judgment Decision,
2013 WL 867640, at *5–6.
CONCLUSION
Accordingly, the judgment of the United States Dis-
trict Court for the District of Delaware is affirmed.
AFFIRMED