United States District Court, E.D. Wisconsin
DECISION AND ORDER
William C. Griesbach, Chief Judge United States District
Manitowoc Cranes LLC brought this action against Defendants
Sany America Inc. and Sany Heavy Industry Co. Ltd.
(collectively “Sany”), asserting Sany
misappropriated its trade secrets. In ruling on
Manitowoc's motion for summary judgment, the court
concluded the Internal Trade Commission's
(“ITC”) determination that Sany misappropriated
Manitowoc's trade secrets has preclusive effect in this
action. As a result, Sany is precluded from relitigating
issues regarding Manitowoc's misappropriation of trade
secret claim and is liable for trade secret misappropriation
under Wisconsin law. Sany has filed a motion to amend the
court's order to include a certification under 28 U.S.C.
§ 1292(b) and to stay proceedings. For the reasons
stated below, Sany's motion will be denied.
an innovator of crawler crane technology, complains that Sany
misappropriated eight of its trade secrets and tortiously
interfered with its employee's contract in violation of
Wisconsin law. In 2013, Manitowoc raised similar
misappropriation claims against Sany in an action before the
ITC. See In the Matter of Certain Crawler Cranes and
Components Thereof, No. 337- TA-887. The ITC found that
Sany had violated the Tariff Act by misappropriating
Manitowoc's protectable trade secrets and infringing one
of Manitowoc's patents. Upon the conclusion of the ITC
proceedings, the court reopened this case in December 2016.
noted above, Manitowoc filed a motion for summary judgment,
requesting that the court find that Sany is liable for trade
secret misappropriation and enter summary judgment against
Sany's declaratory judgment counterclaims. In support of
the motion, Manitowoc argued the ITC's determination that
Manitowoc's trade secrets were protectable and that Sany
misappropriated those trade secrets have preclusive effect in
this litigation. The motion was granted to the extent that
Sany is precluded from relitigating issues regarding the
misappropriation claims and is therefore liable for trade
secret misappropriation under Wisconsin law. The court also
granted Manitowoc's motion with respect to counts one
through six of Sany's counterclaims but denied the motion
as to counts seven and eight of the counterclaims.
appeals are governed by 28 U.S.C. § 1292(b). The
invocation of § 1292(b) must be limited to
“exceptional cases” in which an appellate
decision “may obviate the need for protracted and
expensive litigation . . . .” Fed. Deposit Ins.
Corp. v. First Nat. Bank of Waukesha, Wis., 604 F.Supp.
616, 620 (E.D. Wis. 1985). Before a district court certifies
an order for immediate appellate review, the following
statutory requirements must be satisfied: “(1) the
appeal presents a question of law; (2) it is controlling; (3)
it is contestable; (4) its resolution will expedite the
resolution of the litigation; and (5) the petition to appeal
is filed in the district court within a reasonable amount of
time after entry of the order sought to be appealed.”
Boim v. Quranic Literacy Inst. & Holy Land Found. for
Relief & Development, 291 F.3d 1000, 1007 (7th Cir.
2002) (citing Ahrenholz v. Bd. of Trustees of Univ. of
Ill., 219 F.3d 674, 675 (7th Cir. 2000)). Although the
district court must certify an issue or issues before an
interlocutory appeal may be taken, “an appeal under
§ 1292(b) brings up the whole certified order, rather
than just the legal issue that led to certification.”
United Airlines, Inc. v. Mesa Airlines, Inc., 219
F.3d 605, 609 (7th Cir. 2000) (internal citation omitted).
the question of law Sany requests that the Seventh Circuit
review, namely whether an ITC determination of trade secret
misappropriation has preclusive effect in subsequent district
court litigation, is not contestable because it is not an
issue for which “there is substantial ground for
difference of opinion.” 28 U.S.C. § 1292(b). The
fact that this is an issue of first impression and has not
been addressed in this or any other circuit in itself does
not demonstrate a substantial ground for difference of
opinion. In re Demert & Dougherty, Inc., No.
01-cv-7289, 2001 WL 1539063, at *6 (N.D. Ill. Nov. 30, 2001)
(“[T]he mere lack of judicial precedent on the issue
does not establish substantial ground for difference of
opinion.”); Hollinger Intern., Inc. v. Hollinger,
Inc., No. 04-C-0698, 2005 WL 327058, at *3 (N.D. Ill.
Feb. 3, 2005) (“The movant thus may not prevail by
simply showing a ‘lack of judicial precedent' or
that the issue is one of first impression.”). Indeed,
Sany must demonstrate that there are “conflicting
positions regarding the issue of law proposed for
certification.” In re Bridgestone/Firestone, Inc.
Tires Products Liability Litigation, 212 F.Supp.2d 903,
909-10 (S.D. Ind. 2002).
relies on Texas Instruments Inc. v. Cypress Semiconductor
Corp., 90 F.3d 1558 (Fed. Cir. 1996), to support its
position that there is a substantial ground for difference of
opinion. But as this court stated in its December 11, 2017
decision and order, Texas Instruments is
distinguishable from the instant case. Again, in that case,
the Federal Circuit concluded ITC decisions on
patent issues do not have preclusive effect in
subsequent litigation. Id. at 1568. Yet, Texas
Instruments has no bearing on the preclusive effect of
other ITC determinations. This decision is therefore not a
substantially conflicting authority that presents a basis for
a substantial likelihood of reversal. Sany further challenges
the preclusive effect of the ITC's determination on
Manitowoc's trade secret misappropriation claims under
state law, though it has not presented any conflicting
positions or authority regarding the issue with respect to
Wisconsin law. In short, Sany has failed to establish that
the question of law at issue here is contested.
also fails to show how a permissive interlocutory appeal
would advance the ultimate termination of this lawsuit. Sany
asserts that an interlocutory appeal would avoid potentially
unnecessary and wasteful pre-trial and trial proceedings.
Defs.' Br. at 9-10, ECF No. 14. Even if the Seventh
Circuit considers the issue, a resolution favorable to Sany
would not extinguish any of Manitowoc's claims. A trial
on damages and Sany's counterclaims is inevitable. Sany
has not demonstrated that permitting the interlocutory appeal
will materially advance this lawsuit. In sum, Sany has not
shown that this is an exceptional case in which §
1292(b) should be invoked for an interlocutory appeal.
statutory criteria of § 1292(b) are not met. Therefore,
Sany's motion to amend the court's December 11, 2017
decision and order to include a certification under 28 U.S.C.
§ 1292(b) and to stay proceedings (ECF No. 82) is