NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`JOSEF MAATUK,
`Plaintiff-Appellant
`
`v.
`
`EMERSON ELECTRIC, INC., BERND ZIMMERMAN,
`PRASAD KHADKIKAR, DOES 1-10, INCLUSIVE,
`Defendants
`
`THERM-O-DISC,
`Defendant-Appellee
`______________________
`
`2019-1615
`______________________
`
`Appeal from the United States District Court for the
`Northern District of Ohio in No. 1:16-cv-03023-TMP, Mag-
`istrate Judge Thomas M. Parker.
`______________________
`
`Decided: August 14, 2019
`______________________
`
`JOSEF MAATUK, Los Angeles, CA, pro se.
`
`
` DAVID UTYKANSKI, Harness, Dickey & Pierce, PLC,
`Troy, MI, for defendant-appellee.
` ______________________
`
`
`

`

`2
`
`MAATUK v. EMERSON ELECTRIC, INC.
`
`Before PROST, Chief Judge, PLAGER and HUGHES, Circuit
`Judges.
`
`PER CURIAM.
`This case involves a business relationship in fluid sen-
`sor technology that ended in 1999. Pro se appellant, Dr.
`Josef Maatuk, appeals two decisions from the United
`States District Court for the Northern District of Ohio
`granting summary judgment to Therm-O-Disc. Maatuk v.
`Emerson Elec. (Maatuk I), No. 1:16-CV-03023, 2017 WL
`9485679 (N.D. Ohio Nov. 14, 2017) (R. & R. adopted by
`2018 WL 562934); Maatuk v. Emerson Elec., Inc. (Maatuk
`II), No. 1:16-CV-03023, 2019 WL 425605 (N.D. Ohio Feb. 4,
`2019). Dr. Maatuk claims that Therm-O-Disc breached a
`confidential disclosure agreement in 1999 and is liable for
`trade secret misappropriation and unjust enrichment. He
`claims that he is entitled to be listed as a joint inventor on
`U.S. Patent No. 7,775,105. Because Dr. Maatuk previously
`litigated and lost his trade secret misappropriation claim
`and failed to provide evidence that he made more than an
`insignificant contribution to the conception of the ’105 pa-
`tent, we affirm.
`
`I
`In 1997, Dr. Maatuk entered into a confidential disclo-
`sure agreement with Therm-O-Disc (TOD) to allow TOD to
`evaluate Dr. Maatuk’s multi-functional liquid sensor tech-
`nology for a potential licensing agreement. The agreement
`included a provision stating that it would be construed ac-
`cording to Ohio law. Between 1997 and 1999, Dr. Maatuk
`corresponded with Prasad Khadkikar and Bernd Zimmer-
`mann, TOD employees, and provided TOD with a sample
`probe, prototypes, and other information for constructing
`his sensor. Dr. Maatuk never discussed turbidity sensors
`with any of TOD’s employees.
`In mid-1999, TOD informed Dr. Maatuk that it would
`not license his liquid sensor technology. The parties broke
`
`

`

`MAATUK v. EMERSON ELECTRIC, INC.
`
`3
`
`off their relationship, and Dr. Maatuk threatened to sue
`TOD for breaching the confidential disclosure agreement
`and infringing his U.S. patents.
`TOD filed a complaint for declaratory judgment in the
`U.S. District Court for the Northern District of Ohio, seek-
`ing judgment that it did not breach the confidential disclo-
`sure agreement or infringe Dr. Maatuk’s patents. On
`August 28, 2000, Dr. Maatuk subsequently sued TOD in
`the U.S. District Court for the Central District of Califor-
`nia, asserting breach of the confidential disclosure agree-
`ment,
`trade
`secret misappropriation,
`fraud, and
`negligence. Dr. Maatuk’s suit was transferred to the
`Northern District of Ohio, which consolidated it with the
`declaratory judgment suit. The Northern District of Ohio
`ultimately ruled in favor of TOD. Dr. Maatuk appealed to
`this court, and we affirmed on August 1, 2003. Therm-O-
`Disc, Inc. v. Maatuk, 73 F. App’x 391, 392 (Fed. Cir. 2003).
`On December 10, 2003, Mr. Khadkikar and Mr. Zim-
`mermann conceived the idea for a multi-functioned sensor
`that combined a turbidity sensor with a fluid level sensor.
`On April 21, 2004, they filed a provisional patent applica-
`tion for their invention, which eventually issued as U.S.
`Patent No. 7,775,105. The ’105 patent “incorporates a com-
`bination of more than one of a fluid level sensing compo-
`nent or a fluid flow rate sensing component, a turbidity
`sensing component, a temperature sensing component and
`a pressure sensing component.” ’105 patent col. 1 ll. 59–
`63. Each claim requires a turbidity sensor and at least one
`other fluid sensor.
` On August 17, 2016, Dr. Maatuk sued TOD and other
`parties in the Central District of California, asserting cor-
`rection of inventorship for the ’105 patent, misappropria-
`tion of trade secrets, and unjust enrichment. On December
`15, 2016, the case was transferred to the Northern District
`of Ohio. After transfer, the district court granted the
`
`

`

`4
`
`MAATUK v. EMERSON ELECTRIC, INC.
`
`motion in part, finding the claims time-barred under the
`Ohio Uniform Trade Secrets Act.
`The parties conducted fact and expert discovery with
`regards to Maatuk’s correction of inventorship claim. At
`the close of discovery, TOD moved for summary judgment.
`The court granted the motion, explaining that Dr. Maatuk
`did not produce “any evidence that he worked with Khad-
`kikar and Zimmermann to arrive at a definite and perma-
`nent idea of a multi-function sensor that integrated a
`turbidity sensor with other sensor modules.” Maatuk II,
`2019 WL 425605, at *9. Because the “invention described
`in the ’105 patent is the integration of a turbidity sensor
`with . . . other sensors into a single multi-function sensor
`device,” Dr. Maatuk’s inability to show any collaboration or
`work on turbidity sensors precluded finding him a joint in-
`ventor. Id. The court also found that Dr. Maatuk’s alleged
`contributions did not constitute a contribution to the con-
`ception of the ’105 patent.
` Dr. Maatuk appeals the grant of both summary judg-
`ment motions.
` We have
`jurisdiction under
`28 U.S.C. § 1295(a)(1).
`
`II
`“We review a district court’s grant of summary judg-
`ment de novo.” Ekchian v. Home Depot, Inc., 104 F.3d
`1299, 1302 (Fed. Cir. 1997). “Summary judgment is appro-
`priate when there is no genuine issue of material fact and
`the moving party is entitled to judgment as a matter of
`law.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1472
`(Fed. Cir. 1997).
`
`A.
`We first address the district court’s determination that
`Dr. Maatuk’s trade secrets and unjust enrichment claims
`were time-barred.
`
`

`

`MAATUK v. EMERSON ELECTRIC, INC.
`
`5
`
`“We apply the trade secret law of the appropriate
`state,” in this case, Ohio, as was stipulated in the confiden-
`tial disclosure agreement. Ultimax Cement Mfg. Corp. v.
`CTS Cement Mfg. Corp., 587 F.3d 1339, 1355 (Fed. Cir.
`2009). “An action for misappropriation shall be com-
`menced within four years after the misappropriation is dis-
`covered or by the exercise of reasonable diligence should
`have been discovered. For the purposes of this section, a
`continuing misappropriation constitutes a single claim.”
`Ohio Rev. Code § 1333.66; see also Ohio Rev. Code
`§ 1333.63 (making unjust enrichment a statutory remedy
`for misappropriation). Under Ohio’s “single claim” ap-
`proach, the limitations period begins to run once the
`wronged party becomes aware of a breach of a confidential
`relationship. See Kehoe Component Sales Inc. v. Best
`Lighting Prod., Inc., 796 F.3d 576, 583 (6th Cir. 2015).
`Subsequent breaches do not create a new cause of action
`because “it is the relationship between the parties at the
`time the secret is disclosed that is protected, and that the
`fabric of the relationship once rent is not torn anew with
`each added use or disclosure, although the damage suffered
`may thereby be aggravated.” Id. (cleaned up).
`We agree that Dr. Maatuk’s trade secret misappropri-
`ation claim is time-barred. As the district court explained,
`“[u]nder Sixth Circuit precedent, Maatuk’s trade secret
`misappropriation claim accrued at the latest when he in-
`structed his attorney to send [a] cease and desist letter to
`TOD and then filed [his first lawsuit]” on August 28, 2000,
`because it shows he was cognizant of a breach in the confi-
`dential disclosure agreement. Maatuk I, 2017 WL
`9485679, at *7. His claims having accrued in 2000, at the
`latest, his August 17, 2016, suit falls well outside the four-
`year statutory period provided by Ohio law.
`Dr. Maatuk argues that his claims should be preserved
`under Amalgamated Indus. Ltd. v. Tressa, Inc., 69 F. App’x
`255 (6th Cir. 2003). He contends that, under Amalga-
`mated, a party bringing a trade secrets claim may backdate
`
`

`

`6
`
`MAATUK v. EMERSON ELECTRIC, INC.
`
`the claim for subsequent discoveries of misappropriation.
`We reject this characterization.
`Amalgamated was the second case stemming from the
`misappropriation of trade secrets related to hair color
`shade formulas. Id. at 257. The plaintiff prevailed in its
`initial litigation, and the court awarded it a prospective li-
`censing fee based on the revenue derived from any product
`incorporating the secret formula. After the statute of limi-
`tations had passed, the plaintiff discovered that the de-
`fendant had expanded its product line to include additional
`shades incorporating the misappropriated secret formula.
`Id. at 258. The Sixth Circuit held that the plaintiff was not
`time-barred from relief. Id. at 263.
`Amalgamated did not find that a plaintiff can use an
`earlier trade secrets misappropriation claim to toll the stat-
`ute of limitations for a subsequent misappropriation claim
`arising from the same alleged breach of a confidential dis-
`closure agreement. The Sixth Circuit explained in Allied
`Erecting that, “at its core, [Amalgamated was] about en-
`forcing the prior judgment and awarded relief.” Allied
`Erecting & Dismantling Co. v. Genesis Equip. & Mfg., Inc.,
`805 F.3d 701, 708 (6th Cir. 2015). In cases where the pre-
`vious request “for prospective injunctive relief or royalties
`was flatly denied . . . [t]here is no prospective relief . . . to
`enforce . . . .” See id. As such, the Amalgamated exception
`only applies when the plaintiff has already received pro-
`spective relief and is seeking to enforce the earlier judg-
`ment. But where a party alleges misappropriation of
`different trade secrets years after discovery of the breach
`of confidentiality, the claim is barred by the statute of lim-
`itations regardless of whether the plaintiff brought an un-
`successful suit in the first instance. See id. Therefore, we
`affirm the determination that Dr. Maatuk’s trade secret
`claims are barred by the statute of limitations.
`
`

`

`MAATUK v. EMERSON ELECTRIC, INC.
`
`7
`
`B.
`We now turn to Dr. Maatuk’s correction of inventorship
`claim.
`“Section 256 creates a cause of action in the district
`courts for correction of non-joinder of an inventor on a pa-
`tent . . . .” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352,
`1358 (Fed. Cir. 2004) (citing 35 U.S.C. § 256). Because
`“[c]onception is the touchstone of inventorship,” Burroughs
`Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227 (Fed.
`Cir. 1994), “a joint inventor must contribute to the inven-
`tion’s conception,” CODA Dev. S.R.O. v. Goodyear Tire &
`Rubber Co., 916 F.3d 1350, 1358 (Fed. Cir. 2019). The joint
`inventor’s contribution must be more than “insignificant in
`quality[] when that contribution is measured against the
`dimension of the full invention.” Fina Oil, 123 F.3d at
`1473. “Contributions to realizing an invention may not
`amount to a contribution to conception if they merely ex-
`plain what was then state of the art.” Eli Lilly, 376 F.3d
`at 1359 (internal quotation marks omitted).
`Dr. Maatuk argues that he contributed a cost-effective
`configuration for the heater and thermocouples to measure
`the temperature, fluid-level, and pressure in the ’105 pa-
`tent. He also claims that he conceived of the idea of a
`multi-function sensor using a single substrate and arrang-
`ing the sensor’s thermocouples in parallel. As such, he
`claims that he is entitled to be listed as an inventor on the
`’105 patent. We disagree.
`While Dr. Maatuk claims that he contributed multiple
`limitations to the ’105 patent, he has not provided evidence
`as to how these ideas were significant to the ’105 patent’s
`conception. The sensor configuration for a heater and ther-
`mocouples used in the ’105 patent was disclosed in U.S. Pa-
`tent 6,546,796, a patent filed by Mr. Zimmermann and
`published in 2002—more than a year before Mr. Khadkikar
`and Mr. Zimmermann conceived of the idea for the ’105 pa-
`tent. The ’796 patent also discloses the concept of having
`
`

`

`8
`
`MAATUK v. EMERSON ELECTRIC, INC.
`
`multiple sensors on a single substrate. Thus, Dr. Maatuk’s
`first two claimed contributions were disclosed in the prior
`art when Mr. Khadkikar and Mr. Zimmermann conceived
`the ’105 patent.
`Dr. Maatuk also presented no evidence that a parallel
`thermocouple configuration was new or significant. Dr.
`Maatuk argues that he contributed the idea of arranging
`thermocouples in parallel in the ’105 patent because Claim
`2, when read broadly, can be construed to cover a parallel
`configuration. The fact that the parallel configuration was
`not explicitly stated in the claims, however, shows that it
`is insignificant when compared to the dimensions of the full
`patent, which provides a means of creating a multi-func-
`tion sensor combining a turbidity sensor with at least one
`other fluid sensor.
`Dr. Maatuk further disputes the date that Mr. Khad-
`kikar and Mr. Zimmermann conceived of the idea for the
`’105 patent. He argues that the only evidence supporting
`this date is Mr. Khadkikar’s affidavit, which states he and
`Mr. Zimmermann conceived the idea on December 10,
`2003. But Dr. Maatuk provides no evidence contesting this
`date, so he fails to create any material dispute as to the
`date of conception.
`
`III
`Because Dr. Maatuk’s trade secret misappropriation
`
`claims accrued when he filed his initial complaint in 2003
`and the statute of limitations in Ohio is four years, his
`trade secret misappropriation and unjust enrichment
`claims are time-barred. Further, because Dr. Maatuk pro-
`vided no evidence that he made a non-insignificant contri-
`bution to the conception of the ’105 patent, he failed to
`create a genuine dispute of material fact as to inventorship.
`Therefore, we affirm the district court’s grants of summary
`judgment.
`
`AFFIRMED
`
`