Case: 20-1515 Document: 00117727429 Page: 1 Date Filed: 04/08/2021 Entry ID: 6414500
`
`United States Court of Appeals
`For the First Circuit
`
`
`
`No. 20-1515
`
`COVIDIEN LP; COVIDIEN HOLDING INC.,
`
`Plaintiffs, Appellants,
`
`v.
`
`BRADY ESCH,
`
`Defendant, Appellee.
`
`
`APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`[Hon. Nathaniel M. Gorton, U.S. District Judge]
`
`
`
`Before
`
`Howard, Chief Judge,
`Thompson, Circuit Judge,
`and Gelpí, Chief District Judge.
`
`
`
`
`
`
`
`
`
`Mark C. Fleming, with whom Tasha J. Bahal, Adam M. Cambier,
`Matthew C. Tymann, and WilmerHale LLP were on brief, for
`appellants.
`Lita M. Verrier, with whom Andrew L. Margulis and Ropers
`Majeski, PC were on brief, for appellee.
`
`
`
`
`
`April 8, 2021
`
`
`
` Of the District of Puerto Rico, sitting by designation.
`
`
`
`United States Court of Appeals
`For the First Circuit
`
`
`
`No. 20-1515
`
`COVIDIEN LP; COVIDIEN HOLDING INC.,
`
`Plaintiffs, Appellants,
`
`v.
`
`BRADY ESCH,
`
`Defendant, Appellee.
`
`
`APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`[Hon. Nathaniel M. Gorton, U.S. District Judge]
`
`
`
`Before
`
`Howard, Chief Judge,
`Thompson, Circuit Judge,
`and Gelpí, Chief District Judge.
`
`
`
`
`
`
`
`
`
`Mark C. Fleming, with whom Tasha J. Bahal, Adam M. Cambier,
`Matthew C. Tymann, and WilmerHale LLP were on brief, for
`appellants.
`Lita M. Verrier, with whom Andrew L. Margulis and Ropers
`Majeski, PC were on brief, for appellee.
`
`
`
`
`
`April 8, 2021
`
`
`
` Of the District of Puerto Rico, sitting by designation.
`
`
`
`Case: 20-1515 Document: 00117727429 Page: 2 Date Filed: 04/08/2021 Entry ID: 6414500
`
`
`
`GELPÍ, Chief District Judge. This appeal arises from a
`
`contract action under Massachusetts law brought by appellants
`
`Covidien LP and Covidien Holding Inc. (collectively, "Covidien")
`
`against appellee Brady Esch, a former employee who assigned medical
`
`device patent rights to a company he subsequently founded.
`
`Following a nine-day trial, a jury found that Esch incurred in a
`
`breach of confidential information and awarded Covidien
`
`$794,892.24 in damages. Next, Covidien moved for a declaratory
`
`judgment asking that Esch be required to assign to it the
`
`inventions he made subsequently. The district court denied this
`
`request. Before this Court is Covidien's appeal of said post-
`
`trial ruling. Finding that the district court did not abuse its
`
`discretion, we affirm.
`
`I.
`
`A. Factual Background
`
`
`
`Brady Esch began working for Covidien, a global
`
`healthcare company and manufacturer of medical devices and
`
`supplies, in 2009 when Covidien acquired his former employer, VNUS
`
`Technologies. In December 2009, Esch signed a Non-Competition,
`
`Non-Solicitation, and Confidentiality Agreement ("Employment
`
`Agreement"). During his employment, Esch's work focused on the
`
`field of Endovenous ("EV") products or venous radiofrequency
`
`("RF") ablation devices, which are used to treat superficial venous
`
`disease, commonly known as "varicose veins." Esch spent much of
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`Case: 20-1515 Document: 00117727429 Page: 3 Date Filed: 04/08/2021 Entry ID: 6414500
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`his time at the company working with an eight-person team on a
`
`confidential global project, Project Cattleya, aimed at developing
`
`features for a new medical device to treat varicose veins.
`
`
`
`In 2013 Esch, who then served as Director of Global
`
`Strategic Marketing, was terminated and signed a Separation of
`
`Employment Agreement and General Release ("Separation Agreement").
`
`The same incorporated provisions from Esch's Employment Agreement.
`
`
`
`
`
`Subsection II.A of the Employment Agreement provides
`
`that Esch must disclose to Covidien all "Inventions" created during
`
`his employment with the company or within one year after leaving
`
`the company. Specifically, it reads:
`
`You shall promptly disclose to the Company all
`Inventions (as defined in Subsection II.B),
`which are made or conceived by you, either
`alone or with others, during the term of your
`employment with the Company, whether or not
`during working hours. Such Inventions directly
`or indirectly relate to matters within the
`scope
`of
`your
`duties
`or
`field
`of
`responsibility during your employment with the
`Company, or are aided by the use of the time,
`materials, facilities, or information of the
`Company. You will not assert any rights under
`or to any Inventions as having been made or
`acquired prior to being employed by the
`Company unless such Inventions have been
`identified to the Company in writing on a
`document signed by you at the time of hire. In
`addition, in order to avoid any dispute as to
`the date on which Inventions were made or
`conceived by you, they shall be deemed to have
`been made or conceived during your employment
`with the Company if you take affirmative steps
`to have them reduced to practice either during
`the term of your employment or within one year
`after separation from employment.
`
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`
`Subsection II.B of the Employment Agreement broadly defines
`
`"Invention" to include "whether or not patentable or
`
`copyrightable, the conception, discovery or reduction to practice
`
`of any new idea, technology, device, method, design, trade secret,
`
`composition of matter or any improvement thereto." Subsection
`
`II.C of the Employment Agreement further provides that Esch:
`
`[A]gree[s] that all Inventions that are, or
`are deemed to be, made or conceived by [him]
`during employment with the Company shall, to
`the extent permitted by law, be the exclusive
`property of the Company and [he] hereby
`assign[s] to the Company [his] entire
`worldwide right, title, and interest in and to
`any and all such Inventions.
`
`Additionally, Subsection I.A of the Employment Agreement provides
`
`that Esch agrees not to disclose "to any other person or
`
`organization, or make or permit any use of" any of Covidien's
`
`"Confidential Information," which is defined in Subsection I.B.
`
`
`
`Section 4(d) of the Separation Agreement, in turn,
`
`establishes that "any provisions of [the Employment Agreement]
`
`concerning the disclosure or ownership of inventions, methods,
`
`processes or improvements shall continue in full force and effect
`
`and shall not be superseded by any provision [thereof]." Section
`
`4(d) further reiterates that Esch shall continue to abide by all
`
`previous agreements with respect to non-disclosure of
`
`"Confidential Information."
`
`
`
`Shortly after Esch left Covidien, in February 2014, he
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`Case: 20-1515 Document: 00117727429 Page: 5 Date Filed: 04/08/2021 Entry ID: 6414500
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`incorporated Venclose Inc. ("Venclose"), a closely-held company
`
`that would manufacture and sell a medical device to treat varicose
`
`veins. In March 2014, Esch filed Provisional Patent Application
`
`No. 61/970,498 ("the '498 Patent Application") which described the
`
`design, technology, and improvement to venous RF ablation devices.
`
`Then, in 2015, Esch and several other inventors filed Utility
`
`Patent Application No. 14/670,338 ("the '338 Patent Application")
`
`and a Foreign Patent Cooperation Treaty Application with the United
`
`States Patent and Trademark Office ("USPTO"), PCT/US2015/022849
`
`("the PCT Patent Application") (all three collectively, "Patent
`
`Applications"). He also filed a document with the USPTO that
`
`assigned all rights to the '338 Patent Application to Venclose.
`
`B. Procedural Background
`
`
`
`In November 2016, Covidien filed a five-count complaint
`
`against Esch in the United States District Court seeking
`
`declaratory judgment to the effect that Esch assign his rights,
`
`title, and interest in the Patent Applications to Covidien (Count
`
`I). Additionally, Covidien alleged that Esch breached his
`
`obligations under the Employment and/or Separation Agreements by
`
`failing to disclose "Inventions" (Count II), failing to abide by
`
`an implied covenant of good faith and fair dealing (Count III),
`
`and disclosing "Confidential Information" (Counts IV and V).
`
`
`
`The district court issued a preliminary injunction in
`
`favor of Covidien, enjoining Esch and his agents from making,
`
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`Case: 20-1515 Document: 00117727429 Page: 6 Date Filed: 04/08/2021 Entry ID: 6414500
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`developing, manufacturing, or selling products that disclose or
`
`use any "Confidential Information" belonging to Covidien.
`
`
`
`From May 13 to 23, 2019, the district court conducted a
`
`jury trial as to Covidien's claims pertaining to the Employment
`
`and Separation Agreements. Before trial commenced, both parties
`
`submitted their proposed special verdict forms. The verdict form
`
`ultimately tendered by the district court to the jury posed eight
`
`questions. Questions 1 and 2 inquired the jury whether Esch
`
`breached his confidentiality obligations to Covidien under the
`
`Employment and Separation Agreements, respectively. If answered
`
`in the affirmative, the jury was next asked to decide in Questions
`
`1A and 2A, whether Covidien had proven damages resulting from said
`
`breach.
`
`
`
`Question 3 of the verdict form inquired the jury whether
`
`Esch breached his obligation to disclose "Inventions" to Covidien
`
`under the Employment Agreement. If the jury answered "Yes" to the
`
`same, then it would proceed to answer Question 3A regarding the
`
`existence of damages for failing to disclose "Inventions." If,
`
`however, the jury answered "No" to Question 3, the verdict form
`
`directed it to answer Question 4, to wit, whether Esch breached
`
`the implied covenant of good faith and fair dealing. If Question
`
`4 was answered affirmatively, then the jury would move to Question
`
`4A regarding the existence of damages. Question 5 instructed the
`
`jury to award the amount of damages, if any, to Covidien as a
`
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`result of Esch's breach(es). Following Question 5, the verdict
`
`form provided the following instructions:
`
`If you answer 3A "YES", proceed to Question 6.
`Otherwise, your deliberations are complete.
`
`Assignment of "Inventions"
`
`6. Has Covidien proved that Mr. Esch took
`steps to reduce to practice any "Inventions"
`in the '498 provisional patent before November
`1, 2014?
`
`Yes ______ No ______
`
`7. Has Covidien proved that the "Inventions"
`in the '498 provisional patent are found in
`the '338 non-provisional patent application?
`
`Yes ______ No ______
`
`8. Has Covidien proved that the "Inventions"
`in the '498 provisional patent are found in
`the PCT patent application?
`
`Yes ______ No ______
`
`On May 21, 2019, during the jury charge conference, the
`
`
`
`district court heard arguments regarding its special verdict form.
`
`At the time, Covidien did not object to same. However, when the
`
`district court specifically asked Covidien "Anything else?,"
`
`Covidien indicated that "nothing else other than just for the
`
`record to reflect that my proposed edits [to the verdict form]
`
`would be global as far as confidential as well as damages."
`
`Nonetheless, the following morning, before the jury charge,
`
`Covidien filed a written objection to the special verdict form.
`
`The motion requested several modifications to the verdict form,
`
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`mainly, that the jury proceed to answer question 5 even if the
`
`jury answered Questions 1 through 4 in the negative. Notably,
`
`Covidien's motion did not request that the jury be instructed to
`
`answer Questions 6, 7, and 8.
`
`The district court declined the invitation and informed
`
`the parties:
`
`I've adopted the – mainly just ordinary
`changes that have been requested by
`[Covidien]. I've used the Plaintiffs' name, as
`I have also used the Defendant's name.
`The Court has also listed Questions 1, 2,
`and 3 under a single heading of "Contract
`Claims" rather than using the separate
`headings for each. And I have deleted the word
`"confidential" [in] front of the word
`"inventions" in Questions 3, 6, 7 and 8. Any
`comments?
`
`Covidien responded: "Nothing further from [us], Your Honor."
`
`
`
`
`
`After the jury charge, yet before the jury was sent to
`
`deliberate, Covidien requested at sidebar that the district court
`
`instruct the jury to answer Questions 6, 7, and 8 regardless of a
`
`"Yes" or "No" answer. Esch opposed, stating that the district
`
`court's special verdict form was "logically laid out" and
`
`"consistent with the law." The district court did not rule on the
`
`matter and sent the jury to deliberate.
`
`
`
`Following one day of deliberation, the jury reached a
`
`verdict finding that Esch breached his confidentiality obligations
`
`to Covidien under the Employment and Separation Agreements
`
`(Questions 1 and 2) and awarded Covidien $794,892.24 in damages
`
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`(Questions 1A, 2A, and 5). The jury also found that Esch neither
`
`breached his obligation to disclose "Inventions" (Question 3) to
`
`Covidien nor his covenant of good faith and fair dealing (Question
`
`4). Given that the jury answered "No" to Question 3, it did not
`
`have to answer Question 3A (damages resulting of a breach to
`
`disclose "Inventions"), which in turn instructed that Questions 6
`
`through 8 not be answered.
`
`
`
`Before the jury was discharged, Covidien petitioned the
`
`district court to instruct it to resume deliberations and respond
`
`to Questions 6, 7, and 8. Covidien argued that "[t]he duty to
`
`disclosure and the affirmative steps to reduce inventions to
`
`practice arise under different paragraphs of the agreement" and
`
`that it was "a matter of the objections we filed." The district
`
`court indicated that Covidien had the verdict form "now for a day"
`
`and "saw the instruction that [it] gave to the jury that at Page
`
`3, in bold, it says 'If you answer 3A yes, proceed to Question 6.
`
`Otherwise, your deliberations are complete.'" The district court
`
`highlighted that it did not "know what could be clearer than that."
`
`The district court further noted that the record was preserved,
`
`however, determined it could not inform the jury that it had
`
`"inconsistently followed [the] verdict form when [it] followed it
`
`to the letter."
`
`
`
`Upon conclusion of the jury trial, Covidien moved for
`
`declaratory judgment and other post-trial relief. Regarding
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`declaratory judgment, it requested that Esch be required to assign
`
`any "Inventions" described in the Patent Applications to Covidien.
`
`
`
`The district court issued a Memorandum and Order denying
`
`Covidien's request for declaratory judgment, reasoning that "[t]o
`
`agree with Covidien's logic, the jury would have had to reach the
`
`inconsistent conclusion that Esch's publication of Covidien's
`
`confidential information in the '338 Patent Application was
`
`simultaneously a breach of confidentiality and in satisfaction of
`
`his duty to disclose Inventions to Covidien." Covidien LP v.
`
`Esch, 427 F. Supp. 3d 152, 157 (D. Mass. 2019). The district
`
`court, in turn, considered that "the only alleged conduct relevant
`
`to disclosure of any potential Inventions was the publication of
`
`the '338 Patent Application," which the jury found to be a breach
`
`of Esch's obligation of confidentiality under the Employment
`
`Agreement. Id. at 158. Consequently, the district court held
`
`that "[c]ommon sense dictates that neither party anticipated that
`
`a breach of confidentiality under the Employment Agreement would,
`
`in turn, satisfy Esch's obligation to disclose Inventions to
`
`Covidien." Id. For such reason, Covidien's proposed reading of
`
`the verdict was "internally inconsistent" and the jury's
`
`"decisive" negative answer to Question 3 could only be read as a
`
`factual finding that no "Inventions" were made that are encompassed
`
`under the Employment Agreement. Id.
`
`This appeal followed.
`
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`II.
`
`
`
`
`
`On appeal, Covidien posits that the district court's
`
`denial of the motion for declaratory judgment was erroneous and
`
`warrants reversal as the evidence presented at trial established
`
`that Esch indeed took affirmative steps to reduce an "Invention"
`
`to practice. Moreover, Covidien argues that the jury's verdict
`
`concerning Esch's obligation to disclose "Inventions" was simply
`
`not dispositive to the assignment thereof. Alternatively,
`
`Covidien moves to reverse the jury's verdict that Esch did not
`
`fail to disclose "Inventions." We analyze Covidien's arguments
`
`in turn, detailing additional facts when necessary.
`
`A.
`
`Post-Trial Declaratory Judgment
`
`
`
`
`
`Covidien argues that it is entitled to a post-trial
`
`equitable declaratory judgment, pursuant to the assignment
`
`provisions of the Employment Agreement, since the evidence
`
`presented at trial supports its contractual breach claim.
`
`
`
`The Declaratory Judgment Act "has been understood to
`
`confer on federal courts unique and substantial discretion in
`
`deciding whether to declare the rights of litigants." Wilton v.
`
`Seven Falls Co., 515 U.S. 277, 286 (1995). A declaratory judgment
`
`requires a trial court to make factual and legal distinctions "upon
`
`a circumspect sense of its fitness informed by the teachings and
`
`experience concerning the functions and extent of federal judicial
`
`power." Id. at 287 (quoting Pub. Serv. Comm'n. of Utah v. Wycoff
`
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`Co., Inc., 344 U.S. 237, 243 (1952)); see also MedImmune, Inc. v.
`
`Genentech, Inc., 549 U.S. 118, 136 (2007). Thus, if
`
`"considerations of practicality and wise judicial administration"
`
`advise against it, a trial court may choose, in its discretion,
`
`not to grant a declaratory judgment. Wilton, 515 U.S. at 288.
`
`
`
`Our review of a district court's granting or withholding
`
`declaratory judgment "is conducted under a standard slightly more
`
`rigorous than abuse of discretion." Nat'l. R.R. Passenger Corp.
`
`v. Providence and Worcester R.R. Corp., 798 F.2d 8, 10 (1st Cir.
`
`1986).1 We have described this standard as a "middle ground,"
`
`"independent" or "substantial deference" approach which is "more
`
`rigorous than abuse of discretion, but less open-ended than de
`
`novo review." Ernst & Young v. Depositors Econ. Prot. Corp., 45
`
`F.3d 530, 534 (1st Cir. 1995)("We have captured a middle ground,
`
`expressing our preference for a standard of independent review
`
`when passing upon a trial court's discretionary decision to eschew
`
`declaratory relief."); Fuller Co. v. Ramon I. Gil, Inc., 782 F.2d
`
`
`1 We have used different terms to describe the appropriate
`
`standard of review for denial of a declaratory judgment action.
`Compare Hartford Fire Ins. Co. v. Rhode Island Pub. Transit Auth.,
`233 F.3d 127, 130 (1st Cir. 2000) (applying a simple "abuse of
`discretion" standard), with Díaz-Fonseca v. Puerto Rico, 451 F.3d
`13, 39 (1st Cir. 2006) (applying a "slightly more rigorous" than
`abuse of discretion standard)(quoting Natl. R.R. Passenger Corp.,
`798 F.2d at 10). See also Rossi v. Gemma, 489 F.3d 26, 38 n.21
`(1st Cir. 2007) (explaining our apparent inconsistency in post-
`Wilton cases). Under either approach, nonetheless, we reach the
`same result herein.
`
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`306, 309 (1st Cir. 1986)("[I]ts determination is still entitled to
`
`substantial deference.").
`
`
`
`Our standard of review "requires attentively digest[ing]
`
`the facts and the district court's stated reasons." El Día, Inc.
`
`v. Hernández Colón, 963 F.2d 488, 492 (1st Cir. 1992); Am. Home
`
`Assurance Co. v. Insular Underwriters Corp., 494 F.2d 317, 320
`
`(1st Cir. 1974) ("This scope of review necessarily entails
`
`consideration
`
`of
`
`the
`
`reasons
`
`underlying
`
`dismissal.").
`
`Particularly, if we determine that "a different result should have
`
`been reached, then we will reverse or modify the judgment below."
`
`El Día, Inc., 963 F.2d at 492. Nonetheless, if "the decisional
`
`scales tip in favor of the district court's solution, or if the
`
`scales are in equipoise, then the judgment will stand." Id.
`
`"Bluntly put, we cede some deference to the trier, especially as
`
`to findings of fact, but we will not hesitate to act upon our
`
`independent judgment if it appears that a mistake has been
`
`made." Id.
`
`
`
`In this case, there are two unique procedural aspects
`
`that add layers to our review. First, the declaratory judgment
`
`sought by Covidien is equitable in nature. A basic tenant of
`
`equity jurisprudence "is the ability to assess all relevant facts
`
`and circumstances and tailor appropriate relief on a case by case
`
`basis." Id. at 497 (quoting Rosario-Torres v. Hernández-Colón,
`
`889 F.2d 314, 321 (1st Cir. 1989)). "Simply because
`
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`an equitable remedy may be available does not necessarily mean
`
`that it must automatically issue." Id. Second, and most
`
`important, the precise form of declaratory relief sought follows
`
`three years of litigation concluded by a nine-day jury trial.
`
`Covidien requests that we evaluate and weigh in all evidence
`
`submitted before the jury as to the matter. We decline to take
`
`this path, which goes beyond the scope of our "slightly more
`
`rigorous than abuse of discretion" standard of review and would
`
`amount to a de novo review of the jury verdict itself.
`
`
`
`Our "middle ground" independent approach warrants
`
`"digesting" the procedural facts of this case and assessing the
`
`district court's reasoning for denying a post-trial equitable
`
`declaratory judgment. First, we must consider whether the special
`
`verdict form and the jury instructions were adequate and whether
`
`the trial court's decision not to modify these constitutes a
`
`reversible error. Second, we must determine whether the district
`
`court's factual inference that no "Inventions" were made under the
`
`terms of the Employment Agreement is permissible and internally
`
`consistent with the jury's verdict.
`
`B. Verdict Form and Jury Instructions
`
`
`
`
`
`Covidien adduces that, contrary to the district court's
`
`rationale for denying the declaratory judgment, the jury's verdict
`
`concerning Esch's obligation to disclose "Inventions" was not
`
`dispositive to the assignment provisions. Such proposition is
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`premised on the district court's refusal to instruct the jury, at
`
`the charge conference as well as following deliberation, to answer
`
`Questions 6 through 8, regardless of a "Yes" or "No" answer to
`
`Question 3 (whether Esch breached his obligation to disclose
`
`"Inventions"). Covidien contends that if such instruction had
`
`been provided, we would specifically know the jury's position as
`
`to whether Esch took affirmative steps to reduce an "Invention" to
`
`practice.
`
`"A verdict form must be reasonably capable of an
`
`interpretation that would allow the jury to address all factual
`
`issues essential to the judgment." Sánchez-López v. Fuentes-
`
`Pujols, 375 F.3d 121, 134 (1st Cir. 2004) (quoting Sheek v. Asia
`
`Badger, Inc., 235 F.3d 687, 699 (1st Cir. 2000)). "To determine
`
`whether the issues were fairly presented to the jury, we examine
`
`the [district] court's instructions and the wording of the verdict
`
`form as a whole." Id.; see also Santos v. Posadas de Puerto Rico
`
`Associates, Inc., 452 F.3d 59, 65 (1st Cir. 2006) ("[I]nstructions,
`
`coupled with a minimalist set of verdict forms, hardly can be
`
`considered misleading.").
`
`
`
`A jury instruction error is reviewed de novo "if
`
`properly preserved, [and will be] revers[ed] only if the rejected
`
`instruction was substantively correct, essential to an important
`
`issue in the case, and not substantially covered in the charge
`
`given." Rodríguez v. Señor Frog's de la Isla, Inc., 642 F.3d 28,
`
`
`
`- 15 -
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`
`
`Case: 20-1515 Document: 00117727429 Page: 16 Date Filed: 04/08/2021 Entry ID: 6414500
`
`36 (1st Cir. 2011) (internal citations omitted). Pursuant to Fed.
`
`R. Civ. P. 51(c)(2), generally, an objection is properly preserved
`
`if made before the trial court charges the jury. Booker v. Mass.
`
`Dept. of Pub. Health, 612 F.3d 34, 40–41 (1st Cir. 2010). We
`
`conclude that Covidien preserved the underlying issue for
`
`appellate review and, thus now turn to the special verdict form
`
`itself and the instructions given to the jury.
`
`
`
`The structure of the special verdict form gave the jury
`
`"a simple, easily understood outlet through which to express its
`
`conclusions" by answering "Yes" or "No" to each proposed question.
`
`Santos, 452 F.3d at 65. It also logically identified each of Esch's
`
`obligations regarding the Employment or Separation Agreements,
`
`respectively. In fact, the special verdict form's final version
`
`is nearly identical to the proposed verdict form Covidien initially
`
`submitted. The verdict form plainly included in Questions 1, 2
`
`and 3 language allusive to the terms of the Employment and
`
`Separation Agreements. The inclusion of this language reasonably
`
`directed the jury to the applicable sections of the contracts for
`
`them to address "all factual issues essential to the judgment."
`
`Sánchez-López, 375 F.3d at 134.
`
`
`
`We next scrutinize the structure of the special verdict
`
`form as to Questions 6, 7, and 8. Considered "as a whole,"
`
`Questions 6, 7, and 8 are consistent with the applicable law in
`
`these specific causes of actions. Section II of the Employment
`
`
`
`- 16 -
`
`
`
`Case: 20-1515 Document: 00117727429 Page: 17 Date Filed: 04/08/2021 Entry ID: 6414500
`
`Agreement titled "Inventions" describes in three paragraphs Esch's
`
`contractual obligation regarding the disclosure and assignment of
`
`all "Inventions," while also defining the latter term. Paragraph
`
`A contains both Esch's disclosure and assignment obligations.
`
`Paragraph A specifically provides that Esch "shall promptly
`
`disclose to the Company all Inventions" and it also establishes
`
`that he "will not assert any rights under or to any Inventions,"
`
`where he "made or conceived" such "Inventions" "during the term of
`
`[his] employment with the Company." Paragraph A goes on to deem
`
`any "Inventions" for which Esch took "affirmative steps to have
`
`them reduced into practice" within a year of his separation from
`
`Covidien as having been made or conceived by him during his
`
`employment there. In Paragraph C, the assignment obligation is
`
`restated and expanded by language to the effect that Esch "hereby
`
`assign[s] to the Company [his] entire worldwide right, title, and
`
`interest in and to any and all such Inventions." Given that
`
`Section II of the Employment Agreement contains any and all
`
`obligations relating to "Inventions" and assignment, there was no
`
`need for the jury to answer Questions 6,7, and 8 if it found that
`
`Esch did not breach his obligation to disclose "Inventions,"
`
`because the jury could have decided whether there were "Inventions"
`
`when deliberating the disclosure issue. The special verdict form
`
`was reasonable and logically redacted and explicitly indicated
`
`that Question 3 must be answered "under the terms of the Employment
`
`
`
`- 17 -
`
`
`
`Case: 20-1515 Document: 00117727429 Page: 18 Date Filed: 04/08/2021 Entry ID: 6414500
`
`Agreement." This unmistakably directed the jury to consider and
`
`weigh the evidence presented during trial according to the terms
`
`of the entire Employment Agreement, including both the disclosure
`
`and assignment obligations detailed in Section II.
`
`
`
`On appeal, no one disputes that Massachusetts law
`
`governs the terms of the Employment and Separation Agreements
`
`dispute. Covidien LP v. Esch, 378 F. Supp. 3d 119 (D. Mass. May
`
`6, 2019). As a matter of law, the sections of the Employment and
`
`Separation Agreements applicable to the issue before us are
`
`unambiguous. Balles v. Babcock Power Inc., 70 N.E.3d 905, 911
`
`(Mass. 2017); Seaco Ins. Co. v. Barbosa, 761 N.E.2d 946, 951 (Mass.
`
`2002); see also Edmonds v. U.S., 642 F.2d 877, 881 (1st Cir. 1981).
`
`It is, hence, the courts' prerogative to determine their proper
`
`interpretation. A.L. Prime Energy Consultant, Inc. v.
`
`Massachusetts Bay Transportation Auth., 95 N.E.3d 547, 553 (Mass.
`
`2018); see also Nadherny v. Roseland Prop. Co., Inc., 390 F.3d 44,
`
`48–49 (1st Cir. 2004).
`
`
`
`During its charge to the jury, the district court
`
`sufficiently addressed the Employment and Separation Agreements
`
`under applicable Massachusetts law. The definition of
`
`"Inventions" and the assignment provisions were particularly
`
`explained. The district court specifically instructed the jury
`
`that: "An invention is reduced to practice when it has been tested
`
`sufficiently to show that it will work for its intended purpose or
`
`
`
`- 18 -
`
`
`
`Case: 20-1515 Document: 00117727429 Page: 19 Date Filed: 04/08/2021 Entry ID: 6414500
`
`when it is fully described in a patent application filed within
`
`the United States Patent and Trademark Office." Such explanation
`
`mirrors that of the Employment Agreement terms and references any
`
`finding about affirmatively reducing to practice an "Invention" to
`
`the descriptions detailed in the Patent Applications. Similarly,
`
`the district court instructed the jury that information revealed
`
`in the Patent Applications could be considered a confidentiality
`
`breach, according to the Employment and Separation Agreements.
`
`These instructions were not objected to by Covidien.
`
`
`
`We hold that the objection preserved by Covidien
`
`requesting the jury to answer Questions 6, 7, and 8 regardless of
`
`the response to Question 3, was neither "substantively correct"
`
`nor "essential to an important issue" and was an instruction
`
`"substantially covered in the charge." Rodríguez, 642 F.3d at 36;
`
`Sheek, 235 F.3d at 698. Hence, the special verdict form and the
`
`district court's rejection of Covidien's proposed instruction do
`
`not amount to a reversible error.
`
`C. Inconsistent Verdict
`
`
`
`In its Memorandum and Order denying declaratory relief,
`
`Covidien LP, 427 F. Supp. 3d at 158, the district court explained
`
`that the only conduct relevant to disclosing any potential
`
`"Inventions" was the publication of the '338 Patent Application.
`
`The district court determined that the publication of the '338
`
`Patent Application amounted, in the jury's eyes, to a breach of
`
`
`
`- 19 -
`
`
`
`Case: 20-1515 Document: 00117727429 Page: 20 Date Filed: 04/08/2021 Entry ID: 6414500
`
`Esch's confidentiality obligation under the Employment Agreement.
`
`Id. The district court further reasoned that it would be
`
`inconsistent for the jury to find that publishing the '338 Patent
`
`Application was "simultaneously" a breach of confidentiality and
`
`a satisfaction of Esch's obligation to disclose "Inventions" to
`
`Covidien. Id. Thus, the verdict can only be consistently
`
`interpreted as determinative that Esch's compliance with his duty
`
`to disclose any potential "Invention" implies that no "Inventions"
`
`were made under the Employment Agreement's term. If there were
`
`no "Inventions," then there was no need to answer Questions 6, 7,
`
`and 8 because an "Invention," as contractually defined, had to be
`
`made for Esch to assign it to Covidien.
`
`
`
`"Where there is a view of the case that makes the jury's
`
`answers to special interrogatories consistent, they must be
`
`resolved that way. For a search for one possible view of the case
`
`which will make the jury's finding inconsistent results in a
`
`collision with the Seventh Amendment." Atlantic & Gulf
`
`Stevedores, Inc. v. Ellerman Lines, Ltd., 369 U.S. 355, 364 (1962).
`
`Moreover, "it is the duty of the courts to attempt to harmonize
`
`the answers [to special interrogatories], if it is possible under
`
`a fair reading of them." Gallick v. Baltimore & Ohio R. Co., 372
`
`U.S. 108, 119 (1963); see also Santiago-Negrón v. Castro-Dávila,
`
`865 F.2d 431, 443 (1st Cir. 1989) ("[W]e must determine . . .
`
`whether the first answers [to special interrogatories] can be made
`
`
`
`- 20 -
`
`
`
`Case: 20-1515 Document: 00117727429 Page: 21 Date Filed: 04/08/2021 Entry ID: 6414500
`
`consistent under any view of the case.").
`
`
`
`When considering apparent inconsistent verdicts, we note
`
`that other Circuits have required, on Seventh Amendment grounds,
`
`that district courts sitting in equity follow necessary factual
`
`implications in jury verdicts and that any findings not necessarily
`
`implied by, but nonetheless consistent with, the verdict is left
`
`to the trial judge. See,
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