



                        United States Court of Appeals for the Federal Circuit



                                               04-1291



                                     ON-LINE TECHNOLOGIES, INC.,

                                                   Plaintiff-Appellant,

                                                  v.

                                   BODENSEEWERK PERKIN-ELMER GMBH,
                                PERKIN-ELMER CORP., PERKIN-ELMER INC.,
                                    SICK UPA GMBH, and SICK, A.G.,

                                                   Defendants-Appellees.




      Gabriel Berg, Berg & Androphy, of New York, New York, argued for plaintiff-appellant.

      Edward T. Colbert, Kenyon & Kenyon, of Washington, DC, argued for  defendants-appellees.   With
him on the brief was C. Kyle Musgrove.  Of counsel on the brief were  Francis  H.  Morrison  III  and
Jonathan B. Tropp, Day, Berry & Howard LLP, of Hartford, Connecticut.

Appealed from:  United States District Court for the District of Connecticut

Judge Janet Bond Arterton














                        United States Court of Appeals for the Federal Circuit



                                               04-1291

                                     ON-LINE TECHNOLOGIES, INC.,

                                       Plaintiff-Appellant,

                                                  v.

                                   BODENSEEWERK PERKIN-ELMER GMBH,
                                PERKIN-ELMER CORP., PERKIN-ELMER INC.,
                                    SICK UPA GMBH, and SICK, A.G.,


                                       Defendants-Appellees.




                       ___________________________

                                         DECIDED:  October 13, 2004
                       ___________________________


Before MICHEL, Circuit Judge, ARCHER, Senior Circuit Judge, and BRYSON, Circuit Judge.

BRYSON, Circuit Judge.

      The dispute in this case involves a device known as a long-path gas cell, which is used  in  an
infrared spectrometer to determine the  composition  of  gases  such  as  emissions  from  industrial
plants.  The spectrometer captures the gas to be tested and directs a beam of infrared light  through
the chamber containing the gas.  After the light has passed through the chamber, a detector  measures
the absorption of the light, from which the properties of the gas can be determined.
      It has long been understood in the art that lengthening the light path in the gas cell  chamber
can result in a more accurate absorption reading.  One problem encountered in  long-path  gas  cells,
however, was that over the long path created by multiple reflections of the  light  beam  within  the
chamber, the quality of the beam would become degraded, primarily because of astigmatism  induced  by
the mirrors used in the system.  Astigmatism  is  an  optical  aberration  created  when  an  optical
element or system has a different focal length in each  of  two  orthogonal  planes.   K.D.  Moeller,
Optics 448 (1988); H.P. Brueggemann, Conic Mirrors 15 (1968).
      In 1995, appellant On-Line Technologies, Inc., obtained a patent,  U.S.  Patent  No.  5,440,143
(“the ’143 patent”), on a method for increasing the length of the light path  in  a  gas  cell  while
correcting for astigmatism and thereby  reducing  the  diffusion  of  the  beam  of  light.   On-Line
subsequently brought an action in the United States District Court for the  District  of  Connecticut
against a group of related parties, Bodenseewerk Perkin-Elmer GmbH; Perkin-Elmer Corp.;  Perkin-Elmer
Inc.; Sick UPA GmbH;  and  Sick,  A.G.  (collectively,  “Perkin-Elmer”).   On-Line  Techs.,  Inc.  v.
Bodenseewerk Perkin-Elmer GmbH,  No. 3:99CV2146 (D. Conn. filed Nov. 3, 1999).
      In its complaint, On-Line alleged that Perkin-Elmer had made, used,  and  sold  a  device  that
infringed the ’143 patent.  In  addition,  On-Line  asserted  several  state  law  claims,  including
misappropriation of trade secrets, violation of the  state  law  of  unfair  competition,  breach  of
contract, and fraud.  In support of the state  law  claims,  On-Line  alleged  that,  pursuant  to  a
nondisclosure agreement,  it  had  revealed  its  gas  cell  design  to  Perkin-Elmer  scientists  in
anticipation of a possible business arrangement between the companies relating to  On-Line’s  device.
Rather than pursuing a joint enterprise, however, Perkin-Elmer allegedly copied what it  had  learned
from On-Line and incorporated the disclosed technology into its commercial  product,  thus  breaching
the nondisclosure agreement and violating the state  law  prohibitions  against  unfair  competition,
theft of trade secrets, and fraud.
      After discovery, the district court disposed of  the  patent  infringement  claim  by  granting
summary judgment of noninfringement.  The court also granted summary judgment  in  favor  of  Perkin-
Elmer on all of On-Line’s state law claims, finding that On-Line had failed to show that there was  a
disputed issue of material fact with respect to any of those claims.  Finally,  the  court  dismissed
one of the defendants, Sick, A.G., for lack of personal  jurisdiction.   On-Line  appeals  all  three
aspects of the judgment.
                                                  I
      The district court’s grant of summary judgment of noninfringement as to claim  1  of  the  ’143
patent was premised on the court’s claim construction.  On-Line  contends  that  the  district  court
erred in construing the claim and therefore erred in entering summary judgment.
      Claim 1 of the ’143 patent recites as follows (emphasis added):
            A folded-path radiation absorption gas cell comprising: an  enclosure  having  first  and
      second ends, and defining a substantially closed chamber therewithin;  spaced  input  radiation
      and output radiation windows formed through said first end of said enclosure and aligned  on  a
      first axis; a concave reflective field  surface  extending  at  least  partially  between  said
      windows at said first end of  said  enclosure;  a  pair  of  substantially  spherical,  concave
      reflective objective surfaces at said second end of  said  enclosure  disposed  in  confronting
      relationship to said field surface, said objective surfaces being aligned  side-by-side  on  an
      axis parallel to said first axis and in optical registry with said windows,  at  least  one  of
      said objective surfaces having a cylindrical component added thereto to increase coincidence of
      focii in two orthogonal planes, thereby to maximize the  energy  throughput  characteristic  of
      said cell; and means for the introduction and withdrawal of gas into and from said  chamber  of
      said enclosure.


      The invention to which claim 1 is directed is an improvement on a type of gas cell known  as  a
“White cell.”  A White cell uses several mirrors that are aligned to make the  light  follow  a  long
path as it passes through the test chamber.  In the invention, two mirrors are placed  side  by  side
at the opposite end of the main chamber from a third mirror.  A beam of light enters the chamber  and
is repeatedly reflected off the three mirrors until it reaches an exit point.   Because  the  mirrors
reflect the light beam back and forth across the chamber multiple times, the  path  of  the  beam  is
much longer than the distance from one end of the chamber to the other.
      The ’143 patent sought to address the problem of astigmatic diffusion of the light beam passing
through the cell.  The solution proposed by the ’143 patent was to shape the secondary mirrors  in  a
manner that would counteract the astigmatism induced by reflections from the spherical  mirrors  used
in White cells and thus keep the beam of light focused during its passage  through  the  cell.   ’143
patent, col. 4, ll. 52-62.  To achieve that purpose, each claim  of  the  ’143  patent  required  the
mirrors to have “substantially spherical, concave reflective objective surfaces . . .  at  least  one
of said objective surfaces having a cylindrical component added thereto to  increase  coincidence  of
focii in two orthogonal planes . . . .”  Id., col. 5, ll. 44-52; col. 6, ll. 14-22, 40-48.
      On-Line asserted that Perkin-Elmer’s commercial long-path gas cells infringed claim  1  of  the
’143 patent.  In particular, On-Line contended that Perkin-Elmer’s cells used  objective  mirrors  of
the sort recited in the claim to correct for astigmatism.  In the district  court,  Perkin-Elmer  did
not dispute that its accused gas cells used objective mirrors  shaped  to  correct  for  astigmatism.
Perkin-Elmer argued, however, that its objective mirrors had toroidal  surfaces,  not  “substantially
spherical” surfaces “having a cylindrical component added thereto,” as required by  claim  1  of  the
’143 patent.  For that reason, Perkin-Elmer argued, its gas cells were not within the  scope  of  the
patent, either literally or under the doctrine of equivalents.  In essence,  Perkin-Elmer’s  argument
was that a toroidal surface is different from a substantially spherical surface  with  a  cylindrical
component added to it.  Because  On-Line  not  only  did  not  claim  toroidal  mirror  surfaces  but
specifically omitted them  from  its  claims,  Perkin-Elmer  contended  that  On-Line  had  dedicated
surfaces of that shape to the public.  The district court agreed  with  Perkin-Elmer  and  held  that
Perkin-Elmer’s toroidal surface was not covered by the ’143 patent.
      In explaining its claim construction ruling, the district court noted  that  the  specification
described the contour of the spherical objective mirrors as “approach[ing] toroidal.”   ’143  patent,
col. 4, ll. 8-12.  The court stated that “[b]ecause mirrors with a  contour  which  only  ‘approaches
toroidal’ cannot be said to be actual toroidal mirrors, toroidal objective mirrors are not  spherical
objective mirrors with cylindrical corrections.”  In support of  that  conclusion,  the  court  cited
extrinsic evidence, including  testimony  from  the  inventors,  which  the  court  characterized  as
establishing that “spherical objective mirrors with cylindrical  corrections  are  not  the  same  as
toroidal objective mirrors.”  Because the court concluded that the claim language  excluded  toroidal
surfaces, the court held that Perkin-Elmer’s gas cells did not literally  infringe  claim  1  of  the
’143 patent.  Moreover, because the court concluded that toroidal surfaces  were  disclosed  but  not
claimed in the ’143 patent,  the  court  invoked  the  principle  that  a  patentee’s  disclosure  of
unclaimed subject matter bars application of the doctrine of equivalents to that subject  matter  and
held that On-Line could not rely on the doctrine of equivalents to reach  toroidal  mirrors  such  as
Perkin-Elmer’s.
      On appeal, On-Line contends that the district court erred  in  ruling  that  objective  mirrors
having a toroidal surface are not within the scope of claim 1 of the ’143 patent.  We agree with  On-
Line that, properly construed, the  reference  to  a  “substantially  spherical,  concave  reflective
surface . . . having a cylindrical component added thereto to increase coincidence of  focii  in  two
orthogonal planes” defines a set of curved surfaces that includes a toroidal surface.  We reach  that
conclusion because the specification makes clear that  the  claim  language  referring  to  spherical
surfaces with cylindrical components includes toroidal surfaces.
      A toroidal (or toric) surface is defined as a surface that is “generated if an arc  is  rotated
about an axis which lies in the same plane as the arc, but which does not pass through its centre  of
curvature.”  M. Jolie, The Principles of Ophthalmic Lenses 31 (3d ed. 1977).  The classic example  of
a toroid is the shape generated when a circle is rotated about a line that  does  not  intersect  the
circle, which describes a torus, a figure resembling a doughnut or tire.  A toroidal surface  is  the
shape of a segment of the surface of a toroid.  Id.
      Although the parties agree that the term “toroidal” has a well-understood  definition,  neither
party suggests that the term “substantially spherical, concave reflective surface  .  .  .  having  a
cylindrical component added thereto,” used in the claims of the ’143 patent, has a precise and  well-
established meaning in the art.  Rather, the evidence before  the  trial  court  indicates  that  the
reference to spheres and cylinders is borrowed from thin lens theory, and that a  lens  characterized
as spherical with a cylindrical component is one with an  optical  function  achieved  by  “stacking”
spherical and cylindrical lenses.  The evidence shows that the same nomenclature is  sometimes  used,
albeit with some  lack  of  precision,  to  refer  to  reflective  surfaces  having  similar  optical
properties to such stacked lenses, even though reflective surfaces cannot  be  stacked  in  the  same
manner as lenses.
      Because the phrase “substantially spherical . . . having a cylindrical component added thereto”
has no precise and generally understood meaning in the art as  applied  to  reflective  surfaces,  we
look to the intrinsic evidence, in this case the specification, for guidance as  to  the  meaning  of
that language as used in the patent.  See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324-
25 (Fed. Cir. 2002) (“The words used in the claim are interpreted in light of the intrinsic  evidence
of record . . . .  The intrinsic evidence may provide context and clarification about the meaning  of
claim terms.  ‘Such intrinsic evidence is the  most  significant  source  of  the  legally  operative
meaning of disputed claim language.’” (citations omitted)); Genentech, Inc. v. Wellcome Found.  Ltd.,
29 F.3d 1559, 1563 (Fed. Cir. 1994) (“Since a definition of [the critical  claim]  phrase  cannot  be
extracted from the claims themselves, we look to the specification for guidance.”); see  also  United
States v. Adams, 383 U.S. 39, 49  (1966)  (“[C]laims  are  to  be  construed  in  the  light  of  the
specifications and both are to be read with a view to ascertaining the invention.”).
      Although in this case, as in others, “the guidance [in the specification] is  not  provided  in
explicit definitional format,” Irdeto Access, Inc. v. Echostar Satellite  Corp.,  No.  04-1154,  slip
op. at 8 (Fed. Cir. Sept. 14, 2004), the specification of the ’143  patent  nonetheless  demonstrates
that the claim language encompasses toroidal  surfaces.   First,  the  specification  refers  to  the
curved surfaces in the preferred embodiment of the invention as toroidal surfaces  (“the  toroids  of
the surfaces 62, 64,” ’143 patent, col. 4, line 16), and in doing so it describes those  surfaces  by
using the same language that is used in claim 1 (“generally spherical reflective surfaces,”  each  of
which “has a cylindrical component superimposed thereupon,” id., col.  4,  ll.  7-10).   Accordingly,
the specification makes it clear that, for purposes of the ’143  patent,  a  toroidal  surface  is  a
substantially spherical reflective surface that has a cylindrical component superimposed thereupon.
      Second, even if the specification were less explicit in  equating  the  term  “toroid”  with  a
generally spherical surface having a cylindrical  component  added  thereto,  the  reference  to  the
preferred embodiment as having mirrors with toroidal surfaces  would  give  rise  to  a  very  strong
inference that the claim should be construed to include such surfaces.  As this court  has  explained
before, “a claim interpretation that excludes a preferred embodiment from the scope of the claim  ‘is
rarely, if ever, correct.’”  Globetrotter Software, Inc. v.  Elan  Computer  Group,  Inc.,  362  F.3d
1367, 1381 (Fed. Cir. 2004), quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583  (Fed.
Cir. 1996); see also Int’l Rectifier Corp. v. IXYS Corp., 361  F.3d  1363,  1371  (Fed.  Cir.  2004);
Modine Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1550 (Fed. Cir. 1990).
      The district court interpreted the reference in the specification to a “contour that approaches
toroidal,” ’143 patent, col. 4, line 12, as indicating that  the  recited  surface  could  include  a
surface that approximates a toroidal shape, but could not include  the  toroidal  shape  itself.   We
disagree with that interpretation.  From the description of the  mirror  surfaces  of  the  preferred
embodiment as “toroids” four lines later in the specification, we  think  it  clear  that  the  words
“approaching toroidal” were not meant to exclude curves designed to be toroidal in shape, but  simply
to indicate that the surfaces recited in the invention were  intended  to  include  all  curves  that
closely approximate  toroidal,  including  a  toroidal  surface  itself.   Indeed,  as  a  matter  of
manufacturing tolerances, it is impossible to make a real-world  device  with  a  reflecting  surface
that is perfectly toroidal, just as it is impossible to make a reflecting surface that is  a  perfect
spheroid or a perfect paraboloid.  For that reason, even mirrors that are designed  to  be  toroidal,
such as the mirrors in Perkin-Elmer’s device, will necessarily merely “approach” the  ideal  toroidal
shape, although they may come very close.  Accordingly, we do not agree with the district court  that
the reference in the specification to a surface that “approaches toroidal” was  meant  to  exclude  a
device having a surface that is characterized in the art of optical engineering as “toroidal.”
      Finally, the patent describes the effect of adding  a  cylindrical  component  to  a  generally
spherical mirror as being “to reduce the effective radius of curvature in one  plane,  thus  enabling
light incident on the reflective surface to better approach the focus in the orthogonal plane,”  ’143
patent, col. 4, ll. 60-62, and “to increase coincidence of focii  in  two  orthogonal  planes,”  id.,
col. 5, ll. 51-52.  A toroidal surface “has two principal radii of  curvature  corresponding  to  its
two principal curves,” M. Jolie, supra, at 31; see  also  Jurgen  R.  Meyer-Arendt,  Introduction  to
Classical & Modern Optics 120 (3d ed. 1989) (“A toric surface has two radii of  curvature  (different
in the two principal meridians)”); Daniel Malacara, Optical Shop Testing 754  (2d  ed.  1992).   That
characteristic makes toroidal surfaces  useful  in  counteracting  astigmatism.   See  Eugene  Hecht,
Optics 211-12 (3d ed. 1998).  Thus, while the claim language in  the  ’143  patent  does  not  either
expressly include a toroidal surface or exclude  other  similar  surfaces,  the  characteristics  and
function of the surface described in the  specification  and  the  claims  are  consistent  with  the
characteristics and function of a toroidal surface.
      The district court relied on extrinsic evidence that the court interpreted  as  supporting  its
claim construction.  Extrinsic evidence, however, cannot  be  used  to  alter  a  claim  construction
dictated by a proper analysis of the intrinsic evidence.  See Intel Corp. v. VIA  Techs.,  Inc.,  319
F.3d 1357, 1367 (Fed. Cir. 2003) (“When an analysis of intrinsic evidence resolves any  ambiguity  in
a disputed claim term, it is improper to rely on extrinsic evidence  to  contradict  the  meaning  so
ascertained.”); Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs., Ltd.,  292  F.3d  1363,  1374
(Fed. Cir. 2002); Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys.,  132  F.3d  701,  706  (Fed.
Cir. 1997).  In any event, we do not agree with  the  district  court’s  analysis  of  the  extrinsic
evidence.
      Although the evidence showed, and  On-Line’s  witnesses  acknowledged,  that  the  mathematical
description of a toroid differs from that of  a  spherocylinder,  On-Line  offered  evidence  that  a
person of skill in fabricating optics  would  understand  the  expression  “sphere  with  cylindrical
correction” or a sphere “having a cylindrical component” to refer not to a mathematical  concept  but
to the type of optical correction obtained by stacking thin lenses, one having a  spherically  curved
surface and another having a cylindrically curved surface.  According to On-Line’s expert,  a  person
of ordinary skill in the art would understand the term “sphere with  cylindrical  correction,”  as  a
way of describing the curved surfaces used in On-Line and Perkin-Elmer’s commercial  products,  i.e.,
toroidal surfaces.  The evidence in the summary judgment record therefore  provides  further  support
for On-Line’s contention that the surface of the objective mirrors recited in claim  1  of  the  ’143
patent includes toroidal surfaces, as that term is understood by persons of skill  in  the  pertinent
art, as opposed to the manner in which it is used by mathematicians.
      To be sure, On-Line’s inventors acknowledged that as a mathematical concept a toroidal  surface
is not the same thing as a spherical surface with a cylindrical component added to it.  That  is  not
to say, however, that the inventors regarded toroidal surfaces as falling outside the  broader  claim
language, which referred to “substantially spherical” surfaces “having a cylindrical component  added
thereto.”  As On-Line’s expert explained, “the sphere/cylinder convention does not specify the  exact
mathematical surface . . . .  A person of ordinary  skill  in  the  art  would  understand  the  term
‘sphere with cylindrical correction’ as a terse and natural  way  to  describe  the  modestly  curved
surfaces of the objective mirrors in  On-Line’s  or  Perkin-Elmer’s  gas  cell  [both  of  which  are
toroidal].”  Moreover, while acknowledging that the mathematical definition of a toroid differs  from
that of  a  spheric  cylinder,  co-inventor  Robert  Carangelo  testified  that  the  claim  language
“substantially spherical . . . having a cylindrical component added”  includes  a  toroidal  surface.
The other co-inventor, David Wright, testified to similar effect, stating  that  the  claim  language
was intended to cover a range of conic sections, including  ellipsoids  and  toroids,  all  of  which
would have the same shape near the axis “to within the order of machining tolerance.”  Finally,  even
the technical article on which Perkin-Elmer relies  to  demonstrate  that  there  is  a  mathematical
distinction between toroidal and spherocylindrical  surfaces  points  out  that  the  distinction  is
extremely subtle for most applications and that toroidal surfaces “are sometimes also  [referred  to]
as spherocylindrical surfaces.”  Carmen Menchaca & Daniel Malacara,  Toroidal  and  Spherocylindrical
Surfaces, 25 Applied Optics 3008 (1986).
      Because of the lack of precision in the language used to define the  claimed  surfaces  of  the
objective mirrors, this case was made more difficult than it needed to be,  and  the  district  court
was required to invest considerable effort in trying to ascertain the meaning of the  critical  claim
language.  While the district court conducted a careful analysis of the claim language  in  light  of
the specification and the extrinsic evidence, we are nonetheless persuaded, particularly in light  of
the specification, that the district court’s claim  construction  was  too  restrictive  and  that  a
surface designed to be toroidal is within the scope of claim 1  of  the  ’143  patent.   Accordingly,
because the summary judgment of noninfringement was based on  an  erroneous  claim  construction,  we
vacate the judgment of noninfringement and remand the case for further proceedings on  the  remaining
issues pertinent to On-Line’s claim of infringement.
                                                  II
      Invoking the district court’s supplemental jurisdiction, On-Line raised a number of  state  law
claims, including claims that Perkin-Elmer had misappropriated five trade  secrets  relating  to  On-
Line’s gas cell, in violation of the Connecticut Uniform Trade Secrets Act, Conn. Gen. Stat. §  35-50
et seq. (“CUTSA”).  The district court concluded that no reasonable  jury  could  find  that  Perkin-
Elmer had misappropriated any of On-Line’s  trade  secrets.   On-Line  challenges  that  ruling  with
respect to two of the trade secrets that it alleges Perkin-Elmer misappropriated:  the long-path  gas
cell and the Norton igniter source.
     A. The Long-Path Gas Cell Trade Secret Claim
      In  the  district  court,  On-Line  alleged  that  Perkin-Elmer  misappropriated   confidential
information relating to the design of On-Line’s long-path gas cell.  The district  court  ruled  that
On-Line failed to prove actionable misappropriation because the information at  issue  was  disclosed
in the ’143 patent and because On-Line  failed  to  point  to  any  evidence  that  Perkin-Elmer  had
improperly used any information relating to the gas cell prior to the issuance of the patent.   Based
on the summary judgment record, the district court concluded that  undisputed  evidence  showed  that
Perkin-Elmer did not begin to incorporate the features of On-Line’s gas cell  into  its  own  product
until 1996, after the issuance of the ’143 patent.  Although On-Line referred to  evidence  regarding
Perkin-Elmer’s conduct before the issuance of the ’143 patent, the district court held that  none  of
that evidence was probative of misappropriation because  the  conduct  in  question  all  constituted
legitimate evaluation of On-Line’s product pursuant to the nondisclosure agreement  entered  into  by
On-Line and Perkin-Elmer in 1994.  As to On-Line’s claim that not all of the secrets relating to  its
gas cell were disclosed in the ’143 patent, the court found that  claim  to  be  unsupported  by  any
evidence.
      After a patent has issued, the information contained within it is ordinarily regarded as public
and not subject to protection as a trade secret.  See Restatement (Third) of Unfair Competition §  39
cmt. f (1995) (“Information that is generally known or readily ascertainable through proper  means  .
. .  by others to whom it has potential economic value is not protectable as a trade  secret.   Thus,
information that is disclosed in a patent or contained in published materials  reasonably  accessible
to competitors does not qualify for protection  [as  a  trade  secret].”);  Conmar  Prods.  Corp.  v.
Universal Slide Fastener Co., 172  F.2d  150,  155-56  (2d  Cir.  1949)  (L.  Hand).   Moreover,  the
nondisclosure agreement in this case specifically provided that  the  obligation  of  confidentiality
created by the agreement “will not apply to any information . . . which  becomes  publicly  available
other than by breach of this agreement.”  Consequently,  On-Line  cannot  claim  that  Perkin-Elmer’s
activities following the issuance of the ’143 patent  constituted  misappropriation  of  confidential
information unless the activities related to information not disclosed in the patent.
      In the district court, On-Line  claimed  that  Perkins-Elmer  had  misappropriated  information
relating to the design of the long-path gas cell and had used it to build its own long-path gas  cell
prior to the issuance of the ’143 patent.  The district court, however, concluded that  the  evidence
to which On-Line pointed did not create a genuine issue of  material  fact  on  that  issue,  and  we
agree.  As characterized by the district court, the evidence showed that  Perkin-Elmer  took  various
steps to evaluate the On-Line technology that it was  considering  buying,  but  did  not  show  that
Perkin-Elmer began building its own  gas  cell  before  1996.   Although  On-Line  asserts  that  the
evidence of Perkin-Elmer’s course of conduct with respect to On-Line’s product  shows  that  it  made
use of On-Line’s gas cell trade secret before the issuance of  the  ’143  patent,  On-Line’s  general
characterizations do not satisfy the requirement that it point to  specific  evidence  sufficient  to
create a disputed issue of material fact.  See Celotex Corp. v. Catrett, 477  U.S.  317,  324  (1986)
(non-movant in summary judgment proceedings must “designate specific facts showing that  there  is  a
genuine issue for trial”); Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d  1367,  1377  (Fed.
Cir. 2002) (“non-moving party must affirmatively demonstrate by specific factual allegations  that  a
genuine issue of material fact exists for trial”); S. Bravo Sys., Inc. v. Containment  Techs.  Corp.,
96 F.3d  1372,  1376  (Fed.  Cir.  1996)  (unsupported  assertions  do  not  satisfy  requirement  of
designating specific evidence creating a genuine issue of material fact).
      We also reject On-Line’s argument that Perkin-Elmer’s acts of copying and testing On-Line’s gas
cell during the period covered by the nondisclosure agreement were not authorized  by  the  agreement
and therefore constituted misappropriation.  As the district court noted,  On-Line  did  not  present
any evidence that Perkin-Elmer began to develop its  own  cell  during  the  period  covered  by  the
agreement or otherwise engaged in conduct prohibited by the nondisclosure  agreement.   Instead,  the
evidence relating to Perkin-Elmer’s conduct with respect to the  disclosed  technology  shows  merely
that Perkin-Elmer tested and evaluated  that  technology,  which  was  conduct  contemplated  by  the
nondisclosure agreement.  Moreover, Robert Hoult, a  Perkin-Elmer  scientist  who  visited  On-Line’s
facility following the execution of the nondisclosure agreement, submitted an affidavit in  which  he
averred that he had learned nothing useful about On-Line’s gas cell  that  was  not  already  evident
from On-Line’s nonconfidential marketing brochure.  On-Line did not offer evidence to contradict  Dr.
Hoult’s representation.  Because On-Line failed to demonstrate a  disputed  issue  of  material  fact
with respect to the long-path gas cell trade secret claim, we affirm the district  court’s  grant  of
summary judgment on that issue.
     B. The Norton Igniter Source Trade Secret Claim
      On-Line’s second trade secret claim is that Perkin-Elmer  misappropriated  the  infrared  light
source and assembly used in the On-Line spectrometer.  On-Line uses a device known as the Norton 301-
T igniter to produce the infrared light beam that is directed  into  its  testing  chamber.   In  the
district court, On-Line argued that Perkin-Elmer learned of  the  Norton  301-T  igniter  during  its
visits to On-Line’s facility and used that information to produce its own gas cell,  which  uses  the
same igniter as a light source.  The district court concluded  that  the  use  of  the  Norton  301-T
igniter as the light source was not a trade secret because that  use  was  publicly  disclosed  in  a
third party’s patent, U.S. Patent No. 5,291,022 (“the ’022 patent”), which issued in March of 1994.
      On appeal, On-Line argues that although the use of the Norton 301-T igniter as a high-intensity
infrared radiation source was known, its use for that purpose in  connection  with  a  long-path  gas
cell was not.  It was not the Norton 301-T igniter itself that was the protected  trade  secret,  On-
Line argues, but rather the specific purpose to which it was put in On-Line’s  product.   In  support
of that argument, On-Line points  to  a  report  by  On-Line’s  expert,  Dr.  Warren  Vidrine,  which
described the difference between the use of the Norton 301-T igniter in the ’022 patent and  its  use
in the On-Line and Perkin-Elmer devices.  Specifically, On-Line points  to  Dr.  Vidrine’s  statement
that On-Line and Perkin-Elmer both “use metal  mirrors  to  reflect  radiation  back  to  the  source
element to reduce the amount of heat which would otherwise be wasted.  The ’022 patent source  design
does not include any reflective mirrors.”
      Dr. Vidrine’s report does not suggest that the use of the Norton 301-T igniter as  an  infrared
radiation source in a long-path gas  cell  constituted  a  trade  secret.   Instead,  his  report  is
directed to the overall design of the source assembly.  Moreover, the disclosure in the  ’022  patent
of the uses to which a source such as the Norton 301-T ceramic igniter source could be put  was  very
broad.  The ’022 patent addresses “the field of light sources, particularly  those  emitting  in  the
infrared wavelengths, and more particularly to infrared sources used in analytical  instruments  such
as infrared spectrometers.”  ’022 patent, col. 1, ll. 5-9.  It also explicitly refers to  the  Norton
301-T igniter as a suitable light source.  Id., col. 6, ll. 50-53.  Moreover, Dr. Hoult  stated  that
Perkin-Elmer had determined independently that others were using Norton  igniters  and  that  by  the
time of his visit to On-Line’s facility Perkin-Elmer’s  biggest  competitor  had  been  using  Norton
igniters in infrared spectrometers for approximately two years.  In  light  of  the  breadth  of  the
disclosure in the ’022 patent, the evidence that Perkin-Elmer  had  learned  of  the  Norton  igniter
independently, and in the absence of any contrary evidence from On-Line, we agree with  the  district
court that no reasonable jury could conclude that the use of a Norton 301-T igniter  in  an  infrared
spectrometer constituted a protectable trade secret that Perkin-Elmer misappropriated from On-Line.
      On-Line also argued before the district court  that  Perkin-Elmer  misappropriated  an  On-Line
trade secret when it incorporated into its source assembly two reflective surfaces similar  to  those
that On-Line had developed to enhance and  collimate  the  infrared  light  beam  directed  into  the
testing chamber.  In support of that argument, On-Line offered Dr. Vidrine’s report,  which  asserted
that the igniter source assembly in Perkin-Elmer’s devices,  including  a  reflective  cavity  and  a
field mirror, was similar to the source assembly in On-Line’s system.
      The district court held that On-Line’s evidence with regard to the source  assembly  claim  did
not raise a disputed issue of material fact, and we agree.  Although Dr. Vidrine  asserted  that,  in
his opinion, Perkin-Elmer “commenced to copy, adapt and prepare to take  advantage  of”  features  of
the On-Line source assembly, including the retroreflective  cavity,  he  did  not  cite  evidence  to
support that assertion.  Instead, Dr. Vidrine’s assertion was based on his comparison of the  optical
elements in the source assembly of the On-Line and Perkin-Elmer instruments.   With  respect  to  the
retroreflector, Dr. Vidrine stated that one of Perkin-Elmer’s  two  products  used  a  “very  similar
retroreflector” having a “similarly shaped reflective cavity,” and that  the  retroreflector  in  the
other  Perkin-Elmer  product,  although  “not  a  simple  copy”  of  On-Line’s  design,  “produced  a
functionally similar result.”  Dr. Vidrine inferred copying  based  on  the  fact  that  Perkin-Elmer
“rapidly adopted” a reflective cavity design.  With respect to the field mirror, Dr. Vidrine did  not
claim that Perkin-Elmer’s designs were identical to  On-Line’s  design,  but  asserted  that  Perkin-
Elmer’s designs, like On-Line’s, were “good optical engineering solutions” for matching a  small  hot
area with the desired beam characteristics of the respective instruments.
        In support of its summary judgment motion, Perkin-Elmer offered affidavits from Dr. Hoult, in
which he asserted that Perkin-Elmer did not make use of anything he learned  about  On-Line’s  source
assembly as a result of his visit to On-Line’s facility.  In particular, he stated  that  the  optics
in the source assembly of the Perkin-Elmer system were “what I would  describe  as  text-book,”  that
the combination of mirrors used in Perkin-Elmer’s devices had been  developed  several  years  before
his contact with On-Line and had first been used in  Perkin-Elmer  infrared  spectrometers  in  1989,
that the arrangement of mirrors in the various source assemblies  is  in  essence  the  same  as  the
arrangement of mirrors in an automobile headlight, and that he did not learn from his  visit  to  On-
Line’s facility that On-Line used a retroreflector in its source assembly.
      In rebuttal, On-Line relied principally on a contemporaneous report by Dr. Hoult regarding  his
trip to On-Line’s facility.  On-Line argued that the Hoult trip report demonstrated  that  Dr.  Hoult
saw On-Line’s source assembly during his visit.  The report described the source as follows:
      Norton gas-igniter, silicon carbide hairpin mounted on a cylinder  with  easy  push-fit  access
      from the front  top.   Source  hangs  down  so  that  debris  falls  harmlessly  away.   Source
      collimation appeared to be an off-axis parabola machined directly on the  end  of  an  aluminum
      cylinder.  No firm details of lifetime for source.


      That discussion of the source housing (a cylinder with easy push-fit access from the front top)
could be interpreted to refer to the source assembly at issue in this case.  A reasonable jury  could
conclude that the “off-axis parabola machined directly on the end of an aluminum cylinder”  describes
a retroreflective cavity designed to focus the radiation emitted by the  Norton  igniter,  especially
given that its purpose is for “[s]ource collimation.”
      Even accepting the inference from the trip  report  that  Dr.  Hoult  viewed  On-Line’s  source
assembly, On-Line’s evidence is insufficient to avoid summary  judgment  because  On-Line  failed  to
address the assertions in Dr. Hoult’s affidavit that the mirror array  in  the  source  assembly  was
“text-book” and that Perkin-Elmer had used a similar combination of  mirrors  in  a  like  instrument
years earlier.  Although On-Line argues that the earlier device did not use a ceramic igniter as  the
energy source, there was no evidence before the district court that  the  difference  in  the  energy
source rendered On-Line’s source assembly sufficiently distinct to  constitute  a  protectable  trade
secret.  Moreover, nothing in the Hoult trip  report  suggests  that  the  structure  of  the  source
assembly was unfamiliar to Dr. Hoult; in fact, the abbreviated description of the source assembly  in
the trip report suggests the contrary.  In any event, the mere description of the source assembly  in
the Hoult trip report is insufficient to overcome the evidence from Dr.  Hoult  that  the  design  of
source assemblies of the sort used by On-Line was already  familiar  to  Perkin-Elmer  and  that  the
design of On-Line’s source assembly was not a trade secret that  Perkin-Elmer  misappropriated  as  a
result of the visit to On-Line’s facility.  As to that issue, On-Line is essentially limited  to  Dr.
Vidrine’s  conclusory  assertion  that  Perkin-Elmer  misappropriated  On-Line’s  design,  and   such
conclusory assertions by expert witnesses are not sufficient to avoid summary judgment.  See  Schwing
GMBH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1326 (Fed. Cir. 2002); Applied Cos. v.  United
States, 144 F.3d 1470, 1475 (Fed. Cir. 1998); Arthur A. Collins, Inc. v. N. Telecom  Ltd.,  216  F.3d
1042, 1046-48 (Fed. Cir. 2000).  We therefore uphold the district court’s grant of  summary  judgment
as to the source assembly.
                                                 III
      In addition to the trade secret claims, On-Line raised state law claims  of  fraud,  breach  of
contract, and unfair trade practices.  The district court granted summary judgment  for  Perkin-Elmer
as to each of those claims.  On-Line appeals as to each.
      A. The Fraud Claim
      The district court rejected On-Line’s fraud claim on the ground that it fell within  the  scope
of CUTSA and was therefore preempted under CUTSA’s preemption  provision,  Conn.  Gen.  Stat.  §  35-
57(a).  On-Line argues that its claim is not preempted because the facts on which its fraud claim  is
based differ from those that support its misappropriation claim.  On-Line  contends  that  its  fraud
claim is based on the proposed business transaction being negotiated by the parties, rather than  the
misappropriation of trade secrets.  The district court concluded otherwise, and we agree.
      Section 35-57(a) of the Connecticut General Statutes states that “[u]nless otherwise agreed  by
the parties, the provisions of this chapter supersede any conflicting tort, restitutionary, or  other
law of this state pertaining to civil  liability  for  misappropriation  of  a  trade  secret.”   The
preemptive effect of that statute is limited by subsection (b), which states that it does not  affect
“[c]ontractual or other civil liability or relief that is not based upon misappropriation of a  trade
secret,” among other things.  Conn. Gen. Stat. § 35-57(b).  On-Line contends that  its  fraud  claims
are not based upon the misappropriation of a trade secret and  thus  they  are  not  preempted  under
section 35-57.
      The district court concluded that On-Line’s fraud claim was based on the  theory  that  Perkin-
Elmer’s allegedly fraudulent actions allowed it to misappropriate On-Line’s trade  secrets.   In  the
fraud portion of its complaint, On-Line alleged that  Perkin-Elmer  had  induced  it  to  disclose  a
variety of trade secrets.  On-Line now contends that  the  district  court  misunderstood  its  fraud
allegations; in its brief On-Line contends that its fraud claim “is related to the proposed  business
transaction being negotiated by the parties,” and is not related to  the  misappropriation  of  trade
secrets.  On-Line focuses in particular on Perkin-Elmer’s termination of the  licensing  negotiations
in November 1994 and Perkin-Elmer’s allegedly  false  statement  that  the  evaluation  of  On-Line’s
technology was unsatisfactory.
      The problem with that characterization of the fraud claim  is  that  it  is  unclear  how  that
statement—even if false—misled On-Line to its prejudice, see Paiva v.  Vanech  Heights  Constr.  Co.,
271 A.2d 69, 71 (Conn. 1970), except perhaps to promote the  furtive  misappropriation  of  On-Line’s
trade secrets by suggesting that Perkin-Elmer was uninterested in the technology when in fact Perkin-
Elmer intended to copy it.  If that is the purpose suggested  by  On-Line’s  argument  regarding  the
November 1994 false statement, it merely demonstrates that the ultimate injury to which  the  alleged
fraud was directed was the misappropriation of On-Line’s trade secrets.  In its  brief,  On-Line  has
not suggested any other injury  that  On-Line  suffered  as  a  result  of  Perkin-Elmer’s  allegedly
fraudulent conduct.  The district court therefore properly held that the fraud  claim  was  preempted
under section 35-57.
      B.  The Breach of Contract Claim
      The district court granted summary judgment with respect to On-Line’s breach of contract  claim
on the ground that the nondisclosure agreement between On-Line and Perkin-Elmer provided  no  greater
protection than that provided by CUTSA.  Because the court concluded that no  reasonable  jury  could
find a CUTSA violation, the court held that there could be no breach of contract, either.
      On-Line argues  that  its  breach  of  contract  claim  is  different  from  its  trade  secret
misappropriation  claim.   On-Line,  however,  does  not  suggest  that  if  it   failed   to   prove
misappropriation of trade secrets it would be nonetheless be  entitled  to  relief  on  a  breach  of
contract theory for violating the covenant not to disclose trade secrets.  Instead, in its  brief  in
this court On-Line focuses on the provision of the nondisclosure agreement that  imposed  on  Perkin-
Elmer the obligation to return “all copies” of information that On-Line designated  as  confidential.
Because Perkin-Elmer retained some records containing confidential materials relating to the  On-Line
spectrometer, On-Line argues that the district court  improperly  granted  summary  judgment  on  the
breach of contract claim.
      The district court addressed On-Line’s argument with regard to Perkin-Elmer’s  alleged  failure
to return documents and held that On-Line did not raise the failure to return documents  as  a  basis
for liability in the breach of contract claim in its complaint.   Because  On-Line  failed  to  raise
that claim in a timely manner, it was not error for the district court to reject On-Line’s effort  to
raise that aspect of the contract as a basis for liability at the summary judgment stage.
      C.  The Unfair Trade Practices Claims
      The district court held that On-Line’s unfair trade practices claims are  preempted  by  CUTSA.
In its complaint, On-Line raised claims against Perkin-Elmer  under  the  Connecticut  Uniform  Trade
Practices Act.  Specifically, On-Line alleged that Perkin-Elmer had  improperly  used  trade  secrets
obtained from On-Line to make its own products and had represented to a variety of parties  that  On-
Line’s trade secrets were its own.  The district court concluded that those  allegations  constituted
nothing more than CUTSA  violations  and  that  the  unfair  trade  practice  claims  were  therefore
preempted by section 37-57(a).
      On-Line argues that because Perkin-Elmer gained access to its trade secrets under the guise  of
offering a license agreement, its claims are not preempted by CUTSA.  We cannot agree.   All  of  On-
Line’s allegations relate to the misappropriation of  trade  secrets,  as  is  clear  from  On-Line’s
complaint, which relies upon Perkin-Elmer’s alleged acquisition and  use  of  On-Line’s  confidential
information.  As a result, we agree with the trial court that CUTSA preempts On-Line’s  unfair  trade
practices claims.
                                                  IV
      On-Line contends that the district court erred when it dismissed Sick, A.G., from  the  lawsuit
based on a lack of personal jurisdiction.  In support of its  argument,  On-Line  points  to  several
events: a visit by a Sick, A.G., representative to On-Line’s facility in East Hartford,  Connecticut;
a nondisclosure agreement with On-Line signed by a representative of Sick, A.G.;  a  report  prepared
by a representative of Sick, A.G., relating to his visit to the  On-Line  facility;  the  receipt  by
Sick, A.G., of a copy of On-Line’s business plan; and a subsequent inquiry  by  Sick,  A.G.,  to  On-
Line.
      The trial court concluded that the evidence offered in support of On-Line’s claim  of  personal
jurisdiction  over  Sick,  A.G.,  was  insufficient  to   establish   personal   jurisdiction   under
Connecticut’s long-arm statute, Conn. Gen. Stat.  §  33-929.   The  court  found  that  none  of  the
allegations regarding Sick, A.G., were sufficient to constitute tortious  conduct  under  Conn.  Gen.
Stat. § 33-929(f), solicitation of business under Conn. Gen. Stat.  §  33-929(f)(2),  or  a  business
transaction under Conn. Gen. Stat. § 33-929(e).  On-Line  has  not  specifically  challenged  any  of
those findings, but instead has made only a general assertion that the  district  court’s  ruling  is
“incorrect and inequitable.”  Because On-Line has failed to point out  any  specific  errors  in  the
district court’s analysis, and because the court’s jurisdictional ruling is not otherwise flawed,  we
uphold the district court’s ruling that it lacked personal jurisdiction over Sick, A.G.
                                      *     *     *     *     *
      In summary, we affirm the grant of summary judgment with respect to On-Line’s state law  claims
and with respect to the order dismissing Sick, A.G., on grounds of  lack  of  personal  jurisdiction.
As to the patent claim, we vacate the grant of summary judgment of noninfringement  and  remand  that
issue to the district court for further proceedings.
      Each party shall bear its own costs for this appeal.
                           AFFIRMED IN PART, VACATED IN PART, and REMANDED.

