ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

ALIFAX HOLDING SPA,

Plaintiff-Appellant

SIRE ANALYTICAL SYSTEMS SRL,

Plaintiff

ALCOR SCIENTIFIC LLC, FRANCESCO A.

FRAPPA,

Defendants-Cross-Appellants

______________________

2022-1641, 2022-1723

______________________

Appeals from the United States District Court for the

District of Rhode Island in No. 1:14-cv-00440-WES-LDA,

Chief Judge William E. Smith.

______________________

Decided: June 11, 2024

______________________

TODD ROBERTS TUCKER, Calfee, Halter & Griswold

LLP, Cleveland, OH, argued for plaintiff-appellant. Also

represented by JOSHUA FRIEDMAN; CHRISTOPHER BAXTER,

Pierce Atwood LLP, Portsmouth, NH; ROBERT H. STIER,

JR., Stier IP Law LLC, Cape Elizabeth, ME.

CRAIG M. SCOTT, Hinckley, Allen & Snyder, LLP, Prov-

idence, RI, argued for defendants-cross-appellants. Also

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

represented by CHRISTINE K. BUSH; LAUREL M. ROGOWSKI,

Boston, MA.

______________________

Before MOORE, Chief Judge, LOURIE and CUNNINGHAM,

Circuit Judges.

CUNNINGHAM, Circuit Judge.

This appeal is the culmination of the parties’ multi-

year litigation at the District Court of Rhode Island con-

cerning automated clinical instruments that measure cer-

tain characteristics of human blood samples. Alifax

Holding SpA and Sire Analytical Systems SRL (collec-

tively, “Alifax”) sued Alcor Scientific LLC (“Alcor”) and Mr.

Francesco A. Frappa (collectively, the “Cross-Appellants”

or “Defendants”),

alleging misappropriation of trade se-

crets, patent infringement, and copyright infringement.

For the reasons discussed below, we affirm-in-part and re-

verse-in-part the district court’s decisions, and remand for

further proceedings.

I. BACKGROUND

Alifax makes automated clinical instruments used to

determine the erythrocyte sedimentation rate (“ESR”) of

human blood samples. Alifax Holding Spa v. Alcor Sci.

Inc., 404 F. Supp. 3d 552, 557 (D.R.I. 2019) (“New Trial Or-

der”). An employee of an Alifax subsidiary, Mr. Francesco

A. Frappa, left the company and began working for Alcor.

Id. Within a year, Alcor offered a new ESR instrument of

its own, the iSED, with analytical capabilities comparable

to the Alifax devices. Id.

Because some issues on appeal only apply to one of

the two Cross-Appellants, we distinguish between Cross-

Appellants, Alcor, and Mr. Frappa in this opinion.

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

On October 7, 2014, Alifax

sued Defendants for trade

secret misappropriation under the Rhode Island Uniform

Trade Secrets Act (“RIUTSA”). Alifax also sued only Alcor

for infringement of U.S. Patent Nos. 6,632,679 and

7,005,107. J.A. 136, 140 ¶¶ 20–21, 146 ¶¶ 53–58, 147–48

¶¶ 59–68; see New Trial Order at 557. On March 20, 2017,

Alifax amended its complaint to assert a claim of copyright

infringement solely against Alcor. J.A. 2106–07 ¶¶ 77–85.

Alcor answered and counterclaimed seeking, among other

things, declaratory judgment of patent invalidity. See, e.g.,

J.A. 2235 ¶¶ 41–42; see New Trial Order at 557–58.

Before trial, the parties moved for summary judgment.

Relevant to this appeal, Defendants moved for summary

judgment on Alifax’s claims for copyright infringement, pa-

tent infringement, and trade secret misappropriation, as

well as Alcor’s patent invalidity counterclaims. See Alifax

Holding SPA v. Alcor Sci. Inc., C.A. No. 14-440 WES, 2019

WL 13091790, at *1, *4–11, *13 (D.R.I. Mar. 26, 2019)

(“Summary Judgment Order”). On March 26, 2019, the

court denied Defendants’ motion for summary judgment.

Id. at *13.

Shortly before trial, the court and the parties continued

to narrow the case. Three days before trial, the court ex-

cluded the opinion of Alifax’s expert, Mr. Christopher J. Bo-

khart, on copyright infringement damages. Alifax Holding

SPA v. Alcor Sci. Inc., C.A. No. 14-440 WES, 2019 WL

1579503, at *1–2 (D.R.I. Apr. 12, 2019) (“Daubert Decision

on Copyright”). As a result, the parties agreed that Alifax’s

558; J.A. 13829.

Alifax Holding SpA was the only plaintiff in the in-

itial Complaint filed on October 7, 2014. J.A. 136. Sire

Analytical Systems SRL was added as a plaintiff in the

Amended Complaint filed on March 17, 2015. J.A. 106.

During litigation, Sire merged into Alifax. New Trial Or-

der at 557 n.6.

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

The court bifurcated the trial into liability and dam-

ages phases. J.A. 126; see J.A. 13853–54. Five days into

the liability phase of the trial, Alifax decided that it no

longer wished to proceed on its patent infringement claims.

J.A. 14385. To effectuate removal of patent infringement

from the case, the court granted summary judgment for Al-

cor on that claim, and the parties executed a covenant not

to sue, addressing all patents. New Trial Order at 558; see

J.A. 14458–59. Accordingly, the only remaining claims for

jury deliberations relevant to this appeal were the trade

secret misappropriation claims. See New Trial Order at

558.

Alifax presented multiple theories of trade secret mis-

appropriation to the jury. There are two trade secrets rel-

evant to this appeal:

the conversion algorithm trade

secret, which comprises “[p]ortions of computer program

source code concerning the conversion of photometric

measurements, including source code containing four spe-

cific conversion constants,” J.A. 15193, see J.A. 13849; and

the alleged signal acquisition trade secret, which involves

“the process by which Alifax’s devices gathered ESR-

related raw data through signal acquisition.” Order on

New Trial Scope and Patent Fees at *2; see also Summary

Judgment Order at *7.

At the charge conference, the court struck the alleged

signal acquisition trade secret from the jury verdict form.

In some places, the district court characterized the

conversion algorithm and the alleged signal acquisition

trade secrets as a single trade secret. See Summary Judg-

ment Order at *6 (referring to “software and firmware con-

cerning the acquisition and conversion of photometric

measurements to an ESR value”). Elsewhere, it described

them as separate trade secrets. Alifax Holding Spa v. Al-

cor Sci. Inc., C.A. No. WES 14-440, 2021 WL 3022697, at

*2 (D.R.I. July 16, 2021) (“Order on New Trial Scope and

Patent Fees”) (referring to “two software trade secrets”).

We treat the alleged signal acquisition and conversion al-

gorithm as two separate trade secrets.

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

J.A. 14943–48. Specifically, the court decided to exclude

“acquisition” from its description of the software and firm-

ware trade secrets, effectively removing the alleged signal

acquisition trade secret. Id.; see J.A. 15193–99 (Jury Ver-

dict Form). Alifax objected, arguing that it had identified

the alleged signal acquisition trade secret as “[t]he manner

in which the software used in Alifax’s ESR analyzers initi-

ates an ESR measurement from a blood sample loaded in

the ESR analyzer, handles a blood sample to introduce it

into the capillary container, instructs the ESR analyzer to

obtain photometric data, and handles and converts the

photometric data to calculate the ESR of the blood sample.”

J.A. 14944 (citing J.A. 2000 ¶ 5); see also Oral Arg. at

11:53–12:30, 18:00–19, https://oralarguments.cafc.

uscourts.gov/default.aspx?fl=22-1641_07102023.mp3. Ali-

fax also contended that it introduced evidence and testi-

mony related to the alleged signal acquisition trade secret

at trial. J.A. 14944–45.

The court rejected this argument regarding the alleged

signal acquisition trade secret, finding there to be “no . . .

record evidence of trade secrets involved in any of the steps

that are discussed . . . [regarding] how the apparatus

would be programmed to operate, other than with respect

to the conversion algorithm . . . .” J.A. 14947–48. The jury

returned a verdict finding Alifax proved that the conver-

sion algorithm was a trade secret and that Defendants mis-

appropriated that trade secret.

J.A. 15193–98.

Before the start of the damages phase of the trial, the

court excluded in their entirety Alifax’s expert opinions by

Mr. Bokhart concerning trade secret misappropriation

damages. Alifax Holding SpA v. Alcor Sci. Inc., 387 F.

Supp. 3d 170, 171–72 (D.R.I. 2019) (“Daubert Decision on

Trade Secrets”). However, over Defendants’ objection, the

district court allowed Alifax to call Mr. Bokhart as a sum-

mary fact witness pursuant to Federal Rule of Evidence

The jury also found the Defendants misappropri-

ated other trade secrets and had acted willfully and mali-

ciously. J.A. 15194–98.

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

1006 to testify as to the iSED-related revenues and costs

based on Alcor’s financial spreadsheets. J.A. 15309–11;

Trial Tr. Vol. 11 at 33–34, Alifax Holding SpA v. Alcor Sci.

Inc., C.A. No. 14-440 WES (D.R.I. May 1, 2019), Dkt. 347;

see also New Trial Order at 580. The jury awarded $6.5

million in damages to Alifax for Alcor’s misappropriation of

the conversion algorithm trade secret. J.A. 15490.

After the trial concluded, the district court granted De-

fendants a new trial on both liability and damages for the

conversion algorithm trade secret. New Trial Order at

577–82.

Regarding liability, the court found that the ver-

dict was against the clear weight of the evidence. Id. at

577. The court reasoned that because there was little evi-

dence that Alifax’s algorithm could produce highly accurate

results in a non-Alifax device, Defendants could not have

used Alifax’s algorithm for any purpose. See id. at 577,

579–80. As to damages, the court found that Mr. Bokhart’s

testimony exceeded the scope permitted for a summary fact

witness and unfairly prejudiced Alcor. See id. at 581–82.

The district court also denied Alcor’s motion as to attor-

ney’s and expert fees and costs related to the copyright

claim. Alifax Holding SpA v. Alcor Sci. Inc., C.A. No. 14-

440 WES, 2019 WL 4247737, at *4 (D.R.I. Sept. 5, 2019)

(“Order on Copyright Fees”).

On July 16, 2021, the court (1) held that no new evi-

dence or witness would be permitted at the new trial, Order

on New Trial Scope and Patent Fees at *2; (2) excluded the

theory based on an alleged signal acquisition trade secret

from the new trial, id. at *3; and (3) denied Alcor’s motion

for attorney’s fees related to the patent infringement

claims. Id. at *5. Following additional briefing by the

The court ruled that the jury would not be permit-

ted to award damages against Mr. Frappa. New Trial Or-

der at 558 n.7; J.A. 15330–31. This ruling is not subject to

this appeal.

The court considered the motion for a new trial as

a joint request from both Defendants. New Trial Order,

404 F. Supp. 3d at 556 n.3.

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

parties, the court also precluded Alifax from seeking com-

pensatory damages at the new trial. Alifax Holding Spa v.

Alcor Sci. Inc., C.A. No. WES 14-440, 2021 WL 3911258, at

*1 (D.R.I. Sept. 1, 2021) (“Order Precluding Damages”).

The parties agreed not to go to trial on nominal damages,

and on February 18, 2022, the district court dismissed with

prejudice the trade secret claim. J.A. 91, 98 (Order Dis-

missing Trade Secret Claim). On March 25, 2022, the dis-

trict court entered final judgment on all remaining claims,

including entering judgment in favor of Defendants on pa-

tent infringement, trade secret misappropriation, and cop-

yright infringement. J.A. 101–02 (Final Judgment).

Alifax timely appealed. The Cross-Appellants filed a

timely cross appeal. We have jurisdiction under 28 U.S.C.

§ 1295(a)(1).

II. DISCUSSION

On appeal, Alifax argues that the district court erred

by (1) excluding the alleged signal acquisition trade secret

from jury consideration, Appellant’s Br. 42–47; (2) grant-

ing a new trial on liability relating to the conversion algo-

rithm trade secret, id. at 51–55; (3) granting a new trial on

damages, id. at 55–56, see also id. at 57–64; (4) excluding

the alleged signal acquisition trade secret from the new

trial, id. at 47–50; and (5) precluding Alifax from present-

ing evidence and witnesses for compensatory damages at

the new trial. Id. at 37–40. Alcor argues that the district

court abused its discretion in denying attorney’s fees relat-

ing to the patent and copyright claims. Cross-Appellants’

Principal & Resp. Br. 57, 66; see also id. 58–65, 67–71.

We apply our own law to issues unique to patent law

and regional circuit law—here, First Circuit law—to issues

unrelated to patent law. Atlas IP, LLC v. Medtronic, Inc.,

809 F.3d 599, 604 (Fed. Cir. 2015) (citation omitted). We

review the district court’s jury instructions, new trial or-

ders, and evidentiary rulings under the law of the regional

circuit. See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d

1352, 1359 (Fed. Cir. 2004) (jury instructions); Verizon

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1331

(Fed. Cir. 2010) (new trial orders and evidentiary rulings).

In the First Circuit, the court’s rulings on jury instructions

are reviewed de novo. Cigna Ins. Co. v. Oy Saunatec, Ltd.,

241 F.3d 1, 8 (1st Cir. 2001) (citation omitted). The grant

of a motion for a new trial is reviewed for abuse of discre-

tion. Jennings v. Jones, 587 F.3d 430, 436 (1st Cir. 2009).

A court’s decision regarding new evidence at a new trial

“[i]s one for the informed discretion of the trial judge,” and

the First Circuit reviews for an abuse of discretion. Fusco

v. Gen. Motors Corp., 11 F.3d 259, 267 (1st Cir. 1993).

We apply the law of the regional circuit in reviewing

decisions on attorney’s fees relating to copyright claims and

the law of this circuit in reviewing decisions on attorney’s

fees relating to patent claims. See Brooktree Corp. v. Ad-

vanced Micro Devices, Inc., 977 F.2d 1555, 1582–83 (Fed.

Cir. 1992) (applying regional circuit law to attorney’s fees

relating to copyright claims); Serio-US Indus., Inc. v. Plas-

tic Recovery Techs. Corp., 459 F.3d 1311, 1321 (Fed. Cir.

2006) (applying Federal Circuit law to attorney’s fees relat-

ing to patent infringement claims). Under First Circuit

law, the review of a district court’s decision on a fee award

relating to copyright claims is “extremely deferential,” and

the First Circuit “will disturb a ruling . . . only if the record

persuades us that the trial court indulged in a serious lapse

in judgment.” Airframe Sys. Inc. v. L-3 Commc’ns Corp.,

658 F.3d 100, 109–10 (1st Cir. 2011) (quoting Latin Am.

Music Co. v. Am. Soc’y of Composers, Authors & Publishers

(ASCAP), 642 F.3d 87, 91 (1st Cir. 2011)). This court re-

views a district court’s denial of attorney’s fees in a patent

case for abuse of discretion. Elec. Commc’n Techs., LLC v.

ShoppersChoice.com, LLC, 963 F.3d 1371, 1376 (Fed. Cir.

2020) (citations omitted).

Alifax first argues that the district court erred by ex-

cluding the alleged signal acquisition trade secret from jury

consideration at the liability phase of the trial. Appellant’s

Br. 42–47; see J.A. 14943–48 (charge conference tran-

script). Alifax argues that the “jury was entitled to infer

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

that [Mr.] Frappa’s detailed plan for acquiring a signal

from a blood sample was derived from his eleven years at

Alifax, particularly in view of the other evidence at trial.”

Appellant’s Br. 44, see also id. 45–47. We are not per-

suaded that the district court erred by excluding the al-

leged signal acquisition trade secret from jury

consideration.

Alifax failed to meet its burden of proof to establish the

existence and scope of the alleged signal acquisition trade

secret. See generally R.I. Gen. Laws § 6-41-1(4) (defining

trade secret); TLS Mgmt. & Mktg. Servs., LLC v. Rodri-

guez-Toledo, 966 F.3d 46, 52 (1st Cir. 2020) (“[T]he trade

secret owner has the burden of proof to establish the exist-

ence and scope of the alleged trade secret in the litigation.”)

(applying Puerto Rico law based on Uniform Trade Secrets

Act);

see also IDX Sys. Corp. v. Epic Sys. Corp., 285 F.3d

581, 583–4 (7th Cir. 2002) (“[A] plaintiff must do more than

just identify a kind of technology and then invite the court

to hunt through the details in search of items meeting the

statutory definition.”) (applying Wisconsin law following

UTSA). To meet this burden, the trade secret owner must

“describe the subject matter of its alleged trade secrets in

sufficient detail to establish each element of a trade secret.”

Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 661

Because Alifax brought its trade secret claims un-

der RIUTSA, we apply Rhode Island law. Atl. Rsch. Mktg.

Sys., Inc. v. Troy, 659 F.3d 1345, 1356 (Fed. Cir. 2011).

Nonetheless, we look to courts’ interpretation of the Uni-

form Trade Secrets Act (UTSA) enacted by other states for

guidance, because RIUTSA is “construed to . . . make uni-

form the law with respect to the subject of this chapter

among states enacting it.” R.I. Gen. Laws § 6-41-8; see

Read & Lundy, Inc. v. Wash. Tr. Co. of Westerly, No. PC99-

2859, 2002 WL 31867868, at *8 (R.I. Super. Ct. Dec. 13,

2002) (citing cases from other jurisdictions adopting the

UTSA to interpret provisions of RIUTSA), aff’d, 840 A.2d

1099 (R.I. 2004).

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

(4th Cir. 1993) (applying Maryland law following UTSA

and collecting cases); see also TLS, 966 F.3d at 54.

Here, Alifax not only failed to describe the alleged sig-

nal acquisition trade secret with sufficient detail but also

failed to identify its proper scope. At oral argument, Alifax

alleged that the signal acquisition trade secret is “how to

acquire photometric signals from a blood sample.” Oral

Arg. at 20:45–21:32; see also J.A. 10534 (Alifax’s proposed

jury instruction). But this definition only provides a high-

level summary of the purpose of the alleged trade secret

without describing it in detail. Alifax also cites its identi-

fication of misappropriated trade secrets, which defines the

alleged signal acquisition trade secret as “the manner in

which the software used in [Alifax’s] ESR analyzers initi-

ates an ESR measurement from a blood sample loaded in

the ESR analyzer, handles a blood sample to introduce it

into the capillary container, [and] instructs the ESR ana-

lyzer to obtain photometric data.” J.A. 2000 ¶ 5; see also

Oral Arg. at 11:54–12:30, 18:00–19, 22:50–23:00. This par-

agraph also fails to clarify “the existence and scope of the

alleged trade secret,” TLS, 966 F.3d at 52, making it im-

possible to ascertain whether certain elements of the al-

leged trade secret have been established, such as

“[d]eriv[ing] independent economic value . . . from not be-

ing generally known” and “not being readily ascertainable

by proper means.” R.I. Gen. Laws § 6-41-1(4). Therefore,

neither definition offered by Alifax satisfies its burden to

describe the alleged trade secret in sufficient detail to es-

tablish each element of a trade secret. See Trandes, 996

F.2d at 661.

Alifax’s trial evidence and testimony similarly fail to

meet its burden to identify the alleged signal acquisition

trade secret. First, Alifax argues that a document labeled

“iSED Software Procedures description” would entitle a

jury to infer that Cross-Appellants misappropriated Ali-

fax’s alleged signal acquisition trade secret. Appellant’s

Br. 43–44; see J.A. 15716–19 (Trial Exhibit 64). But as Ali-

fax’s counsel admitted at oral argument, Trial Exhibit 64

is an Alcor document. Oral Arg. at 13:48–55. Alifax also

points out that the document was drafted by Mr. Frappa

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after signing a royalty agreement in which he agreed to

provide Alcor with technical documentation related to how

an ESR analyzer performed its functions. See Appellant’s

Br. 43–44; J.A. 15714. But nothing in the record indicates

that the contents of the document were Alifax’s alleged sig-

nal acquisition trade secret.

In fact, because neither Alifax

nor Trial Exhibit 64 identifies the scope of the alleged trade

secret, a jury would not be able to distinguish “[w]hich as-

pects are known to the trade” from those “which are not.”

See IDX Sys., 285 F.3d at 584 (holding that a 43-page doc-

ument describing a software package was not sufficiently

specific); Trandes, 996 F.2d at 661–62 (claiming possession

of secret “formulas” but failing to provide evidence of what

the formulas were did not provide sufficient detail to “sus-

tain even a prima facie case of misappropriation”). We are

also unpersuaded by Alifax’s argument that Astro-Med,

Inc. v. Nihon Kohden America, Inc., 591 F.3d 1, 18–19 (1st

Cir. 2009), supports an inference that Trial Exhibit 64

must have included Alifax’s trade secret information

simply because Alcor hired Mr. Frappa. See Appellant’s

Br. 43, 46–47. In Astro-Med, the First Circuit upheld an

inference that a trade secret was misappropriated, after

parties had clearly articulated what the trade secret con-

stituted—which “includ[ed] confidential marketing, pric-

ing, and customer information.” 591 F.3d at 7–8, 18. Astro-

Med is thus distinguishable because Alifax has failed to ar-

ticulate the contents of the alleged trade secret.

Alifax also argues that Mr. Giovanni Batista Duic’s

trial testimony established the existence and scope of the

alleged signal acquisition trade secret. Appellant’s Br. 45

(citing J.A. 13936–37, 13924–25). We also find this argu-

ment unpersuasive. The cited portion of Mr. Duic’s testi-

mony simply describes how Alifax’s ESR instruments work

at a high level. See J.A. 13936–37, 13924–25. At most, this

testimony would have allowed the jury to make an infer-

ence that there are a few discrete points of similarity be-

tween Alcor’s software procedure and how Alifax’s device

works. Compare J.A. 13936–38 with J.A. 15716–19. Tak-

ing this testimony into consideration, the evidence adduced

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at trial is still not enough to allow the jury to identify the

alleged trade secret with sufficient detail.

For the foregoing reasons, we find no error in the dis-

trict court’s decision to remove the alleged signal acquisi-

tion trade secret from jury consideration.

Next, Alifax argues that the district court abused its

discretion in granting a new trial on liability as to the con-

version algorithm trade secret because it required “Alifax’s

algorithm [to be] capable of producing highly accurate re-

sults in a non-Alifax device,” when RIUTSA does not re-

quire evidence of “use” to show misappropriation.

Appellant’s Br. 52 (citing New Trial Order at 577). Cross-

Appellants respond that the district court did not abuse its

discretion because the court properly found that the con-

version algorithm trade secret had no independent eco-

nomic value derived from its alleged secrecy. Cross-

Appellants’ Principal & Resp. Br. 41–44. We agree with

Alifax.

“A trial court may grant a new trial on the basis that

the verdict is against the weight of the evidence. Further,

the district court has the power and duty to order a new

trial whenever, in its judgment, the action is required in

order to prevent injustice.” Jennings, 587 F.3d at 436 (ci-

tations and internal quotation marks omitted).

Here, the district court abused its discretion in finding

that the jury verdict was against the clear weight of the

evidence, New Trial Order at 577, because it did not con-

sider whether the evidence could establish that the trade

secret was acquired through improper means, which alone

is sufficient to satisfy the definition of misappropriation

under RIUTSA. See R.I. Gen. Laws § 6-41-1 (“‘Misappro-

priation’ means: (i) Acquisition of a trade secret of another

by a person who knows or has reason to know that the

trade secret was acquired by improper means; or (ii) Dis-

closure or use of a trade secret of another. . . .”) (emphasis

added). The district court’s decision focused on what it saw

as the “critical assumption” underpinning the verdict—

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that “Alifax’s algorithm was capable of producing highly

accurate results in a non-Alifax device”—which it found to

be necessary for the Defendants to use the conversion algo-

rithm. New Trial Order at 577–79. But the new trial order

did not discuss whether Alifax’s algorithm would meet the

alternative acquisition prong of misappropriation. Id. at

577–80. Therefore, because a “material factor deserving

significant weight”—whether Alifax presented sufficient

evidence on improper acquisition—was not addressed, we

find that the district court abused its discretion in finding

the jury verdict to be against the clear weight of the evi-

dence. Rinsky v. Cushman & Wakefield, Inc., 918 F.3d 8,

27 (1st Cir. 2019).

Cross-Appellants further contend that Alifax failed to

show that it undertook reasonable efforts to maintain the

secrecy of the conversion algorithm or that the conversion

algorithm had independent economic value from not being

generally known. Cross-Appellants’ Br. 41–43, 48–49.

Both arguments are directed to the sufficiency of evidence

to establish the conversion algorithm as a trade secret. See

R.I. Gen. Laws § 6-41-1 (4). Because the district court fo-

cused its analysis on the jury’s finding on misappropriation

and did not sufficiently address whether the conversion al-

gorithm qualifies as a trade secret, New Trial Order at

577–80, we decline to address this argument in the first

instance. See Ahern v. Scholz, 85 F.3d 774, 780 (1st Cir.

1996) (determining that proper review of a district court’s

new trial ruling for clear abuse of discretion includes “iso-

lat[ing] the factual basis for the trial court’s ruling” and not

“assessing the credibility of witnesses and weighing testi-

mony”).

Because we conclude that the district court abused its

discretion in finding that the jury verdict regarding liabil-

ity on the conversion algorithm trade secret was against

the clear weight of the evidence, we find that the district

court erred in granting a new trial on liability related to

the conversion algorithm trade secret. Therefore, we direct

the district court to enter judgment for Alifax on this issue

according to the jury verdict. See de Perez v. Hosp. del

Maestro, 910 F.2d 1004, 1008–09 (1st Cir. 1990) (reversing

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

new trial order when “the evidence simply was mixed and

contradictory”).

Alifax next argues that the district court abused its dis-

cretion by granting a new trial on damages because of Mr.

Bokhart’s testimony. Appellant’s Br. 55. Alifax contends

that the court erred in finding that the testimony “exceeded

the scope permitted by Rule 1006 [Summaries to Prove

Content]” when it would have been admissible under Fed-

eral Rules of Evidence 611(a)

(Mode and Order of Examin-

ing Witnesses and Presenting Evidence) and 703 (Bases of

an Expert’s Opinion Testimony). Id. at 56. Alifax also ar-

gues that the district court abused its discretion by finding

that Mr. Bokhart’s testimony unfairly prejudiced Cross-

Appellants. Id. at 61. We do not agree.

We hold that the district court correctly found that Mr.

Bokhart exceeded the scope permitted by Federal Rule of

Evidence 1006 as a summary witness by improperly includ-

ing expert testimony that was previously excluded. New

Trial Order at 580–82. After previously excluding Mr. Bo-

khart’s opinions concerning trade secret misappropriation

damages, Daubert Decision on Trade Secrets at 171–72, the

district court allowed Mr. Bokhart to present financial in-

formation relevant to damages as a summary fact witness

under Rule 1006. J.A. 15309–11; New Trial Order at 580.

Rule 1006 allows a party use summary writing or summary

witness testimony “to prove the content of voluminous writ-

ings, recordings, or photographs that cannot be conven-

iently examined in court.” Id. at 580–81; see Fed. R. Evid.

1006. But evidence cannot be offered under Rule 1006 if it

contains expert opinion that goes beyond summarizing vo-

luminous materials or making a calculation based on data

contained in such materials. See 11 Charles A. Wright &

Arthur R. Miller, Federal Practice and Procedure § 8043

(3d ed. 2022); see also Eichorn v. AT & T Corp., 484 F.3d

644, 650 (3d Cir. 2007). As the district court found, Mr.

Bokhart’s testimony “necessarily reflected the application

of his financial and accounting expertise,” i.e., included ex-

pert testimony. New Trial Order at 581. Regarding

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

convoyed sales, such as test cards and diagnostic devices,

Mr. Bokhart testified that the revenue these items gener-

ated were iSED-related and therefore should be considered

when calculating damages. Id. at 581–82; see also J.A.

15351–52 (explaining how Alcor’s iSED-related revenue

stream included revenues from the sale of test cards used

to make iSED operational). But no evidence or any other

witness had established the relationship between convoyed

sales and the conversion algorithm trade secret. New Trial

Order at 582; J.A. 15379–80 (trial testimony admitting no

documentation showed that test cards, controls, and diag-

nostic devices were iSED-related). Therefore, Mr. Bo-

khart’s testimony must have relied on his accounting

expertise.

Because Mr. Bokhart’s testimony exceeded the scope of

Rule 1006 and he was the only damages witness Alifax pre-

sented, the district court did not abuse its discretion by

finding that unfair prejudice to Defendants warranted a

new trial on damages. New Trial Order at 580, 582; see

Turcotte v. Ford Motor Co., 494 F.2d 173, 183–85, 187 (1st

Cir. 1974) (remanding for new trial on damages when wit-

ness improperly applied state law); see also In re Taxotere

(Docetaxel) Prods. Liab. Litig., 26 F.4th 256, 267, 269 (5th

Cir. 2022) (finding lay witness improperly offered expert

opinion and remanding for a new trial).

Alifax’s argument that Mr. Bokhart’s testimony was

admissible under Federal Rules of Evidence 611(a) and 703

is also without merit. See Appellant’s Br. 56. Rule 611(a)

(Mode and Order of Examining Witnesses and Presenting

Evidence) requires that the testimony must be supported

by evidence already admitted. See United States v. Milkie-

wicz, 470 F.3d 390, 395–98 (1st Cir. 2006) (noting that

“summary chart [under Rule 611(a)] . . . must be linked to

evidence previously admitted and usually is not itself ad-

mitted into evidence”). Furthermore, Rule 703 (Bases of

An Expert’s Opinion Testimony) is only available to expert

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

witnesses.

See Fed. R. Evid. 703; see also United States v.

DeSimone, 488 F.3d 561, 576–77 (1st Cir. 2007) (holding no

abuse of discretion in admitting an expert’s summary chart

under Rule 703). Because Mr. Bokhart’s testimony was not

based on evidence in the record and he testified as a fact

witness, his testimony was not admissible under these

rules either.

Alifax’s cited cases are also distinguishable. For exam-

ple, two of these cases are inapposite because they involve

a district court’s finding under Rule 403. Appellant’s Br.

62–63; see Espeaignnette v. Gene Tierney Co., 43 F.3d 1, 5–8

(1st Cir. 1994); United States v. Frabizio, 459 F.3d 80, 90–

91 (1st Cir. 2006). Here, the district court did not exclude

Mr. Bokhart’s testimony under Rule 403; rather, it found

that “[p]ermitting the jury’s damages award to stand would

constitute a miscarriage of justice” in light of Bokhart’s tes-

timony. New Trial Order at 582; see Jennings, 587 F.3d at

436 (“[T]he district court has the power and duty to order

a new trial whenever, in its judgment, the action is re-

quired in order to prevent injustice.”).

In sum, we conclude that the district court did not

abuse its discretion in granting a new trial on damages.

Next, Alifax challenges the district court’s decision to

exclude the alleged signal acquisition trade secret from the

new trial. Appellant’s Br. 47–50; see Order on New Trial

Scope and Patent Fees at *2–3. Alifax argues that even if

the district court was correct to exclude the alleged signal

acquisition trade secret from the jury after close of the

We do not address Alifax’s challenge to the district

court’s Daubert decision excluding Mr. Bokhart’s expert

testimony because Alifax only raised this issue in a foot-

note in its opening brief. Appellant’s Br. 41–42 n.9. See

Aquinnah/Gay Head Cmty. Assoc., Inc. v. Wampanoag

Tribe of Gay Head (Aquinnah), 989 F.3d 72, 80 (1st Cir.

2021) (finding argument addressed in a single footnote in

opening brief forfeited).

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original trial, that does not justify excluding the alleged

signal acquisition trade secret entirely from the new trial

because the questions at the end of the original trial and at

summary judgment before trial are different. Appellant’s

Br. 47. Moreover, Alifax asserts the district court’s exclu-

sion of the alleged signal acquisition trade secret was an

improper application of partial retrial law. Id. at 48. We

disagree.

The district court did not misapply partial retrial case

law. Order on New Trial Scope and Patent Fees at *2–3.

After explaining that it had already ruled that the evidence

at the original trial could not support a finding that the al-

leged signal acquisition trade secret was misappropriated,

it concluded that this issue “ha[d] been properly and con-

clusively resolved.” Id. at *2–3 (cleaned up) (citing

Drumgold v. Callahan, 707 F.3d 28, 46 (1st Cir. 2013)).

The court further found the remaining issue of the conver-

sion algorithm is “so distinct and separable from the signal

acquisition claim,” the trial on that issue alone would not

result in injustice. Id. (cleaned up) (citing Drumgold, 707

F.3d at 46). Because we find that the district court did not

err in precluding jury consideration of the alleged signal

acquisition trade secret, see supra Section II.B, we agree

with the district court’s analysis here.

Neither of Alifax’s cited cases support Alifax’s argu-

ment that an issue must be retried even if it was properly

removed from the jury in the first trial. See Appellant’s

48–49 (citing Gasoline Prods. Co. v. Champlin Ref. Co., 283

U.S. 494, 500 (1931); Drumgold, 707 F.3d at 46–47). Ali-

fax’s cited case law does not support its argument that ex-

cluding the alleged signal acquisition trade secret from

consideration by the jury—a decision subject to the same

standard as judgment as a matter of law, see Wilson v. Mar-

itime Overseas Corp., 150 F.3d 1, 10 (Fed. Cir. 1998)—was

not a proper and conclusive way of resolving this claim.

Instead, “the court, by granting only a partial new

trial, cannot exclude from the jury an issue on which it has

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

Alifax also presents no evidence that the alleged signal ac-

quisition trade secret is not “so distinct and separable”

from the conversion algorithm trade secret that a trial on

that issue alone would lead to injustice, so as to require a

retrial. Drumgold, 707 F.3d at 46. Because we find that

the district court did not misapply partial retrial law, we

find no error in its decision precluding Alifax from present-

ing the alleged signal acquisition trade secret at the new

trial. Order on New Trial Scope and Patent Fees at *2–3.

Lastly, Alifax challenges the district court’s decision

precluding Alifax from seeking compensatory damages at

the new trial. Appellant’s Br. 37–40; see Order Precluding

Damages at *1–3. Alifax argues that the district court

abused its discretion because it mistakenly assumed that

Mr. Bokhart’s testimony was essential to the case when it

had presented other available avenues for introducing evi-

dence. Appellant’s Br. 38. Cross-Appellants respond that

Mr. Bokhart was Alifax’s sole damages witness and that

the district court properly precluded Alifax from offering

new damages witnesses, testimony, or theories on retrial.

Cross-Appellants’ Principal & Resp. Br. 28. We agree with

Alifax.

At the outset, Alifax clarified at oral argument that it

does not intend for Mr. Bokhart to serve as its damages

witness in the new trial, unless the alleged signal acquisi-

tion trade secret would be included in the new trial. Oral

Arg. at 08:46–10:11. Rather, it seeks to introduce Alcor’s

sales record of iSED devices and accessories through other

fact witnesses already disclosed in the pretrial memoranda

or to introduce Alcor’s financial statements already identi-

fied on the trial exhibit list. See Appellant’s Br. 38–39.

Thus, the crux of the issue on appeal is whether the district

not yet passed” unless “the circumstances would justify a

judgment as a matter of law on an issue.” 11 Charles A.

Wright & Arthur R. Miller, Federal Practice and Procedure

§ 2814 (3d ed. 2022).

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court abused its discretion in finding that “the only dam-

ages witness disclosed by Alifax was [Mr.] Bokhart,”

thereby precluding the damages theory altogether. Order

Precluding Damages at *2–3.

The finding that Mr. Bokhart was the sole damages

witness is not supported by the record. At least some of the

fact witnesses that Alifax proposes to call at the new trial

for damages are listed in the pretrial memorandum. Com-

pare J.A. 18481 (Alifax’s brief at the district court identify-

ing Ms. Rossetto, Dr. Galiano, Mr. Duic, Mr. Frappa, Mr.

Ruggeri, Mr. Sacchetti and/or Ms. Ruggeri as potential wit-

nesses) with J.A. 10477 (Alifax’s pretrial memorandum

identifying Mr. Duic, Mr. Frappa, Dr. Galiano, Ms. Ros-

setto, Mr. Ruggeri, and Mr. Sacchetti as potential wit-

nesses). Likewise, at least some documents Alifax seeks to

present for damages were also listed in Alifax’s pretrial ex-

hibit list attached to its pretrial memorandum. Compare

J.A. 18480 (identifying Trial Exhibit 173, J.A. 15957–64)

with Exhibit A to Alifax’s Pretrial Memorandum at 6, Ali-

fax Holding SPA v. Alcor Sci. Inc., No. 1:14-cv-00440-WES-

LDA (D.R.I. Mar. 15, 2019), Dkt. 226-1. To the extent that

the district court’s finding was based on an understanding

that Alifax’s fact witness were disclosed for the liability

phase only, this reasoning is not supported because there

was no requirement for the parties to distinguish between

possible damages and liability witnesses in the pretrial

memoranda. See Oral Arg. at 42:15–33 (Cross-Appellants

conceding that parties were not required to designate wit-

nesses as damages or liability witnesses).

We further find the district court’s conclusion to be con-

tradicted by Alifax’s initial disclosures. Order Precluding

Damages at *2–3. Alifax’s initial disclosures list at least

some of the individuals it may seek to call as damages wit-

nesses at the new trial. See J.A. 15071–72 (identifying Mr.

Duic, Dr. Galiano, Mr. Frappa, Mr. Ruggeri, and Mr. Sac-

chetti). Furthermore, after Mr. Bokhart’s expert testimony

on damages was excluded mid-trial, the district court itself

suggested that Alifax could call on other fact witnesses,

such as Ms. Ruggeri, to present Alcor’s financial

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

spreadsheet as evidence of damages. J.A. 15312; see Oral

Arg. 42:03–14 (Cross-Appellants admitting the same).

Because the court erred in finding that Mr. Bokhart

was the only damages witness that Alifax disclosed, we

hold that it abused its discretion in precluding Alifax from

presenting any compensatory damages testimony or evi-

dence at the new trial from previously disclosed witnesses

who could address the damages issues. Order Precluding

Damages at *2–3; see AdjustaCam, LLC v. Newegg, Inc.,

861 F.3d 1353, 1358 (Fed. Cir. 2017) (“A district court

abuses its discretion when its ruling rests on . . . a clearly

erroneous assessment of the evidence.”) (citations omit-

ted).

On cross-appeal, Alcor first challenges the district

court’s denial of its motion for attorney’s fees under 35

U.S.C. § 285. Cross-Appellants’ Principal & Resp. Br.

57–58; see also id. at 59–65. Alcor argues that Alifax knew

prior to suit that Alcor’s iSED device did not fall within the

scope of the patent claims and that Alifax failed to obtain

a claim construction that would support its infringement

theory, yet still proceeded to trial with no viable infringe-

ment theory. Id. at 59. Alcor further contends that these

facts show that Alifax did not have good faith in pursuing

its patent infringement claims and misrepresented its in-

fringement theory as a literal infringement theory. Id. at

60–63. Alcor also argues that the district court abused its

discretion in relying on Medtronic Nav., Inc. v. Brain LAB

Medizinische Computersysteme GmbH, 603 F.3d 943, 954

(Fed Cir. 2010) to arrive at its conclusion without discuss-

ing the Octane factors. Id. 64–65. We disagree.

Alifax additionally argues that the district court

erred in requiring it to present expert testimony on dam-

ages. Appellant’s Br. 37; see Order Precluding Damages at

*3 & n.4. Because we do not agree with this reading of the

district court’s opinion, we do not separately address this

argument.

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Section 285 of the Patent Act allows a district court, in

an exceptional case, to award reasonable attorney’s fees to

the prevailing party. 35 U.S.C. § 285. “District courts may

determine whether a case is ‘exceptional’ in the case-by-

case exercise of their discretion, considering the totality of

the circumstances.” Octane Fitness, LLC v. ICON Health

& Fitness, Inc., 572 U.S. 545, 554 (2014). Under a similar

provision of the Copyright Act, among the nonexclusive fac-

tors that courts have considered relevant to this determi-

nation are “frivolousness, motivation, objective

unreasonableness (both in the factual and legal compo-

nents of the case) and the need in particular circumstances

to advance considerations of compensation and deter-

rence.” Id. at 554 n.6 (citing Fogerty v. Fantasy, Inc., 510

U.S. 517, 534, n.19 (1994)).

The district court did not abuse its discretion because

it correctly found that Alifax’s patent claims “were not ex-

ceptional” and properly considered arguments raised by Al-

cor. Order on New Trial Scope and Patent Fees at *4–5.

The district court rejected Alcor’s argument that “Alifax

pulled a bait and switch regarding its theory of patent in-

fringement,” id. at *4, and instead found that “the evidence

shifted between summary judgment and trial.” Id. at *5.

For example, it explained that its claim construction order

was not inconsistent with Alifax’s infringement position

and that it rejected Alcor’s similar argument on summary

judgment. Id. at *4; see Summary Judgment Order, at *4

(noting Alcor’s argument depends “upon reading limita-

tions into the claims that do not exist”). The court further

correctly explained that Alifax’s infringement position was

supported by its expert testimony, but the expert testified

inconsistently at trial. Order on New Trial Scope and Pa-

tent Fees, at *5; see J.A. 14227–28 (relevant expert testi-

mony). The court thus did not err in concluding that Alcor

had not shown that Alifax misrepresented its evidence to

the court. See Order on New Trial Scope and Patent Fees

at *4–5. On appeal, Alcor simply asks this court to reweigh

the evidence based on the same arguments it presented at

the district court. See Cross-Appellants’ Principal & Resp.

Br. 60–63. Because “[w]e do not and should not reweigh

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evidence or make factual findings anew on appeal,” we re-

ject Alcor’s argument. Impax Lab’ys Inc. v. Lannett Hold-

ings Inc., 893 F.3d 1372, 1382 (Fed. Cir. 2018) (citation

omitted); see Bayer CropScience AG v. Dow AgroSciences

LLC, 851 F.3d 1302, 1307 (Fed. Cir. 2017) (declining to “re-

weigh evidence in a manner inconsistent with . . . abuse of

discretion” standard).

Additionally, we are not persuaded that the district

court improperly relied on Medtronic. Cross-Appellants’

Principal & Resp. Br. 64. In Medtronic, we held that the

denial of summary judgment can be “an indication that the

party’s claims were objectively reasonable and suitable for

resolution at trial,” unless there was a misrepresentation

to the court. 603 F.3d at 954. The district court correctly

found that the denial of Alcor’s summary judgment motion

on patent infringement indicates that Alifax’s patent

claims were “suitable for resolution at trial.” Order on New

Trial Scope and Patent Fees, at *5. Because the court also

properly found Alifax did not misrepresent its patent in-

fringement theory, Medtronic squarely applies and the dis-

trict court’s reliance on this case was proper.

We further are not persuaded by Alcor’s argument that

the court did not engage in any Octane factors analysis.

Cross-Appellants’ Principal & Resp. Br. 65. The court dis-

cussed the substantive strength of Alifax’s position and

whether the manner in which it was litigated was unrea-

sonable. See Order on New Trial Scope and Patent Fees at

*4–5. This discussion closely follows the analysis in Oc-

tane. 572 U.S. at 554 & n.6. Therefore, the district court

did not abuse its discretion in finding that this case was

not exceptional.

Lastly, Alcor argues that the district court abused its

discretion in denying its motion for attorney’s fees as to Ali-

fax’s copyright infringement claim under 17 U.S.C. § 505.

Cross-Appellants’ Principal & Resp. Br. 66–67. Alcor ar-

gues that the court abused its discretion in finding that Ali-

fax’s copyright infringement claim was not objectively

weak because Alifax never identified the content of the

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

copyrighted work or presented a cognizable damages the-

ory for its copyright claim. Id. at 67–68. Alcor also con-

tends that the district court erred by failing to consider

certain Fogerty factors, including deterrence. Id. at 70–71.

We disagree.

For a court to award attorney’s fees under 17 U.S.C.

§ 505, “the prevailing party need only show that its oppo-

nent’s copyright claims or defenses were objectively weak.”

Latin Am. Music, 642 F.3d at 91 (citation and internal quo-

tation marks omitted). A finding of objective weakness

may turn on “frivolousness, motivation, objective unrea-

sonableness (both in the factual and in the legal compo-

nents of the case) and the need in particular circumstances

to advance considerations of compensation and deter-

rence.” Fogerty, 510 U.S. at 534 n.19. The “district court

has discretion to decline to award attorney’s fees even

when the plaintiff’s copyright infringement case is quite

weak.” Airframe Sys., 658 F.3d at 109.

First, the court correctly held that Alifax’s purported

failure to present the entirety of the copyrighted source

code had little bearing on the overall strength of its claim.

Order on Copyright Fees at *3; see Airframe, 658 F.3d at

109 (affirming denial of attorney’s fees despite plaintiff not

establishing the content of copyrighted source code). More-

over, as the district court explained, one of the reasons that

Alifax was unable to succeed on its copyright claim was be-

cause Alifax’s expert “failed to revise his opinion as the fac-

tual circumstances became more refined.” Order on

*1–2; Daubert Decision on Trade Secret at 171–72 (“The

khart’s damages testimony.”). Failure of an expert to re-

vise his damages opinion as the case progresses has little

to do with the overall strength of Alifax’s case on the mer-

its. We therefore reject the argument that Alifax’s failure

to disclose copyrighted source code or to provide evidence

of damages at trial should have compelled the district court

to find Alifax’s claim to be objectively weak.

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Second, we are not persuaded that the district court

abused its discretion by failing to properly consider the

Fogerty factors. Cross-Appellants’ Principal & Resp. Br.

70–71. Regarding frivolousness and motivation, the court

explicitly rejected the argument that “the claim was frivo-

lous or unreasonable,” and found that “nothing in the rec-

ord indicat[es] that Alifax brought this claim with an

improper motivation.” Order on Copyright Fees at *4. The

court’s finding is supported by the record: Alifax consist-

ently argued throughout the litigation that Defendants

took Alifax’s source code without permission. Based on its

argument, the court denied Alcor’s summary judgment mo-

tion on copyright infringement. See id. at *3; Summary

Judgment Order at *9–11. Additionally, the district court’s

finding that Alifax’s copyright claim “fell away” due to the

damages expert’s failure to revise its opinion supports the

court’s conclusion that there was no improper motivation.

Daubert Decision on Trade Secret at 171–72; see Daubert

Decision on Copyright at *1–2; New Trial Order at 558. Be-

cause the district court correctly rejected the argument as

to motivation, it was not an abuse of discretion to find there

to be “no need to compensate Alcor nor to deter Alifax.” Or-

der on Copyright Fees at *4.

Therefore, we hold that it was not an abuse of discre-

tion for the district court to deny attorney’s fees as to Ali-

fax’s copyright infringement claim.

III. CONCLUSION

We have considered the parties’ remaining arguments

and find them unpersuasive. For the foregoing reasons, we

affirm the district court’s exclusion of the alleged signal ac-

quisition trade secret from jury consideration at the origi-

nal trial and the new trial; reverse the district court’s grant

of a new trial as to the liability of the conversion algorithm

trade secret and direct the district court to reinstate the

jury verdict on this issue; affirm the district court’s grant

of a new trial on damages for misappropriation of the con-

version algorithm trade secret; reverse the district court’s

decision to preclude Alifax from presenting evidence and

witnesses on compensatory damages at the new trial; and

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ALIFAX HOLDING SPA v. ALCOR SCIENTIFIC LLC

remand for a new trial on damages consistent with this

opinion. We also affirm the denials of Alcor’s motions for

attorney’s fees relating to its patent and copyright infringe-

ment claims.

AFFIRMED-IN-PART, REVERSED-IN-PART AND

REMANDED

COSTS

No costs.

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