United States District Court, D. Minnesota
Patrick R. Martin and Stephanie J. Willing, Ogletree,
Deakins, Nash, Smoak & Stewart, P.C., and Rodney A.
Harrison, Ogletree, Deakins, Nash, Smoak & Stewart, P.C.,
Patrick D. Boyle, (for Defendant).
REPORT AND RECOMMENDATION
N. LEUNG, UNITED STATES MAGISTRATE JUDGE
matter is before the Court, United States Magistrate Judge
Tony N. Leung, on Plaintiff's Motion for Temporary
Restraining Order and/or Preliminary Injunction, (ECF No. 8),
and Defendant's Motion to Dismiss or to Transfer Pursuant
to Fed.R.Civ.P. 12(b)(2) and 28 U.S.C. § 1406(a), (ECF
No. 28). These motions have been referred to the undersigned
magistrate judge for a report and recommendation to the
Honorable Michael J. Davis, United States District Judge for
the District of Minnesota, pursuant to 28 U.S.C. § 636
and Local Rule 72.1. (ECF Nos. 12, 31). Following a hearing,
the parties filed a Stipulated Permanent Consent Injunction,
Order, and Judgment. (ECF No. 40). Based on all the files,
records, and proceedings herein, and for the reasons set
forth below, this Court recommends that Defendant's
motion to dismiss be denied and the parties' stipulation
Sightpath Medical, LLC (“Sightpath”) filed suit
on January 20, 2017, alleging a breach of contract claim
against Defendant Benjamin Kohler (“Kohler”). In
short, Sightpath asserts Kohler has failed to abide by the
terms of a non-competition, non-solicitation, and
non-disclosure agreement by working for Carl Zeiss Meditec,
Inc. (“Zeiss”). On February 2, 2017, Sightpath
moved for a temporary restraining order or preliminary
injunction against Kohler prohibiting him from working for
Zeiss. Kohler opposes Sightpath's motion, and also filed
a motion seeking to dismiss or transfer this action on
improper venue grounds. The parties have submitted memoranda
supporting their arguments and the Court held a hearing on
February 28, 2017. (ECF No. 39). The parties then agreed to a
resolution of this proceeding. (ECF No. 40).
Sightpath and its Confidential Information
is a Minnesota company that provides mobile ophthalmic
equipment to healthcare facilities and ophthalmic surgeons.
(Decl. of Dan Robins, ¶¶ 2-4, ECF No. 13; Compl.
¶ 5, ECF No. 1). This equipment uses lasers by which
doctors perform cataract and refractive surgeries. (Robins
Decl. ¶ 3; Compl. ¶ 6). Sightpath does not
manufacture the equipment it provides, but instead purchases
it from manufacturers such as Advanced Medical Optics and
Alcon LenSx, Inc. (Robins Decl. ¶ 6; Aff. of Benjamin
Kohler in Opp. to TRO Mot. ¶¶ 3-4 (hereinafter
“Kohler TRO Aff.”), ECF No. 22; Compl. ¶
10). Sightpath conducts business “throughout the United
States.” (Robins Decl. ¶ 5). Along with the
surgery equipment, Sightpath provides supplies as well as
personnel who assist the surgeons during the procedure.
(Robins Decl. ¶¶ 4, 7-10; Compl. ¶¶ 7-8).
competes with other mobile equipment providers, such as
Vantage, Xygent, and Fortec. (Robins Decl. ¶ 13; Kohler
TRO Aff. ¶ 7; Compl. ¶ 11). Sightpath asserts that
it also competes with manufacturers of equipment, such as
Advanced Medical Optics, Alcon LenSx, and Zeiss, because it
needs to “persuade” its customers “to
continue to contract with [Sightpath] for mobile ophthalmic
solutions . . . as opposed to purchasing laser equipment
directly” from manufacturers. (Robins Decl.
¶¶ 13-15; Decl. of Dan Decker Concerning TRO ¶
10 (hereinafter “Decker TRO Decl.”), ECF No. 38;
see Kohler TRO Aff. ¶¶ 5-6, 27; Compl.
¶¶ 11-13). As Sightpath asserts:
Although their delivery models differ, Sightpath and Zeiss
are directly competing for the same customers. A smaller
customer might decide to purchase instead of lease a laser,
and a larger customer might decide to lease instead of
purchase a laser. If a potential customer decides to lease a
laser from Sightpath, then it has no need to buy a similar
laser from Zeiss. Similarly, if a potential customer decides
to buy a laser from Zeiss, then it has no need to lease a
similar laser from Sightpath.
(Decker TRO Decl. ¶ 10).
“has developed confidential and propriety technology,
as well as confidential standard operating procedures and
practices, that enable the [Laser] Engineers and [Certified]
Surgical Technicians to safely transport, install, and
operate this complex equipment so that ophthalmic surgeons
can perform cataract and refractive surgeries at multiple
locations.” (Robins Decl. ¶ 12; Compl. ¶ 14).
has developed and/or acquired and maintained certain
confidential, proprietary, and trade secret information
regarding its business, operating procedures / processes, and
customers including, but not limited to . . . surgeon lists
along with their affiliated hospital contact information;
booked and completed procedures by surgeon and/or hospital;
surgeon and facility fee schedules, including discounts;
business and financial records, including vendor and supply
pricing; procedures and protocols, including standard
operating procedures for the installation, calibration,
validation, operation, de-installation, and transportation of
equipment, as well as treatment planning protocols and
medical device reporting procedures; training and educational
materials; continuing education programs and information for
surgeons; quality assurance and patient services program
materials; marketing plans; and network development programs.
(Robins Decl. ¶ 16; Compl. ¶ 14).
Kohler began working for Sightpath
as a Laser Engineer in March 2007, based out of Tennessee.
(Robins Decl. ¶ 22; Kohler TRO Aff. ¶ 9; Aff. of
Benjamin Kohler in Supp. of Mot. to Dismiss ¶ 5
(hereinafter “Kohler Venue Aff.”), ECF No. 24;
Compl. ¶ 20). When he was hired, Kohler signed a
Confidentiality, Non-Competition and Equipment Agreement with
TLC Vision (USA) Corporation, Sightpath's parent company.
(Robins Decl. ¶ 23, Ex. A; Compl. ¶ 20, Ex. A). On
September 1, 2011, Kohler was promoted to Senior Laser
Engineer, receiving an $8, 000 raise. (Robins Decl.
¶¶ 24- 25; Kohler TRO Aff. ¶¶ 9-10;
Compl. ¶ 21). In these engineer roles, Kohler
transported, installed, and de-installed lasers at surgery
sites, including calibrating and programming the lasers, as
well as assisting the surgeon with the operation of the laser
during surgeries. (Robins Decl. ¶ 26; Kohler TRO Aff.
¶¶ 9-10; Compl. ¶ 21).
1, 2013, Kohler was promoted to New Technology Implementation
Specialist, receiving a $10, 000 raise. (Robins Decl.
¶¶ 27-28; Kohler TRO Aff. ¶ 11; see
Decker TRO Decl. ¶ 3; Compl. ¶ 22). Kohler
continued his previous engineer duties, but also established
Sightpath's training program, trained new engineers,
established a quality assurance program, and developed
protocols and standard operating procedures which Sightpath
deems confidential. (Robins Decl. ¶ 29; Kohler TRO Aff.
¶ 12; Compl. ¶ 22). Kohler also executed a new
Confidentiality, Non-Competition and Equipment Agreement with
Sightpath. (Robins Decl. ¶ 30, Ex. B; Decker TRO Decl.
¶¶ 2-4; Compl. ¶ 23, Ex. B). On March 16,
2015, Kohler was promoted to Mobile Operations Manager,
receiving a $7, 749.84 raise. (Robins Decl. ¶¶
31-32; Compl. ¶ 27). Kohler continued with all his
previous duties, but also supervised the engineers in his
territory and trained engineers. (Robins Decl. ¶ 33;
Kohler Venue Aff. ¶ 6; Compl. ¶ 28).
Confidentiality, Non-Competition and Equipment Agreement
(hereinafter “Confidentiality Agreement”) ...