Abatemarco v. Copytele, Inc., 608 F. Supp. 1024 (E.D.N.Y. 1985)

Polstein, Ferrara & Campriello, New York City by Robert Polstein, Austin V. Campriello, New York City, for plaintiff.

Satterlee & Stephens, New York City by Henry J. Formon, James F. Rittinger, New York City, for defendants CopyTele, Krusos and DiSanto.

PLATT, District Judge.

By an order to show cause with an affidavit of the plaintiff and exhibits annexed, plaintiff moves pursuant to Rule 65 of the Federal Rules of Civil Procedure for an order (i) enjoining each of the defendants from taking any action which would in any way interfere with (a) plaintiff's selling the 14,000 shares of CopyTele, Inc. stock that he owns, and (b) the transfer of the registered ownership of any of the 14,000 shares of CopyTele, Inc. stock owned by plaintiff to a third party; or, alternatively, (ii) permitting plaintiff to sell his 14,000 shares of CopyTele, Inc. stock and to place the proceeds of such sale in an interest-bearing account subject to the further order of this Court.

After the parties appeared on April 1 and 2, 1985, to argue the merits of plaintiff's motion, an evidentiary hearing was held on April 12, 15, and 16, 1985. Plaintiff testified in his own behalf and was also called *1025 as a witness. No other witnesses were called by the plaintiff or the defendants.

Plaintiff said that he was a "manufacturing engineer" without an engineering degree; that he had worked over the years for companies such as Burroughs, Sperry, Litton and Kollsman; and that he decided in 1979 that he wished to come back to Long Island and called the defendant Frank DiSanto with respect to the availability of a job; that as a result of such call in 1980 he went to work for Visual Sciences and that in August 1982 he started to work for the defendant CopyTele, Inc.; that in November 1982 he purchased 14,000 shares of CopyTele stock at 10 cents a share which was part of a sale of 390,000 shares of such stock to 17 individuals at such price; that the only restriction of which he was aware when he purchased the stock was that it was not "registered" under the Federal securities laws; that in October 1983 CopyTele had a public offering of its shares pursuant to a registration statement; that as a result of this public offering it became possible for him to utilize the provisions of Rule 144 promulgated under the Securities Act of 1933 to sell his CopyTele stock after he had held it for two years; that in December of 1984 three other individuals, G. Thomas Catherines, Allen J. Hammer and Georgia State Senator Haskew Brantley tried to sell their stock in CopyTele, and when the defendants refused to permit them to do so brought suit in this Court for an order permitting them so to do; and that in December 1984, pursuant to a subpoena, he testified at a hearing in connection with that suit that there was no agreement which prohibited the sale of the stock sold to the various individuals such as himself in the Fall of 1982 at 10 cents a share.

At the outset of the hearing in the case at bar, the attorneys for the defendants stipulated that they would not contest in this hearing the findings and conclusions in such prior hearing which are set forth in this Court's Memorandum and Order dated February 14, 1985, Catherines, et al. v. CopyTele, Inc., et al., 602 F. Supp. 1019 (E.D.N.Y.1985), and that the only issue for this Court's determination was whether the plaintiff at this juncture is an insider who was cognizant of facts "which are essentially extraordinary in nature and which are reasonably certain to have a substantial effect on the market price of the security if [the extraordinary facts are] disclosed." Securities and Exchange Commission v. Texas Gulf Sulphur Co., 401 F.2d 833, 848 (2d Cir. 1968).

On his return to work at CopyTele after testifying in the Catherines case before this Court, the defendants reduced plaintiff's salary, deprived him of the use of a company car and moved his office from the engineering and work areas to the executive and administration area, apparently in order to be sure that he would not directly or indirectly have access to any such facts or information of a sensitive, proprietary and confidential nature intended to be available only to the corporation and not the public. In addition, plaintiff was deprived of a telephone and the locks and combinations permitting access to the engineering and work areas were changed so that he might not walk into the same without a proper escort.

On April 1, 1985, plaintiff resigned his position with CopyTele and is no longer an employee thereof.

Plaintiff has testified, and his testimony is uncontradicted, that he had no access to or knowledge of any information which is not already in the public domain.

CopyTele's product, still in the research and development stage, which allegedly contains material information which precludes its present and former employees, including plaintiff, from trading in its stock, is a flat-panel display which will "have a built-in memory in the sense that the images created by the display do not have to be refreshed as do images produced by cathode ray tubes (`CRTs') and other commonly used display devices." Plaintiff's Exhibit 11, CopyTele's Form 10K for Fiscal Year ended 10/31/84 dated January 28, 1985. It was stipulated in the course of the hearing that no prototype of this system *1026 (called the CT-100 system) has yet been produced. The fact that no prototype has been produced has been noted in several recent publications which plaintiff introduced as exhibits, not for the truth asserted in them, but to confirm information asserted to be in the public domain. Kindel, et al., "Flat-Panel Display Remembers Images When It's Turned Off," Popular Science, August 1984 at 58 (Ex. 1) (a copy is annexed to this Memorandum and Order); Petre, "The Mystifying Business Behind a Magical Stock," Fortune, June 11, 1984 at 55 (Ex. 2); Andrew, "Heard on the Street: CopyTele's Stock Performs Like a Champion, Considering Firm Hasn't Closed a Single Sale," Wall St. J., Nov. 1, 1984 at 63 (Ex. 3); Dorfman, "SEC is Probing CopyTele," N.Y. Daily News, Nov. 7, 1984 (Ex. 4); Marcial, "The Year's Most Overpriced Stock?," Business Week, April 15, 1985 at 144 (Ex. 12); and Benway, "Magnificent Obsession? Don McShane Has a Thing for CopyTele," Barron's, April 15, 1985 at 13 (Ex. 13).

In defendants' aforesaid Form 10K it is stated that:

"The company has been developing a suspension consisting of submicron particles of suitable color pigments suspended in solvents. Each of these particles is surrounded by a charge control and a wetting agent which essentially coat the particle and enable it to retain an electrical charge and remain in suspension. The company has been mainly using a yellow pigment which is suspended in a dark dye solution. The company has used various fluids in its test panels and is continuing its efforts to improve the characteristics of the fluid, including other color combinations.

"Additional development of the structure, chip carrier drive system and fluid is required in connection with the completion of the flat-panel display. Upon completion of these efforts, if successful, the flat-panel display must be tested and modified as required prior to manufacturing."

The key men in the company and the co-inventors of the system are the defendants Krusos and DiSanto, the latter of whom was interviewed by Popular Science magazine writers in preparation for an article on the system which appeared in the August 1984 edition. Pl.Ex. 1. Mr. DiSanto is quoted in that article as saying, among other things, about perfecting electrophoretic technology within the panel:

"It's sort of an art ... You need exactly the right balance in the specific gravity of the particles and the specific gravity of the fluid ...

"It's a true suspension ... You can leave those pigment particles in that solvent indefinitely, and the particles will never sink.

"The major problem is a tendency of the particles to attach to each other and form globs."

In the article, a "diagram" of the system is exhibited with a caveat at the foot thereof which states that "CopyTele has made some technical changes in this design." Plaintiff testified at the hearing that at the time of this interview the defendant had an early working model of the display but that the photo area of such model was only 2" × 2" and that the scaling up of this photo area presented substantial problems which to his knowledge have not yet been over-come.

There are other aspects of the system which CopyTele claims to be sensitive, confidential and proprietary but from all the evidence, including the uncontradicted testimony of the plaintiff on the subject, the stumbling block between success and failure in making electrophoresis (as the process is called) work is to prevent the particles from tending to glom together, which apparently ruins the display.

In a very recent article on the subject, dated April 15, 1985, Barron's (which but for the fact that it confirms the statements attributed to Mr. DiSanto above, might not be admissible herein) reported that:

"Several companies, Matsushita and Xerox among them, have tried to make electrophoresis work, only to give up on *1027 it long ago. And Matsushita invented it. The ink particles tend to glom together, ruining the display. Millions and millions of dollars have been thrown at the effort. `Every major lab in the U.S. and Japan has attempted it', says Dr. Christopher King, a scientist with Planar Sytems, a Tektronix spinoff working on another approach: electroluminescent flat panels."

Ex. 13 at 19 (emphasis added).

There is no doubt but that the plaintiff knows that the stumbling block is in the development and improvement (i) of a solution or (ii) in the composition of the panel or (iii) in the chip carrier drive system or (iv) a combination of two or more of the same, so as to eliminate the tendency of the particles to glob or glom, but as indicated above, this is public knowledge.

While it is true that in June of 1983, as evidenced by defendant's Exhibit C, which he prepared at that time, plaintiff had some exposure or involvement in the composition of the panel, his uncontradicted testimony is that he had no knowledge, exposure to or involvement with the development or improvement of the solution. His uncontradicted testimony and other evidence also make it clear that subsequent to June of 1983, there were changes in the design and composition of the panel as to which he has no knowledge.

Plaintiff readily agreed that he was aware of and involved in the development and alleged improvement of the flat-panel chip carrier drive system from one which involved 32 drivers to one which involves 64 drivers but testified, again without contradiction, that a 64-drive carrier was a catalogue or shelf item and that any experienced engineer could make the conversion from a 32 to a 64-drive carrier without any difficulty.^[1]

Defendant claims that because plaintiff designed and constructed the framework necessary for the mounting of the display panel and the creation of electrical contacts and designed and drew various other parts of the system (although concededly he never prepared designs or drawings for the proposed CT-100 panel), he necessarily falls within the "tainted" insider category.

The test, however, is not as defendant argues whether plaintiff designed, drew and had knowledge of all of the interfacing and interoperative parts with the panel, nor whether he was privy to the fact that the system had not yet been perfected in one or more significant aspects (as indicated above, the public is fully aware of this), but rather whether he is cognizant of facts "which are essentially extraordinary in nature and which are reasonably certain to have a substantial effect on the market price of the security if [the extraordinary facts are] disclosed." Securities and Exchange Commission v. Texas Gulf Sulphur Co., 401 F.2d at 848.

There is no question at this point about the fact that the hoped for "technological breakthrough" has not yet been achieved and this fact is no secret. It is widely known. Moreover, it is not sufficient to argue that plaintiff, regardless of whether he has knowledge of the possible "break-through", must be prohibited from selling because one or more other owners of the stock might misconstrue his action as a former employee as evidence of lack of capacity of the defendant successfully to make its product. Any such per se rule would effectively prohibit all officers and employees of public companies from trading in their company's stock if any research *1028 and development work was being done by the company. The law, to date, has not gone so far.

Given the evidence presented to us at the hearing, and post-trial memoranda submitted by both parties, it seems clear that the plaintiff is not in the possession of or aware of any such facts and hence may not be foreclosed from investing in or selling stock in his former company merely because he may be more familiar with the company's general operations than are outside investors. Id.

Accordingly, plaintiff's motion is granted to the extent that he is hereby permitted to sell his 14,000 shares of CopyTele stock and to place the proceeds of such sale in an interest-bearing escrow account pending the outcome of the trial on the merits of the other issues in this case and subject to the further order of this Court. Defendant is given two business days from the date of this Order to obtain a stay of this Order from the Court of Appeals.

SO ORDERED.

*1029

*1030

[1] Mr. DiSanto made the decision to change from a 32 to a 64-driver carrier system and to place the order for the same with Texas Instruments. Moreover, in January of this year, Mr. Lewit took over the development of the 64-driver system and thereafter plaintiff did no further work on the same.

The plaintiff's uncontradicted testimony throughout the proceeding was that during the course of his employment with CopyTele, he prepared designs and drawings for all parts of the system except the panel assembly which, as indicated above, was the crucial or key part of the system and with which he repeatedly said he had no familiarity or knowledge. He identified the individuals who had such knowledge to be Messrs. Krusos, DiSanto, Lespina, Schnarde and Dykstra.