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UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION AT DAYTON

LIST INDUSTRIES, INC.,

 Plaintiff,

v.

DEAN SCOTT UMINA, et al.,

 Defendants.

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Case No. 3:18-cv-199 

Judge Thomas M. Rose

______________________________________________________________________________

ENTRY AND ORDER DENYING MOTION FOR SUMMARY JUDGMENT OF 

DEFENDANT DEAN SCOTT UMINA (DOC. NOS. 51 AND 52) AND DENYING 

MOTION FOR SUMMARY JUDGMENT OF DEFENDANT TOP TIER 

STORAGE PRODUCTS, LLC (DOC. NO. 53)

______________________________________________________________________________

Plaintiff List Industries, Inc. (“List”) brings three claims in this diversity case: (1) violation 

of the Ohio Uniform Trade Secrets Act (“OUTSA”); (2) breach of contract; and (3) spoliation. 

(Doc. No. 35.) All three claims are brought against Defendant Dean Scott Umina (“Umina”), 

while only the first and third are brought against Defendant Top Tier Storage Products, LLC (“Top 

Tier”). Pending before the Court are two related motions for summary judgment, one filed by 

Umina (Doc. Nos. 51 and 52) and the other filed by Top Tier (Doc. No. 53) (collectively, the 

“Motions”).1In the Motions, the Defendants move for an order granting summary judgment on 

all claims against them, pursuant to Federal Rule of Civil Procedure 65. In response, List argues 

that the Court must deny the Motions because there are disputed issues of material fact. As 

explained below, the Court finds that all of the claims survive, although certain documents cannot 

support the trade secret claim. The Court DENIES the Motions.

1 Throughout this order, the Court will refer to Umina and Top Tier, collectively, as the Defendants.
2

I. BACKGROUND 2

A. List Acquires the Midwest Entities in 2010

List was founded in approximately 1936 and, among other things, is involved in the 

business of manufacturing and distributing storage lockers and other storage products. (Doc. No. 

49 at PageID 2184.) Similarly, the Midwest Entities3assembled and sold lockers and other 

industrial storage products. (Doc. No. 35 at PageID 409; Doc. No. 46 at PageID 630.) Umina was 

one of the owners of the Midwest Entities. (Doc. No. 46 at PageID 632.) Thom Champa, List’s 

Senior Vice President of Sales and Marketing, saw value in List acquiring the Midwest Entities’ 

customer base because the Midwest Entities “were long established” on the industrial side of the 

business in Indiana, Kentucky, Pennsylvania, and Illinois, and had “expanded their customer base 

coast to coast.” (Doc. No. 50 at PageID 2700, 2705-06.)

In 2010, List and the Midwest Entities executed a Purchase and Sale Agreement (the 

“PSA”). (Doc. No. 49-2.) The PSA became fully executed on August 13, 2010. (See id. at PageID 

2240, 2242-43.) Through the PSA, List (the Buyer) purchased the real property and substantially 

all of the assets of the Midwest Entities (the Sellers). (Id.) Among other provisions and exhibits, 

the PSA states the following:

... RECITALS ...

Buyer desires to purchase and Sellers desire to sell to Buyer, (i) the Real Property, 

and (ii) all or substantially all of the assets of the Business, as more particularly 

described herein, in accordance with and subject to the terms, conditions and 

provisions hereinafter set forth. 

...

2 For purposes of resolving the Motion, the recitation in the “Background” section includes undisputed facts and 

otherwise assumes the evidence of the non-moving party as true and draws all reasonable inferences in the nonmoving 

party’s favor, as is appropriate at this stage. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S. Ct. 2505, 91 

L. Ed. 2d 202 (1986); Tolan v. Cotton, 572 U.S. 650, 660, 134 S. Ct. 1861, 188 L. Ed. 2d 895 (2014).

3 Specifically, the Midwest Entities for purposes of this order are: Midwest Factory Warehouse, Inc.; FamousLockers, 

LLC; Pinnacle Storage Products, LLC; and SUDS Ventures, LLC.
3

1.2 The Assets.

1.2.1 The assets to be sold by Seller to Buyer pursuant to this Agreement consist 

of the following:

1.2.2 All or substantially all of the assets owned by Seller in connection with the 

ownership and operation of the Business, as set forth on Exhibit C-1 attached hereto 

(the ‘Assets’). ...

The foregoing, with the exception of the assets (‘Excluded Assets’) set forth on 

Exhibit C-2 attached hereto, is hereinafter collectively referred to as the ‘Assets’. 

The Real Property and the Assets are collectively referred to as the ‘Property’. 

...

4.2.1 Assets. Seller shall transfer good title to the Assets to Buyer, by a duly 

executed Bill of Sale (the ‘Assets Bill of Sale’) with warranties of title, free and 

clear of all liens, encumbrances, security interests and adverse claims of any kind 

or nature whatsoever. 

...

9.1 Procedure. Seller and Buyer shall cause the following to occur at the Closing 

on the Closing Date: ... (b) SUDS and/or each Seller, as applicable, shall as of the 

Closing Date, execute and deliver to Buyer (i) the Personal Property Bill of Sale, 

(ii) the Assets Bill of Sale ...

....

(Id. at PageID 2225, 2226, 2228, 2236 (emphasis in original).) Exhibit C-1 to the PSA, under the 

heading “Assets,” states, in part:

3. All equipment, orders not yet shipped, contracts, computer software, company 

names, tradenames, copyrights, marketing materials, patents, websites and other 

intellectual property of each Seller; a schedule thereof to be provided by Seller to 

Buyer 5 days from the Effective Date and updated at Closing.

(Id. at PageID 2249.)

The Bill of Sale between List (as Assignee) and the Midwest Entities (as Assignor), which 

is referenced in Section 4.2.1 of the PSA, is dated October 11, 2010 and states, in part:

NOW, THEREFORE, ... Assignor does hereby ASSIGN, TRANSFER, SET 

OVER, and DELIVER to Assignee, its successors and assigns all of Assignor’s 

right, title, estate and interest, if any, in and to the following items (the ‘Assets’), 

as more particularly set forth on Exhibit ‘A’ attached hereto made a part hereof ...
4

EXHIBIT ‘A’

... 3. All equipment, contracts, computer software, marketing materials, patents, 

websites and other intellectual property of each Seller; a schedule of the equipment 

is set forth on Exhibit ‘C’ attached hereto and made a part hereof. ...

(Doc. No. 49-4 at PageID 2265, 2267.) Exhibit ‘C’ of the Bill of Sale includes the Midwest 

Entities’ servers, such as the POWEREDGE 600SC Server and the POWEREDGE Server SC420. 

(Id. at PageID 2276; Doc. No. 49 at PageID 2188.)

B. List Employs Umina for Six Months

The day after executing the Bill of Sale, Umina and List entered into an employment 

agreement (the “Employment Agreement”). (Doc. No. 49-3; see also Doc. No. 35-1.) Through 

the Employment Agreement, Umina agreed to become List’s employee, with a salary of $70,000 

over a six-month period, the potential for a bonus, and the possibility that List would renew the 

agreement after the initial six months at an increased annual salary. (Doc. No. 49-3 at PageID 

2259.)

The Employment Agreement between List (as Company) and Umina (as Employee) is 

dated October 12, 2010 and states, in part, the following:

7. Nondisclosure of Confidential Information Concerning Business. The 

Employee shall not at any time, whether during or after his Employment under this 

Agreement, either directly or indirectly, divulge[,] disclose, or communicate to any 

person, firm or corporation any information relating to the business or affairs of the 

Company which is confidential, proprietary, or not in the public domain. In the 

event of a breach of the provisions of this section, the Company shall be entitled to 

an injunction restraining the Employee from such disclosure.

...

9.1 ... Upon termination of employment, the Employee shall return all property, 

materials, files and any other Company owned information to the Company.

(Doc. No. 49-3 at PageID 2259, 2261.)

Umina’s employment with List only lasted for the initial six-month period, ending in April 
5

of 2011. (Doc. No. 46 at PageID 649.) Umina admitted during his deposition that, at some point 

while he was employed by List, he downloaded files. (Id. at PageID 649-50.) He testified that 

those files were downloaded from the servers at the Midwest Factory Warehouse onto a Seagate 

hard drive (the “Seagate Hard Drive”). (Id.; see also Doc. No. 51 at PageID 3080 (Defendants 

acknowledging that, on March 24, 2011, Umina copied documents stored electronically and used 

by the Midwest Entities); Doc. No. 63 at PageID 3784 (“Umina acknowledges copying 

information to his Seagate hard-drive in March 2011 before his brief employment stint with List 

ended”).) Umina admitted that those servers “were part of the purchase” and “after the sale were 

owned by List.” (Doc. No. 46 at PageID 650.) Umina also admitted that he purchased the Seagate 

Hard Drive after November 23, 2010, which was after execution of the PSA and the Employment 

Agreement. (Doc. No. 62-1 at PageID 3749; Doc. No. 49-2 at PageID 2240, 2242-43; Doc. No. 

49-3.)

The PSA had identified the Midwest Entities’ accounts receivables that existed at the time 

of closing as the (only) “Excluded Assets” in the purchase by List. (Doc. No. 49-2 at PageID 

2226, 2250; Doc. No. 49 at PageID 2186.) Umina explained: “I took documents that I felt that I 

needed to conclude [the remaining open business with the Midwest Factory Warehouse at the end 

of his employment with List] with our customers, accounts receivable, things of that nature.” (Doc. 

No. 46 at PageID 650.) In essence, he said that he took information “in order to wrap up or wind 

up” the four entities (i.e., the Midwest Entities) that had sold their assets to List. (Id.) However, 

Umina “didn’t know what [he] would need, so [he] didn’t pick the documents that [he] thought 

[he] might need,” resulting in him “basically download[ing] a drive of files.” (Id. at PageID 650-

51.) Umina could not remember whether he had asked anyone at List if it was okay for him to 

download that information from the servers and take it with him. (Id. at PageID 650.) 
6

C. Top Tier is Formed in 2016

Umina testified that, in March of 2011 while his employment with List was ending, he did 

not think that he might start another materials handling equipment company in the future. (Doc. 

No. 46 at PageID 651.) However, in late 2015, Todd Gillis, a former colleague of Umina, 

approached Umina about getting back into the storage locker business. (Id. at PageID 651.) Umina 

agreed, he helped to form Top Tier in February of 2016, and he became a Top Tier employee 

thereafter—running the company’s day-to-day operations. (Id. at PageID 651, 653.) Among other 

things, Umina hired former Midwest Entities employee, Kevin Krumholtz (“Krumholtz”), for Top 

Tier. (Id. at PageID 653-54.) Umina and Krumholtz began putting together a business plan for 

Top Tier—including finding customers and creating mailing lists of potential customers. (Doc. 

No. 47 at PageID 1619; Doc. No. 46 at PageID 627.) Umina contributed to putting together a 

customer list for Top Tier while it was in the process of being formed. (Doc. No. 47 at PageID 

1627.)

During the time that Top Tier was being formed, Umina had a hard drive that Krumholtz 

acknowledged might have contained some Midwest Entities files. (Doc. No. 47 at PageID 1623-

24.) Umina used some pictures for Top Tier that may have come from that hard drive. (Id.) 

Additionally, Umina admitted that he used information contained on the Seagate Hard Drive to 

identify potential customers for Top Tier’s products. (Doc. No. 62-1 at PageID 3762.) Umina 

also testified that he looked at four files from the Seagate Hard Drive in creating an email list for 

Top Tier and that he used some of the information from those four files. (Doc. No. 46 at PageID 

680.) He could not recall using any more than those four files to identify potential customers for 

Top Tier’s products. (Id.) Umina also acknowledged that he used a OneDrive cloud storage 

service in his work for Top Tier. (Doc. No. 46 at PageID 658-59.) He could not recall whether 

he ever uploaded any documents from the Seagate Hard Drive to that cloud storage service. (Id.) 
7

D. The Florida Lawsuit and Umina’s File Storage Device(s)

List soon found out about Top Tier’s existence. List’s counsel sent Umina a preservation 

letter dated July 1, 2016 (the “Preservation Letter”), which Umina received and read. (Doc. No. 

46-2; Doc. No. 46 at PageID 661.) Among other things, the Preservation Letter accused Umina 

of violating his agreements with List and provided “notice to retain and preserve any and all 

information that may be relevant to any forthcoming litigation.” (Doc. No. 46-2 at PageID 734.) 

On November 29, 2016, List filed a lawsuit against Top Tier, Umina, and another 

individual in Florida state court. (Doc. No. 51-5.) Among other claims, that Florida lawsuit 

included counts against Umina for breach of his employment agreement with List and for 

conversion. (Id.) A 2018 deposition of Umina in the Florida litigation included the following 

exchange:

Q. What other – now, this computer at home, is it the same computer you used at 

Midwest when you were – when it was your company or is it –

A. No.

Q. – a List computer?

A. No. It was a personal hard drive that I used. Back then we didn’t have a Cloud 

and I just used – I had a hard drive that I took files back and forth from work to 

home.

Q. You had like a portable hard drive?

A. Yes.

Q. What’s the brand of the portable hard drive?

A. I want to say Toshiba but I’m not a hundred percent sure.

Q. Okay. And where is this portable hard drive?

A. It’s at my home.

Q. All right. ... it’s critically important that you not overwrite, damage, destroy, 

modify the data on that hard drive, okay? Any questions? Is that clear?
8

A. I understand.

Q. In addition to – would all of the documents that you would have had in relation 

to your prior employment at Midwest Factory, would they be included on that 

portable hard drive?

A. To the best of my knowledge, yes.

(Doc. No. 33-2 at PageID 367-69.) 

On May 1, 2019, this Court ordered Defendants to provide List’s expert witness, Dr. 

Andrew T. Cobb (“Dr. Cobb”), with access to a hard drive in Umina’s possession and the laptop 

and desktop that Umina had identified as being used to access that hard drive’s contents. (Doc. 

No. 24.) Defendants did so, along with a USB flash drive. According to Dr. Cobb, he inspected 

and analyzed four devices belonging to Umina: Seagate Hard Drive; HP laptop; Dell desktop; and 

USB flash drive. (Doc. No. 62-4 at PageID 3774.) Dr. Cobb’s analysis revealed that Umina’s 

Seagate Hard Drive was accessed in 2016, 2017, and 2018, and revealed that the OneDrive cloud 

storage service was accessed by Umina’s laptop and desktop on 190 occurrences starting in 2017. 

(Id. at PageID 3775.) Dr. Cobb stated that his “opinions in this case do not foreclose the possibility 

that any particular file on the Seagate Hard Drive was accessed from either the Dell Desktop or 

HP Laptop.” (Id.)

Dr. Cobb’s analysis of the four devices also revealed the existence of a fifth device: a 

Toshiba USB device. (Doc. No. 62-4 at PageID 3774.) That Toshiba device is different from the 

Seagate Hard Drive. (Id.) However, Defendants deny that Umina ever possessed or used a 

Toshiba USB device. (See, e.g., Doc. No. 62-1 at PageID 3762; Doc. No. 46 at PageID 625.) 

Defendants assert that, during the 2018 deposition in the Florida litigation, “Umina mistakenly 

referred to the device as a Toshiba” when it was actually the Seagate Hard Drive. (Doc. No. 51 at 

PageID 3083.) 

Dr. Cobb also detected “a number of files” that were located on the Toshiba device and 
9

accessed from Umina’s desktop or laptop on October 14, 2016. (Doc. No. 62-4 at PageID 3774-

75.) This would have been more than three months after the date of the Preservation Letter. (Id.;

Doc. No. 46-2.) Dr. Cobb also determined that the Toshiba device was in use as far back as 2006. 

(Doc. No. 62-4 at PageID 3774, 3778.)

E. The Complaint and Motions

List filed this action on June 6, 2018. (Doc. No. 1.) On August 6, 2020, List filed its 

Amended Complaint (the “Complaint”) to include the spoliation claim. (Doc. No. 35.) On January 

21, 2021, Umina and Top Tier filed the Motions, in redacted form (Doc. No. 51) and unredacted 

form (Doc. Nos. 52, 53). In response, List filed a combined memorandum in opposition to the 

Motions (the “Opposition”) in redacted form (Doc. No. 62) and unredacted form (Doc. No. 61). 

Defendants then filed a joint Reply in support of the Motions (the “Reply”). (Doc. 63.) The 

Motions are fully briefed and ripe for review. 

II. LEGAL STANDARDS FOR SUMMARY JUDGMENT

Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment “shall be 

rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, 

together with the affidavits, if any, show that there is no genuine issue as to any material fact and 

that the moving party is entitled to a judgment as a matter of law.” Fed. R. Civ. P. 56(c). 

Alternatively, summary judgment is denied “[i]f there are any genuine factual issues that properly 

can be resolved only by a finder of fact because they may reasonably be resolved in favor of either 

party.” Hancock v. Dodson, 958 F.2d 1367, 1374 (6th Cir. 1992) (quoting Anderson v. Liberty 

Lobby, Inc., 477 U.S. 242, 250, 106 S Ct. 2505, 91 L. Ed. 2d 202 (1986)).

The party seeking summary judgment has the initial burden of informing the court of the 

basis for its motion and identifying those portions of the pleadings, depositions, answers to 

interrogatories, and admissions on file, together with the affidavits, that it believes demonstrate 
10

the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 

S. Ct. 2548, 91 L. Ed. 2d 265 (1986). The burden then shifts to the nonmoving party, who “must 

set forth specific facts showing that there is a genuine issue for trial.” Anderson, 477 U.S. at 250 

(quoting Fed. R. Civ. P. 56(e)). In opposing summary judgment, the nonmoving party cannot rest 

on its pleadings or merely reassert its previous allegations. It is not sufficient to “simply show that 

there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co., Ltd. v. 

Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986). Rule 56 “requires 

the nonmoving party to go beyond the [unverified] pleadings” and present some type of evidentiary 

material in support of its position. Celotex Corp., 477 U.S. at 324.

A party’s failure “to properly address another party’s assertion of fact as required by Rule 

56(c)” can result in the court “consider[ing] the fact undisputed for purposes of the motion.” Fed. 

R. Civ. P. 56(e). Additionally, “[a] district court is not ... obligated to wade through and search 

the entire record for some specific facts that might support the nonmoving party’s claim.” 

InterRoyal Corp. v. Sponseller, 889 F.2d 108, 111 (6th Cir. 1989). “The court need consider only 

the cited materials, but it may consider other materials in the record.” Fed. R. Civ. P. 56(c)(3).

In ruling on a motion for summary judgment, it is not the judge’s function to make 

credibility determinations, “weigh the evidence[,] and determine the truth of the matter, but to 

determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249, 255. In 

determining whether a genuine issue of material fact exists, the court must assume as true the 

evidence of the nonmoving party and draw all reasonable inferences in that party’s favor. Id. at 

255; Matsushita, 475 U.S. at 587; Tolan v. Cotton, 572 U.S. 650, 660, 134 S. Ct. 1861, 188 L. Ed. 

2d 895 (2014). However, the “mere existence of a scintilla of evidence in support of the”

nonmoving party is not sufficient to avoid summary judgment. Anderson, 477 U.S. at 252. “There 
11

must be evidence on which the jury could reasonably find for the plaintiff.” Id. The inquiry, then, 

is “whether reasonable jurors could find by a preponderance of the evidence that the” nonmoving 

party is entitled to a verdict. Id. 

III. ANALYSIS

As mentioned above, Umina and Top Tier seek summary judgment on all claims against 

them. 

A. Violation of the OUTSA (Count 1)

The first count in the Complaint is for violation of the OUTSA, which is found at Ohio 

Rev. Code §§ 1333.61 through 1333.69. (Doc. No. 35 at PageID 414-15.) Under Ohio law, 

“[a]ctual or threatened misappropriation [of a trade secret] may be enjoined,” and, subject to an 

exception, “a complainant in a civil action is entitled to recover for misappropriation” of a trade 

secret. Ohio Rev. Code §§ 1333.62(A), 1333.63(A). “Misappropriation” and “trade secret,” 

among other terms, are defined by statute. Ohio Rev. Code § 1333.61.

Defendants argue that “List cannot prove [1] it owned the documents at issue or [2] that 

Umina used or disclosed any alleged trade secrets.” (Doc. No. 51 at PageID 3077.) List responds 

that “[a]n issue of fact exists as to whether Defendants misappropriated List’s trade secrets.” (Doc. 

No. 62 at PageID 3736.) List also points out that Defendants do not dispute that Umina—who 

also served as Top Tier’s designated Rule 30(b)(6) deposition witness—is an agent for Top Tier 

and that any alleged use of trade secret information would have been for Top Tier’s benefit. (Id.; 

Doc. No. 59 at PageID 3266.)

Throughout its briefing, List blurs the lines between the files/information/documents that 

are relevant to each of its three separate claims. This is significant because the scope of what 

constitutes a “trade secret” for purposes of List’s trade secret claim is narrower than the scope of 

“information” subject to Umina’s Employment Agreement for purposes of List’s breach of 
12

contract claim and is different from the scope of “evidence” relevant to List’s spoliation claim. 

Some of List’s Opposition attempts to cast a very wide net in identifying the alleged trade 

secrets at issue. (See, e.g., Doc. No. 62 at PageID 3713 (appearing to argue that the alleged trade 

secrets include all of “the information Umina downloaded from List’s servers to his personal hard 

drive”).) Other portions of List’s Opposition brief are quite vague in identifying the alleged trade 

secrets. (See, e.g., id. at PageID 3723 (stating that “there are hundreds of files that Umina 

downloaded from List’s servers to the Seagate Hard Drive” and complaining that “Defendants’ 

contention that List’s trade secrets claims revolve solely around those four documents is 

erroneous”).) However, List does not attempt to show that all the information it references in such 

statements actually qualifies as a trade secret under Ohio law. Fred Siegel Co., L.P.A. v. Arter & 

Hadden, 85 Ohio St. 3d 171, 1999-Ohio-260, 707 N.E.2d 853, 862 (Ohio 1999) (“a claimant 

asserting trade secret status has the burden to identify and demonstrate that the material is included 

in categories of protected information under the statute”).

Yet, in one of its interrogatory responses, List identified “the information List contends 

constitutes a ‘trade secret’” in this case, and discovery is now complete. (Doc. No. 52-6 at PageID 

3224-26; see also Doc. No. 62 at PageID 3722-23.) In that interrogatory response, List identifies 

twelves documents, which—to be more precise—are electronic files. (Id.; Docs. Nos. 49-5 

through 49-16 (deposition exhibit numbers 5 through 16 of List’s Rule 30(b)(6) witness).) The 

Court finds that those twelve documents constitute the alleged trade secrets in this case.

(1) Ownership of the alleged trade secrets

The Defendants first argue that “List must have an interest in (e.g. ownership) or some 

right to what it alleges are trade secrets,” and that the List’s claim fails because List “does not own 

or otherwise have an interest in the alleged secret[s].” (Doc. 51 at PageID 3088.) More 
13

specifically, Defendants argue that “[b]ecause [the parties to the PSA] did not identify any assets 

in the separate schedule [i.e., Schedule C-1.3], the 2010 Purchase did not include any ‘intellectual 

property (e.g. trade secrets), to the extent it even existed.” (Id. at PageID 3080.) 

List does not take issue with the legal premise that it must have an interest in, or some right 

to, the alleged trade secrets. See also Fred Siegel Co., L.P.A., 707 N.E.2d at 862 (indicating that 

the party asserting trade secret misappropriation must be a “possessor” of the alleged trade secret); 

RPM, Inc. v. Oatey Co., 2005-Ohio-1280, at ¶ 15 (Ohio Ct. App. 2005) (“to bring a claim for 

misappropriation of trade secrets, one must either own or have possession or a right to control the 

trade secrets and have taken active steps to maintain their secrecy”). Instead, List argues that it 

has an interest in the alleged trade secrets because it purchased them or, at least, there is an issue 

of fact as to whether it purchased them. (See Doc. No. 62 at PageID 3727-33.) 

When jurisdiction is based on diversity of citizenship, as it is here, “state substantive law 

is used when interpreting contract provisions.” Whitt Mach., Inc. v. Essex Ins. Co., 377 F. App’x 

492, 495-96 (6th Cir. 2010). Therefore, the Court will apply Ohio law to the PSA.4 The Sixth 

Circuit has explained some of the principles for contract interpretation under Ohio law:

Under Ohio law, the interpretation of written contract terms, including the 

determination of whether those terms are ambiguous, is a matter of law for initial 

4 The Court notes that the PSA and Employment Agreement each contain a governing law provision indicating that 

the agreement should be construed in accordance with Florida law. (Doc. No. 49-3 at PageID 2262.) “[A] federal 

court exercising diversity jurisdiction must apply the choice-of-law rules of the state in which it sits.” Miami Valley 

Mobile Health Servs., Inc. v. ExamOne Worldwide, Inc., 852 F. Supp. 2d 925, 931-32 (S.D. Ohio 2012). And, “[u]nder 

Ohio law, contractual choice-of-law provisions are valid and enforceable.” Id. However, “an actual conflict between 

Ohio law and the law of another jurisdiction must exist for a choice-of-law analysis to be undertaken.” Glidden Co. 

v. Lumbermens Mut. Cas. Co., 112 Ohio St. 3d 470, 861 N.E.2d 109, 2006-Ohio-6553, at ¶ 25 (Ohio 2006). The 

briefing on the Motions from all parties on this issue relies on Ohio law. (See Doc. No. 51 at PageID 3088; Doc. No. 

62 at PageID 3732-33; Doc. No. 63 at PageID 3788-89.) Additionally, none of the parties have indicated a conflict 

between Ohio and Florida law on the legal principles applicable to deciding this issue, and the Court is unaware of 

any such conflict that would affect the outcome of the Motions as set forth in this order. See, e.g., Hirsch v. Jupiter 

Golf Club LLC, 232 F. Supp. 3d 1243, 1251-52 (S.D. Fla. 2017) (setting forth principles for contract interpretation 

under Florida law). Therefore, the Court will apply Ohio law. See also MP Totalcare Servs., Inc. v. Mattimoe, 648 

F. Supp. 2d 956, 962 n. 2 (N.D. Ohio 2009) (“Despite the contract’s choice of law provision, I apply Ohio law, as the 

parties agree that no material distinctions exist between the relevant law in Ohio and Florida. Moreover, as both 

parties rely on Ohio law, they have waived that contractual provision.”) (internal citation omitted).
14

determination by the court. The role of courts in examining contracts is to ascertain 

the intent of the parties. The intent of the parties is presumed to reside in the 

language they choose to use in their agreement. Where the terms in a contract are 

not ambiguous, courts are constrained to apply the plain language of the contract. 

However, extrinsic evidence is admissible to ascertain the intent of the parties when 

the contract is unclear or ambiguous, or when circumstances surrounding the 

agreement give the plain language special meaning. Nevertheless, a court is not 

permitted to alter a lawful contract by imputing an intent contrary to that expressed 

by the parties in the terms of their written contract.

Contractual language is ambiguous only where its meaning cannot be determined 

from the four corners of the agreement or where the language is susceptible of two 

or more reasonable interpretations. Courts may not use extrinsic evidence to create 

an ambiguity; rather, the ambiguity must be patent, i.e., apparent on the face of the 

contract. In determining whether contractual language is ambiguous, the contract 

must be construed as a whole, so as to give reasonable effect to every provision in 

the agreement. Common words appearing in the written instrument are to be given 

their plain and ordinary meaning unless manifest absurdity results or unless some 

other meaning is clearly intended from the face or overall contents of the 

instrument. ...

If the contract is silent, as opposed to ambiguous, with respect to a particular matter, 

it is not the function of courts in Ohio to formulate a new contract for the parties.

Rather, the parties to a contract are required to use good faith to fill the gap of a 

silent contract. ‘Good faith’ is a compact reference to an implied undertaking not 

to take opportunistic advantage in a way that could not have been contemplated at 

the time of drafting, and which therefore was not resolved explicitly by the parties.

What the duty of good faith consists of depends upon the language of the contract 

in each case which leads to an evaluation of reasonable expectations of the parties.

Savedoff v. Access Group, Inc., 524 F.3d 754, 763-64 (6th Cir. 2008) (applying Ohio law) (internal 

citations and quotation marks omitted) (modifications adopted). 

Under Ohio law, “[i]f a contract is clear and unambiguous, then its interpretation is a matter 

of law and there is no issue of fact to be determined.” Inland Refuse Transfer Co. v. BrowningFerris Indus. Of Ohio, Inc., 15 Ohio St. 3d 321, 474 N.E.2d 271, 272 (Ohio 1984). On the other 

hand, “[i]f the court determines that a contract term is ambiguous, a question of fact for the jury 

arises.” GenCorp, Inc. v. Am. Int’l Underwriters, 178 F.3d 804, 818 (6th Cir. 1999) (applying 

Ohio law); see also Inland Refuse Transfer Co., 474 N.E.2d at 273 (“However, if a term cannot be 

determined from the four corners of a contract, factual determination of intent or reasonableness 
15

may be necessary to supply the missing term”). “Furthermore, conflicting provisions in a contract 

cannot be interpreted as a matter of law.” California Fitness I, Inc. v. Lifestyle Family Fitness, 

Inc., 433 F. App’x 329, 337 (6th Cir. 2011) (applying Ohio law) (internal quotation marks 

omitted). “Instead, the matter must then be resolved by the fact finder, who must then rely on 

parol evidence.” Id. (internal quotation marks omitted).

The Court applies these principles in evaluating the PSA. Construing the PSA as a whole, 

the Court finds that the relevant language is clear and unambiguous. The PSA’s Section 1.2 directs 

the reader to its Exhibit C-1 as setting forth the assets that the Midwest Entities was selling to List. 

(Doc. No. 49-2 at PageID 2226.) In turn, Exhibit C-1 states that included in those assets are: “All 

equipment, orders not yet shipped, contracts, computer software, company names, tradenames, 

copyrights, marketing materials, patents, websites and other intellectual property of each Seller; a 

schedule thereof to be provided by Seller [i.e., the Midwest Entities] to Buyer [i.e., List] 5 days 

from the Effective Date and updated at Closing.” (Id. at PageID 2249 (PSA Exhibit C-1, ¶ 3).) 

The Court finds that, based on the PSA’s plain language, List owns the alleged trade secrets, as 

well as all of the Midwest Entities’ servers. Such equipment and files fall within the categories in 

Exhibit C-1 as assets sold by the Midwest Entities to List. (See also Doc. No. 46 at PageID 650 

(Umina admitting that the servers at the Midwest Factory Warehouse, from which he downloaded 

files onto his Seagate Hard Drive while employed by List, “were part of the purchase” and “after 

the sale were owned by List”).)

The Defendants’ focus on the phrase that follows the semicolon in the above-quoted 

sentence from Exhibit C-1 is misguided and does not create an ambiguity. That phrase provides a 

promise by the Midwest Entities (not List) to provide List with a schedule within five days of the 
16

PSA’s effective date and to update that schedule at closing.5 (Doc. No. 49-2 at PageID 2249.) 

Whether the Midwest Entities failed to fulfill that promise does not affect the fact that the Midwest 

Entities sold to List all of their items that fall within the categories listed in Exhibit C-1.6 In other 

words, even if the Midwest Entities broke its promise to provide a schedule, that promise was not 

a condition precedent to the sale of those categories of items. Adkins v. Bratcher, 2009-Ohio-42, 

at ¶¶ 30-33 (Ohio Ct. App. 2009) (finding that preparation and delivery of a deed was part of the 

seller’s performance under the purchase contract, not a condition precedent to their performance; 

explaining that “[c]onditions precedent are conditions which must be performed before the 

obligations in the contract become effective” and are not favored by the law, and “whenever 

possible courts will avoid construing provisions to be such unless the intent of the agreement is 

plainly to the contrary”); Hiatt v. Giles, 2005-Ohio-6536, at ¶¶ 23-24 (Ohio Ct. App. 2005) 

(finding that the purchase agreement obligated the buyers to obtain financing (a promise by the 

buyers to do so), but did not condition the sale on their doing so, and stating that, “[i]f the parties 

had intended to structure the transaction to make the sale contingent on the Buyers’ ability to 

secure financing, they easily could have used language to that effect”). Thus, the Court disagrees 

with Defendants’ argument that, “for specific assets (e.g., trade secrets) to be included in the sale, 

the PSA required the parties to identify those assets in Schedule C-1.3.” (Doc. No. 51 at PageID 

3079-80; see also Doc. No. 63 at PageID 3788 (Defendants arguing that, “[b]ecause the parties 

did not identify any intellectual property, no intellectual property transferred”).) According to 

Defendants’ argument, given that there is no Schedule C-1.3 whatsoever, the Midwest Entities 

5 Defendants mischaracterize the phrase as requiring that “the parties specifically identify any intellectual property 

included in the sale on a schedule within 5 days of the effective date of the PSA.” (Doc. No. 63 at PageID 3787 

(emphasis added).) 

6 Defendants argue that the schedule referenced in paragraph 3 of Exhibit C-1 of the PSA was never created (Doc. 51

at PageID 3079 (citing Umina Declaration)), while List argues that the schedule is the Bill of Sale (Doc. No. 62 at 

PageID 3716).
17

sold no “equipment, orders not yet shipped, contracts, computer software, company names, 

tradenames, copyrights, marketing materials, patents, websites and other intellectual property” to 

List. The Court finds Defendants’ argument is incorrect. Savedoff, 524 F.3d at 763-64. The assets 

sold by the Midwest Entities to List included all of the categories listed in Exhibit C-1, and those 

categories encompassed files that Umina downloaded from the servers at the Midwest Factory 

Warehouse after the sale while he was still employed by List. (Doc. No. 46 at PageID 649-51.)

The Court’s conclusion is also supported by other language within the PSA.7 (See, e.g.,

Doc. No. 49-2 at PageID 2225 (indicating the parties’ desire to purchase/sell all or substantially 

all of the assets of the Midwest Entities’ business); id. at PageID 2226 (stating that the assets to be 

sold by Midwest Entities to Buyer pursuant to the PSA are “[a]ll or substantially all of the assets 

owned by [the Midwest Entities] in connection with the ownership and operation of the Business, 

as set forth on Exhibit C-1 attached hereto”); id. at PageID 2226, 2250 (identifying as the 

“Excluded Assets” only the “Accounts Receivable of Seller”).)

Therefore, the Court disagrees with Defendants’ argument that List’s trade secret claim 

fails because List “does not own or otherwise have an interest in the alleged secret[s].” (Doc. 51

at PageID 3088.) 

(2) Existence of a trade secret

Defendants also argue that the twelve documents that List claims are the trade secrets at 

issue do not qualify as trade secrets. (Doc. 51 at PageID 3084.) Defendants assert that the 

7 Although not relied on by the Court in coming to its conclusion, even further support is provided in the Bill of Sale’s 

language. (See Doc. No. 46 at PageID 2228 (requirement that the Midwest Entities transfer good title to the Assets 

by a Bill of Sale); Doc. No. 49-4 (executed Bill of Sale transferring, among other things, all rights and interests in all 

of the Midwest Entities’ “equipment, contracts, computer software, marketing materials, patents, websites and other 

intellectual property” to List).) Furthermore, in the years following the PSA’s execution, there is no indication that 

the parties acted as if the Midwest Entities did not sell assets that fall within those categories to List, despite the 

Midwest Entities apparently failing to provide List with the schedule referenced in Exhibit C-1. In fact, there is 

evidence supporting the opposite. (See, e.g., Doc. No. 46 at PageID 650 (Umina admitting that the servers at the 

Midwest Factory Warehouse “were part of the purchase” and “after the sale were owned by List”).)
18

documents “contain outdated information dating back more than a decade[] and otherwise consist 

largely of public information distributed to trade show and exhibition attendees.” (Id.) List 

responds that whether the documents qualify as trade secrets is an issue of fact. (Doc. No. 62 at 

PageID 3737-38.)

For purposes of a misappropriation-of-trade-secret claim, the OUTSA states that the term 

“trade secret” means:

[I]nformation, including the whole or any portion or phase of any scientific or 

technical information, design, process, procedure, formula, pattern, compilation, 

program, device, method, technique, or improvement, or any business information 

or plans, financial information, or listing of names, addresses, or telephone 

numbers, that satisfies both of the following:

(1) It derives independent economic value, actual or potential, from not being 

generally known to, and not being readily ascertainable by proper means by, other 

persons who can obtain economic value from its disclosure or use.

(2) It is the subject of efforts that are reasonable under the circumstances to 

maintain its secrecy.

Ohio Rev. Code § 1333.61(D). 

“Whether information constitutes a trade secret is a question of fact.” AtriCure, Inc. v. Jian 

Meng, 842 F. App’x 974, 979 (6th Cir. 2021) (quoting In re Rev. of Alt. Energy Rider Contained 

in Tariffs of Ohio Edison Co., 153 Ohio St. 3d 289, 106 N.E.3d 1, 2018-Ohio-229, at ¶ 35 (Ohio 

2018)). The Supreme Court of Ohio has adopted six factors for consideration in determining 

whether an item constitutes a trade secret: 

(1) The extent to which the information is known outside the business; (2) the extent 

to which it is known to those inside the business, i.e., by the employees; (3) the 

precautions taken by the holder of the trade secret to guard the secrecy of the 

information; (4) the savings effected and the value to the holder in having the 

information as against competitors; (5) the amount of effort or money expended in 

obtaining and developing the information; and (6) the amount of time and expense 

it would take for others to acquire and duplicate the information.
19

State ex rel. Besser v. Ohio State Univ., 89 Ohio St. 3d 396, 2000-Ohio-207, 732 N.E.2d 373, 378

(Ohio 2000) (internal quotation marks omitted); see also MNM & MAK Enters., LLC v. HIIT Fit 

Club, LLC, 134 N.E.3d 242, 2019-Ohio-4017, at ¶¶ 23-26 (Ohio Ct. App. 2019) (explaining that 

the six factors are advisory and no single factor is dispositive). Information can constitute a trade 

secret “regardless of the manner, mode or form in which it is stored—whether on paper, in a 

computer, in one’s memory, or in any other medium,” and a customer list can constitute a “trade 

secret” under Ohio Rev. Code § 1333.61(D). Al Minor & Assoc., Inc. v. Martin, 117 Ohio St. 3d 

58, 881 N.E.2d 850, 2008-Ohio-292, ¶ 24 (Ohio 2008).

However, a document is entitled to trade secret status “only if the information is not 

generally known or readily ascertainable to the public.” State ex rel. Besser, 732 N.E.2d at 379

(internal quotation marks omitted). Additionally, “[a] possessor of a potential trade secret must 

take some active steps to maintain its secrecy in order to enjoy presumptive trade secret status.” 

Fred Siegel Co., L.P.A., 707 N.E.2d at 862. 

Here, Defendants provide evidence that four of the twelve documents are associated with 

a particular trade show or exhibition, the information came from third-party sources, and the 

documents merely consist of publicly available information.8 (See, e.g., Doc. No. 51-7 at PageID 

3141-42.) In the Opposition, List asserts: “Umina conceded that the information contained in the 

various customer lists, including the trade show documents, was not publicly available when this 

information was owned by the Midwest Entities.” (Doc. No. 62 at PageID 3738.) However, that 

assertion is not supported by List’s cited evidence with respect to the four documents. (See id.

(citing portion of Umina deposition); Doc. No. 46 at PageID 663 (cited Umina deposition portion 

8 Those four documents are: (1) NSSEA SES-Specifier Pre-Registration List_0125; (2) NSSEA SES-Dealer PreRegistration List_0125; (3) ABC2009-CDS-FinalList-Exhibitors(1); and (4) school show contacts. (Doc. No. 51-7 at 

PageID 3141-42.)
20

relates to the information contained in MWF_5YRSales_2010.xlsx—not one of the four 

documents).) Therefore, the Court finds that there is no genuine issue as to any material fact

regarding whether those four documents can be “trade secrets.” They cannot and, therefore, they 

cannot form the basis of List’s OUTSA claim. State ex rel. Besser, 732 N.E.2d at 379; Ohio Rev. 

Code § 1333.61(D). 

However, Defendants do not argue that the other eight documents were ever publicly 

available.9 In fact, Umina specifically admitted that at least some of them constitute customer lists 

that were not publicly available. (See, e.g., Doc. No. 46 at PageID 662-63; Doc. No. 49-11; see 

also Doc. No. 49 at PageID 2186-88 (testimony that List had certain restrictions on accessing its 

electronic information).) Despite their apparent age, the Court finds that there remain genuine 

issues of material fact regarding whether any of those eight documents constitute a “trade secret”

under Ohio law. AtriCure, 842 F. App’x at 979; Thermodyn Corp. v. 3M Co., 593 F. Supp. 2d 

972, 987-88 (N.D. Ohio 2008) (finding genuine issues of material fact precluded granting 

summary judgment on Ohio trade secrets claim, and stating that “[t]he determination of whether 

information constitutes a trade secret is a highly fact-specific inquiry”).

(3) Misappropriation of the alleged trade secrets

Defendants also argue that they are entitled to summary judgment on Count 1 because there 

is no evidence to support that Umina engaged in the unauthorized use of any of the remaining eight 

alleged trade secrets. (Doc. No. 51 at PageID 3089; see also id. at PageID 3092 (asserting that 

“[t]here is no evidence Umina improperly used or disclosed any information List characterizes as 

a trade secret”).) In response, List argues that “Umina acquired the information contained on the 

9 Those other eight documents are: (1) 1 – 2006 Top 20 Customers; (2) ABC2008-CDS-FinalList-ExhibitorS; (3) 

CUSTLIST_011304; (4) Customer List; (5) customerlist_2098; (6) MWF_5YRSales_2010; (7) 

National_Accounts_2006; and (8) School Show 1 Contact Per Co . List. (Doc. No. 52-6 at PageID 3225.)
21

hard drives by ‘improper means’ in that he downloaded this information from List’s servers, 

without List’s permission, and failed to return this information when he left List’s employ.” (Doc. 

No. 62 at PageID 3738.) List also argues that “[t]he record evidence shows that Defendants used 

the information Umina downloaded from List’s servers to his personal hard drive.” (Id. at PageID 

3713.)

The OUTSA generally allows a party to seek an injunction for actual or threatened 

misappropriation of a trade secret and to recover damages for misappropriation of a trade secret. 

Ohio Rev. Code §§ 1333.62(A), 1333.63(A).10 The Act defines the term “misappropriation” as 

meaning any of the following:

(1) 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;

(2) Disclosure or use of a trade secret of another without the express or implied 

consent of the other person by a person who did any of the following:

(a) Used improper means to acquire knowledge of the trade secret;

(b) At the time of disclosure or use, knew or had reason to know that the 

knowledge of the trade secret that the person acquired was derived from or 

through a person who had utilized improper means to acquire it, was 

acquired under circumstances giving rise to a duty to maintain its secrecy 

or limit its use, or was derived from or through a person who owed a duty 

to the person seeking relief to maintain its secrecy or limit its use;

(c) Before a material change of their position, knew or had reason to know 

that it was a trade secret and that knowledge of it had been acquired by 

accident or mistake.

Ohio Rev. Code § 1333.61(B). The same statute states that “improper means” includes “theft, 

bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or 

espionage through electronic or other means.” Ohio Rev. Code § 1333.61(A).

10 Specifically, Ohio Rev. Code § 1333.62(A) states that “[a]ctual or threatened misappropriation may be enjoined,” 

and Ohio Rev. Code § 1333.63(A) states that, “[e]xcept to the extent that a material and prejudicial change of position 

prior to acquiring knowledge or reason to know of misappropriation renders a monetary recovery inequitable, a 

complainant in a civil action is entitled to recover damages for misappropriation.”
22

The Court initially addresses an argument involving the alleged elements of a 

misappropriation-of-trade-secrets claim under the OUTSA. Defendants argue that “List’s trade 

secrets claim fails as a matter of law [with respect to the remaining eight alleged trade secrets] 

since it cannot show Umina used them.” (Doc. No. 51 at PageID 3089 (emphasis added).) 

However, as shown in the quoted statutory language above, misappropriation does not necessarily 

require use of the trade secret.11 Ohio Rev. Code § 1333.61(B)(1); see also Allied Erecting and 

Dismantling Co., Inc. v. Genesis Equip. & Mgf., Inc., 805 F.3d 701, 709 (6th Cir. 2015) (“[f]inding 

liability under the OUTSA requires misappropriation of a trade secret—acquisition by improper 

means, disclosure, or use”) (emphasis in original). Yet, at this stage of the litigation, List at least 

must raise a genuine issue of material fact as to whether the alleged trade secrets were 

misappropriated, as defined in the OUTSA. Ohio Rev. Code § 1333.61(B); Aday v. Westfield Ins. 

Co., 486 F. Supp. 3d 1153, 1169 (S.D. Ohio 2020).

The Court finds that List has raised a genuine issue of material fact as to whether 

Defendants misappropriated List’s eight remaining alleged trade secrets. The term 

“misappropriation” includes “[a]cquisition of a trade secret of another by a person who knows or 

11 Both parties cite to Heartland Home Fin., Inc. v. Allied Home Mortg. Cap. Corp., 258 F. App’x 860, 861 (6th Cir. 

2008) as setting forth the elements of a misappropriation-of-trade-secrets claim under Ohio law. (See Doc. No. 51 at 

PageID 3087; Doc. No. 62 at PageID 3736.) However, the list of requirements in the Heartland Home Fin. case does 

not fully align with the language of the OUTSA. As the Sixth Circuit later recognized, Heartland Home Fin.’s 

“formulation of the prima facie case is likely outdated in light of the Uniform Trade Secrets Act (UTSA).” Kendall 

Holdings, Ltd. v. Eden Cryogenics, LLC, 521 F. App’x 453, 457 n. 6 (6th Cir. 2013). More specifically, the Heartland 

Home Fin. case includes “the unauthorized use of a trade secret” as an element. Heartland Home Fin., 258 F. App’x 

at 861 (“[i]n order to prevail on a misappropriation-of-trade-secret claim, a plaintiff must show by a preponderance of 

the evidence: (1) the existence of a trade secret; (2) the acquisition of a trade secret as a result of a confidential 

relationship; and (3) the unauthorized use of a trade secret”). The cited support in Heartland Home Fin. for its list of 

elements was Hoover Transp. Servs., Inc. v. Frye, 77 F. App’x 776, 782 (6th Cir. 2003), which, in turn, had relied on

the decision in GTI Corp. v. Calhoon, 309 F. Supp. 762, 767 (S.D. Ohio 1969) from more than thirty years earlier. 

Yet, the OUTSA (Ohio Rev. Code § 1333.61 et seq.) went into effect in 1994. See also Kendall Holdings, 521 F. 

App’x at 457 n. 6 (citing Restatement (Third) of Unfair Competition § 40 cmt. b (1995) as explaining that the UTSA 

imposes liability not just for the wrongful use or disclosure of a trade secret, as case law often recites, but also for its 

acquisition by improper means). Therefore, the Court relies on the language of the Ohio statute, not the outdated 

recitation of elements listed in the Heartland Home Fin. case.
23

has reason to know that the trade secret was acquired by improper means.” Ohio Rev. Code § 

1333.61(B)(1). The Court finds that there are genuine issues of material fact regarding both 

whether Umina’s acquisition of the alleged trade secrets was “by improper means” and whether 

Umina knew or had reason to know that the alleged trade secrets were acquired by improper means. 

See Boehm v. Black Diamond Casino Events, LLC, 116 N.E.3d 704, 2018-Ohio-2379, at ¶¶ 9-10

(Ohio Ct. App. 2018) (former employee “breached his duty to maintain secrecy of the records by 

retaining them for himself beyond the period for which he had [former employer’s] consent,” and 

his “retention of records that he had an obligation to return, even though he kept them to prepare 

for litigation, was a misappropriation under” the OUTSA); MNM & MAK Enters., 2019-Ohio4017, at ¶¶ 29-30 (explaining that “express consent to access trade secret information in the course 

of employment does not also confer express or implied consent to use the information for nonwork, personal purposes” and holding that “[t]he presence of an explicit, binding confidentiality 

or employment agreement is not required to find misappropriation of a trade secret”).

As referenced above, “improper means” includes “breach ... of a duty to maintain secrecy.” 

Ohio Rev. Code § 1333.61(A). The Employment Agreement between List and Umina is dated 

October 12, 2010 and included a non-disclosure provision. That provision states, in part, that 

Umina “shall not at any time, whether during or after his Employment under this Agreement, either 

directly or indirectly, divulge[,] disclose, or communicate to any person, firm or corporation any 

information relating to the business or affairs of the Company which is confidential, proprietary, 

or not in the public domain.” (Doc. No. 49-3 at PageID 2259 (emphasis added).) The Employment 

Agreement also required Umina to “return all property, materials, files and any other Company 

owned information to the Company” upon termination of his employment with List. (Id. at PageID 

2261 (emphasis added).) 
24

Umina admitted that, at some point while he was employed by List, he downloaded files 

from the servers at the Midwest Factory Warehouse onto his Seagate Hard Drive. (Doc. No. 46 at 

PageID 649-50; see also Doc. No. 51 at PageID 3080; Doc. No. 63 at PageID 3784.) The Seagate 

Hard Drive contained all twelve (now eight) of the alleged trade secrets. (Doc. No. 62-3 at PageID 

3770; see also Doc. No. 62-1 at PageID 3753 (Defendants admitting that files named “Customer 

List.xls” and “CUSTLIST_011304.xls”—two of the eight remaining alleged trade secrets—are 

saved on the Seagate Hard Drive).) Umina also admitted that he purchased the Seagate Hard Drive 

after November 23, 2010. (Doc. No. 49-2 at PageID 2240, 2242-43; Doc. No. 62-1 at PageID

3749.) Therefore, any uploading or copying of files to the Seagate Hard Drive would have taken 

place after List bought the Midwest Entities’ assets and after Umina had entered into the 

Employment Agreement—and, therefore, while Umina was subject to the restrictions in the 

Employment Agreement.

Defendants fail to show that Umina was not subject to the non-disclosure provision when 

he acquired the alleged trade secrets. Defendants argue that, “[a]s a List employee assigned to 

work for MFH, List authorized Umina to access customer information” and “expressly permitted 

him to take information about Midwest Entities’ customers in order to collect on outstanding 

accounts.” (Doc. No. 51 at PageID 3092.) However, there is a question of fact regarding whether 

such information would include the alleged trade secrets. Umina testified that he “didn’t know 

what [he] would need, so [he] didn’t pick the documents that [he] thought [he] might need,” 

resulting in him “basically download[ing] a drive of files.” (Doc. No. 46 at PageID 650-51.) 

Additionally, Umina could not remember whether he had asked anyone at List if it was okay for 

him to download that information from the servers and take it with him. (Id.) 

The Court also finds that there is a genuine issue of material fact regarding whether 
25

Defendants disclosed or used the alleged trade secrets (without List’s consent) after Umina used 

improper means to acquire knowledge of those trade secrets. Ohio Rev. Code. § 1333.61(B)(2)(a) 

(defining “misappropriation” also to include “[d]isclosure or use of a trade secret of another 

without the express or implied consent of the other person by a person who ... [u]sed improper 

means to acquire knowledge of the trade secret”). Umina admitted that he used information that 

was contained on the Seagate Hard Drive (which, again, contained all of the alleged trade secrets)

to identify potential customers for Top Tier’s products, and he admitted that he used some school 

contact lists to create an email list for Top Tier. (See, e.g., Doc. No. 46 at PageID 680; Doc. No. 

62-1 at PageID 3762.) Umina also testified that he looked at four files from the Seagate Hard 

Drive in creating an email list for Top Tier and that he used some of the information from those 

four files. (Doc. No. 46 at PageID 680; id. at PageID 656 (Umina testifying that he looked at 

ABC2008-CDS-FinalList-ExhibitorS—one of the eight remaining alleged trade secrets—at some 

point after forming Top Tier for the purpose of developing an email list or a contact list).) Without 

denying that he did, Umina could not recall using any more than those four files to identify 

potential customers for Top Tier’s products. (Id. at PageID 680; see also id. at PageID 670 (Umina 

testifying that he does not know whether or not he used School Show 1 Contact Per Co. List—

another one of the eight remaining alleged trade secrets—to create an email prospecting list for 

Top Tier).) 

Additionally, Krumholtz, a Top Tier employee, testified that, during the time Top Tier was 

being formed, Umina had a hard drive that may have contained some Midwest Entities files. (Doc. 

47 at PageID 1623-24.) Umina also acknowledged that he used a OneDrive cloud storage service 

in his work for Top Tier, although he could not recall whether he ever uploaded any documents 

from the Seagate Hard Drive to that cloud storage service. (Doc. No. 46 at PageID 658-59.) Dr. 
26

Cobb’s analysis revealed that the Seagate Hard Drive was accessed in 2016, 2017, and 2018, and 

revealed that the OneDrive cloud storage service was accessed by Umina’s laptop and desktop on 

190 occurrences starting in 2017. (Doc. No. 62-4 at PageID 3775.) 

In summary, a number of genuine issues of material fact remain regarding List’s 

misappropriation-of-trade-secrets claim. Therefore, the Court denies Defendants’ motion for 

summary judgment with respect to Count 1. See Thermodyn, 593 F. Supp. 2d at 987-88 (denying 

motion for summary judgment on Ohio trade secret claim; finding that whether the alleged trade 

secrets were trade secrets and whether there was misappropriation—specifically, whether 

defendant former employee provided any of the alleged trade secrets to defendant competitor—

were “highly fact-sensitive inquiries more appropriately resolved by the trier of fact”).

B. Breach of Contract (Count 2)

The second count in the Complaint is for Breach of Contract against Umina. (Doc. No. 35 

at PageID 415-17.) Under Ohio law, the elements of a breach of contract claim are: (1) the 

existence of a binding contract or agreement; (2) the non-breaching party’s performance of its 

contractual obligations; (3) the other party’s failure to fulfill its contractual obligations without 

legal excuse; and (4) the non-breaching party suffered damages as a result of that failure. 

Lawrence v. Lorain Cnty. Cmty. Coll., 127 Ohio App. 3d 546, 713 N.E.2d 487, 548-49 (Ohio Ct. 

App. 1998); Feltner v. Vill. of Whitehouse, 114 N.E.3d 747, 2018-Ohio-2337, at ¶ 23 (Ohio Ct. 

App. 2018).

Umina makes two arguments in support of his request for summary judgment on this claim. 

(Doc. No. 51 at PageID 3092-93.) First, he argues that “List does not own the documents it claims 

[he] kept and/or disclosed.” (Id.) The Court essentially addressed this argument in its analysis of 

the misappropriation-of-trade-secrets claim, above. The Court finds that, based on the PSA’s plain 

language, List owns the files that Umina downloaded from the servers at the Midwest Factory 
27

Warehouse after the sale and while he was still employed by List. This would include, but not be 

limited to, all of the alleged trade secrets. 

Second, Umina argues that “there is no evidence [he] disclosed the documents to anyone.” 

(Doc. No. 51 at PageID 3092.) As an initial matter, separate from the non-disclosure provision, 

the Employment Agreement required Umina to “return all property, materials, files and any other 

Company owned information to the Company” upon termination of his employment with List in 

April of 2011. (Doc. No. 49-3 at PageID 2261 (emphasis added); Doc. No. 46 at PageID 649.) At 

the absolute least, there is a genuine issue of material fact regarding whether that provision applied 

to the files that Umina admits he kept after downloading them onto the Seagate Hard Drive while 

employed by List. (Doc. No. 46 at PageID 649-50; see also Doc. No. 51 at PageID 3080; Doc. 

No. 63 at PageID 3784.) Although Umina asserts that he “needed to keep certain information 

about the customers to collect on the outstanding accounts (e.g., customer names, contact 

information, purchase information, etc.)” (Doc. No. 63 at PageID 3795), he offers no evidence that 

he obtained a waiver of his contractual obligations, and he admitted that he indiscriminately 

downloaded files from the server(s) owned by List. (Doc. No. 46 at PageID 650-51 (Umina 

testifying that he “didn’t know what [he] would need, so [he] didn’t pick the documents that [he] 

thought [he] might need,” resulting in him “basically download[ing] a drive of files”).) Umina

also does not show—or even argue—that he ever returned those files, some (if not all) of which 

remained on his Seagate Hard Drive even in 2020 when Umina answered requests to admit in this 

case. (Doc. No. 62-1 at PageID 3753.)

Moreover, Umina’s argument reads the non-disclosure provision too narrowly. Again, that 

provision states, in part, that Umina “shall not at any time, whether during or after his Employment 

under this Agreement, either directly or indirectly, divulge[,] disclose, or communicate to any 
28

person, firm or corporation any information relating to the business or affairs of the Company 

which is confidential, proprietary, or not in the public domain.” (Doc. No. 49-3 at PageID 2259.) 

As shown above in the Court’s analysis of Count 1, there are issues of fact related to whether 

Umina (at least) indirectly divulged or disclosed to Top Tier any information relating to List’s 

business or affairs that is not in the public domain. 

In summary, genuine issues of material fact preclude granting Umina summary judgment 

on the breach of contract claim. Therefore, the Court denies Umina’s motion for summary 

judgment with respect to Count 2. 

C. Spoliation (Count 3)

The third count in the Complaint is for spoliation under Ohio law. (Doc. No. 35 at PageID 

417-18.) Defendants argue that “there is no evidence Umina destroyed the [Toshiba] device” and, 

even “[a]ssuming List could establish destruction, its spoliation claim still fails because there is no 

evidence showing any destruction was the result of willful conduct” and “there is no evidence its 

case has been disrupted and it suffered damage.” (Doc. No. 51 at PageID 3093-94.) 

Ohio recognizes a cause of action in tort for spoliation of evidence (interference with or 

destruction of evidence). Smith v. Howard Johnson Co., Inc., 67 Ohio St. 3d 28, 1993-Ohio-229,

615 N.E.2d 1037, 1038 (Ohio 1993). To recover on such a claim, “a plaintiff must prove all of the 

following elements: (1) pending or probable litigation involving the plaintiff, (2) knowledge on 

the part of defendant that litigation exists or is probable, (3) willful destruction of evidence by 

defendant designed to disrupt the plaintiff’s case, (4) disruption of the plaintiff’s case, and (5) 

damages proximately caused by the defendant’s acts.” O'Brien v. Olmsted Falls, 2008-Ohio-2658,

at ¶ 17 (Ohio Ct. App. 2008) (citing Smith, 615 N.E.2d at 1038). 

Defendants do not contest the first two elements in their Motions. Regarding the third 

element, the term “‘willful’ reflects an intentional and wrongful commission of the act”—thus, 
29

more than “mere negligence or failure to conform to standards of practice.” White v. Ford Motor 

Co., 142 Ohio App.3d 384, 755 N.E.2d 954, 957 (Ohio Ct. App. 2001). Circumstantial evidence 

can support a finding that evidence was willfully destroyed. See, e.g., Sheets v. Norfolk S. Corp., 

109 Ohio App. 3d 278, 671 N.E.2d 1364, 1370 (Ohio Ct. App. 1996) (circumstances in the case 

presented a question for the jury as to whether the defendants willfully destroyed the evidence). 

Additionally, “[t]he intent of an alleged spoliator can be inferred from the surrounding 

circumstances.” Jaro Transp. Servs., Inc. v. Grandy, No. 4:03-CV-01227, 2006 U.S. Dist. LEXIS 

62932, 2006 WL 2553424, at *11 (N.D. Ohio Sept. 5, 2006) (applying Ohio law); see also 

Stratacache, Inc. v. Wenzel, 2019-Ohio-3523, at ¶ 36 (Ohio Ct. App. 2019) (“[i]n cases involving 

the alleged spoliation of evidence, the intent of the spoliator in destroying or altering evidence can 

be inferred from the surrounding circumstances”) (internal quotation marks omitted). 

Regarding the damages requirement, a party claiming spoliation cannot show damages 

“where the evidence alleged to be willfully destroyed ... would not have changed the result of an 

unsuccessful underlying case, and no other damages are alleged.” Heimberger v. Zeal Hotel Grp., 

Ltd., 42 N.E.3d 323, 2015-Ohio-3845, at ¶ 38 (Ohio Ct. App. 2015). An example of such a 

situation would be where a defendant is found to have satisfied its duty of care in the underlying 

negligence claim and the allegedly destroyed records could not show otherwise. Id.; Kemme v. 

Seltzer Holdings, LLC, 2020-Ohio-3142, at ¶ 24 (Ohio Ct. App. 2020) (premises condition found 

to be open and obvious, thereby negating the duty element of the underlying negligence claim 

regardless of what the alleged destroyed evidence might demonstrate regarding who created the 

condition).

Umina received and read the Preservation Letter in 2016. (Doc. No. 46-2; Doc. No. 46 at 

PageID 661.) In his 2018 deposition in the Florida litigation, Umina testified that he thought the 
30

device he used to take files back-and-forth from work to home was a Toshiba device, that device 

was at his home, and—to the best of his knowledge—it would include all of the documents he 

would have had in relation to his prior employment at Midwest Factory (one of the Midwest 

Entities). (Doc. No. 33-2 at PageID 367-69.) Defendants assert that Umina’s “reference to a 

Toshiba device” during that deposition “was simply a mistake” and that Umina never possessed 

or used a Toshiba USB device. (Doc. No. 51 at PageID 3094; Doc. No. 46 at PageID 625; Doc. 

No. 62-1 at PageID 3762.) 

However, Dr. Cobb’s analysis of Umina’s desktop computer, laptop computer, Seagate 

Hard Drive, and a USB flash drive revealed the existence of a Toshiba USB device. (Doc. No. 62-

4 at PageID 3778.) It also revealed that the Toshiba USB device was used to access “a number of 

files” from Umina’s desktop computer in both February of 2016 (around the time when Top Tier 

was formed) and October 2016 (more than three months after the date of the Preservation Letter). 

(Doc. No. 62-4 at PageID 3778-79, 3782-83.) And, Dr. Cobb’s analysis supports that files owned 

by List were among the files that had been accessed with the Toshiba USB device in 2016. (Id.;

Doc. No. 46 at PageID 626, 656-58.) Evidence supports that Umina and Krumholtz created 

mailings lists of potential customers for Top Tier and that Umina also helped put together a 

customer list for Top Tier —a competitor to List. (Doc. No. 46 at PageID 627; Doc. No. 47 at 

PageID 1619, 1627.)

The Court finds that there are genuine issues of material fact regarding whether the Toshiba 

device existed, whether Umina destroyed it, and whether any such destruction was willful and

designed to disrupt List’s case. To create an issue of fact (or to succeed on the spoliation claim), 

List does not need to have a video showing Umina destroying the Toshiba device and a taped 

confession stating that he destroyed the device intentionally to disrupt List’s chances of succeeding 
31

in this litigation. Given the nature of spoliation, such direct evidence is both unlikely to exist and 

unnecessary to recover on the claim. Sheets, 671 N.E.2d at 1370; Jaro Transp. Servs., 2006 WL 

2553424, at *11. 

Umina’s explanation for why he did not preserve the Toshiba device despite having 

previously received and read the Preservation Letter (i.e., that the device never existed) appears to 

conflict with Dr. Cobb’s findings. In addition to the circumstances set forth above, Umina’s 2018 

testimony came before he was compelled to turn over forensic images of his devices (Doc. No. 

24), but after he received and read the Preservation Letter. See Jaro Transp. Servs., 2006 WL 

2553424, at *11 (finding that conflicting evidence regarding the alleged destruction of evidence 

allowed a fair inference that the missing data had been destroyed, and “[t]he fact that the loss of 

the data occurred while the lawsuit was in full swing and discovery was underway may give rise 

to suspicion and inferences of foul play”). And, the question of intent “is ultimately a matter of 

weighing all the relevant evidence and the credibility of witnesses,” which “is a task within the 

province of the jury.” Id. Drawing all reasonable inferences in List’s favor, a jury could 

reasonably find for List on the third element of its spoliation claim. See id.; Ed Schmidt PontiacGMC Truck, Inc. v. Chrysler Motors Co., LLC, 575 F. Supp. 2d 837, 841 (N.D. Ohio 2008) 

(denying motion for summary judgment on Ohio spoliation claim; finding that “a jury might fairly 

infer that” data was destroyed and that such destruction was deliberate); Actionlink, LLC v. 

Sorgenfrei, No. 5:08CV2565, 2010 U.S. Dist. LEXIS 6703, 2010 WL 395243, at *5 (N.D. Ohio 

Jan. 27, 2010) (finding that a material issue of fact existed regarding Ohio spoliation claim “as to 

whether [defendant] willfully, negligently, or not at all, destroyed evidence on the laptop ... in an 

attempt to disrupt [plaintiff’s] case”).

Next, regarding whether any such destruction actually did disrupt List’s case and cause 
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damages, the Court again finds genuine issues of material fact that preclude granting Defendants 

judgment as a matter of law on the spoliation claim. It would be reasonable for a jury to credit 

Umina’s initial testimony during his 2018 deposition in the Florida litigation that a Toshiba 

portable device contained the documents he had regarding the Midwest Entities, and to find that 

the Toshiba USB device identified through Dr. Cobb’s forensic investigation—a device that had 

existed since at least 2006, been accessed from Umina’s desktop in 2016, and been used to access 

at least some former Midwest Entities’ documents in 2016—was the same one Umina referenced 

in his 2018 testimony. As shown above, List’s first two claims rely on documents that qualify as 

“trade secrets” in accordance with the OUTSA (Count 1) or “information” in accordance with the 

Employment Agreement (Count 2). Being able to increase the scope of documents that so qualify 

would be beneficial to List’s claims. Thus, taking actions to limit the scope—including through 

destroying a device that evidence indicates accessed at least some files owned by List during the 

relevant timeframe—would disrupt List’s case. It also could affect the amount of damages List 

can establish for its misappropriation-of-trade-secrets claim and its breach of contract claim. See 

Actionlink, 2010 WL 395243, at *5 (courts should “keep in mind that holding the prejudiced party 

to too strict a standard of proof regarding the likely contents of the destroyed evidence would allow 

parties who have intentionally destroyed evidence to profit from that destruction”) (internal 

quotation marks omitted) (modification adopted). Thus, drawing all reasonable inferences in 

List’s favor, the Court finds that a jury also could reasonably find for List on the fourth and fifth 

elements of its spoliation claim. Id. (denying motion for summary judgment on spoliation claim 

that related to underlying claims of misappropriation-of-trade-secrets and breach of confidentiality 

agreement); Hicks v. Bryan Med. Grp., 287 F. Supp. 2d 795, 811 (N.D. Ohio 2003) (denying 

defendant’s motion for summary judgment on Ohio spoliation claim; genuine issue of material 
33

fact existed where plaintiff may not have settled other litigation—or may have settled other 

litigation for a lesser amount—had the alleged alteration of a document not happened).

In summary, genuine issues of material fact preclude granting Defendants summary 

judgment on the spoliation claim. Therefore, the Court also denies the Motions with respect to 

Count 3.

IV. CONCLUSION

For the reasons stated above, the Court finds that neither Umina nor Top Tier are entitled 

to summary judgment on any of the claims against them. Therefore, the Court DENIES the 

Motion for Summary Judgment of Defendant Dean Scott Umina (Doc. Nos. 51 and 52) and the 

Motion for Summary Judgment of Defendant Top Tier Storage Products, LLC (Doc. No. 53). This 

action will continue in accordance with the pretrial scheduling order.

DONE and ORDERED in Dayton, Ohio, this Friday, July 2, 2021. 

s/Thomas M. Rose

________________________________

THOMAS M. ROSE 

UNITED STATES DISTRICT JUDGE