Trade Secrets in 2023 Part II: Identification, Misappropriation and Remedies

In Part I of this article, we recapped some of the most notable trade secret cases of the past year that dealt with issues such as proving secrecy and exercising reasonable efforts, as well as the publication of a key judicial resource for trade secret cases. Below, we continue with some of the top trade secret cases and subject matter the courts addressed in 2023.

Identification of Secrets

One of the unique aspects of trade secret law, in comparison to other forms of intellectual property, is that the boundaries of the right are not specified in a government-issued grant. As a result, a preliminary – and usually consequential – question in every trade secret case is: what exactly is the trade secret information that’s being claimed? Usually, companies have not made an inventory of their information assets, and even if they have, the specific data involved in any given dispute is unlikely to have been described with precision before litigation begins. As a result, identification of the subject matter – and when and how to do it – has become a frequent early battleground in trade secret litigation.

Voicing a lament that has become all too common in cases where judges are called upon to discern discovery relevance in trade secret disputes, the court in Wilbur-Ellis Co., LLC v. Gompert, 2022 U.S. Dist. LEXIS 227155 at *11 (D. Neb. December 16, 2022) denied a plaintiff’s request for issuance of a third-party subpoena. The plaintiff had been ordered to prepare a particularized description of its trade secrets. Instead, it filed what the court characterized as a list of “seven generic categories, with corresponding generic definitions, which Plaintiff alleges are trade secrets.” That the plaintiff claimed also to have produced “nearly 6,000 pages of documents” in discovery merely “emphasizes Plaintiff’s lack of specificity in identifying the trade secrets at issue, rather than its commitment to robust discovery.” In addition to denying the request for third-party discovery, the court ordered that the plaintiff’s list be unsealed, as it “does not contain material that implicates confidentiality to the extent necessary to overcome the strong presumption of public access to court documents.” Id. at *16.

While trade secret plaintiffs are allowed to describe their secrets in broad terms in a publicly-filed complaint, see Neutron Holdings, Inc. v. Hertz Corp., 2023 U.S. Dist. Lexis 100085 at *10 (N.D. Cal. June 8, 2023) (acceptable to use the qualifier “including but not limited to” in complaint), after the pleading stage real particularity is required. Where software is involved, that often means producing specific algorithms, along with associated documentation. In Reald Spark LLC v. Microsoft Corp., 2023 U.S. Dist. LEXIS 80221 at *10-12 (W.D. Wash. May 8, 2023) the court addressed the sufficiency of responses to an interrogatory asking for a description of each alleged secret. At first, the plaintiff just repeated a list of categories from its complaint; then it responded by referring to almost 3,000 pages of documents and stating that its source code would be made available for inspection. In filing its motion to compel, Microsoft addressed the requirement that a trade secret be defined in a way that separates it from “matters of general knowledge in the trade,” and it submitted related patents showing that some of the claimed concepts were well known. This led the court to order production of the specific algorithms used to implement those concepts, along with related “datasets” and “know-how” (including negative know-how) and source code. In the meantime, pending compliance by the plaintiff, it issued a protective order preventing the plaintiff from conducting discovery into Microsoft’s confidential information.

Although California’s “sequencing order” that requires early identification of trade secrets before the plaintiff gets related discovery from the defendant is technically mandatory only for state law-based litigation, courts considering DTSA claims may find the procedure useful as a discovery management tool. See Blockchain Innovation, LLC v. Franklin Resources, 2023 U.S. Dist. LEXIS 104537 at *5-6 (N.D. Cal. June 15, 2023). As the court there pointed out, however, the defendant may not simply grant itself a unilateral discovery stay by citing the statute; rather, it must move for a protective order at the outset of the case.

The question of whether secrets are adequately described remains live throughout the litigation. Even after trial and a verdict, in a case where the trade secrets were alleged to have been disclosed entirely orally, the judge may revisit whether they are too indefinite. See Coda Dev. S.R.O. v. Goodyear Tire & Rubber Co., 2023 U.S. Dist. Lexis 57556 at *19-20 (N.D. Ohio March 31, 2023) (granting JMOL to defendants following a jury verdict in plaintiff’s favor).

Misappropriation

Because those who misappropriate trade secrets would like to keep their actions, well, secret, it’s often difficult to find direct evidence of theft, and plaintiffs must prove their case with circumstantial evidence. However, there is a real (if indeterminate) difference between permissible inference and impermissible speculation, and so it is important to marshal as much convincing circumstantial proof as possible. One common factor used to help prove misappropriation is the speed with which the defendant has produced a competing product. However, the evidence of implausible speed has to be tied to the specific claimed secrets, in order to raise the argument beyond the level of speculation. See Wisk Aero LLC v. Archer Aviation Inc., 2023 U.S. Dist. LEXIS 100960 at *42-43, *80-81 (N.D. Cal. June 9, 2023) (on motion for summary judgment, finding misappropriation claim unjustified as to a broad design secret, while allowing another claim for “indirect” misappropriation based on request to a common vendor to use a known confidential process).

In an era of digital communications, ubiquitous storage options, and remote work, there are bound to be opportunities for misappropriation, or what looks like misappropriation, by departing employees who abscond with information they were supposed to use only in their jobs. In TF Glob. Mkts. Ltd. v. Sorenson, 2023 U.S. Dist. Lexis 27983 at *11-12 (N.D. Ill. Feb. 17, 2023) the court agreed that where a former employee “retained without authorization” a large number of confidential files the plaintiff had adequately alleged misappropriation through “acquisition by improper means.”

Injunction

Assuming trade secret misappropriation has occurred or is threatened, the question becomes what to do about it. In many cases, the urgency of avoiding continuing damage leads the plaintiff to request a preliminary injunction. But because that remedy is “extraordinary,” the requirements can be difficult to meet. One of those requirements is that the harm be proven “irreparable,” and when the defendant appears intent only to use the information without further dissemination or irreparable impairment of value, it can be argued that money damages will provide a complete remedy. See TomGal LLC v. Castano, 2022 U.S. Dist. Lexis 231415 at *10 (S.D.N.Y. December 19, 2022) (denying preliminary injunction).

Where the identified threat to the plaintiff derives from a departing employee’s “personal knowledge or public sources,” it is proper to deny preliminary relief in a case relying on section 1836(b)(3)(A)(i)(I) of the DTSA, due to its prohibition against “inevitable disclosure” injunctions. See CAE Integrated, LLC v. Moov Techs., Inc., 44 F.4th 257, 262-263 (5th Cir. 2023). On the other hand, it is error to deny a preliminary injunction without careful consideration of possible future harm. See Direct Biologics, LLC v. McQueen, 63 F.4th 1015, 1022-23 (5th Cir. 2023) (reversing denial where district court had not analyzed likelihood of future harm due to destruction of metadata).

Damages

As a form of relief, damages are not available at all until the plaintiff has prevailed on the merits. However, success at trial usually requires early attention to damage theories and the adequate preparation of experts. For example, it is common for damage experts to assume misappropriation as a predicate for their analysis. However, if the case involves multiple claimed secrets and the expert assumes misappropriation of all of them, there is a risk that the jury will lack guidance on what to do if it finds misappropriation of fewer than all. This was the situation in Versata Software, Inc. v. Ford Motor Co., 2023 US Dist LEXIS 75318 at *51-52 (E.D. Mich. May 1, 2023), where the trial judge granted JMOL in favor of the defendant following a verdict in excess of $100 million. The damage expert had grounded his analysis on the estimation that it would have taken Ford just over eight years to independently develop the four alleged secrets. But he failed to provide any alternative approach that would apply if the jury did not find misappropriation of all four. This “all or nothing model,” as the judge termed it, left the jury without a reliable basis to calculate nonspeculative damages. Id. at *62. The case stands as a stark warning to anticipate various outcomes and prepare for them, either with some sort of allocation among the secrets or a plausible basis for determining the same dollar figure for a variety of outcomes. (Heaping further disappointment on the plaintiff, the trial judge later denied a permanent injunction, emphasizing the absence of any presumption of irreparable harm, particularly when the “head start” obtained by the defendant had already run its course. Versata Software, Inc. v. Ford Motor Co., 2023 U.S. Dist. Lexis 188219 at *11 (E.D. Mich. Oct. 19, 2023).)

It is interesting to contrast the opinion in Versata with that in Caudill Seed v. Jarrow, 53 F4th 368, 388-90 (6th Cir. 2022), where the court affirmed a judgment based on a finding of lesser misappropriation than had been claimed, justifying the award as lower than the plaintiff had requested, and backed up by sufficient analysis from the expert to allow the jury to base its award on the value derived by the defendant from savings in research costs.

In what is likely to be seen as one of the more controversial trade secret opinions of the past year, the Second Circuit addressed the issue of avoided cost damages as a measure of unjust enrichment. In Syntel Sterling v. Trizetto, 68 F.4th 792, 811 (2d Cir. 2023), the court vacated a judgment based on an almost $285 million verdict. Trizetto had presented evidence of lost profits from some limited sales, amounting to $8.5 million, but had withdrawn that claim to avoid “double counting” with the avoided cost award. In reversing the trial result, the Second Circuit reasoned that the DTSA was designed to provide unjust enrichment damages only “in instances where the value of the secret is damaged, or worse yet – destroyed.” Id. at 809. In this case, where the trial court had entered a permanent injunction preventing further use or disclosure of the trade secrets, Trizetto retained the use of those secrets, leading the court to conclude that it had not been damaged beyond the $8.5 million. Id. at 810.

The court referred to, but did not define, a required “comparative appraisal” where equitable remedies have been applied, to ensure that avoided costs awards are not “more punitive than compensatory.” Id at 811. It recognized that its ruling might be seen as conflicting with the plain language of the DTSA, as it acknowledged contrary holdings by the Seventh and Third Circuits. Id. at 812-13, n. 42. Curiously, while it expressed its ruling in broadly applicable terms, it also repeatedly stressed that its holding was limited to the facts of this particular case. Time will tell if the Syntel ruling remains an exceptional example of strained analysis applied to an uncomfortable verdict. In the meantime, however, considering that New York state law disallows any trade secret damage award based on avoided costs, E.J. Brooks Co. v. Cambridge Sec. Seals, 31 N.Y.3d 441 (N.Y. 2018), plaintiffs may be well advised to avoid filing suit there if possible.

Other Notable Cases

dmarcian, Inc. v. dmarcian Eur. BV, 60 F.4th 119, 134-141 (4th Cir. 2023) (personal jurisdiction can be based on remote access meetings led by people within the forum).

GateGuard, Inc. v. Amazon.com Inc., 2023 US Dist LEXIS 26905 at *17 (SDNY Feb. 16, 2023) (Computer Fraud and Abuse Act applies to interference with intercom system).

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