PROVING (AND DISPROVING) TRADE SECRETS Dennis Murrell Robert
Theuerkauf
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THE GREAT CASE HIRED BY COCA COLA MOST FAMOUS TRADE SECRET CEO
LEFT FOR NEW COMPETITOR WHO NOW HAS A COMPETING PRODUCT
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THE CLIENT INTERVIEW
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UTSA " Trade Secret" means information, including a formula,
pattern, compilation, program, device, method, technique, or
process, that: (i) 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, and(ii) is the subject
of efforts that are reasonable under the circumstances to maintain
its secrecy. UTSA adopted by all states exception New York, North
Carolina and Massachusetts
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PEMBERTONS RECIPE CIVIL WAR VETERAN ADDICTED TO MORPHINE
ORIGINAL: KOLA NUT AND COCA WINE CHANGED IN 1886
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COCA-COLA COMPANY BUYS RECIPE BOUGHT IN 1887 ASA CANDLER
INSISTED IT NOT BE WRITTEN DOWN REMOVED ALL LABELS SHREDDED
INVOICES
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MODERN EFFORTS AT SECURITY
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HAS VALUE HUNDREDS OF COMPETING PRODUCTS 46 BILLION IN SALES IN
2013 SOLD IN OVER 200 COUNTRIES 40% OF MARKET SHARE
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DAMAGES AVAILABLE LOST PROFITS UNJUST ENRICHMENT PUNITIVE
DAMAGES ATTORNEYS FEES
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WHAT VENUE? UTSA CREATURE OF STATE LAW CAN BE OUTCOME
DETERMINATIVE CALIFORNIA: CIVIL PROCEDURE SECTION 2019.210 REQUIRES
PLAINTIFF TO IDENTIFY THE TRADE SECRET WITH REASONABLE
PARTICULARITY PRIOR TO ANY DISCOVERY
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STRATEGIC ISSUES FOR DEFENSE NARROWING DEFINITION OF TRADE
SECRET PRIOR TO DISCOVERY REQUEST IMMEDIATE IDENTIFICATION POSSIBLY
SEEK PROTECTIVE ORDER ESTABLISH PUBLIC DOMAIN INDEPENDENT
DEVELOPMENT ELIMINATE OTHER CLAIMS
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SEEK A PROTECTIVE ORDER MANY COURTS BELIEVE THAT IT IS
APPROPRIATE TO REQUIRE A TRADE SECRET OWNER TO STATE ITS CLAIMED
TRADE SECRETS BEFORE IT ENGAGES IN DISCOVERY FROM THE DEFENDANT
ABOUT THE DEFENDANTS USE OF THE TRADE SECRETS. Brent J. Gurney,
Joshua T. Ferrentino, and Alexander B. White, Benefits of Early
Discovery in Defending Trade Secret Misappropriation Claims, New
York Law Journal, Vol. 249, No. 113 (2013)
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FOUR PRINCIPAL REASONS WEEDS OUT MERITLESS, SPECULATIVE CLAIMS.
OTHERWISE PLAINTIFFS WILL MOLD CLAIMS AROUND DISCOVERY. COURT
SHOULD FREEZE PLAINTIFFS CLAIMS. EARLY DISCLOSURE OF TRADE SECRETS
PROVIDES BASIS FOR DETERMINING RELEVANCY OF PLAINTIFFS DISCOVERY
DEFENDANTS CAN ARTICULATE DEFENSES WHEN CLAIMS ARE SPECIFIC, NOT
GENERAL PREVENTS ABUSE OF DISCOVERY PROCESS FOR COMPETITIVE
ADVANTAGE
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COURTS REQUIRING SPECIFIC DISCLOSURE ADDITION TO CALIFORNIA
CODE XEROX CORP. V. IBM, 64 FRD 367 (SDNY) LOCTITE CORP V. FEL-PRO,
INC., 28 FED. R. SERV 2 ND 99 (N.D. ILL) POROUS MEDIA CORP. MIDLAND
BRAKE, INC., 187 FRD 598 (D. MINN) DEL MONTE FRESH PRODUCE CO. V.
DOLE FOOD CO., 148 F. SUPP 2D 1322 (S.D. FLA)
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WHAT CONSTITUTES SPECIFIC DISCLOSURE? MUST BE SPECIFICALLY
IDENTIFIED IT IS NOT ENOUGH TO POINT TO BROAD AREAS OF TECHNOLOGY
AND ASSERT THAT SOMETHING THERE MUST HAVE BEEN SECRETY AND
MISAPPROPRIATED. THE PLAINTIFF MUST SHOW CONCRETE SECRETS.
COMPOSITE MARINE PROPELLERS, INC. V. VAN DER WOUDE, 962 f.2D 1263
(7 TH CIR. 1992)
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COMPOSITE MARINE PROPELLERS DEFENDANT HAD SPECIFIC TRADE
SECRETS IDENTIFIED JURY FOUND FOR PLAINTIFF TRIAL COURT OVERTURNED
7TH CIRCUIT AFFIRMED
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THE SPECIFIC SECRETS (1) propeller blade flex (2) marketing
plans and strategies (3) gas counter backpressure in molding (4)
water line configuration in the molds (5) hub cooling methods in
molding (6) secondary sprue trimming (7) material characteristics
(8) test data.
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ESTABLISH INDEPENDENT DEVELOPMENT AFFIRMATIVE DEFENSE? ELEMENT
OF PLANTIFFS PROOF? WHY THAT MATTERS EXAMPLE: THIRD CIRCUIT HELD
THAT PLAINTIFF STILL HAS BURDEN OF PROOF IN INDEPENDENT DEVELOPMENT
CASES MOORE V. KULICKE & SOFFA INDUSTRIES, INC., 318 F. 3D 561
(3 RD Cir. 2003)
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ELIMINATE OTHER CLAIMS TYPICAL COMMON LAW CLAIMS ARE ALSO
ASSERTED IF CLAIMS ARE BASED ON SAME PROPERTY OR SECRET, MAY BE
PREEMPTED REMOVE PLAINITFFS SAFETY NET Christopher Ruhland,
Strategies for Defending Against Trade Secret Suits, Law360
(2011)
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IN OUR CASE WHAT WOULD BE ENOUGH? WHAT COMBINATION OF
INGREDIENTS MAKES IT A TRADE SECRET WHAT WOULDNT BE KNOWN BY
CHEMICAL ANALYSIS WHAT WOULDNT BE COMMON WHAT HASNT BEEN
DISCLOSED
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IS THE FORMULA REALLY A SECRET? THIS AMERICAN LIFE FEBRUARY 11,
2011 PEMBERTONS RECIPE EVERETT BEALS RECIPE BOOK
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THE RECIPE
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IS IT REALLY A SECRET?
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PRACTICE POINTER 02 MICRO INTERNATIONAL LTD. v. MONOLITHIC
POWER SYSTEMS, INC. JURY ISSUE ON 11 TRADE SECRETS JURY ONLY FOUND
5 DAMAGE EXPERTS DIDNT APPLY TO VALUES TO EACH SECRET JUDGMENT AS A
MATTER OF LAW FOR DEFENDANT
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CONCLUSION MAYBE NOT EVERY LAWSUIT SHOULD BE BROUGHT!
