A recent decision issued by the U.S. Court of Appeals for the Third Circuit in Mallet & Co., Inc. v. Lacayo, 16 F.4th 364 (3d Cir. 2021), illustrates the importance of the identification requirement. The case involved competitors in the sale of baking release agents, which allow baked goods to separate from baking pans. Id. at 369. Mallet alleged that two of its employees misappropriated its trade secrets when they left to join a competitor. Id. The U.S. District Court for the Western District of Pennsylvania issued a preliminary injunction finding that Mallet was likely to succeed on its trade secret misappropriation claim. Id. On appeal, the Third Circuit vacated the injunction issued by the district court because the order did not adequately identify the trade secrets at issue, holding that “[w]ithout knowing what particular information Mallett claims as trade secrets, we cannot assess its likelihood of success in establishing that the information the Defendants acquired, disclosed, or used is trade secret information or that misappropriation of a trade secret has occurred.” Id. at 379–88.
Sedona Conference Guidelines
The Sedona Conference’s Commentary on the Proper Identification of Asserted Trade Secrets in Misappropriation Cases offers helpful proposals regarding the timing, particularity, and amendment of identification of trade secrets.
Principle No. 2 of the Commentary addresses the timing of the identification of trade secrets, proposing that “[t]he party claiming misappropriation of a trade secret should identify in writing the asserted trade secret at an early stage of the case.”
Where the plaintiff seeks preliminary relief, the Commentary proposes that the plaintiff should identify the asserted trade secret as part of the process of seeking that relief, unless the plaintiff is simply seeking return and preservation of documents containing alleged trade secrets. (See Guidelines 1, 8.) Where the plaintiff is not seeking preliminary relief, the Commentary proposes that the plaintiff should identify the asserted trade secret by the outset of merits discovery. (See Guideline 2.)
Principle No. 3 of the Commentary addresses particularity, proposing that “[t]he party claiming the existence of a trade secret must identify the asserted trade secret at a level of particularity that is reasonable under the circumstances.” Relevant considerations include: whether the case involves small businesses or large corporations, the type of information and technology at issue, the urgency of the need for relief, the nature of the relief sought, and whether the identification is being filed publicly or under seal pursuant to a protective order. (See Guidelines 3–4.)
Principle No. 4 of the Commentary addresses amendment, proposing that “[t]he identification of an asserted trade secret may be amended as the case proceeds.” Relevant considerations include: whether the party seeking to amend was diligent, whether the opposing party would be prejudiced by amendment, whether the proposed amendments are based on facts newly learned in discovery, the stage of litigation, the impact of amendment on the trial date, whether previous attempts at amendment have been made, and whether the amendment “simply clarifies or explains a prior identification or whether it materially alters or expands a prior identification.” (Commentary at 264–264.)
Strategic Tips on the Issue of Identification of Trade Secrets for Ltigators
- Work closely with business representatives, and technical experts as appropriate, early in the case to identify alleged trade secrets.
- Avoid the “kitchen sink” approach.
- Move for leave to amend as soon as possible if discovery reveals new or additional trade secret misappropriation.
- Consider a motion for a more definite statement, to require the plaintiff to identify trade secrets with specificity.
- Consider a motion for a protective order that discovery be delayed until after the plaintiff sufficiently identifies the alleged trade secrets.
- As an alternative to a motion for a protective order, object to discovery requests on the basis that the plaintiff has not sufficiently identified the alleged trade secrets.
Sarah A. Horstmann is a shareholder with Fredrikson & Byron, P.A., in Minneapolis, Minnesota.
Terrance C. Newby is a partner with Maslon LLP in Minneapolis, Minnesota.
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