March/April 2015
IP Litigator
By John F. Hornick; Margaret A. Esquenet
Authored by Margaret A. Esquenet and John F. Hornick
A trade secret plaintiff typically prefers to avoid identifying its alleged trade secrets with particularity until late in discovery. This may result in the plaintiff claiming as its trade secrets items that it found in documents and information produced by the defendant, some of which may have been the defendant's own trade secrets. This article describes a growing body of law requiring the trade secret plaintiff to identify its alleged trade secrets with reasonable particularity in an initial trade secret disclosure statement before the defendant is required to respond to plaintiff's trade secret-related discovery requests.
Trade secret complaints rarely identify the trade secrets in suit with any particularity, and plaintiffs generally wish to delay such identification as long as possible. The defendant, on the other hand, wishes to obtain a reasonably particular definition of the information plaintiff claims as its trade secrets before producing in discovery the target of the lawsuit or its own secret information. Addressing these conflicting goals, one court said:
It is painfully obvious, therefore, that identification of the trade secrets at issue is the most fundamental and basic aspect of this case. . . . Plaintiff's failure to provide the written trade secrets has, at the very least, prevented defendants from obtaining adequate discovery on the most fundamental issue in the case, from obtaining expert testimony or other similar evidence to confront the allegations of trade secrets, and from adequately preparing a defense for trial.1
Courts also recognize that early identification of the trade secrets in suit notifies the defendant of the particular factual basis of the plaintiff's claim of misappropriation, frames the litigation, and enables the defendant to develop its defenses.2 Another court said: "Clearly until [the plaintiff details its alleged secrets], neither the court nor the parties can know, with any degree of certainty, whether discovery is relevant or not; and it is doubtful whether [the plaintiff] can undertake a meaningful discovery program, which includes its attempt to trace the flow of trade secrets and confidential information through [the defendant]."3 Perhaps DeRubeis v. Witten Tech, Inc.4 best expressed the rationale for requiring plaintiffs to identify the trade secrets in suit early in a case. The court stated that a particularized trade secret identification "ensures that [plaintiff] will not mold its cause of action around the discovery it receives" from defendant.
A reasonably particular trade secret identification is to the plaintiff's and the defendant's benefit. It forces the plaintiff to map out its case from the beginning. It also pins the plaintiff down, limits the plaintiff's ability to mine discovery provided by defendant and claim things found there as additional accused trade secrets, and enables the defendant to understand the scope of plaintiff's claim and to frame defenses. Such defenses may include challenging the trade secret status of some or all of the identification, but such defenses play out much later in the litigation, not as a prerequisite to plaintiff's discovery.
The first possible time for disclosure is at the time the plaintiff files the Complaint. But because Complaints are publicly available and unguarded by a protective order or court seal, the disclosure within the initial pleading would obliterate the very thing the plaintiff intends to protect.5 Considering the issue of timing, one court stated:
Before a defendant is compelled to respond to a complaint based upon claimed misappropriation or misuse of a trade secret and to embark on discovery which may be both prolonged and expensive, the complainant should describe the subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of those persons skilled in the trade, and to permit the defendant to ascertain at least the boundaries within which the secret lies.6
Accordingly, one option is to seek disclosure of the plaintiff's alleged trade secrets before the defendant must file an Answer.
The more likely approach is to seek identification after the Answer is filed but before the plaintiff may obtain discovery from the defendant on the trade secret claim. One court used this approach and explained:
Where, as here, a plaintiff in a trade secret case seeks to discover the trade secrets and confidential proprietary information of its adversary, the plaintiff will normally be required first to identify with reasonable particularity the matter which it claims constitutes a trade secret, before it will be allowed (given a proper showing of need) to compel discovery of its adversary's secrets.7
This requirement is statutory in California.8
Some courts have allowed the specification of the plaintiff's trade secrets well into the discovery process.9 Recognizing the unavoidable confusion occurring when the trade secrets at issue have not been identified, another court commented: "In a recent trade secret case—a case cited by both parties—before this court, the defendants were confused at the time of summary judgment as to the alleged trade secret. The court will not entertain such a dispute at such a late stage in the proceeding again."10 That court found it imperative to know the specific subject matter of the litigation before the motions for summary judgment were filed. Because either party may file for summary judgment during discovery (and possibly even before the commencement of discovery), the court's logic implies that shortly after the Complaint is filed, the plaintiff may be required to identify its trade secrets in suit.
Another court lamented: "[A]fter entry of an appropriate protective order, exact and specific identification of trade secrets should have been the starting point of discovery in this cause, not a matter for disclosure at the eleventh hour."11 Perceiving unfairness to the defendant, the Diversified court precluded previously nondisclosed secrets from trial and the Lynchval court struck belatedly identified trade secrets.
Some federal and state courts have recognized early trade secret disclosure as a substantive requirement of their states' laws. Notably, California has a statutory provision, albeit buried in its code of civil procedure, that requires a plaintiff to disclose its trade secrets with reasonable particularity before it can obtain discovery from defendants. Other states have adopted analogous common law rules.
The catchwords for the scope of plaintiff's trade secret disclosure are "with reasonable particularity."12 California has a statutory requirement.13 Section 2019.210 of the California Code of Civil Procedure provides:
In any action alleging the misappropriation of a trade secret under the Uniform Trade Secrets Act . . . , before commencing discovery relating to the trade secret, the party alleging the misappropriation shall identify the trade secret with reasonable particularity subject to any [protective] orders. (emphasis added).
This provision codifies the state's common law requirement that a trade secret plaintiff must first identify its trade secrets with sufficient particularity before the plaintiff may begin discovery.14 Although the legislative history is sparse, a memorandum circulated among the California legislature stated: "One area not addressed by the Uniform Act is the area of plaintiff's abuse in initiating trade secret lawsuits for the purpose of harassing or even driving a competitor out of business by forcing a competitor to spend large sums in defending unwarranted litigation."15 Accordingly, the California legislature added a layer of protection for a trade secret defendant that is absent from the Uniform Trade Secrets Act.
Because California's Code of Civil Procedure contains the provision, one might incorrectly assume that the rule is procedural, not substantive in nature, and thus inapplicable in federal court. However, the federal court for the Southern District of California determined that the Erie doctrine compelled it to apply Section 2019(d),16 which is the predecessor of § 2019.210. After finding no conflicts with the Federal Rules of Civil Procedure, the court listed three justifications for requiring the plaintiff to provide an early disclosure of its trade secrets with reasonable particularity. First, California enacted the provision concurrently with the remainder of the trade secrets act, and separation of the provision is impossible without frustrating the intent of the California legislature to protect trade secret defendants. Second, if federal courts were to ignore the requirement in former Section 2019(d), plaintiffs would be tempted to forum shop in diversity cases, only filing in federal courts where the absence of the requirement provides the plaintiff a distinct tactical advantage. Third, finding no countervailing federal interests, the court stated, "The statute promotes well-investigated claims, frames the appropriate scope of discovery, prevents needless discovery disputes, and enables defendants to form complete and well-reasoned defenses."17 Thus, the requirement is a part of the substantive trade secret law of California.
Similar to California's statutory rule, Delaware's common law requires a trade secret plaintiff to reveal its trade secrets before beginning discovery. One court summarized:
Where, as here, a plaintiff in a trade secret case seeks to discover the trade secrets and confidential proprietary information of its adversary, the plaintiff will normally be required first to identify with reasonable particularity the matter which it claims constitutes a trade secret, before it will be allowed (given a proper showing of need) to compel discovery of its adversary's trade secrets.18
The initial identification with reasonable particularity, which mimics California's statutory standard, is a well-established requirement of Delaware trade secret law.19
Other courts have imposed similar disclosure requirements on trade secret plaintiffs. For example, while evaluating the merits of a protective order, an Illinois district court cited Delaware case law and prohibited discovery until the plaintiff "particularize[d] which of its secrets were allegedly misappropriated."20 In postponing discovery, the court noted the importance of tailoring discovery requests and ordered the plaintiff to file a "particularized trade secret statement."21
In contrasting California's trade secret law with Florida's trade secret law, a Florida district court found there was no conflict and held that, although lacking a statute similar to California's, Florida trade secret law also required an initial disclosure with reasonable particularity.22 The court reasoned that because a fundamental issue in a trade secret case is whether a trade secret exists, that secret must be revealed to the court and to the defendant. As support for its conclusion, the court examined other jurisdictions, and found that no state reaches a conflicting result.23 Thus, the Florida court granted the defendant's motion to compel, which required the trade secret plaintiff to disclose the asserted trade secrets with reasonable particularity before further discovery occurred.
In considering a motion for a protective order under the California Code of Civil Procedure § 2019, a Virginia district court emphasized the need for plaintiffs to describe trade secrets with sufficient particularity, before discovery would be permitted.24 In that action, the plaintiff served a discovery request on the defendant.25 The defendants objected to any discovery until the plaintiff adequately identified its trade secrets.26 In granting the defendant's motion for protective order, the Virginia court highlighted the need for trade secrets to be described with particularity, even in the absence of a statutory provision such as Section 2019.27 The court stated that requiring the identification of a trade secret with particularity would alleviate the tensions between a plaintiff's need for discovery from the defendant, and a defendant's right to know which trade secrets are the subject of the claims.28 The court also cited case law from other jurisdictions, illustrating the negative effects of a plaintiff's failure to describe its trade secrets adequately.29
In short, the majority view is that when identifying the trade secrets in suit as a prerequisite to discovery, the plaintiff must do so with reasonable particularity.
Some courts have required more than "reasonable particularity." The Diversified Technology,30 case said that the "[e]xact and specific identification of trade secrets should have been the starting point of discovery in this cause, not a matter for disclosure at the eleventh hour." Porous Media Corp. v. Midland Brake, Inc.,31 said the requisite level of detail is the same as would be required in later stages of the litigation, and called this a "common requirement." However, this statement is deceiving because the degree of specificity required by the court was actually consistent with the reasonable particularity standard.
Requiring too much specificity can be an abuse of discretion.32 However, the Perlan court ruled that "the only prejudice to Perlan, even assuming for the sake of argument that the court required too much disclosure under section 2019.210, is that Perlan would be required to disclose information it could be compelled to disclose later under the discovery procedures."33
Some courts have taken different approaches under different circumstances. One court either required no trade secret disclosure at all, or imposed a standard of specificity lower than "reasonable." In Microwave Research Corp. v. Sanders Associates, Inc.,34 the court required only that the plaintiffs "[d]emonstrate a factual basis for their claim and, where possible, identify their alleged trade secrets with some specificity." Later, the same court required no early disclosure at all. In Data General Corp. v. Grumman System Support Corp.,35 the court ruled that evidence produced at trial amply identified Data General's trade secrets and supported the jury's verdict. On the state level, one court applied a floating standard. In Cambridge Internet Solutions v. Avion Group,36 the court required greater specificity with respect to aspects of the trade secrets more susceptible to greater specificity. Later, a different judge of the same court ruled that "[b]efore any discovery relating to trade secrets themselves is permitted, this Court must revisit the issue of the plaintiff's designation of what it is that they claim are trade secrets."37 Seemingly exceeding the "reasonable particularity" standard of the majority view, the court ordered the plaintiffs to set forth their trade secrets with "rigorous and focused particularity."38 The seemingly higher standard here probably is attributable to the fact that such identification was ordered on the eve of trial, not at the commencement of discovery, and the court was giving the plaintiff one last chance to identify its trade secrets. Moreover, the same judge, Judge Van Gestel, applied the reasonable particularity standard several years earlier in a pre-discovery ruling.39
So how much is enough? One commentator suggested that a "workable definition might be that the plaintiff should provide the defendant with a general outline of its trade secrets sufficient to allow the defendant to assess the relevancy of the requested discovery and to assure the defendant (and the court) that the defendant is not the victim of a fishing expedition."40 This approach may miss the mark, for reasons discussed infra.
One court held the following list was wholly inadequate:41
The plaintiff believed the defendant misappropriated information regarding its canisters and coalescers, but the six-item list begs this question: But what, exactly, are the trade secrets? Accordingly, the court ruled that the plaintiff had not specified its trade secrets with reasonable particularity.
Requiring a trade secret identification before plaintiff begins discovery should not be confused with requiring the plaintiff to prove its case in chief at such an early stage of the litigation.42 If the latter were the law, every defendant's motion to compel an identification of trade secrets (or every defendant's motion for a protective order against discovery prior to the trade secret identification) would become a motion for summary judgment on the plaintiff's trade secret claim. At the discovery stage, the issue is not the merits of the plaintiff's claim, but whether plaintiff has identified the universe of information that it claims as its trade secrets with reasonable particularity. In Perlan, the California Court of Appeals said:
If the court meant that Perlan was required to convince the court (as a fact finder) that the purported trade secrets are actually secret, it would constitute legal error. Perlan is not required to convince defendants or the court in its section 2019.210 statement that its alleged trade secrets are not generally known to the public. This is an element of their case that must be proved, but not at the pre-discovery stage of the action. The holding of Advanced Modular is that if a plaintiff makes a sufficient showing under section 2019.210 (through an expert or otherwise), the fact that defendant (or an expert) submits contrary evidence if inconsequential. This is true even if there is undeniable evidence that the plaintiffs' purported trade secret is actually public knowledge. "The statute . . . does not create a procedural device to litigate the ultimate merits of the case—that is, to determine as a matter of law on the basis of evidence presented whether the trade secret actually exists." (Brescia . . .172 Cal.App.4th at 149).43
In I-Flow,44 which applied California's Section 2019 reasonable particularity requirement, the court stated that "most courts agree that section 2019 disclosures must distinguish the party's claimed trade secrets from matters generally known to those skilled in the trade, and must contain a high level of detail in a highly technical field." This may sound like the court required the plaintiff to prove a very important part of its case as a prerequisite to discovery, namely, that its alleged trade secrets were in fact trade secrets. But the evidence the court accepted as satisfying the plaintiff's disclosure obligation was a conclusory declaration of I-Flow's officer, even though it was contradicted by a declaration of defendant's expert. The I-Flow court ruled that the plaintiff need only distinguish "with sufficient particularity the information which it alleges is protected as a trade secret," even if some of the information in the trade secret disclosure is publicly available or generally known in the field.45
Similarly, in Advanced Modular Sputtering,46 the court said:
plaintiff must make some showing that is reasonable, i.e., fair, proper, just and rational . . . under all of the circumstances to identify its alleged trade secret in a manner that will allow the trial court to control the scope of subsequent discovery, protect all parties' proprietary information, and allow them a fair opportunity to prepare and present their best case or defense at a trial on the merits.47
In analyzing Advanced Modular Sputtering, the Perlan court later said:
The court did not erroneously conduct a hearing on the merits of whether Perlan actually had any trade secrets. Instead, the court found the trade secret statement and the expert declarations submitted by Perlan to be conclusory on the question of what precisely was not known to the public. Perlan did not explain "how" its alleged trade secrets were novel.48
The Perlan court also said:
The evidentiary quality of defendants' submissions is largely irrelevant to the question of whether the trial court had discretion to reject Perlan's statement as insufficient. If Perlan made its showing with reasonable particularity, defendants cannot defeat such disclosure by submitting better evidence.49
Thus, a trade secret plaintiff must identify what is alleged to be novel, not how, why, or that it is novel. Nevertheless, the Perlan court found that plaintiff's trade secret identification was inadequate because:
Perlan did not segregate its alleged trade secrets (by, e.g., listing them numerically in the statement). Perlan did not clearly explain how its secrets (or secret combinations of publicly available processes) differed from publicly available knowledge. Perlan included a large amount of "surplusage" in its statement, such as legal objections, factual allegations, and reservations of right. Perlan referenced hundreds of pages of extra documents.50
Staffbridge also is instructive here. In that case, Judge Van Gestel required the plaintiff to separate its alleged trade secrets from the "vast body" of plaintiff's own source code, not from general knowledge or the public domain.51
Advanced Modular Sputtering said it best. In an issue of first impression under Section 2019, the court ruled that "'reasonable particularity' does not mean [Plaintiff] has to define every minute detail of its claimed trade secret at the outset of the litigation," "[n]or does it require a [court] to conduct a miniature trial on the merits of a misappropriation claim before discovery may commence."52 Echoing Advanced Modular Sputtering, the Brescia court said:
"Reasonable particularity" . . . does not mean that the party alleging misappropriation has to define every minute detail of its claimed trade secret at the outset of the litigation. Nor does it require a discovery referee or a trial court to conduct a miniature trial on the merits of a misappropriation claim before discovery may commence. Rather, it means that the plaintiff must make some showing that is reasonable, i.e., fair, proper, just and rational . . . under all of the circumstances to identify its alleged trade secret in a manner that will allow the trial court to control the scope of subsequent discovery, protect all parties' proprietary information, and allow them a fair opportunity to prepare and present their best case or defense at a trial on the merits.53
However, both Advanced Modular Sputtering and Perlan recognized that when the alleged secrets are incremental variations on, or advances in, the state of the art in a highly specialized technical field, "a more exacting level of particularity may be required to distinguish the alleged trade secrets from matters already known to persons skilled in that field."54
The subject of the trade secret identification is the plaintiff's universe of trade secrets in suit, not the secrets actually misappropriated and used or disclosed by the defendants.55 At the initial stage of discovery, a plaintiff in trade secret litigation rarely knows exactly what trade secrets were stolen. But it does know what trade secrets it has, and this is the subject of the trade secret identification. To require instead, or in addition, that the plaintiff identify as discovery just precisely which trade secrets the defendant actually misused would defeat discovery's very purpose, substantially increase the plaintiff's likelihood of failure, and effectively deprive the plaintiff of the benefit of discovery.
Thus, as a discovery prerequisite, trade secret plaintiffs should be required to identify only the universe of trade secrets from which the defendant stole, with reasonable particularity. The trade secrets wrongfully used and/or disclosed by the defendants would be a subset of this universe, and such subset almost always can be learned only in discovery.
However, at least one court ruled that the trade secret plaintiff must identify both the trade secrets in suit and the misappropriated trade secrets before certain discovery could proceed.56 Problems with such a requirement are discussed above. It is possible, but not entirely clear, that such problems may be mitigated if the plaintiff can supplement both identifications as discovery proceeds.57
As the Brescia court said, "the [trade secret] designation should be liberally construed, and reasonable doubts about its sufficiency resolved in favor of allowing discovery to go forward." Thus, trade secret identification should not be confused with the scope of discovery permissible under Federal Rules of Civil Procedure 26(b)(1). In fact, the specification of the trade secrets "is a starting point for more particular discovery."58 On this point, the Perlan court observed that:
Of course, Perlan is concerned that a narrow identification of its purported trade secrets will place constraints on discovery which could theoretically prevent it from ever finding out about trade secrets that were stolen. This is conceivable. But is important to remember that parties may conduct discovery "regarding any matter, not privileged, that is relevant to the subject matter involved in the pending action . . . if the matter either is itself admissible in evidence or appears reasonably calculated to lead to the discovery of admissible evidence."59
Although Perlan applies California procedure, the Federal Rules of Civil Procedure establish a substantively identical standard.
Regardless of the content of plaintiff's disclosure, and assuming that it meets the reasonable particularity standard, the scope of discovery permitted by Rule 26(b)(1) should not change. Rule 26(b)(1) provides that "Parties may obtain discovery regarding any non-privileged matter that is relevant to any party's claim or defense . . . Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." In other words, a trade secret plaintiff should be entitled to discovery under this standard regardless of whether or not it is likely to prevail on the merits of its trade secret claim. Thus, trade secret identification may be a prerequisite to a plaintiff's ability to obtain trade secret-related discovery, but should not affect the scope of discovery permissible under Rule 26(b)(1). However, the trade secret identification can affect the scope of the defendant's discovery because it fleshes out the scope of the plaintiff's claims, enables the defendant to formulate defenses, and sets the limits for discovery of information that may be reasonably calculated to lead to the discovery of admissible evidence.
Thus, the requirement that a plaintiff identify its trade secrets with reasonable particularity serves a gatekeeper function regarding discovery. But that function is not to narrow the scope of discovery otherwise available to plaintiffs, to require trade secret plaintiffs to prove their trade secrets are in fact secret before such discovery, or to prove what trade secrets Defendants stole. That function is merely to require a trade secret plaintiff to identify the universe of trade secrets from which the defendants stole, before normal discovery can proceed.
A trade secret plaintiff may be able to identify its trade secrets with reasonable particularity in ways other than providing a written identification. In Touchpoint Solutions, Inc. v. Eastman Kodak Co.,60 the court ruled that document production can substitute for or supplement a trade secret identification, and that the plaintiff's source code and overall software design adequately identified the plaintiff's trade secret. Similarly, Cambridge Internet Solutions,61 ruled that the plaintiff's business plan sufficiently identified its trade secrets. Obviously, a hybrid combination of a written identification and the production of documents may satisfy the reasonable particularity standard.
The plaintiff also may wish to obscure integrated secrets, such as individual process steps within a complex production process, by providing an overly detailed statement of the process.62 As a result, the defendant might complain that the plaintiff 's trade secret disclosure is too detailed to be useful. However, in a dispute over the process for making chicken pox vaccine, one court determined that a 37-page initial trade secret disclosure statement describing the entire process sufficiently notified the defendant of the narrower claims of misappropriation of portions of that process.63 Accordingly, a broad but reasonably particular disclosure may be sufficient, and may be focused through subsequent discovery.
By contrast, a broad but unspecific assertion of a multitude of trade secrets may not adequately notify the defendant of the disputed issues.64 One court ruled that the larger the number of potential trade secrets, the greater the need to be specific, because the defendant should not be forced to use discovery to determine the basic issues of the case.65
Situations may exist in which the reasonably-particular-disclosure rule should not apply. For example, there may be no need to shield the defendant from trade secret discovery when it uses the disclosure rule to obtain an unfair advantage. For example, the rule should not apply when the defendant obtains comprehensive discovery from the plaintiff, stalls its own discovery responses and production of documents, and then moves for a protective order to block plaintiff's discovery until plaintiff identifies its trade secrets with reasonable particularity. The trade secret disclosure rule is an equitable rule. As the saying goes, "to obtain equity one must do equity."
An exception also may arise when the defendant's product is commensurate with the plaintiff's trade secret. In other words, the accused product is nothing more or less than the trade secret, and the trade secret is nothing less or more than the accused product.
Another possible exception is the situation in which the defendant misappropriates the big idea. Also, the project to bring the big idea to market may be a secret project. Once the idea comes to market, it is no longer secret. However, before coming to market secrecy is crucial, so that a competitor does not take the idea and beat it to the market. Here, the devil is not in the details. The details of the trade secret may not be particularly innovative, but the idea itself, and the secrecy of the project, are extremely valuable. Once the defendant learns the big idea, he knows enough to misappropriate it, regardless of the details. In this situation, the trade secret, and the project to bring it to market, ARE the big idea, and no trade secret identification may be necessary.
Of course the reasonable identification rule usually will not apply to discovery directed to another claim, defense, or counterclaim. Although California's Section 2019.210 and a growing body of case law may protect defendants from discovery regarding plaintiff's trade secret claim until after such secrets are identified with reasonable particularity, discovery on other claims, defenses, and counterclaims usually is fair game. But even here the rule may sometimes apply, for example, if the other claim(s) depend entirely on the trade secret claim or where the facts underlying all of the claims are intertwined.
Based on the cases and the California statute, a reasonable argument can be made that trade secret plaintiffs should be required to provide an initial trade secret disclosure with reasonable particularity as a prerequisite to commencing trade secret discovery, subject to various exceptions. In most cases, the application of the rule is likely to balance the conflicting goals of plaintiffs and defendants in trade secret cases.
Endnotes
1 Diversified Tech., Inc. v. Dubin, 31 U.S.P.Q.2d 1692, 1695 (S.D. Miss. 1994) (opinion withdrawn from bound volume by court).
2 Computer Economics, Inc. v. Gartner Group, 50 F. Supp.2d 980, 985 (S.D. Cal. 1999); see also Neothermia Corp. v. Rubicor Med. Inc., 345 F. Supp.2d 1042, 1044 (N.D. Cal. 2004).
3 Xerox Corp. v. Int'l Bus. Machs. Corp., 64 F.R.D. 367, 371-372 (S.D.N.Y. 1974).
4 DeRubeis v. Witten Tech, Inc., 224 F.R.D. 676, 681 (N.D. Ga. 2007).
5 Diodes, Inc. v. Franzen, 67 Cal. Rptr. 19, 24 (Cal. Ct. App. 1968); see also Dick Corp. v. SNC-Lavalin Constructors Inc., No. 04 C1043, 2004 WL 2967556, at *9 (N.D. Ill. Nov. 24, 2004).
6 Diodes, 67 Cal. Rptr. 19, 24 (Cal. Ct. App. 1968 ) (emphasis added).
7 Engelhard Corp. v. Savin Corp., 505 A.2d 30, 33 (Del. Ch. 1986); see also Savor Inc. v. FMR Corp., No. Civ. A 00C-10-149JRS, 2004 WL 1965869, at *2 (Del. Super. Ct. July 15, 2004) (unpublished opinion); L-3 Communications Corp. v. Reveal Imaging Techs., Inc., No. 035810BLS, 2004 WL 2915743, at *13 (Mass. Super. Ct. Dec. 2, 2004).
8 Cal. Civ. Proc. Code § 2019.210.
9 Xerox Corp. v. Int'l Bus. Machs. Corp., 64 F.R.D. 367, 371 (S.D.N.Y. 1974).
10 Combined Metals of Chicago, L.P. v. Airtek, Inc., 985 F. Supp. 827, 832 (N.D. Ill. 1997) (citation omitted).
11 Diversified Tech., 31 U.S.P.Q.2d at 1695; see also Lynchval Sys., Inc. v. Chicago Consulting Actuaries, Inc., 49 U.S.P.Q.2d 1606, 1610-1611 (N.D. Ill. 1998).
12. See, e.g., Engelhard, 505 A.2d at 33; Cal. Civ. Proc. Code § 2019(d) (West 2001); Omniplex World Servs. Corp. v. Sci. Applications Int'l Corp., No. 00-728-A, slip op. at 6-7 (E.D. Va. July 13, 2000) (unpublished court order); Diodes, 67 Cal. Rptr. at 24 ("Sufficient particularity to separate it from matters of general or special knowledge in the trade" and "To permit the defendant to ascertain at least the boundaries within which the secret lies"); Automed Techs., Inc. v. Eller, 160 F. Supp.2d 915, 926 (N.D. Ill. 2001) ("particularized"); Del Monte Fresh Produce Co. v. Dole Food Co., 148 F. Supp.2d 1322, 1324-1325 (S.D. Fla. 2001); Imax Corp. v. Cinema Technologies, Inc., 152 F.3d 1161, 1164-1165 (9th Cir. 1998) ("sufficient particularity" and "reasonable specificity"); I-Flow Corp v. Apex Med. Technologies, Inc., 87 U.S.P.Q.2d 1470 (SD Cal. 2008); Bonacoroso Constr. Co. v. Master Builders, Inc., 20 U.S.P.Q. 1215 (D. Mass. 1991) (on summary judgment); L-3 Communications Corp v. Reveal Imaging Techs., Inc., No. 035810BLS, 2004 WL 2915743, at *13 (Mass. Super. Ct. Dec. 2, 2004); Gentex Corp. v. Sutter, No. 3:07-cv-1269, 2008 WL 5068825 (M.D. Pa. November 25, 2008); Brescia v. Angelin, 90 Cal. Rptr. 842, 849 (Cal. Ct. App. 2009); Advanced Modular Sputtering, Inc. v. Superior Court, 33 Cal. Rptr.3d 901, 908 (Cal. Ct. App. 2005); Perlan Therapeutics Inc. v. Superior Court, 92 U.S.P.Q.2d 1878 (Cal. Ct. App. 209).
13 See Computer Economics, 50 F. Supp.2d at 984 n.3; Neothermia, 345 F. Supp.2d at 1043.
14 Computer Economics, 50 F. Supp.2d at 983-984 (S.D. Cal. 1999).
15 Id. at 985 n.6 (citing Memorandum from Messrs. John Carson and Greg Wood to Assemblyman Harris re: Assembly Bill 501).
16 Id. at 986-993.
17 Id. at 993; see also Neothermia, 345 F. Supp.2d at 1044.
18 Engelhard, 505 A.2d at 33 (emphasis added); see also Savor, 2004 WL1965869 at *6.
19 See, e.g., Struthers Scientific Int'l Corp., 51 F.R.D. 149, 154 (D. Del. 1970); Leucadia, Inc. v. Applied Extrusion Techs., Inc., 755 F. Supp. 635, 637 (D. Del. 1991).
20 Automed Techs., 160 F. Supp.2d at 926.
21 Id.
22 Del Monte Fresh Produce, 148 F. Supp.2d at 1324-1325.
23 Id. at 1325.
24 Omniplex World Servs., No. 00-728-A (E.D. Va. July 13, 2000) (unpublished court order).
25 Id. at 3.
26 Id.
27 Id. at 6.
28 Id.
29 Id. at 7.
30 Diversified Tech., 31 U.S.P.Q.2d at 1695.
31 Porous Media Corp. v. Midland Brake, Inc., 187 F.R.D. 598, 599-600 (D. Minn. 1999).
32 Perlan, 92 U.S.P.Q.2d at 1879 ("Two recent cases make clear that trial courts can require too much particularity in a trade secret statement and thereby abuse their discretion under Section 2019.210," citing Brescia and Advanced Modular Sputtering).
33 Perlan, 92 U.S.P.Q.2d at 1889.
34 Microwave Research Corp. v. Sanders Assoc., Inc., 110 F.R.D. 669, 673 (D. Mass. 1986).
35 Data Gen. Corp. v. Grumman Sys. Support Corp., 825 F. Supp. 340, 357-358 (D. Mass. 1993).
36 Cambridge Internet Solutions v. Avion Group, 10 Mass. L. Retr. 539, 1999 WL 959673, *2 (Mass. Super., Sept. 21, 1999) (citing Microwave Research).
37 Staffbridge, Inc. v. Gary D. Nelson Assocs., Inc., No. 0124912BLS, 2004 WL 1429935, at *2 (Mass. Super. June 11, 2004) (unpublished opinion).
38 Id. at 4.
39 L3 Communications v. Reveal, 2004 WL 2915743, at *13 (Mass. Super. 1986).
40 Kevin R. Casey, "Identification of Trade Secrets During Discovery: Timing and Specificity," 24 A.I.P.L.A. Q.J. 191, 254 (1996).
41 Porous Media, 187 F.R.D. at 599.
42 Perlan, 92 U.S.P.Q.2d at 1888.
43 Id. (emphasis in original).
44 I-Flow, 87 U.S.P.Q.2d at 1472.
45 Id. at 1474 (emphasis added).
46 Advanced Modular Sputtering, 132 Cal. App.4th at 836.
47 Id. at 835–836.
48 92 USPQ2d at 1888.
49 Id.
50 Id. at 1889.
51 Staffbridge, 2004 WL 1429935 at * 3.
52 Advanced Modular Sputtering v. Superior Court, 132 Cal.App.4th 826, 835-836 (2005).
53 Brescia v. Angelin, 90 Cal Rptr.3d 842, 849 (Cal. Ct. App. 2009) ("What is required is not absolute precision, but 'reasonable particularity' "); see also Perlan, 92 U.S.P.Q.2d at 1887.
54 Advanced Modular Sputtering, 132 Cal App.4th at 836, Perlan, 92 U.S.P.Q.2d at 1885-1888.
55 Perlan, 92 U.S.P.Q.2d at 1887.
56 SinterFire, Inc. v. Int'l Cartridge Corp., Civ. No. 2007-107, at 3-4 (Ct. Com. Pl. 59th Jud. D. Pa., Oct. 30, 2009); see also Perlan, 92 U.S.P.Q.2d at 1889, n. 14.
57 Gentex Corp. v. Sutter, 2008 WL 5068835 (M.D. Pa. 2008), Perlan, 92 U.S.P.Q.2d 1887-1888 (citing other cases), and n.14.
58 Porous Media Corp. v. Midland Brake, Inc., 187 F.R.D. 598, 599 (D. Minn. 1999); see also IDX Sys. Corp. v. Epic Sys. Corp., 285 F.3d 581, 583-584 (7th Cir. 2002); Del Monte Fresh Produce, 148 F. Supp.2d at 1324-1325.
59 Perlan, 92 U.S.P.Q.2d at 1887, n.12.
60 Touchpoint Solutions, Inc. v. Eastman Kodak Co., 345 F. Supp.2d 23, 28 (D. Mass. 2004).
61 Cambridge Internet Solutions, 10 Mass. L. Retr. 539, 1999 WL 959673, *2.
62 SmithKline Beecham Pharm. v. Merck & Co., 766 A.2d 442, 447 (Del. 2000).
63 Id.
64 IDX Sys., 285 F.3d 581, 583-584.
65 Del Monte Fresh Produce, 148 F. Supp.2d at 1326
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