1. IDENTIFICATION OF Trade secrets IN LITIGATION
James Pooley
ADVANCED PATENT law DECEMBER 15, 2017

2. Influence of california law
Diodes v. Franzen, 260 CA2d 244 (1968) (pleading)
CUTSA in 1985, added CCP § on sequencing discovery
“before commencing discovery relating to the trade secret, the party alleging the misappropriation shall identify the trade secret with reasonable particularity ”
Brescia v. Angelin, 172 CA4th 133 (2009) (not enough to point to a stack of documents, but no explanation required, only identification)
Advanced Modular Sputtering v. Sup. Ct., 132 CA4th 826 (2005) (in technical case, experts can help court decide)
Computer Economics v. Gartner, 50 FS2d 980 (S.D.Cal. 1999) (2019 can be applied in federal court in California)
Del Monte v. Dole, 148 FS2d 1322 (S.D.Fla. 2001) (applied 2019)

3. Impact of dtsa No heightened pleading requirement under the DTSA
Sleekez, LLC v. Horton, 2017 WL (D. Mont. Apr. 21)
Standard for identification in complaint still unclear
Space Data v. X, 16-cv BLF (N.D. Cal. Feb. 16, 2017): motion to dismiss granted (with leave) for failure to be more specific than “data on the environment in the stratosphere” and the like.
Mission Measurement v. Blackbaud, 216 F.Supp.3d 915 (N.D. Ill. 2016): general categories sufficient at the pleading stage; motions to dismiss and for more definite statement denied (argument that plaintiff must “allege its trade secrets with ‘particularity’ is not supported by case law or the federal pleadings standards).

4. Case management issues
When and how to address the issue
What to do with closely related claims (NDAs, noncompetes)
What to do about “negative secrets”
How to handle amendment by the plaintiff
Sequencing discovery
Should there be a presumption, borrowing from 2019?
Exception for injunction applications?
Exception where defendant has uniquely superior knowledge?
Need to know what has been misappropriated?

5. Factors to consider on “reasonable” particularity
Legitimate competing interests
Concern over “fishing expedition”
Format of document
Analogous to patent claims?
Reference to other documents
Nature of the secret (formula vs. R&D)
Ability to compare to public domain and personal skill
Timing: injunction or SJ following discovery, or trial

6. JAMES POOLEY www.pooley.com +1 650 285 8520
Thank you!
JAMES POOLEY