DC Circuit: USA v. Shan Shi

 

Even absent testimony from cooperating witnesses that the deft had entered into the trade secret conspiracy, there was sufficient substantial evidence for the finder of fact to conclude from the circumstances that such a tacit conspiracy existed, and that the deft had agreed to join it.

Sufficient evidence to indicate that at least two conspirators believed that the appropriated information contained trade secrets.

CONCURRENCE:

The government didn't misrepresent the evidence.

CONCURRENCE:

The government misrepresented the evidence.

USA v. Shan Shi

Federal Circuit: Depuy Synthes Products v. Veterinary Orthopedic

 

Sufficient jurisdiction under collateral order doctrine to review an unsealing of confidential supplier lists, as post-judgment review would be after the disclosure, and the question is important and distinct from the merits analysis, not merely a routine discovery matter.

No clear error in the unsealing of the claimed trade secret supplier lists, since, following the relevant state law on trade secrets, the party and the supplier do not have a relationship of confidence, and, additionally, the name of the supplier isn't actually a secret.

Depuy Synthes Products v. Veterinary Orthopedic

Fifth Circuit: Six Dimensions, Incorporated v. Perficient, Inc.

 

District court "misapplied" its discretion by recognizing two contracts in its holding, but only reversing its holding as to one on the motion to reconsider due to the fact that the other party had not argued the second contract; the other party was not sufficiently put on notice by one sentence mentioning the agreement in a brief.

Statute's categorical bar on contractual restrictions on subsequent employment, followed by closely defined exceptions, creates a presumption that the statute ratifies the common law antipathy to such restrictions, rather than a rule of reason.

State consumer protection law in the state law elected in the contract doesn't apply, as there is a common law presumption against its extraterritorial exception, and no conduct harming consumers occurred in the state.

Continued possession of potential trade-secret materials from prior employer insufficient to establish acquisition under the law of the state.

Six Dimensions, Incorporated v. Perficient, Inc.

First Circuit: TLS Mgmt. and Mktg. Ser. LLC v. Rodriguez-Toledo

A client file compiled by an asserted secret process containing asserted secret insights is not itself protected as a trade secret absent a division of public and nonpublic material within it and a specific claim for certain nonpublic material or processes.

A claim of trade secret for a business process must establish more than the fact that it is not known -- the claim must also establish that it is not ascertainable from public sources.

Nondisclosure agreements implicate the same public policy concerns of the forum state as do non-compete clauses.   Here, the agreements' broad scope, including general knowledge acquired on the job, particular knowledge acquired that was already public knowledge, and information provided by third parties, make the agreements unenforceable under the public policy exception.  Courts will not rewrite or narrow the contract, so the nondisclosure agreement is void in its entirety.

 TLS Mgmt. and Mktg. Ser. LLC v. Rodriguez-Toledo

Federal Circuit: Raytheon v. Indigo

When an employee who leaves employment where he oversaw processes involving trade secrets oversees a substantially similar process at the second company but denies that any proprietary information was used at the second company, a finder of fact can reasonably determine that the second company did not misappropriate trade secrets.

Testimony at trial established that the trade secret encompassed not just the generic process, but also the specific recipe for it.

Court might have reasonably found that party's decision to, in the end, opt for one state's statute over another was a strategic choice of law decision, and not an attempt to avoid an adverse decision on the merits, which would have mandated an award of fees.

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1945.Opinion.7-12-2018.pdf

Federal Circuit: Texas Optoelectronic v. Renesas Electronics

Although two of the three theories of trade secret misappropriation advanced at trial were legally erroneous, the evidence of the one remaining theory preponderated, and so the verdict can stand, but remanded to determine amount of equitable disgorgement under that theory.  As disgorgement was not available as a remedy for IP infringement in 1791, there is no right to demand a jury trial on the question.

Many other small things, and time is short.

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2121.Opinion.7-9-2018.pdf