MicroVention, Inc. v. Balt USA, LLC
MicroVention, Inc. v. Balt USA, LLC
2021 WL 4840786 (C.D. Cal. 2021)
September 8, 2021
Scott, Karen E., United States Magistrate Judge
Summary
The court was considering whether the plaintiff had identified trade secrets with “reasonable particularity” by referencing documents. The court was also considering the unique factual circumstances of the case in determining whether the plaintiff had met this standard. With regards to ESI, the court was careful not to discuss any sealed portions of the relevant joint stipulation.
Additional Decisions
MICROVENTION, INC.
v.
BALT USA, LLC
v.
BALT USA, LLC
Case No. 8:20-cv-02400-JLS-KESx
United States District Court, C.D. California
Filed September 08, 2021
Counsel
Callie A.Bjurstrom, Michelle A. Herrera, Pillsbury Winthrop Shaw Pittman LLP, San Diego, CA, Chaz Matthew Hales, Chloe Stepney, Evan Finkel, Michael S. Horikawa, Pillsbury Winthrop Shaw Pittman LLP, Los Angeles, CA, for Microvention, Inc.Alexander Ding Zeng, Knobbe Martens Olson and Bear LLP, Los Angeles, CA, Nicholas Andrew Belair, Knobbe Martens Olson and Bear LLP, San Francisco, CA, Paul A. Stewart, William Oscar Adams, Sheila N. Swaroop, Knobbe Martens Olson and Bear LLP, Irvine, CA, for Balt USA, LLC.
Mark A. Finkelstein, Umberg Zipser LLP, Irvine, CA, for David Ferrera.
Rustin Kent Mangum, Spencer Winston Ririe, Mangum Ririe LLP, Ladera Ranch, CA, for Stephanie Gong.
Scott, Karen E., United States Magistrate Judge
PROCEEDINGS (IN CHAMBERS): Order Denying Balt's Motion to Compel Further Response to Rog No. 1 (Dkt. 60) and Granting in Part Plaintiff's Motion to Compel Discovery Responses and Entry of Stipulated Protective Order (Dkt. 65)
I. BACKGROUND.
*1 This suit arises from discovery produced in a related patent infringement suit (C.D. Cal. Case No. 19-1335), in which Plaintiff MicroVention, Inc. (“Plaintiff”) sued Balt USA, LLC (“Balt”) for infringement of three patents it owns. During discovery in that case, according to the operative first amended complaint in this case (“FAC” at Dkt. 42), Balt produced over 55,000 “proprietary and confidential documents belonging to MicroVention.” (FAC ¶ 96.) In addition to Balt, Plaintiff names as defendants three former employees and one former summer intern of MicroVention who later worked or currently work for Balt: David Ferrera (“Ferrera”), Nguyen “Jake” Le (“Le”), Yoshitaka Katayama (“Katayama”), and Stephanie Gong (“Gong”). (Id. ¶¶ 4-7.)
Plaintiff alleges that in August 2020, Balt produced “more than 186,000 pages, representing every conceivable document type set forth in MicroVention's controlled documents library and knowledge management system[, including] Marketing Specifications, Design Specifications, Part Drawings for products, tools, and equipment, Manufacturing Procedures, Test Methods, Test Reports, Test Data, Build Records, Supplier Lists, Customer Needs Memorandums, Regulatory Filing Checklists, Quality Assurance Procedures and Specifications, and even MicroVention's Employee Handbook and drawings depicting the layout of MicroVention's facilities.” (Id. ¶ 113.) Balt also produced “an entire cloned computer hard drive ... pertaining to MicroVention's hydrophilic coatings,” which took “almost a year of experimentation to perfect.” (Id. ¶ 126.) These documents do not have Bates numbers, because they were produced in native form. Balt represented that Ferrera and Le were the custodians of these documents, but some of the documents were created after they departed Plaintiff's employ. (Id. ¶ 138.) As many as 50 of Plaintiff's former employees have been employed by Balt. (Id. ¶ 157.) Plaintiff is suing all defendants for misappropriation of trade secrets under the federal Defend Trade Secrets Act and under the California Uniform Trade Secrets Act, and is suing the individual defendants for breach of contract. (Id. ¶¶ 160-200.)
In April 2021, Defendants moved to dismiss the FAC. (Dkt. 48.) In July 2021, Plaintiff moved for leave to file a Second Amended Complaint. (Dkt. 56.) The proposed second amended complaint would add a defendant, Michelle Tran, a former employee of Plaintiff and current employee of Balt. (See Dkt. 56-1.) Both motions are still pending, and the hearing is set for September 10, 2021.
In July 2021, Balt filed a Motion to Compel Response to Interrogatory (“Rog”) No. 1. (Dkt. 60 [“Balt MTC”].) At the same time, Plaintiff filed a Motion to Compel (1) Responses to Requests for Production of Documents and Interrogatories and (2) Entry of Plaintiff's Proposed Stipulated Protective Order. (Dkt. 65 [“Plaintiff MTC”].) Both motions were filed in the form of a Joint Stipulation, as required by Local Civil Rule 37-1. In August, Balt (Dkt. 76) and Plaintiff (Dkt. 77) filed supplements to the Balt MTC. Plaintiff also filed a supplement to the Plaintiff MTC. (Dkt. 78.)
II. BALT'S MOTION TO COMPEL RESPONSE TO ROG NO. 1.
A. Disputed Rog and Response.
*2 Balt's Rog No. 1 asks Plaintiff to identify “with reasonable particularity (as that term is used in California Civil Procedure Code § 2019.210[1]), each individual trade secret that You contend was misappropriated by Defendants, including by identifying the specific information that constitutes the trade secret, how or why such information is not generally known, and how or why such trade secrets can be distinguished from matters already known to persons skilled in the field of medical device product development for the interventional treatment of ischemic and hemorrhagic stroke and related conditions.” (Dkt. 64-2[2] at 12.) Thus, Rog No. 1 asks for two types of information: (1) information sufficient to identify each allegedly misappropriated trade secret, and (2) and information relevant to determining whether each identified trade secret truly qualifies for protection as a trade secret.
Plaintiff's response to Rog No. 1 is over twenty pages long, including objections to imposing a “state procedural burden” and that the interrogatory called for a legal conclusion. (Id.) Plaintiff also objected that the interrogatory was compound in that it included multiple, distinct subparts. (Id.) After objecting, Plaintiff directed Balt to its FAC and its Exhibits A-P, which identified most of the documents constituting the allegedly misappropriated trade secrets by type and Bates number assigned in the related patent case. (Id. at 14-15.) Plaintiff broke down each type of claimed trade secret as follows:
• Marketing Specifications: 14 Marketing Specifications, describing intended uses of a medical device, intended users, which countries the device should be sold in, key performance criteria of the device, and an analysis of the competitive landscape (FAC, Exhibit A, at Dkt. 42-1);
• Design Specifications: 41 Design Specifications, specifying product dimensions, component materials, sterility, shelf-life requirements, how the device is introduced into a body, biocompatibility, packaging, and labeling (id., Exhibit B, at Dkt. 42-2);
• Prototype Documents: Documents produced as Plaintiff builds and tests devices based on Design Specifications. Plaintiff identifies:
• 578 Part Drawings, which are scaled drawings specifying dimensions of parts and materials and part “tolerances” (how much dimension can deviate from exact dimension), inspection methods (id., Exhibit C, at Dkt. 42-3);
• 7,818 SolidWorks files, which is Computer Aided Design (“CAD”) software used to create Part Drawings (not identified);
• 376 Manufacturing Procedures, which provide instructions for production line workers and operators for manufacturing (id., Exhibit D, at Dkt. 42-4);
• 212 Test Methods, which verify that medical devices in production conform to specifications (id., Exhibit E, at Dkt. 42-5);
• 2,909 files containing “Test Data” measured or taken in connection with Test Methods (not identified);
• 435 “unique Test Reports summarizing and analyzing the Test Data” (id., Exhibit F, at Dkt. 42-6); and
• 37 Risk Assessment Plans, which includes feedback on product use and experience, anticipated and actual failure rates, and changes and improvements necessary to bring a product to market (id., Exhibit G, at Dkt. 42-7)
*3 • Manufacturing and Production Documentation
• 241 Build Records, which detail how to make medical devices, including specifying which Part Drawing and Manufacturing Procedure is involved (id., Exhibit H, at Dkt. 42-8);
• 326 Equipment Specifications, which are design specifications for equipment used to manufacture products (id., Exhibit I, at Dkt. 42-9);
• 207 Equipment Drawings and Tool Drawings, which provide plans and instructions for building this equipment (id., Exhibit J, at Dkt. 42-10); and
• 502 Preventative Maintenance documents describing how to maintain Plaintiff's tools and equipment (not identified).
• “Additional” Documents
• 68 Quality Assurance Procedures, which can show quality inspection, handling of complaints, and training (id., Exhibit K, at Dkt. 42-11);
• 46 Quality Specifications, which contains standards and pictures used by quality inspectors to assess products (id., Exhibit L, at Dkt. 42-12);
• 19 Regulatory Strategy and Submission Checklists, which reflect “roadmap” for regulatory approval of device (id., Exhibit N, at Dkt. 42-14);
• 8 revisions of Plaintiff's Approved Product Matrix, which tracks regulatory approval status of Plaintiff's devices worldwide (for which Plaintiff lists Bates numbers, see Dkt. 64-2 at 29);
• 4 Customer Needs Memos, documenting what customers look for in a medical device based on feedback and trends (identified by Bates numbers);
• 10 revisions of Plaintiff's Approved Supplier List, containing details on over 100 suppliers (for which Plaintiff lists Bates numbers, id. at 31)
• 452 Receiving Specifications, which identify suppliers and vendors as well as what materials and components they supply (FAC, Exhibit O, at Dkt. 42-15); and
• 39 Consulting Agreements between Plaintiff and physicians and related confidential correspondence (id., Exhibit P, at Dkt. 42-16
• V-Grip Controller Documentation: 79 documents related to design and manufacture of patented coil detachment system (id., Exhibit M, at Dkt. 42-13);
• Hydrophilic Coating Documentation: A cloned computer drive containing Plaintiff's hydrophilic coating “recipes” (on hard drive);
• 2011-12 Documentation: 91 documents created after Ferrera and Le left Plaintiff's employ, including Manufacturing Procedures, Part Drawings, and Quality Assurance Procedures; 237 SolidWorks files modified after Ferrera and Le left; and 17 SolidWorks files last modified by Katayama after Ferrera and Le left (identified by Bates numbers);
• K-Value Spreadsheet: 3 identical copies of an Excel spreadsheet containing information used to compute stiffness for different microcoil configurations, referenced by part number (identified by Bates numbers).
B. Analysis.
Balt makes a two-pronged argument. First, it argues that Section 2019.210 applies—either because Balt wrote it into the interrogatory or because it always applies, even in federal court. Second, Balt argues that Plaintiff's response did not comply with Section 2019.210. Balt appears to treat the second subpart of Rog 1—i.e., the part asking for information relevant to determining whether the identified trade secrets truly qualify for protection as trade secrets—as part of this compliance. (See, e.g., Dkt. 64-2 at 47 [critiquing Plaintiff for failing to identify what trade secret improvements it made in the fields of soldering and knot-tying].)
*4 To the extent Balt argues that Section 2019.210 applies because it is referenced in the interrogatory: Federal Rule of Civil Procedure 33 distinguishes between questions of fact or of the application of law to fact on one hand and pure questions of law on the other. See Fed. R. Civ. P. 33 (an interrogatory is “not objectionable merely because it asks for an opinion or contention that relates to fact or the application of law to fact”); AngioScore, Inc. v. TriReme Medical, Inc., No. 12-cv-03393-YGR (JSC), 2014 WL 7188779, at *5 (N.D. Cal. Dec. 16, 2014) (“[I]nterrogatories directed to issues of ‘pure law’—i.e., abstract legal issues not dependent on the facts of the case' are not permitted.”). The Court recognizes that the line is a blurry one, but it is inclined not to grant a motion to compel that would require determining whether Plaintiff properly understood the meaning of “reasonable particularity” under a state statute. Making this determination would involve an inquiry into California case law, statutory history, and other tools for statutory construction. Lay witnesses should not be expected to incorporate such legal standards into their responses.
The Court further SUSTAINS Plaintiff's objection that Rog No. 1 was compound. Requiring Plaintiff to not only identify each alleged trade secret (which would count as one interrogatory) but also explain for each trade secret the “specific information that constitutes the trade secret, how or why such information is not generally known, and how or why such trade secrets can be distinguished from matters already known to persons skilled in the field” (which would count as at least as many interrogatories as allegedly misappropriated trade secrets), would run afoul of Rule 33's limitation on the number of interrogatories. See Fed. R. Civ. P. 33(a)(1).
That said, Plaintiff did have an obligation to identify its allegedly misappropriated trade secrets with “reasonable particularity,” as that phrase is generally understood. See Warner Bros. Int'l Television Distribution v. Golden Channels & Co., No. CV0209326MMMSHSX, 2003 WL 27384426, at *2 (C.D. Cal. Aug. 15, 2003) (“However, the parties are obligated to apply a good faith, reasonable interpretation to interrogatory requests and, where a question is overbroad, the responding party should answer whatever part of the question is proper.”); see also Fed. R. Civ. P. 33(b)(1) (“Each interrogatory shall be answered separately and fully ..., unless it is objected to, in which event the objecting party shall state the reasons for objection and shall answer to the extent the interrogatory is not objectionable.”). According to Webster's online dictionary, “reasonable” means “not extreme or excessive,” and “particularity” means with “explicitness” or “specificity.” Thus, to answer Rog No. 1, Plaintiff should have identified its allegedly misappropriated trade secrets in such a way that Defendants could identify the specific trade secrets over which Plaintiff is suing.
For most of the categories set out above, Plaintiff contends that each document in and of itself—e.g., each of the 14 identified Marketing Specifications—is the trade secret. Defendants counters that identifying a document can never satisfy the requirements of Section 2019.210 to identify a trade secret. (See Dkt. 76 at 4 [“A document as a whole is not a trade secret.”].) Defendants do not cite any binding authority for such a rule of thumb.[3] To the extent Defendants argue that all or some of the documents are not trade secrets, that is not something that can be decided in the context of this discovery motion. Plaintiff appears to have amply identified the alleged trade secrets with reasonable particularity—i.e., the Bates Number range for every distinct alleged trade secret or the file type or title, in such a way that Defendants can locate them. That there are thousands such alleged trade secrets does not mean that each one has not been sufficiently identified.
*5 Plaintiff did not identify by Bates Number the 7,818 SolidWorks files; the 2,909 Test Data files; the 502 Preventative Maintenance documents; the 2011-12 Documents; or the K-Value Spreadsheets. Plaintiff represented at the hearing that these documents are readily identifiable based on Balt's production in the patent case. Plaintiff in its response to Rog No. 1 (rather than in exhibits to the FAC) identifies by Bates number the 8 Approved Product Matrix documents, the 4 Customer Needs Memos, the 10 Approved Supplier Lists, and 263 “2011-12 Documents,” and the 3 K-Value Spreadsheets. Plaintiff represented during the hearing that Balt, based on its own production in the patent case, should be able to easily locate all of these documents. Balt did not contradict this representation. If Balt is unable to locate them, then the parties should meet and confer before bringing this to the Court's attention via the informal discovery process described under the Court's Procedures and Schedules.
For these reasons, Balt's Motion to Compel a further response to Rog No. 1 is DENIED.
III. PLAINTIFF'S MOTION TO COMPEL RESPONSES TO RFPS AND ENTRY OF PROTECTIVE ORDER.
According to Plaintiff, Defendants have failed to respond to any of Plaintiff's discovery requests, arguing that Plaintiff has failed to comply with Section 2019.210 and that Plaintiff's lack of compliance excused Defendants from responding to any discovery. (Dkt. 64-3 at 7.)[4] Defendants also reject Plaintiff's proposal that the parties be able to use documents produced subject to the protective order in the patent case as if they were produced in this case. (Id. at 9.) Last, Defendants object to a provision in the proposed protective order that would give Plaintiff's in-house counsel and, as in-house counsel deems necessary, others in Plaintiff's employ access to limited “Attorneys' Eyes Only” information regarding the circumstances under which Defendants obtained and shared Plaintiff's documents. (Id.) Plaintiff filed a supplemental response. (Dkt. 78.)
A. Discovery Requests.
Plaintiff's RFP Nos. 1-138 to Balt; Nos. 1-56 to Ferrera; Nos. 1-53 to Le; No. 39 to Katayama; and Nos. 35, 43, and 47 to Gong ask for various documents, and Balt/Ferrera/Le/Katayama have objected to all of them on various grounds, including that Plaintiff must first, but has not yet, identified its trade secrets with reasonable particularity under Section 2019.210. (Dkt 64-3 at 13-139, 148-229, 233.) Plaintiff's Rogs 1-8 to Balt similarly request information that Balt has objected to on various grounds, including as premature due to Plaintiff's alleged failure to comply with Section 2019.210. (Id. at 139-48.)
Districts courts “possess[ ] inherent powers that are ‘governed not by rule or statute but by the control necessarily vested in courts to manage their own affairs so as to achieve the orderly and expeditious disposition of cases.” Dietz v. Bouldin, 136 S. Ct. 1885, 1891 (2016) (quoting Link v. Wabash R. Co., 370 U.S. 626, 630-631 (1962)); see also Crawford–El v. Britton, 523 U.S. 574, 599 (1998) (“Rule 26 vests the trial judge with broad discretion to tailor discovery narrowly and to dictate the sequence of discovery.”); Jardin v. DATAllegro, Inc., 2011 WL 3299395, at *3-4 (S.D. Cal. July 29, 2011) (noting that the district court judge “ordered discovery procedures similar to those” that Section 2019.210 require based on the case's facts and the judge's “responsibility and discretion under the Federal Rules of Civil Procedure,” instead of deciding that, legally, Section 2019.210 does not apply).
The District Judge's standing order in this case states that the “parties shall comply fully with the letter and spirit of Fed. R. Civ. P. 26(a).” (Dkt. 11 at 4.) That spirit would not favor permitting Bolt to invoke a state procedural rule as an absolute bar to answering all discovery, even that to which the identity of trade secrets had no relevance. See, e.g., Dkt. 64-3 (declining to answer RFP No. 36, asking for any employment-related agreements between Ferrera and Plaintiff). Even under California law, “the designation should be liberally construed in favor of the trade secret claimant, and ... doubts about its adequacy should be resolved in favor of permitting discovery to go forward.” Brescia v. Angelin, 172 Cal. App. 4th 133, 145, 90 Cal. Rptr. 3d 842, 849 (2009); see also Lilith Games (Shanghai) Co. v. uCool, Inc., No. 15-CV-01267-SC, 2015 WL 4149066, at *4 (N.D. Cal. July 9, 2015) (describing how section 2019.210 was intended to promote well-investigated claims; prevent plaintiffs from using the discovery process to obtain the defendant's trade secrets; assist the court in framing the appropriate scope of discovery; and enable defendants to form complete and well-reasoned defenses).
*6 Furthermore, as discussed above, even if Plaintiff was required to identify the allegedly misappropriated trade secrets with reasonable particularity before commencing discovery, Plaintiff has. Plaintiff states that each unique document, identified by Bates number, file type, or file label, is a trade secret. Whether or not Plaintiff is correct, it appears that Defendants can identify each of these alleged trade secrets sufficiently well to understand the relevant scope of discovery. See Cisco Sys., Inc. v. Chung, No. 19-CV-07562-PJH, 2020 WL 7495085, at *11 (N.D. Cal. Dec. 21, 2020) (The reasonable particularity requirement does not demand that a plaintiff “define every minute detail of its claimed trade secret at the outset of litigation” or that a trial court “conduct a miniature trial on the merits of a misappropriation claim before discovery commences.” (citation omitted)).
Defendants argue that Plaintiff has “publicly disclosed” these trade secrets (Dkt. 64-3 at 10-11) merely by referencing Bates numbers in the FAC. None of the Bates-numbered documents referenced in the FAC—i.e., the alleged trade secrets themselves—have been publicly disclosed, to the Court's knowledge. Contrast M/A-COM Tech. Solutions, Inc. v. Litrinium, Inc., 2019 WL 4284523, at *2 (C.D. Cal. June 11, 2019) (holding that where the party identified only a paragraph in publicly filed complaint, it had not identified trade secrets with reasonable particularity).
The Court declines to find that Defendants have waived any other objections asserted in response to Plaintiff's discovery requests, and this order does not decide the merits of those objections. Per arguments at the hearing, it is the Court's understanding that the parties have not met and conferred regarding objections other than Defendants' Section 2019.210 objection. The parties should meet and confer on any additional objections before issuing supplemental written responses, so that the supplemental responses can benefit from those efforts.
Plaintiff's Motion to Compel Responses to RFPs is therefore GRANTED. Defendants are ordered to serve supplemental written responses to the RFPs at issue and provide or identify responsive materials by 28 days from entry of a protective order in this case.
B. Proposed Protective Order.
Plaintiff proposes that the following provision be included in the protective order:
13.4 Documents Produced in the Related Patent Litigation. Documents, including without limitation emails and attachments thereto, produced by any party to the related patent litigation, MicroVention, Inc. v. Balt USA, LLC, Case No. 8:19-cv-01335-JLS-KES (C.D. Cal.) (Southern Division) may be used in this Action as if it had originally been produced in this Action.
(Dkt. 64-3 at 270.)
Defendants responded that until Plaintiff complied with Section 2019.210, entering a stipulated protective order was premature. (Id. at 271.) That issue has now been resolved. Defendants have not identified any legitimate reason why the parties should not be able to use documents and ESI produced in the patent case in this case. Defendants cite confidentiality concerns (id. at 273), but that would be addressed by the entry of a protective order. The protective order in the other case formerly stated that a receiving party may use disclosed material only for that action (id. at 273). The Court has amended that order to allow those documents to be used in this case.[5]
As discussed at the hearing, Balt should supply to the individual defendants thumb drives containing Balt's production in the patent case, and Plaintiff should supply to the individual defendants thumb drives containing Plaintiff's production in the patent case. The individual defendants do not have an obligation to independently review those thumb drives for responsive documents, as that would be overly burdensome. These individual defendants could therefore be unfairly surprised before or at trial by a document from the patent case, if that document had not been specifically brought to their attention in this case. To avoid this, the Court approves the following language for the protective order in this case:
*7 13.4 Documents Produced in the Related Patent Litigation. Documents, including without limitation emails and attachments thereto, produced by any party to the related patent litigation, MicroVention, Inc. v. Balt USA, LLC, Case No. 8:19-cv-01335-JLS-KES (C.D. Cal.) (Southern Division) may be used in this Action as if it had originally been produced in this Action—provided that those documents were identified in response to discovery propounded in this Action, either (1) by Bates number or (2) if they do not have a Bates number, in some way that reasonably identifies the documents.
Defendants have not alleged or shown any prejudice to them in this change. They claim that Plaintiff has failed to “agree to limits on its discovery efforts here in view of these productions” (id. at 274) but fail to propose any such limits for the Court's consideration. In discovery responses, Defendants can of course direct Plaintiff, with specific Bates number citations, to discovery in the patent case if there is overlap. Defendants should also produce any additional documents that are responsive and relevant in this case, to the extent that they have not produced them in the patent case.
Plaintiff further proposes that the protective order include:
8.3 Disclosure to MicroVention of “CONFIDENTIAL” and “CONFIDENTIAL—ATTORNEYS' EYES ONLY” Information or Items Relating to MicroVention or Its Products. Nothing in this Order will bar counsel for MicroVention from disclosing the following information obtained from documents or information designated as “CONFIDENTIAL” or “CONFIDENTIAL—ATTORNEYS' EYES ONLY” by Defendants, to any House Counsel, employees, officers, and directors of MicroVention having a legitimate need to receive the information in order to assist Outside Counsel of Record in representing and advising MicroVention: the facts regarding the circumstances by which documents of MicroVention, or information about MicroVention or its products, was obtained by Defendants, or communicated among or within Defendants or between Defendants and a third party, or used by or for Defendants, including without limitation, the date, time, sender, and recipients of any email or other communication attaching, forwarding, or containing such MicroVention documents or information.
(Id. at 274.) Defendants request a reciprocal provision and object that the provision is too broad. (Id. at 275.)
The Court is sympathetic to Plaintiff's position. The proposed protective order in this case provides that an Attorneys' Eyes Only (“AEO”) designation is only for when the designating party believes in good faith that item has “significant competitive value such that unrestricted disclosure to others would create a substantial risk of serious injury.” (Dkt. 65-9 at 8.) It is hard to imagine that how an email from one Balt employee to another, attaching an allegedly misappropriated trade secret of Plaintiff's, would qualify as AEO. As worded, however, Plaintiff's proposed language is too broad. The Court therefore approves the following language for the protective order (with strikethroughs to show changes):
8.3 Disclosure to MicroVention of Certain “CONFIDENTIAL” and “CONFIDENTIAL—ATTORNEYS' EYES ONLY” Information or Items. Nothing in this Order will bar counsel for MicroVention from disclosing the following information obtained from documents or information designated as “CONFIDENTIAL” or “CONFIDENTIAL—ATTORNEYS' EYES ONLY” by Defendants, to any House Counsel, employees, officers, and directors of MicroVention having a legitimate need to receive the information in order to assist Outside Counsel of Record in representing and advising MicroVention: the facts regarding the circumstances by which documents of MicroVention was obtained by Defendants, or communicated among or within Defendants or between Defendants and a third party, or used by or for Defendants, including without limitation, the date, time, sender, and recipients of any email or other communication attaching, forwarding, or containing such MicroVention documents.
*8 If Plaintiff wishes to challenge the designation of any additional documents designed AEO, it can follow the process set out in the protective order, once entered.
As for Balt's reciprocity request, there is no allegation that Plaintiff is wrongfully in possession of proprietary Balt documents. If through the discovery process the parties learn otherwise, the parties can ask the Court to amend the protective order.
Plaintiff is ORDERED to file with the Court within 7 days of this order a proposed protective order, revised consistent with this order.
Footnotes
This California statute provides a standard for the level of particularity with which trade secrets must be identified (i.e., reasonable particularity) and also governs the timing of discovery, as follows: “In any action alleging the misappropriation of a trade secret under the [California] 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 ....”
This is the unredacted, sealed version of the relevant joint stipulation. The Court is careful herein not to discuss any sealed portions of that document.
Defendants cite Loop AI Labs Inc. v. Gatti, 195 F. Supp. 3d 1107, 1116 (N.D. Cal. 2016) (“identifying documents alone would not be an adequate substitute for detailed identification of the trade secrets therein, since review of the documents may not inform Defendants as to what precisely Plaintiff is asserting is a trade secret.”). Loop involved an entirely different set of facts, including a plaintiff that had already been ordered to be more precise in its identification and still failed to identify anything other than vague categories of information that could potentially have value to a company. Here, in contrast, Plaintiff alleges that Balt stole thousands of proprietary documents and has described those documents with reasonable particularity. Based on those descriptions, most of the documents likely could constitute trade secrets in their entirety. For any others, even if only some of the information in the document is a trade secret, it would be extremely burdensome to require Plaintiff to list them all—a burden created by the scale of the allegations of theft against Balt. These unique factual circumstances can be considered by the Court in determining whether Plaintiff has identified trade secrets with “reasonable particularity” by referencing documents.
This is the unredacted, sealed version of the relevant joint stipulation. The Court is careful herein not to discuss any sealed portions of that document.
At the hearing on the instant motions, Defendants did not identify any other signatories or parties to the protective order in the patent case that would be impacted by this change.