*1 This matter is before the Court on Defendants Eric Jacobson and Veeva Systems, Inc.’s Motion to Compel Plaintiff Mednet Solutions, Inc. to Supplement Its Responses to Interrogatory Nos. 1, 2, 3, and 6 (Dkt. No. 41). The Court heard the motion on September 3, 2021. Barry A. O'Neil, Esq., appeared for Plaintiff Mednet Solutions, Inc. Anita M. Boor and Martha J. Snyder, Esqs., appeared for Defendants Eric Jacobson and Veeva Systems, Inc. The motion is granted to the extent set forth below.

I. Background

Mednet Solutions, Inc. is suing former employee Eric Jacobson and Jacobson's current employer, Veeva Systems, Inc. (jointly, “Defendants”), for misappropriation of trade secrets, violation of the Computer Fraud and Abuse Act, breach of contract, and respondeat superior.[1] (See Am. Compl., Dkt. No. 1-3; Order, Dkt. No. 21.) Mednet is a healthcare technology company that offers a clinical management software system called iMednet to its customers. (Am. Compl. ¶¶ 6, 8.) Mednet alleges that the features and functionality of its system “are proprietary and confidential and are critical to Mednet to allow it to compete in the eClinical industry on a global basis.” (Am. Compl. ¶ 11.)

Jacobson worked as a sales engineer for Mednet from approximately 2013 to 2020 and, in that capacity, had access to Mednet's confidential and trade secret information. (Am. Compl. ¶¶ 13–14.) Due to that access, Jacobson signed a nondisclosure and confidentiality agreement when he began working for Mednet. (Am. Compl. ¶ 15.)

Jacobson left Mednet in March 2020 to work at Veeva, a competitor of Mednet. (Am. Compl. ¶ 16.) Mednet alleges that it is an industry leader in the EDC/CDMS[2] segment, where Veeva has struggled to compete. (Am. Compl. ¶¶ 17–18.) Mednet allegedly learned in June 2020 that Jacobson had wrongly accessed its computer software system between April 2020 and June 2020 with a fake user account. (Am. Compl. ¶ 20.) A forensic audit allegedly revealed that Jacobson had accessed Mednet's computer system at least seven times. (Am. Compl. ¶ 23.) Mednet believes that “Jacobson spent significant time accessing several of Mednet's demonstration studies that utilized all of its proprietary and critical functionalities.” (Am. Compl. ¶ 24.) The demonstration studies and associated databases contain the “functionalities and features of iMednet that differentiate iMednet from its competitors and which create value to Mednet's customers and clients.” (Am. Compl. ¶ 26.)

The case is now in the discovery phase. Defendants served interrogatories and requests for production of documents on Mednet in May 2021, and Mednet served responses on June 9, 2021. Defendants found Mednet's responses to Interrogatories Nos. 1, 2, 3, and 6 deficient and now move for an order compelling Mednet to supplement those responses.

II. Discovery Requests at Issue

A. Interrogatory No. 1

*2 Interrogatory No. 1 asks Defendants to “[d]escribe in detail each feature, functionality, or other piece of information that You contend (a) constitutes a trade secret and (b) was allegedly accessed or otherwise misappropriated by Jacobson and/or Veeva.” (Boor Decl. Ex. A at 3, Dkt. No. 44-1.) Mednet agreed to produce documents showing the accessed software and stated generally that

(Id.) Mednet's response went on to provide general descriptions of each feature of iMednet. For example, “[t]rade secret information includes the feature(s), functionality, or other pieces of information of the iMednet clinical trial build tool, including the user interfaces, user experiences, and particular flows and user interactions allowing iMednet users to create, build, integrate, and otherwise support a clinical trial.” (Id.)

The Court agrees with Defendants that Mednet must describe with greater specificity the trade secrets at issue in response to Interrogatory No. 1. A trade secret is

Minn. Stat. § 325C.01, subd. 5; see Scientia Energy, Inc. v. Vinco, Inc., No. 11-CV-554 (LIB), 2012 WL 13028233, at *2 (D. Minn. Jan. 3, 2012). A generic response that “does not fully describe the trade secret ... sufficiently to inform Defendant to allow it to prepare to defend against the claim of misappropriation” must be supplemented. Scientia Energy, 2012 WL 13028233, at *2. “In a suit for misappropriation of trade secrets, the plaintiff must specify what information it seeks to protect.” Fox Sports Net N., LLC v. Minn. Twins P'ship, 319 F.3d 329, 335 (8th Cir. 2003). Generalized statements do not “provide the particulars or specificity” by which the opposing party or the Court may test “whether any of the items even constitutes a trade secret.” Porous Media Corp. v. Midland Brake Inc., 187 F.R.D. 598, 600 (D. Minn. 1999). A plaintiff must describe its trade secrets with the same specificity expected at summary judgment or trial. Id.

When the trade secret involves software, a plaintiff must provide details such as source code and the specific designs, methods, and processes that underlie the public functionality. See NEXT Payment Sols., Inc. v. CLEAResult Consulting, Inc., No. 1:17-CV-8829, 2020 WL 2836778, at *14–15 (N.D. Ill. May 31, 2020). The plaintiff must “separate the secrets from the non-secrets,” specify “what was stolen,” and describe what the trade secrets are, not what they do. Id. at *11, 13. Although NEXT Payment was decided on summary judgment, it illustrates the specificity with which trade secrets must be described during discovery, as well as the risk if they are not. See Porous Media, 187 F.R.D. at 600.

*3 Like the trade secret disclosures in NEXT Payment, Mednet's descriptions of the allegedly misappropriated trade secrets “focus on the function of each [component of iMednet], not the underlying, secret methods of accomplishing those functions.” See NEXT Payment, 2020 WL 2836778, at *14. Mednet must describe what the trade secrets are and how the trade secret makes the iMednet software do what it does, not just what they do. Mednet must also distinguish the secret information from the public information, which it has not. Mednet's response to Interrogatory No. 1 contains only public information, and Defendants are left to guess not only what the alleged trade secrets are but how they differ from publicly available information.

Mednet argues that Defendants should have its expert inspect the software to gain an understanding of the trade secrets. The Court disagrees for two reasons. First, Defendants are seeking only a layperson's descriptions of the trade secrets at this time, not expert-level disclosures. Second, it is the obligation of Mednet, as the party claiming trade secret misappropriation, to identify and describe the trade secrets that were allegedly misappropriated. Even if Defendants’ expert were to identify some trade secrets when inspecting the iMednet software, it is not possible for the expert to say, given the generality with which Mednet has described the trade secrets, whether the trade secrets are the same trade secrets Mednet is alleging were stolen by Jacobson and Veeva, nor would Defendants’ expert know which features, flows, and interfaces Mednet deems secret and special. Mednet will have to identify and describe in writing its trade secrets to the district court in a summary judgment motion or to a jury at trial; the same specificity is expected in the context of discovery. Porous Media, 187 F.R.D. at 600.

In sum, the Court finds that Mednet's response to Interrogatory No. 1 does not adequately identify or describe the trade secrets at issue. Accordingly, Mednet must supplement its response to Interrogatory No. 1.[3]

Defendants did not provide specific language or parameters for the Court to impose in requiring supplementation, and said at the motion hearing it was difficult to describe exactly what they wanted because of the unknown nature of the trade secrets. The Court understands and will use Mednet's partial response, quoted above, to attempt to describe an example of the degree of supplementation expected. Part of Mednet's response to Interrogatory No. 1 said: “Trade secret information includes the feature(s), functionality, or other pieces of information of the iMednet clinical trial build tool, including the user interfaces, user experiences, and particular flows and user interactions allowing iMednet users to create, build, integrate, and otherwise support a clinical trial.” In supplementing this part of the response, Mednet must differentiate trade secrets from public information; describe the secret underlying programming for each feature; and explain how each feature works with other features, user interfaces, and user flows to constitute a trade secret. Mednet may point to lines of source code, if the trade secrets are source code; or produce a series of screen shots, if the trade secrets are user interfaces or workflow; or identify the paragraphs in its user manual, if a trade secret is located there. If Mednet chooses to rely on documents as part of its supplementation, it must identify precisely where in its production the trade secrets are located.

B. Interrogatory No. 2

*4 Interrogatory No. 2 asks Mednet to describe each piece of confidential information at issue by virtue of the nondisclosure and confidentiality agreement. (Boor Decl. Ex. A at 5.) In its response, Mednet incorporated by reference its response to Interrogatory No. 1 and further stated, “Confidential Information also includes, but is not necessarily limited to, password and security information and credentials, knowledge of where the Mednet system is, UAT, and server URL information.”

Insofar as Mednet incorporated by reference its response to Interrogatory No. 1, Mednet must supplement its response to Interrogatory No. 2 to the same extent ordered above. Mednet must, as Defendants put it, “supplement its response to Interrogatory No. 2 to delineate the bounds between its purported Confidential and non-Confidential Information.” (See Defs.’ Mem. Supp. Mot. Am. at 29, Dkt. No. 43.) As to the generic “password and security information and credentials, knowledge of where the Mednet system is, UAT, and server URL information,” Mednet must describe in detail each of these items by providing or identifying the specific, allegedly confidential passwords, security information, credentials, location of the Mednet system, UAT, and server URL information

C. Interrogatory No. 3

Interrogatory No. 3 asked Mednet: “For each alleged trade secret identified in response to Interrogatory No. 1, explain in detail all factual and legal bases that support Your contention that such information constitutes a trade secret-i.e., that the information (a) is not generally known/ readily ascertainable; (b) derives economical value from being confidential, and (c) is the subject of reasonable measures of protection.” (Boor Decl. Ex. A at 5.)

Part of Mednet's response was far too general. For example: “The software is not publicly available and not generally known or ascertainable by the public.” (Id.) Mednet's supplementation to Interrogatory No. 1 will provide a framework for more specificity. Once Mednet supplements its response to Interrogatory No. 1 to identify each trade secret at issue, it must supplement its response to Interrogatory No. 3 to provide the requested information for each identified trade secret.

Mednet also explains that it protects its trade secrets by, “[f]or example,” disclosing only limited aspects of its software to customers, excluding non-customers and competitors from trade show demonstrations, and requiring nondisclosure and confidentiality agreements as part of the sales process. This part of the response is more helpful, but possibly incomplete given Mednet's qualifying language of “[f]or example.” Mednet must supplement its response to identify all of the ways in which its trade secrets are the subject of reasonable measures of protection.

Finally, Mednet's response that the economic value of the trade secrets is evidenced by Jacobson's alleged illicit activity is—at best—nonresponsive. Mednet must supplement this part of its response and describe in detail how the trade secrets at issue derive economic value from being confidential.

D. Interrogatory No. 6

Interrogatory No. 6 asks Mednet to identify each trade secret or piece of confidential information identified in response to Interrogatories Nos. 1 and 2 that Mednet would refuse to show at a tradeshow or other event without a nondisclosure or confidentiality agreement. Mednet objected to the interrogatory as argumentative and referred Defendants to its other responses.

Mednet did not defend or explain its argumentativeness objection in its response to Defendants’ motion to compel. During the motion hearing, Mednet explained that the interrogatory was argumentative because it was premised on a characterization that was not alleged in the amended complaint: that a trade secret is secret only if the owner refused to show it to someone. The Court overrules the objection because the interrogatory is not premised the way Mednet claims it is. Rather, a less strained reading of the interrogatory is that if Mednet shows certain features and functionalities of iMednet without a nondisclosure or confidentiality agreement, that bears on the question of whether those features and functionalities are, indeed, trade secrets, and Defendants, who are, after all, accused of stealing trade secrets, are entitled to know that. Furthermore, the wording of Interrogatory No. 6 is consistent with Mednet's response to Interrogatory No. 3, where Mednet answered that it demonstrates only certain aspects of its software to potential customers and that it takes precautions such as nondisclosure or confidentiality agreements in some circumstances.

*5 As to Mednet's incorporation of previous responses, Interrogatory No. 6 requests information that was not provided in any other response. Thus, the Court orders Mednet to supplement its response to Interrogatory No. 6 and identify each trade secret or piece of confidential information identified in response to Interrogatories Nos. 1 and 2 that Mednet would refuse to show at a tradeshow or other occasion without a nondisclosure or confidentiality agreement.

E. Costs and Fees

Defendants have asked for an award of costs and fees pursuant to Federal Rule of Civil Procedure 37(a)(5). When a motion to compel is granted, a court should not order the payment of expenses when (1) the movant did not attempt to obtain the discovery without court involvement; (2) the opposition party's position was substantially justified; or (3) an award would be unjust. Fed. R. Civ. P. 37(a)(5). Here, given the limited and reasonable nature of the dispute, and the excellence and professionalism of counsel for both sides, the Court finds that an award of expenses would be unjust. Each side will bear their own fees and expenses.

Accordingly, based on all the files, records, and proceedings herein, IT IS HEREBY ORDERED that Defendants’ Motion to Compel Plaintiff to Supplement Its Responses to Interrogatory Nos. 1, 2, 3, and 6 (Dkt. No. 41) is GRANTED to the extent set forth herein and DENIED as to the request for an award of fees and costs.

Mednet's conversion claim was dismissed. (Order at 15, Dkt. No. 21.)

EDC/CDMS stands for electronic data capture/clinical data management system. (Pl.’s Mem. Supp. Mot. TRO at 2 n.1, Dkt. No. 1-4.)

The discovery compelled herein may be produced pursuant to the Protective Order in place. (Dkt. No. 34.)