Univ. of Tenn. Research Found. v. Caelum Biosciences, Inc.
Univ. of Tenn. Research Found. v. Caelum Biosciences, Inc.
2022 WL 19403695 (E.D. Tenn. 2022)
July 13, 2022
McCook, Jill E., United States Magistrate Judge
Summary
The Court found that Plaintiff had not identified its trade secrets with reasonable particularity and ordered Plaintiff to submit a list of its trade secrets in response to Interrogatory No. 1. The Court also ordered Plaintiff to supplement its responses to RFP Nos. 1 and 2, which may include ESI. The Court ordered Plaintiff to produce any additional documents in its possession within thirty (30) days, which may include ESI.
Additional Decisions
UNIVERSITY OF TENNESSEE RESEARCH FOUNDATION, Plaintiff,
v.
CAELUM BIOSCIENCES, INC., AND THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, Defendants
v.
CAELUM BIOSCIENCES, INC., AND THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK, Defendants
No. 3:19-CV-508-CEA-JEM
United States District Court, E.D. Tennessee, Northern Division
Filed July 13, 2022
McCook, Jill E., United States Magistrate Judge
MEMORANDUM AND ORDER
*1 This case is before the undersigned pursuant to 28 U.S.C. § 636, the Rules of this Court, and Standing Order 13-02.
Now before the Court is the Motion to Compel Plaintiff to Supplement Its Interrogatory Response(s) and to Compel Production of Documents Responsive to Caelum Biosciences, Inc.'s First Set of Requests for Production of Documents [Doc. 141], filed by Caelum Biosciences, Inc. (“Caelum”). Plaintiff filed a response in opposition [Doc. 151], and Caelum replied [Doc. 159]. For the reasons stated below, the Court GRANTS IN PART AND DENIES IN PART Caelum's motion [Doc. 141].
I. BACKGROUND
The allegations in this case relate to an antibody, 11-1F4 (the “antibody”), effective in treating amyloidosis that Dr. Solomon created while working as a professor and researcher for the University of Tennessee [Doc. 61 ¶¶ 3–4]. Plaintiff alleges that it acquired all patent rights, property rights, and know-how rights relating to the antibody from Dr. Solomon and his research team [Id. ¶¶ 69–70]. In April 2013, the United States Food & Drug Administration (“FDA”) granted Dr. Solomon approval to begin clinical trials using the antibody [Id. ¶ 42]. In December 2013, Dr. Lentzsch, a professor and researcher at Columbia University, agreed to lead the clinical trials [Id. ¶¶ 42, 47]. Contemporaneous to Dr. Solomon and Dr. Lentzsch's collaboration on the antibody and the clinical trials, employees of Plaintiff and Defendant The Trustees of Columbia University in the City of New York (“Columbia”) negotiated an Inter-Institutional Agreement (the “IIA”) with an effective date of December 16, 2013 [Id. ¶ 47]. Plaintiff states that the IIA only provided Columbia with certain patent rights relating to the antibody, and it expressly excluded any rights to the antibody materials or know-how [Id. ¶ 63].
According to Plaintiff, in January 2017, Fortress Biotech, Inc. (“Fortress”) founded Caelum “to advance the clinical development of research from Alan Solomon, M.D., of the University of Tennessee Graduate School of Medicine, with the goal of improving treatment options for patients with AL amyloidosis [Id. ¶ 1]. On March 14, 2017, Plaintiff, Caelum, and the University of Tennessee entered into the Confidentiality Agreement, wherein the parties could exchange information in connection with a potential sponsored research agreement involving the antibody's technology [Id. ¶ 104]. Caelum agreed that it would not utilize the research material and information received directly or indirectly from Plaintiff [Id. ¶ 110].
Plaintiff alleges that Caelum has breached the Confidentiality Agreement by proceeding to use the antibody's property rights and know-how [Id. ¶ 112]. Plaintiff avers that Caelum is commercializing the antibody, claiming that it owns “worldwide license rights” to it [Id. ¶¶ 1, 6 & 153]. Caelum, however, claims that it received all rights necessary to commercial the antibody from Columbia [Id. ¶¶ 20, 164–66]. Plaintiff challenges this claim, explaining that while Plaintiff and the University of Tennessee collaborated with Columbia University on the development of the antibody, Columbia never had the rights to commercialize the material, know-how, and research data at issue [Id. ¶¶ 82–100]. In the Second Amended Complaint [Doc. 61], Plaintiff asserts various claims against Caelum, including misappropriation of trade secrets under the Tennessee Uniform Trade Secrets Act [Id. at 39–61].
*2 The dispute before the Court is whether Plaintiff has sufficiently responded to Caelum's discovery requests. The parties appeared before the Court on June 6, 2022, for a motion hearing.[1] Attorneys Daniel Hipskind, Dorian Berger, and Wayne Ritchie, II, appeared on behalf of Plaintiff. Attorney Zachary Garrett and Joseph Harvey appeared on behalf of Colombia. Attorneys John Elder, Christopher Strongosky, and Anna Finger appeared on behalf of Caelum. Attorney Michael Hynes appeared on behalf of Alexion Pharmaceuticals, Inc. (“Alexion”).
II. ANALYSIS
Caelum asserts that Plaintiff has not sufficiently responded to Interrogatory No. 1 and its Request for Production (“RFP”) Nos. 1 and 2. The Court has considered the parties' filings and the oral arguments at the hearing, and for the reasons further explained below, the Court finds Caelum's motion [Doc. 141] well taken, in part.
A. Plaintiff's Response to Interrogatory No. 1
In Tennessee, a trade secret is information that (1) derives independent economic value from not being generally known nor readily ascertainable; and (2) is the subject of efforts to maintain its secrecy. Tenn. Code Ann. § 47-25-1702(4)(A)–(B). Parties alleging misappropriation of a trade secret must identify the trade secret with “reasonable particularity.” Dura Global Techs., Inc. v. Magna Donnelly Corp., No. 07-CV-10945-DT, 2008 WL 2064516, at *1 (E.D. Mich. May 14, 2008). The “reasonable particularity” standard means that the trade secret is “identified clearly, unambiguously, and with specificity.” Id. Identifying a trade secret with reasonable particularity puts “the adversary party ... on notice of the nature of the claims” and allows the adversary party to “discern the relevancy of any requested discovery on its trade secrets.” Id. at 2 (citing DeRubeis v. Witten Tech., Inc., 244 F.R.D. 676, 681 (N.D. Ga. 2007)). “Ultimately, whether a plaintiff has sufficiently disclosed its trade secrets is ‘a fact-specific question to be decided on a case-by-case basis.’ ” Vesta Corp. v. Amdocs Mgmt. Ltd., 147 F. Supp. 3d 1147, 1155 (D. Or. 2015) (quoting L-3 Commc'ns Corp. v. Jaxon Eng'g & Maint., Inc., No. 10-CV-02868-MSK-KMT, 2011 WL 10858409, at *2 (D. Colo. Oct. 12, 2011)).
Caelum's Interrogatory No. 1 requests the following: “Identify in list form and Describe with particularity all trade secrets [Plaintiff] contend[s] Caelum misappropriated” [Doc. 142-2 p. 6]. Plaintiff responded [Doc. 144 pp. 4–9], and the parties dispute the form and substance of Plaintiff's response. Caelum sets forth two primary arguments why Plaintiff's response is insufficient: (1) Plaintiff must identify its trade secrets in a list rather than a narrative and (2) Plaintiff has not identified its trade secrets with reasonable particularity.[2] Plaintiff responds that it is not required to establish the existence of trade secrets during discovery, it has identified its trade secrets with reasonable particularity, and that it is not required to list its trade secrets.
*3 The Court agrees with Plaintiff that it is not required to establish the existence of its trade secrets during discovery; however, the Court finds that Plaintiff has not identified its trade secrets with reasonable particularity. Plaintiff shall supplement its response to Interrogatory No. 1 to provide a list of its trade secrets with reasonable particularity and supplement its responses to RFP Nos. 1 and 2 in accordance with the below.
1. Plaintiff's Form of Identification
Caelum asserts that Plaintiff should provide a list of its trade secrets rather than a narrative. Plaintiff responds, “At the outset, [it] listed its trade secrets in its operative Complaint” [Doc. 151 p. 12]. Plaintiff argues that it subsequently provided an extensive list of its trade secrets in response to Interrogatory No. 1. Further, Plaintiff states that the Court has already rejected Caelum's argument in its previous Memorandum and Order [Doc. 128].
Unlike in Inovision Software Solutions Inc. v. Autis Ingenieros, S.L.U., No. 19-12580, 2021 WL 4479427 (E.D. Mich. Sept. 30, 2021), the Court has not previously decided whether Plaintiff has produced its trade secrets with reasonable particularity. The Court's Memorandum and Order [Doc. 128] adjudicated Plaintiff's motion to compel documents from Caelum. While Caelum argued that it should not be required to produce documents without Plaintiff first identifying its trade secrets with particularity, the Court did not make any findings about whether Plaintiff had sufficiently identified in form and in substance its trade secrets [Doc. 128 pp. 15–16].
As explained below, the Court finds that Plaintiff has not identified its trade secrets with reasonable particularity. The Court therefore orders Plaintiff to submit a list of its trade secrets in response to Interrogatory No. 1. Yoe v. Crescent Sock Co., No. 1:15-CV-3-SKL, 2017 WL 11479991, at *3 (E.D. Tenn. May 25, 2017) (“Parties alleging misappropriation of a trade secret ‘must create a list rather than a document in the style of a brief.’ ” (citation omitted)); Vesta Corp., 147 F. Supp. 3d at 1155 (“To ensure that plaintiffs adequately disclose their trade secrets, courts commonly order a list of trade secrets at the outset of the litigation.” (citation omitted)); Dura Glob. Techs., 2007 WL 4303294, at *5 (ordering plaintiffs to file a particularized trade secret list under seal).
2. Plaintiff's Identification of its Trade Secrets with Reasonable Particularity
In response to Interrogatory No. 1, Plaintiff explains that its trade secrets are the confidential know-how and work-product of the antibody, the information generated by the National Cancer Institute (“NCI”), and the research data utilized in the IND Application. Specifically, Plaintiff responded as follows:
Caelum misappropriated non-public, confidential know-how associated with the development and use of 11-1F4 produced by employees of The University of Tennessee and provided to Columbia University. The confidential know-how associated with the development and use of the 11-1F4 antibody products includes the results, data, and information relating to antigens, antibodies, and cell lines necessary or useful for development or commercialization of the 11-1F4 antibody products. This 11-1F4 work product includes, but is not limited to, information regarding the design and synthesis of the murine and chimeric 11-1F4 antibodies, research data regarding 11-1F4, and information regarding the design of clinical trials for 11-1F4.
*4 [Doc. 142-4 p. 4]. With respect to the information generated by the NCI, Plaintiff responded as follows:
Caelum misappropriated trade secret data and information relating to 11-1F4 generated by the National Cancer Institute (NCI) and its contractor(s) pursuant to a May 2011 Material Transfer Agreement between The University of Tennessee and the National Cancer Institute. NCI generated confidential, non-public data and information relating to 11-1F4 that includes, but is not limited to, (1) information and data relating to the evaluation of analogs for lead selection; (2) information relating to Current Good Manufacturing Practice (cGMP) regarding the production of materials relating to 11-1F4; (3) information and data relating to the modulation of a molecular target of materials relating to 11-1F4; (4) information and data relating to whole-body animal imaging for tissue distribution and target binding affinity; (5) information and data regarding pharmacokinetics and pharmacodynamic assay development and validation relating to 11-1F4; (6) information and data regarding animal pharmacokinetics and pharmacodynamics and efficacy of 11-1F4; (7) information and data pertaining to toxicology studies on 11-1F4 materials; (8) information and data relating to stability testing of the chimeric 11-1F4 antibody; (9) information and data regarding the formulation procedures for the chimeric 11-1F4 antibody; (10) information and data regarding the sterile filling under good manufacturing practices conditions; and/or (11) information and data relating to the results of stability tests of 11-1F4 material successfully vialed.
[Id. at 6]. Plaintiff also asserts that “[c]ertain of the trade secret 11-1F4 information and data generated by NCI is incorporated into the ‘Chemistry, Good Manufacturing and Control Information for CH11-1F4 Final Vialed Product’ report and the appendices to that report” [Id. at 7]. Plaintiff states that the “report constitutes a unique combination of both protected trade secret material, the commercial rights to which are exclusively owned by UTRF, as well as unprotected material” [Id.].
Plaintiff further claims in its response that Caelum misappropriated confidential information that includes research data utilized in the IND Application. Specifically, Plaintiff responded as follows:
Caelum misappropriated confidential information which includes the research data prepared by University of Tennessee researchers utilized in the Investigational New Drug application file submitted with the U.S. Food and Drug Administration in connection with an approval request for 11-1F4 therapies (including IND No. 117,316 entitled, “Chimeric Monoclonal Antibody 11-1F4”). Investigational New Drug Application No. 117,326 contains confidential, non-public information relating to 11-1F4 generated by employees of The University of Tennessee who had assigned all right, title, and interest in and to Investigational New Drug Application No. 117,326 to UTRF. The confidential, non-public information relating to 11-1F4 contained in Investigational New Drug Application No. 117,326 generated by employees of The University of Tennessee includes, but is not limited to, confidential research data regarding 11-1F4, and confidential information pertaining to the design of clinical trials studying the safety and efficacy of 11-1F4 as a treatment for amyloidosis. The Investigational New Drug Application No. 117,326 also contains information and material other than UTRF's protected trade secret information; however, Investigational New Drug Application No. 117,326 constitutes a unique combination of both UTRF's protected trade secret material as well as unprotected material.
*5 [Doc. 142-4 pp. 7–8].
Caelum argues that Plaintiff's response to Interrogatory No. 1 is deficient and that courts have rejected these types of broad disclosures [Doc. 142 p. 16 (citation omitted)]. With respect to Plaintiff's description of the know-how and work-product, Caelum asserts that Plaintiff has not identified any concrete documents, as required, or any precise data or information allegedly misappropriated by Caelum [Id.]. With respect to the information generated by the NCI, Caelum states that Plaintiff provided eleven (11) categories of trade secret information in a narrative form, which Plaintiff took from a general list of activities appearing in the May 2011 Material Transfer Agreement (“MTA”) [Id. at 17]. It claims that this description cannot constitute trade secrets because Plaintiff's response does not indicate whether NCI actually undertook any of this work or whether the NCI memorized its work [Id.]. Further, while Caelum acknowledges that Plaintiff identified one report, the “Chemistry, Good Manufacturing and Control Information for CH11-1F4 Final Vialed Product,” which Plaintiff claims incorporates its trade secrets, Plaintiff did not provide any other specific document that contains the trade secret information [Id. at 18]. Caelum argues this demonstrates the deficiency in Plaintiff's disclosure [Id.]. Finally, Caelum asserts that Plaintiff's identification of the entire IND Application as a whole is insufficient given that it includes a substantial amount of public or non-proprietary information that does not qualify as trade secrets [Doc. 159 p. 14].
Plaintiff submits that other district courts routinely have held that the description of trade secrets similar to its description met the reasonable particularity standard [Doc. 151 p. 9]. With respect to the information generated by the NCI, Plaintiff responds that it provided eleven pieces of information that constitute trade secrets. Plaintiff states that the “Chemistry, Good Manufacturing and Control Information for CH11-1F4 Final Vialed Product” report “is the same trade secret report that Columbia subsequently purported to exclusively license to Caelum” [Doc. 151 p. 16]. According to Plaintiff, it is not required to tie its trade secrets to a specific document. As for identification of the entire IND Application, Plaintiff asserts it is sufficient and in accordance with the Sixth Circuit law.
The Court finds Plaintiff's description of its trade secrets does not put Caelum on notice as to what specific trade secrets Caelum allegedly misappropriated. Plaintiff's response to Interrogatory No. 1 is a general description of what Caelum allegedly misappropriated (e.g., the know-how that includes results, data, and information; information and data that the NCI generated; research data utilized in the IND Application). Plaintiff, at the least, must describe the results, data, and information to which it is referring. Loop AI Labs Inc. v. Gatti, 195 F. Supp. 3d 1107, 1113–14 (N.D. Cal. 2016) (finding plaintiff's trade secret disclosure of unnamed experiments, test results, research, analysis, evaluations, applications, and design concepts did not meet the reasonable particularity requirement because it was “devoid of any details about the claimed experiments, test results, research, etc.”). This is especially true in this case where Dr. Solomon created the antibody in the mid-to-late 1990s; it was the subject of various studies and clinical trials and development throughout the years; and it was the subject of various agreements with Defendants and other non-parties. Moreover, as Caelum asserts, it seems that the antibody is the subject of several publications [See Doc. 159 p. 6 n.1].
*6 Plaintiff's description of its work-product, the information generated by the NCI, and the information in the IND Application also contains a “catchall all” provision [See Doc. 142-4 pp. 5, 6, & 8 (“includes, but is not limited to”)]. This language is not specific because it indicates that there is additional work-product, information generated by the NCI, and information in the IND Application that are not disclosed in the response. Imax Corp. v. Cinema Techs., Inc., 152 F.3d 1161, 1167 (9th Cir. 1998) (explaining that catchall phrases are not specific because they do “not clearly refer to tangible trade secret material”). Similarly, with respect to the data generated by the NCI, it appears that Plaintiff listed the subjects of potential preclinical work and the NCI plans (if feasible) that are contained in the MTA [Doc. 89-5 pp. 2–3] and added the words “information” and “data” in response to Interrogatory No. 1 [Doc. 142-4 p. 6].
Further, “the fact that Plaintiff filed its trade secret disclosure belies the proposition that it contains information specific enough to be considered ‘confidential’ trade secrets.” Loop AI Labs, 195 F. Supp. 3d at 1112; see also Shell v. Am. Fam. Rts. Ass'n, No. 09-CV-00309-MSK-KMT, 2012 WL 13005966, at *2 (D. Colo. Aug. 27, 2012) (“Although there is certainly no hard and fast rule that trade secrets described with the requisite reasonable particularity be filed under seal, they typically are, ‘[i]n order to preserve the secrecy required for such material.’ ” (quoting Dura Global Techs., 2008 WL 2064516, at *2)); see generally L-3 Commc'ns Corp., 2011 WL 10858409, at *2 (“[T]he case law does not provide clear guidance as how detailed a plaintiff's trade secret disclosures must be. This is because trade secrets are necessarily confidential. As a consequence, courts are very reluctant to discuss a plaintiff's trade secret disclosures in a court order or opinion.”).[3]
Plaintiff cites several cases in its brief in support of its position that has sufficiently described its trade secrets [See Doc. 151 pp. 7–10]. The Court has reviewed them but finds them inapposite to the facts presented in this case. Some of the cases Plaintiff relies upon involve employees allegedly misappropriating their former employers' databases that contain customer information [See id. at 9–10 (discussing Trek, Inc. v. ITR Am., LLC, No. 216CV13767SJMRSW, 2017 WL 11533311, at *13 (E.D. Mich. Nov. 9, 2017) (examining the sufficiency of plaintiff's trade secrets identified as “sales information, financial information, purchasing data, inventory systems, unique reference numbering system, human resources data, and customer information”), report and recommendation adopted, No. 2:16-CV-13767, 2017 WL 11533312 (E.D. Mich. Dec. 4, 2017); Brocade Commc'ns Sys., Inc. v. A10 Networks, Inc., 873 F. Supp. 2d 1192, 1214– 15 (N.D. Cal. 2012) (examining the sufficiency of plaintiff's trade secrets identified as “customer lists and contact information, pricing guidelines, historical purchasing information, and customers' business needs/preferences”), on reconsideration in part, No. C 10-3428 PSG, 2012 WL 12925716 (N.D. Cal. July 8, 2012)]. Another, Kendall Holdings, Ltd. v. Eden Cryogenics LLC, No. 2:08-CV-390, 2011 WL 3652696, at *3 (S.D. Ohio Aug. 18, 2011), involved “a certain set of drawings (approximately 300 in number) which defendants concededly took with them without plaintiff's permission and, for some period of time, used in the manufacture and production of four products-namely the products which plaintiff identified in its interrogatory answers” [See id.]. But here, Plaintiff's alleged trade secrets are not databases, customer lists, or a set of drawings. Instead, Plaintiff's alleged trade secrets include decades of results, data, and information relating to the antibody. It is more akin to Loop AI Labs Inc. v. Gatti, where the court found plaintiff's disclosure listing “unnamed experiments, test results, research, analysis, evaluations, applications, and design concepts, among other things,” was not reasonably particular. 195 F. Supp. 3d at 1114.
*7 Plaintiff also heavily relies on Knox Trailers, Inc. v. Clark, another case where the plaintiffs' trade secrets were the customer, vendor, and inventory information stored in their databases and the customizations that plaintiffs made to the databases, which one of the defendants copied and produced during discovery. No. 3:20-CV-137-TRM-DCP, 2022 WL 163696, at *2–4 (E.D. Tenn. Jan. 18, 2022). In Knox Trailers, this Court found that plaintiffs' identification of its trade secrets met the reasonable particularity standard. Id. at *4. In doing so, it recognized that the case was “in a unique procedural posture because the parties litigated a preliminary injunction” on plaintiffs' trade secret claim, which the court granted.” Id. The Court further found plaintiffs disclosed their trade secret with reasonable particularity given that they identified the database as “Southware,” a resource-planning software, which contained plaintiffs' customer information, vendor information, parts-pricing information, service-pricing information, order history, vendor history, customer communications, and customized reports. Id. In other words, the universe of plaintiffs' trade secret information existed on the database. That is not the case here, where Plaintiff identified broad categories of results, data, information, and confidential research data regarding the antibody and included catchall phrases [Doc. 142-4 pp. 5–9]. The Court finds Knox Trailers inapposite to the facts in this case given the nature of Plaintiff's trade secrets and the procedural posture.
While all of the discussion above shows that Plaintiff has not identified its trade secrets with reasonable particularity, the disclosure of the IND Application is insufficient for additional reason. Caelum asserts that identification of the entire IND Application as whole is insufficient because it includes a substantial amount of public or non-proprietary information that does not qualify as trade secrets [Doc. 159 p. 14]. In support of its request that Plaintiff amend its response, it notes that “[c]ourts in the Sixth Circuit have held that a database containing a compilation of files does not qualify as trade secrets without a showing that the unified combination of information provides the plaintiff with an independent competitive economic advantage within the industry” [Doc. 142 p. 19 (citation omitted)].
Plaintiff responds that identifying the IND Application is sufficiently specific, and it relies upon Mike's Train House, Inc. v. Lionel, L.L.C., 472 F.3d 398 (6th Cir. 2006), abrogated on other grounds, A.K. v. Durham Sch. Servs., 969 F.3d 625 (6th Cir. 2020). In Mike's Train House, the Sixth Circuit found that, “[w]hen material such as design drawings or manuals are trade secrets based on a unique combination of both protected and unprotected material, a plaintiff should not be obligated to identify which components of the protected material is secret.” Id. at 411. Plaintiff argues that courts have applied this quote broadly [Doc. 151 p. 18 (citing Yoe, 2017 WL 11479991, at *3) (other citations omitted)].
While that may be so, “Mike's Train House does not stand for the premise that a plaintiff need not identify the material, compilation or information that it claims is the trade secret.” 2007 WL 4303294, at *3. In Dura Global Technologies, defendant claimed that plaintiffs failed to identify their trade secrets with particularity. Id. at *2. Plaintiffs argued otherwise, explaining that pursuant to Mike's Train House, they were not required “to identify each element of a trade secret with specificity so as to separate that element from every other element.” Id. at *3. The Eastern District of Michigan disagreed with plaintiffs and explained:
Mike's Train House examined the issue of whether, when a combination or compilation of information, steps or processes comprises a “trade secret” containing both secret and non-secret material or information, the plaintiff must identify which components of the protected material are secret. Mike's Train House used examples such as design drawings and manuals, which may contain characteristics which by themselves are each in the public domain, but together comprise a trade secret. Under Mike's Train House, a plaintiff is not required to dissect a design drawing it alleges is a trade secret into “private” and “public” elements.
Id. at *3. The court found that plaintiffs did not identify their trade secrets with reasonable particularity because they provided “a list of general categories and types of information they allege comprise their trade secrets” and made a reference to over 8,500 pages of documents. Id. The court also noted that plaintiffs' references to control plans were “too general to specify the trade secrets at issue.” Id. In addition, the court found that it was not “[d]efendant's burden to review over 8,500 sheets of paper, among the other information provided, to discern which material constitutes [p]laintiffs' trade secrets, and further, which of those are the subject of [p]laintiffs' claim for misappropriation.” Id.
*8 The trade secrets here do not appear to be design drawings or manuals like the trade secrets at issue in Mike's Train House. Instead, Plaintiff described its trade secrets as the “confidential, non-public information” in the IND Application that “includes but is not limited to” the confidential research data and information “pertaining to the design of clinical trials studying the safety and efficacy of 11-1F4 as a treatment for amyloidosis” [Doc. 142-4 pp. 7–8]. The Court finds that Plaintiff's disclosure is more akin to the insufficient disclosure in Dura Global Technologies given that it generally references confidential research data and information relating to the design of the clinical trials but does not explain the specific research data and information to which it refers. Dura Global Techs., 2007 WL 4303294, at *4 (“Plaintiffs' references, even those to control plans, are too general to specify the trade secrets at issue.”).
In sum, the Court finds that Plaintiff must identify more particularly the research data and information to which it refers in its response to Interrogatory No 1. See Yoe, 2017 WL 11479991, at *7 (explaining that a plaintiff's description of a trade secret is intended “to give defendants fair notice of the essential details of the trade secret claim so that they can conduct appropriate discovery and file appropriate motions concerning the merits of the claim” (citation and internal quotation marks omitted)); accord Champion Foodservice, LLC v. Vista Food Exchange, Inc., No. 1:13-cv-1195, 2016 WL 4468001, at *12 (N.D. Ohio Aug. 24, 2016) (finding identification of trade secret insufficient at summary judgment phase where plaintiff “simply describe[ed] the nature of the files” in a database and “aver[red] that some of the files in the database are trade secrets and some are not”).
B. Plaintiff's Responses to the Requests for Production
The parties dispute whether Plaintiff has sufficiently responded to RFP Nos. 1 and 2, which request as follows:
1. All Documents and Communications sufficient to identify [Plaintiff] trade secrets that [Plaintiff] contend Caelum wrongfully acquired and/or misappropriated.
2. All Documents and Communications referenced in the Complaint.
[Doc. 142-3 p. 5].
Specifically, Caelum states that Plaintiff has not produced the IND Application, the application files, and all related documents for the two different orphan drug designations relating to the antibody applied for and received by Dr. Solomon in December 2009. Caelum submits that Plaintiff has also not produced the “Chemistry, Good Manufacturing and Control Information for CH11-1F4 Final Vailed Product” report.
In response, Plaintiff states that it does not possess the entire IND Application because Dr. Solomon sent it to Dr. Lentzsch. Plaintiff, however, states that it has produced the non-email IND-related files that it does possess. According to Plaintiff, Caelum already has the entire IND file and produced most of it to Plaintiff. With respect to the orphan drug designations, Plaintiff states that it has now substantially produced all responsive non-privilege, non-email documents and that it is in the process of collecting and reviewing email files. Finally, Plaintiff states that it has now produced all responsive non-privileged non-email documents it has in its possession relating to the “Chemistry, Good Manufacturing and Control Information for CH11-1F4 Final Vailed Product” report.
It appears to the Court that Plaintiff has produced what it possesses and is in the process of producing additional responsive documents to RFP Nos. 1 and 2. In supplementing its response to Interrogatory No. 1, if Plaintiff has additional documents in its possession, such documents SHALL be produced in accordance with its obligations pursuant to Rule 26(e). Once Caelum receives and reviews Plaintiff's supplemental response to Interrogatory No. 1 and additional document production, if any, the parties shall meet and confer to determine whether additional productions are warranted. At this time, given the Court's order requiring Plaintiff to supplement its response, the Court declines to order Plaintiff to specifically certify that it does not have possession, custody, or control of certain documents or did not have possession, custody, or control of certain documents when it submitted its interrogatory response referencing the documents or when it filed its complaint. If the parties arrive at an impasse, they may contact chambers to set a hearing.
III. CONCLUSION
*9 For the reasons explained above, the Court GRANTS IN PART AND DENIES IN PART the Motion to Compel Plaintiff to Supplement Its Interrogatory Response(s) and to Compel Production of Documents Responsive to Caelum Biosciences, Inc.'s First Set of Requests for Production of Documents [Doc. 141]. The Court ORDERS Plaintiff to provide a list of its trade secrets that Caelum allegedly misappropriated in response to Interrogatory No. 1 in accordance with the above within thirty (30) days of this Order. In supplementing its response to Interrogatory No. 1, if Plaintiff has additional documents in its possession, such documents SHALL also be produced within thirty (30) days of this Order.
IT IS SO ORDERED.
ENTER:
Footnotes
Caelum also asserts that Plaintiff has provided broad categories that often encompass information that is publicly available or information that Dr. Solomon voluntarily produced to others without confidentiality designations. For instance, Caelum asserts that Dr. Solomon submitted the Investigational New Drug (“IND”) Application without confidentiality designations and that “any information in the IND [Application] is plainly not a secret to [Plaintiff]” [Doc. 142 p. 19]. Plaintiff responds that it is not required to establish the existence of its trade secrets during discovery and that Caelum's arguments are premature. Caelum replies that it is not seeking a merits-based ruling on the sufficiency of Plaintiff's trade secrets.
To the extent Caelum claims in its opening brief that Plaintiff does not possess trade secrets or that the information Plaintiff set out in response to Interrogatory No. 1 cannot be trade secrets, the Court finds the motion to compel is not the appropriate vehicle to raise such a challenge. Yoe v. Crescent Sock Co., No. 1:15-CV-3-SKL, 2017 WL 11479991, at *7 (E.D. Tenn. May 25, 2017) (“Parties asserting a trade secret allegation, however, are not required – during discovery – to establish the existence of a trade secret by a preponderance of the evidence.”). The question before the Court is whether Plaintiff has identified its trade secrets with reasonable particularity and not whether Plaintiff's stated information constitutes trade secrets. Caelum's argument is more appropriate for a dispositive motion. The Court declines to consider it at this juncture.
The parties also dispute whether Plaintiff is required to tie its trade secrets to specific documents [Doc. 151 p. 16; Doc. 159 p. 14]. Once Plaintiff supplements its response to Interrogatory No. 1, the parties shall meet and confer to discuss whether additional documents should be produced. If the parties reach an impasse, then they may contact chambers to set a hearing.