In another part of the opinion mentioned earlier today, Judge Burke set forth his views on the scope of discovery in a trade secret action—an issue that comes up a lot, along with the related issue of the disclosure of the alleged trade secrets:
As to what is not relevant trade secret discovery: what [Plaintiff] is not entitled to do is to set out a claim in Count IX for trade secret misappropriation—i.e., a claim involving a certain set of alleged facts, occurring in a certain alleged time frame, involving a certain referenced set of persons and a certain type of purported misconduct—and then say to [Defendant], “Now that we have plausibly pleaded that type of trade secret misappropriation claim, we would like discovery regarding whether you may have taken any other action, even action not related to the core of the facts and allegations set out in Count IX, that we might consider to also amount to trade secret misappropriation.” That would be a “fishing expedition” that would not seek documents that are actually relevant to Count IX.
The Court went on to describe what is acceptable discovery on a trade secret claim, including a three-element test:
So what is relevant trade secret discovery? [T]he [complaint] plausibly alleges that the content of [two specific documents] are trade secrets that were misappropriated. . . . So if there is a dispute about whether requested discovery is otherwise permissible as to Count IX, and if [Plaintiff] can sufficiently articulate how the content of the requested discovery relates to the content of those two documents, the discovery is surely relevant and will be permitted.
Beyond that, the Court does not agree . . . that [Defendant] is necessarily limited to taking discovery only relating to the content of those two documents. . . . [Plaintiff] will be able to obtain that discovery if it can thereafter credibly explain to the Court why the subject matter: (1) relates to the misappropriation that occurred during the relevant time period described in the claim . . . ; (2) concerns misappropriation of [the identified categories of trade secrets and/or documents taken]; and (3) concerns the type of misappropriated material that was “proprietary” to [Plaintiff] (or not generally known to others who could obtain economic value from it) during the relevant time frame.
Boston Scientific corp. v. Nevro Corp., C.A. No. 16-1163-CFC-CJB, at 14-16 (D. Del. August 21, 2020).
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
