Earlier this week, Judge Burke unsealed an opinion on what appears to be an issue of first impression for the district.
Biohaven Therapeutics LTD v. Avilar Therapeutics, Inc., C.A. No. 23-328-JLH-CJB (D. Del. Apr. 10, 2025) (R&R) is a trade secret case where the plaintiffs alleged that the defendants ... stole ... their trade ... secrets. The issue was that one of the plaintiffs, Biohaven, only had a non-exclusive license to the alleged trade secrets and thus defendant argued that they lacked standing to assert them.
Unlike in patent law, where dense treatises have been written about which types of license confer standing, the question of whether a bare non-exclusive license is sufficient for DTSA standing remains open. In denying the motion to dismiss, Judge Burke ruled that it would be sufficient under the language of the statute:
First and most importantly, the wording of the DTSA supports the Court’s decision. The DTSA clearly states that an entity that has a “license in” a trade secret is an owner of a trade secret. There can be no question that at the time the DTSA was enacted in 2016, a non-exclusive license was a type of legally-recognized “license” to a form of intellectual property (i.e., one that grants the party a right to use the property, but permits the owner to further license those rights). And the statute’s definition of ownership is broad in this respect—it states that the holder of a “license” is an owner, not (more narrowly) that only the holder of an “exclusive license” is an owner. When the plain meaning of the words used in a federal statute is clear, then a federal court must recognize and give effect to that plain meaning. Here, Congress said “license”—and a non-exclusive license is a viable, lawful type of “license” to a trade secret.
Id. at 27-28 (internal citations omitted)
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