USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Josh Berlowitz and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
5.7 Obtaining Information and Evidence In federal court, once litigation has commenced, the parties can obtain discovery from each other pursu - ant to the Federal Rules of Civil Procedure. Each state also has its own rules governing discovery. Discov - ery methods in both state and federal courts typically include the following: • interrogatories; • requests for the production of documents and other evidence; • requests for admissions; and • pre-trial depositions under oath, either of individu - als or of employees designated to testify on behalf of a corporate entity. In trade secret litigation where the misappropriation of competitively sensitive documents or source code is at issue, the trade secret owner may wish to seek forensic inspection of devices in the possession of the alleged misappropriator or its employees. Moreover, as companies embrace distributed workforces and increasingly rely on novel tools for managing and dis - tributing information, parties seeking discovery should think creatively about information repositories where proof of misappropriation might exist. For example, discovery requests may need to go beyond tradition - al email and documents and consider cloud storage services, “chat” or other synchronous communica - tion tools (such as Slack or Teams), collaboration tools or “wikis” (such as Confluence or Trello), issue and project tracking tools (such as Jira), source code management tools (such as GitHub), virtual meeting recordings (such as those generated in WebEx or Zoom), and artificial intelligence chat histories (such as those generated in ChatGPT or Claude). 5.8 Maintaining Secrecy While Litigating Plaintiffs will need to strike a careful balance between under-disclosure and over-disclosure regarding the claimed trade secrets. For example, a plaintiff must provide sufficient detail in its complaint to survive a motion to dismiss (see 5.5 Initial Pleading Standards ) but must also avoid disclosing trade secret informa - tion in a publicly filed complaint or other pleading. Prior to exchanging any sensitive business, technical or financial information, the parties should stipulate to a protective order that limits disclosure of such infor -
Parties should therefore be prepared to submit suf - ficient evidence and, in some cases, declarations by expert witnesses to support their contentions as to the sufficiency of the description of the claimed trade secrets. Although the reasonable particularity requirement is not meant to function as a mini-trial on the merits, a plaintiff who is unable to adequately describe the trade secrets at issue would doubtless encounter diffi - culties at the summary judgment stage. Therefore, the process of obtaining the court’s approval to proceed with discovery can provide a useful stress test of the plaintiff’s misappropriation theories. 5.6 Seizure Mechanisms The DTSA provides access to an ex parte civil sei - zure provision, which allows a court to order seizure of property in order to prevent the further dissemination of the trade secrets at issue (18 USC Section 1836 (b)(2)). The movant must demonstrate that extraordi - nary circumstances justify the seizure, which requires showing – in addition to the elements that ordinarily justify a preliminary injunction or temporary restrain - ing order – that an injunction or other equitable relief would be inadequate to ensure compliance, and if the enjoined party were provided notice, it would destroy or render inaccessible the property to be seized. As part of the merits of the application, the movant must succeed in showing that the information sought to be protected is a trade secret and that the potential subject of the seizure order misappropriated or con - spired to misappropriate the trade secret. Although the demanding burden for an ex parte civil seizure under the DTSA suggests this will be an infrequently used tool, the scope of property that may be seized is potentially quite broad compared to civil seizures in other intellectual property enforcement regimes, which are generally limited to the infringing or coun - terfeit goods themselves. If the movant succeeds in obtaining an ex parte civil seizure order, the court should hold a hearing within seven days after the order issues. The burden remains on the movant to prove the facts necessary to support the seizure; if the movant fails to meet its burden, the order will be dissolved or modified.
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