USA Law and Practice Contributed by: Claudia Ray, Joseph Loy, Brandon R. Weber and Andrew (Keum Yong) Lee, Kirkland & Ellis LLP
sus among courts towards demanding greater detail in pre-discovery pleadings may expose a plaintiff to unique strategic challenges in terms of specifically articulating the trade secrets that it believes have been misappropriated. In the growing number of jurisdictions where the plaintiff must identify the misappropriated trade secrets with reasonable particularity before the commencement of discovery, a defendant may argue that the plaintiff’s identification is insuffi - ciently particular, such that the defendant cannot defend against the allegations of trade secret misappropriation and the court will be unable to determine the appropriate scope of discovery. In such circumstances, a defendant may be able to extract increasingly specific disclosures that narrow the scope of the trade secrets asserted, while staying discovery into the trade secret claims as well as other causes of action based on the same factual allegations. In some juris - dictions, a plaintiff may be able to proceed well into discovery with a trade secret identification that is more general, but courts that follow the reasonable particularity standard will generally require a narrative description that provides the defendant sufficient detail to investigate how, if at all, the alleged trade secret differs from infor - mation that is publicly known or well-known within the relevant industry. The degree of par - ticularity required is highly context-specific and fact-dependent, and courts have discretion to require a more exacting level of particularity for more complex technologies. Parties should therefore be prepared to submit sufficient evidence and, in some cases, declara - tions by expert witnesses to support their con - tentions as to the sufficiency of the description of the claimed trade secrets.
Although the reasonable particularity require - ment 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 doubt - less encounter difficulties at the summary judg - ment stage. Therefore, the process of obtaining the court’s approval to proceed with discovery can provide a useful stress test of the plaintiff’s The DTSA provides access to an ex parte civil seizure 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 dem - onstrate that extraordinary circumstances justify the seizure, which requires showing – in addition to the elements that ordinarily justify a prelimi - nary injunction or temporary restraining 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. misappropriation theories. 5.6 Seizure Mechanisms As part of the merits of the application, the movant must succeed in showing that the infor - mation sought to be protected is a trade secret and that the potential subject of the seizure order misappropriated or conspired to misappropri - ate 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 enforce - ment regimes, which are generally limited to the infringing or counterfeit goods themselves. If the movant succeeds in obtaining an ex parte civil seizure order, the court should hold a hear -
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