United States District Court, N.D. California
ORDER RE PLAINTIFF'S TRADE SECRETS DESIGNATION
RE: DKT. NO. 164
PHYLLIS J. HAMILTON, UNITED STATES DISTRICT JUDGE
court is in receipt of the parties' joint letter brief
requesting the court to determine whether Gatan, Inc. has
sufficiently identified its alleged trade secrets pursuant to
Cal. Civ. Proc. Code § 2019.210. Specifically the
parties ask the court to resolve two issues: (1) Did this
court's order denying Nion Company's motion to
dismiss, Dkt. 128 (the “MTD Order”),
plaintiff's Third Amended Complaint (the
“TAC”) determine that Gatan sufficiently
identified the alleged trade secrets consistent with §
2019.210? (2) Does Gatan's trade secrets designation,
Dkt. 164-1 (Exhibit A), satisfy § 2019.210?
parties are familiar with the relevant facts and the MTD
Order, the court only briefly describes them here. Gatan is a
manufacturer of spectrometers, including the Enfinium (a.k.a.
the “Quefina”), which is based on the technology
of the GIF Quantum, an imaging energy filter. TAC
¶¶ 13-14. In the past, Nion did not market or sell
its own spectrometers. TAC ¶ 15. In October 2009, Nion
approached Gatan to collaborate on an electron microscope for
Arizona State University (“ASU”). TAC ¶ 16.
The parties' dispute centers on a February 2, 2010
“Reseller Agreement” between Gatan and Nion (the
“Agreement”). Pursuant to the Agreement, the
parties worked together to modify a Gatan spectrometer for
integration into a Nion microscope for ASU. Gatan accuses
Nion of breaching that contract and misusing confidential
information divulged under the terms of the Agreement.
law requires that a party alleging trade secret
misappropriation “identify the trade secret with
reasonable particularity” prior to discovery. Cal. Civ.
Proc. Code § 2019.210. Often, a trade secret plaintiff
satisfies § 2019.210 by producing a trade secrets
designation before discovery commences. In response to
defendant's request, plaintiff did so on March 5, 2018.
Though plaintiff complied with defendant's request,
plaintiff contends that it did not need to because the
court's MTD Order already determined that the TAC's
allegations satisfied § 2019.210. After reviewing
Gatan's trade secrets designation, defendant informed
Gatan that it believed the designation was insufficient under
§ 2019.210 and produced its own spectrometer design to
aid Gatan in crafting an appropriately detailed designation.
Gatan nevertheless determined that it need not amend its
designation in light of the TAC's allegations.
Specifically, the TAC's allegations that Nion
misappropriated and disclosed Gatan's trade secrets
through their inclusion in Nion's Small Business
Innovative Research (“SBIR”) grant application.
2019.210 provides: In any action alleging the
misappropriation of a trade secret under the Uniform Trade
Secrets Act (Title 5 (commencing with Section 3426) of Part 1
of Division 4 of the Civil Code), before commencing discovery
relating to the trade secret, the party alleging the
misappropriation shall identify the trade secret with
reasonable particularity subject to any orders that may be
appropriate under Section 3426.5 of the Civil Code, ”
which requires a court to take steps to protect trade secrets
during litigation. Advanced Modular Sputtering, Inc. v.
Superior Court, 132 Cal.App.4th 826, 833 (2005).
plaintiff seeking relief for the misappropriation of trade
secrets “must identify the trade secrets and carry the
burden of showing that they exist.” MAI Sys. Corp.
v. Peak Computer, Inc., 991 F.2d 511, 522 (9th
Cir. 1993). “While the Ninth Circuit has yet to decide
whether Section 2019.210 of the California Code of Civil
Procedure applies to actions in federal court, courts in this
district have routinely applied the trade secret disclosure
provisions in Section 2019.210.” Openwave
Messaging, Inc. v. Open-Xchange, Inc., No.
16-CV-00253-WHO, 2018 WL 692022, at *4 (N.D. Cal. Feb. 2,
2018) (collecting cases).
letter and spirit of section 2019.210 require the plaintiff,
subject to an appropriate protective order, to identify or
designate the trade secrets at issue with sufficient
particularity to limit the permissible scope of discovery by
distinguishing the trade secrets from matters of general
knowledge in the trade or of special knowledge of those
persons . . . skilled in the trade.” Advanced
Modular, 132 Cal.App.4th at 835 (internal quotation
marks omitted; ellipses in original). Contrary to Nion's
assertion, that does not require the designation itself to
detail how the trade secret differs from matters of general
knowledge in the trade. Instead, § 2019.210 “was
intended to require the trade secret claimant to identify the
alleged trade secret with adequate detail to allow the
defendant to investigate how it might differ from
matters already known and to allow the court to craft
relevant discovery.” Brescia v. Angelin, 172
Cal.App.4th 133, 1447-50 (2009) (emphasis added)
(“Absent a showing that elaboration is required to
serve the [section's] goals, section 2019.210 should not
be construed to require the claimant to explain why the
alleged trade secret differs from matters already known in
Reasonable particularity mandated by section 2019.210 does
not mean that the party alleging misappropriation has to
define every minute detail of its claimed trade secret at the
outset of the litigation. Nor does it require a discovery
referee or trial court to conduct a miniature trial on the
merits of a misappropriation claim before discovery may
commence. Rather, it means that the plaintiff must make some
showing that is reasonable, i.e., fair, proper, just and
rational, under all of the circumstances to identify its
alleged trade secret in a manner that will allow the trial
court to control the scope of subsequent discovery, protect
all parties' proprietary information, and allow them a
fair opportunity to prepare and present their best case or
defense at a trial on the merits.
Advanced Modular, 132 Cal.App.4th at 835-36
(internal quotation marks and citation omitted);
Brescia, 172 Cal.App.4th at 148-49.
The MTD Order Did Not Determine That The TAC ...