Is A Plaintiff Required To Identify The Trade Secrets Misappropriated By The Defendant(s) Prior To Conducting Discovery?

Code of Civil Procedure §2019.210, states:

“In any action alleging the misappropriation of a trade secret under the Uniform Trade Secrets Act … 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.”

It has long been the law in California that a plaintiff claiming misappropriation or theft of trade secrets must, at the outset, identify its trade secrets with sufficient particularity so as to avoid litigation abuses and to provide adequate protection against the unwarranted disclosure of trade secrets or otherwise confidential information to a plaintiff whose claims are not well-defined. Without such a rule, a plaintiff would be free to use litigation unfairly and inappropriately as a way to examine another's trade secrets, and then define its own allegedly misappropriated trade secrets so that they encompass whatever is found in discovery.

Hence, the purpose of section 2019.210 is to (a) promote well-investigated claims and dissuade the filing of meritless trade secret complaints; (b) prevent plaintiffs from using the discovery process as a means to obtain the defendant's trade secrets; (c) assist the court in framing the appropriate scope of discovery and in determining whether plaintiff's discovery requests fall within that scope; and (d) enable defendants to form complete and well-reasoned defenses, ensuring that they need not wait until the eve of trial to effectively defend against charges of trade secret misappropriation.

While neither the statue or the case law explain what constitutes a sufficient showing of “reasonable particularity,” courts have held that a plaintiff must make a showing that is 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.

Consequently, there is no bright line rule and what constitutes fair, proper, just and rational is determined on a case by case basis. However, based on recent case law, it appears that in a highly specialized technical field, a more exacting level of particularity may be required to distinguish the alleged trade secrets from matters already known to persons skilled in that field.

If you are involved in a dispute concerning theft of trade secrets, it is vital to have the experienced business litigation attorneys of Fisher & Talwar on your side. Attorneys at Fisher & Talwar are skilled in litigating misappropriation of trade secret and unfair competition claims. Contact Los Angeles trade secret attorneys at Fisher & Talwar at 213-891-0777 or contact vt@fishertalwar.com for immediate assistance.