Tuesday, December 16, 2008

Trade Secrets Identification Problems Creates Discovery Catch-22 (Gentex Corp. v. Sutter)

Identifying trade secrets invariably creates a vexing problem for courts. On the one hand, plaintiffs must be able to discover what the defendant has allegedly taken, and the information requested in discovery almost always calls for some disclosure of the defendants' proprietary data. On the other, defendants who are sued for trade secrets theft have an expectation that the plaintiffs will specify what information they claim to be trade secrets.

A pending federal court case addressed this tension in the context of discovery sequencing. Judge Caputo, in Gentex Corp. v. Sutter, was asked to rule on what level of specificity a plaintiff should have to show before obtaining discovery of a defendant's trade secrets.

After noting that courts have taken a wide variety of approaches, the court held that "a plaintiff should identify the trade secrets at issue with 'reasonable particularity', meaning [it] must provide the defendant with a sufficient description to put the latter on notice of the nature of plaintiff's claims and can discern the relevancy of any requested discovery."


Court: United States District Court for the Middle District of Pennsylvania
Opinion Date: 11/25/08
Cite: Gentex Corp. v. Sutter, 2008 U.S. Dist. LEXIS 96188 (M.D. Pa. Nov. 25, 2008)
Favors: Neutral
Law: Federal Rules of Civil Procedure

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