2. Described with particularity
In Xpertuniverse, Inc. v. Cisco Systems, Inc. (2013) U.S. Dist. LEXIS 32711 (D. Del.), the U.S. District Court for the District of Delaware applied the California Uniform Trade Secrets Act (CUTSA), citing Silvaco Data Systems v. Intel Corp.:
"'It is critical to any CUTSA cause of action . . . that the information claimed to have been misappropriated be clearly identified. Accordingly, a California trade secrets plaintiff must . . . identify the trade secret with reasonable particularity.' Silvaco Data Sys. v. Intel Corp., 184 Cal. App. 4th 210, 221, 109 Cal. Rptr. 3d 27 (Cal. Ct. App. 2010) (citing Code Civ. Proc. § 2019.210) . . . The cases provide that a trade secret consists of information, not ideas; a trade secret is actual, not theoretical; a trade secret is specific, not general . . . Cases from other jurisdictions are also helpful: descriptions that 'effectively assert that all information . . . about [the plaintiff's] software is a trade secret,' by describing the 'methods and processes underlying and the inter-relationships among various features making up [the plaintiff's] software package,' are too broad. IDX Sys. Corp. v. Epic Sys. Corp., 285 F.3d 581, 583 (7th Cir. 2002) . . . ." (Xpertuniverse, Inc. v. Cisco Systems, Inc., supra, U.S. Dist. LEXIS 32711 (D. Del.) at 11-12.)
"None of XU's descriptions [of the 46 asserted trade secrets at issue] designate any information or identify any source code; they are very general recitations of processes implementing equally general features, structures, design considerations, and platforms." (Id. at 13.)
The Court ruled that only two of XU's 46 descriptions were sufficiently specific to qualify as trade secrets. However, the Court found that defendant Cisco did not misappropriate either of those two secrets. Even though Cisco showed a third party some XU documents, XU failed to designate the documents as secret, and XU failed to demonstrate that Cisco knew or should have known it was revealing XU's trade secrets. (Id. at 17.)
Likewise, in Altavion, Inc. v. Konica Minolta Systems Laboratory, Inc. (2014) 226 Cal.App.4th 26 (Cal.App.1st Dist.), the appellate court affirmed the trial court's decision in favor of respondent inventor for misappropriation of trade secrets by the appellant, the research and development subsidiary of printer manufacturer Konica Minolta. The misappropriation occurred during unsuccessful negotiations involving the inventor's bar-code technology for self-authenticating paper documents. Konica subsequently applied for several patents that included Altavion's technology.
The court ruled that ideas are protectable as trade secrets, but it emphasized that the protected secrets must be clearly identified. "[A] California trade secrets plaintiff must, prior to commencing discovery, 'identify the trade secret with reasonable particularity.' (Code Civ. Proc., § 2019.210; see Lemley, The Surprising Virtues of Treating Trade Secrets as IP Rights (2008) 61 Stan. L.Rev. 311, 344." (Id. at 43.)
Altavion's bar-code technology allowed self-authenticating paper documents to be created through use of a self-authenticating digital stamp that detects changes to the document and also locates where in the document the changes were made. Konica claimed that the trial court's use of the umbrella term "DST" (digital stamping technology) to describe Altavion's technology was not present in Altavion's own descriptions of the technology. (Id. at 46.)
1. Secret and valuable
3. Software trade secrets and patents: Conflicting or complementary?