Judge: Lee R. Bogdanoff, Case: 21STCV12297, Date: 2023-08-09 Tentative Ruling

Case Number: 21STCV12297    Hearing Date: August 9, 2023    Dept: 29

TENTATIVE

Lab Zero’s Motion for Judicial Adjudication of Legal Issues Underlying Discovery is DENIED without prejudice.

 

Legal Standard

 

Before commencing discovery on any trade secret action, “the party alleging the misappropriation shall identify the trade secret with reasonable particularity.” (Code of Civil Procedure section 2019.210.)

 

A trade secret is "information, including a formula, pattern, compilation, program, device, method, technique, or process, that: [¶] (1) Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and [¶] (2) Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy." (Civ. Code, § 3426.1, subd. (d); see IMAX Corp. v. Cinema Technologies, Inc. (1998) 152 F.3d 1161, 1165.)

 

“ ‘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[,] (See City of Santa Cruz v. Municipal Court (1989) 49 Cal.3d 74, 90, 260), 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. (§ 2017.010; Greyhound Corp. v. Superior Court (1961) 56 Cal.2d 355; Calcor Space Facility Inc. v. Superior Court (1997) 53 Cal.App.4th 216, 223–224; Diodes, Inc. v. Franzen, supra, 260 Cal.App.2d at p. 253.) . . . . The degree of ‘particularity’ that is ‘reasonable’ will differ, depending on the alleged trade secrets at issue in each case.”  (Advanced Modular Sputtering, Inc. v. Superior Ct. (2005) 132 Cal.App.4th 826, 835–36.)   

 

The four interrelated goals of section 2019.210 are to: (1) promote well-investigated claims and dissuade the filing of meritless trade secret complaints; (2) prevent plaintiffs from using the discovery process as a means to obtain the defendant’s trade secrets; (3) assist the court in framing the appropriate scope of discovery and determining whether plaintiff’s discovery request fall within that scope; and (4) enable defendants to form complete and well-reasoned defenses. (Brescia v. Angelin (2009) 172 Cal.App.4th 133, 144, citing Advanced Modular, supra 132 Cal.App.4th at 833-844.) 

 

Evidence Code §1060 allows the owner of the trade secret to refuse to disclose the secret, and to prevent others from disclosing it if allowance of such privilege does not conceal a fraud or otherwise create an injustice.

Discussion

Under the statute, “at this prediscovery stage of the proceedings,” while the Court may recognize the existence of a credible dispute between the parties, it is not necessary for the Court to resolve it. (See Brescia v. Angelin (2009) 172 Cal.App.4th 133, 146.)

Here, Lab Zero’s disclosure pursuant to CCP 2019.210 is not adequately particular given the nature of the alleged secret and the technology in which it arises, to permit Cross-Defendants to ascertain whether and in what way the information is distinguished from matters already known, or to permit the court to fashion appropriate discovery.

 

“Where, as here, the alleged trade secrets consist of incremental variations on, or advances in the state of the art 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.” (Id., at 836.)

 

When the nature of the alleged trade secret or the technical field in which it arises makes a detailed description alone inadequate to permit the defendant to learn the limits of the secret and develop defenses or to permit the court to understand the secret and fashion discovery, the court may require an explanation of how the alleged trade secret differs from matters known to skilled persons in the field as necessary to satisfy those needs. (Brescia v. Angelin, supra, 172 Cal.App.4th at 150.)

 

Here, the details alone, without further explanation, are inadequate to permit Cross Defendants to discern the boundaries of the trade secret so as to prepare available defenses, and they are inadequate to permit the court to understand the identification so as to craft discovery. As such, Lab Zero needs to particularize how the alleged secret differs from matters already known to skilled persons in the field. 

For example, element C of the Z-engine claims that engine uses “separate encrypted files in which they are stored, as opposed to the industry standard of storing assets in widely-used file formats with specific purposes” to accomplish a certain goal. It does not specify what makes the encrypted files unique from other used in the industry such that they can be identified in discovery.

Claimed elements S and T are described as “proprietary formats” for storing various data still do not provide any detail as to what defines these proprietary formats or how they differ from formats commonly known in the industry.

Moreover, in the Art Creation and Pipline and Methods, Claimed element A is described as Knowledge of processes and requirements for creating the aforementioned constituent colors, line, shade, and dye layers, including but not limited to: tutorials for creating said layers; color matching and aliasing requirements for colors and dye layers . . . and methods for ensuring such layers match.” The disclosure does not identify what the “processes” or “methods” consist of, or how they can be distinguished from common knowledge in the industry.

Claimed Element B is similarly deficient as it fails to identify the “scripts” and “tools” beyond asserting that they are “proprietary.”

Conclusion

Based on the foregoing, Lab Zero’s Motion for Judicial Adjudication of Legal Issues Underlying Discovery is DENIED without prejudice.

 

Moving party is ordered to give notice.