Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Peter Leung
April 12 — A federal district court threw out a trade secrets claim related to turning an airplane engine into a generator because the description of the claimed secrets was too vague.
The U.S. District Court for the District of Arizona granted Tucson Embedded Systems Inc.'s motion for summary judgment April 8 (Tucson Embedded Sys. Inc. v. Turbine Powered Tech. LLC, D. Ariz., No. CV-14-01868-TUC-BGM, 4/8/16).
The decision applied Arizona law, which is an adaptation of the Uniform Trade Secrets Act (UTSA). The Senate-passed Defend Trade Secrets Act, creating a new federal private right of action for trade secret theft, is similar to the UTSA in many respects . The House Judiciary Committee is expected to act soon on a comparable bill.
TES had sued Turbine Power Technology LLC for failing to pay for parts used in its modified engine product. The product involves converting a Honeywell T-53 engine, normally used in airplanes and helicopters, for use in a one-megawatt generator designed for oil and gas industrial applications.
Turbine, in a counter suit, alleged that TES had stolen its trade secrets. Turbine described the secrets in court documents as “parameters and settings, including timing, temperatures, flow rates, horsepower settings, pressures” and protocols for making and operating the modified engines.
TES moved for summary judgment, arguing that Turbine's descriptions of the trade secrets—even after requests for clarification—weren't legally sufficient.
The court agreed. A party asserting a trade secrets claim must sufficiently identify the secrets in question in order to establish what might be legally protectable, it said.
It further explained that “catchall phrases” used to describe the claimed secrets usually can't reach the level of specificity required to survive a summary judgment motion. The court pointed to the U.S. Court of Appeals for the 9th Circuit's decision in Imax Corp v. Cinema Techs., Inc, 152 F.3d 1161, 47 U.S.P.Q.2d 1821 (9th Cir. 1998), which held that claiming “dimensions and tolerances” as trade secrets fails because a court would not be able to understand exactly which “dimensions and tolerances” in the claimed product are at issue.
Turbine's description of “parameters and settings” similarly failed to meet the specificity requirement. Requiring such specificity helps the court set permissible bounds of discovery in litigation, and prevents unnecessary exposure of the defendant's trade secrets, an important policy goal, the court said.
The court granted TES's summary judgment, even though Turbine seemed to have invested considerable resources in its product, it said.
Magistrate Judge Bruce G Macdonald issued the amended order. Snell & Wilmer LLP represented TES, while Udall Law Firm LLP represented Turbine.
To contact the reporter on this story: Peter Leung in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Mike Wilczek in Washington at email@example.com
Text is available at: http://src.bna.com/d3X.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)