Back to 'In The News'

Trade Secret Should be Rich in Detail

A trade secret is usually “rich in detail” since general terms will usually be widely known and thus not capable of being protected, the Seventh Circuit said, affirming a judgment for the defendant.

The defendant had filed for a patent for a process that was disclosed to it in general terms by the plaintiff. The patent office rejected the patent application. While a patent application defeats a trade secret claim, the court said if the trade secret were misappropriated by the patent applicant, then the applicant could be liable for any copying by any innocent third party.

The appellate court found that the plaintiff did take steps to keep its information secret, such as requiring a license agreement. However plaintiff “presented no evidence that would have enabled the market value of its process to be estimated on any basis other than wild conjecture.” While damages could not be assessed, the plaintiff still could obtain an injunction, if there was a trade secret.

However, the plaintiff failed to give any details about the trade secret to the trial court, “so if BondPro’s trade secret resides in specifics that have not been disclosed to us, Siemens is not responsible for their disclosure,” the appellate court declared.

In addition to rejecting the appeal, the appellate court chided both parties for failure to follow the court’s rules. In the first instance, the parties failed to list which state the parties were citizens. “A further sign of the lawyers’ carelessness is that their briefs are miscaptioned. The name of the defendant is given as ‘Siemens Westinghouse Power Corporation,’ which was changed before the appeal was filed. One might have expected the defendant’s lawyer, at least, to know the name of his client,” the court wrote. The court gave the attorneys ten days to show why they should not be sanctioned “for violating our circuit rule.”

BondPro Corporation v. Siemens Power Generation, Inc., Seventh Cir. No. 05-3077 (Sept. 12, 2006).