Determining when a plaintiff must disclose and describe the trade secrets it alleges were misappropriated is often a hard-fought battle between the parties.
On the one hand, some plaintiffs want to fully discover the scope of the misappropriation before limiting their claims to only a subset of their trade secrets. Given the often-surreptitious nature of trade secret misappropriation, plaintiffs are sometimes concerned that they do not even know which trade secrets were misappropriated, so they could not reasonably identify their trade secrets early in the case. Defendants, on the other hand, often advocate for early disclosure of the trade secrets to narrow the case, limit discovery, and mitigate the risk that the plaintiff will belatedly craft its definition of what constitutes its “trade secret” from what it finds in discovery.
While some states have statutes requiring the early disclosure of trade secrets (see Cal. Code Civ. Proc. § 2019.210 and Mass. Gen. Laws Ann. 93 § 42D), many courts address the issue on a case-by-case basis. Additionally, a variety of factors may affect the particularity with which trade secrets must be disclosed and at what stage of litigation. For instance, the U.S. District Court for the Eastern District of Pennsylvania considered the expertise of the allegedly misappropriating party in holding that a more particularized definition of the trade secrets was unnecessary in the early stages of discovery because the party had “the expertise to understand the nature of [the] claimed trade secrets well enough to proceed with discovery[.]” M.H. Eby, Inc. v. Timpte Indus., 2019 U.S. Dist. LEXIS 125086, *9 (E.D. Pen. July 26, 2019).
If the timing of disclosing trade secrets is important to a case or a client, practitioners should thoroughly research the predisposition of the courts in the possible jurisdictions they may bring their misappropriation claim to find the jurisdiction most beneficial to their strategy.