You’re suing for theft of trade secrets. Or you’re being sued. 

Whatever. It doesn’t matter.

All that matters is that you’re in a trade secret case, and you’re gearing up for trial.

You know what that means. Motions in limine! 

(For our non-lawyer readers, we use motions in limine to get rulings on what will happen at trial. Like on whether a certain document can be introduced. Or whether a criminal defense lawyer can refer to the prosecutor as “the government.”)

Our motions in limine today come from Bladeroom’s trade secret suit against Facebook and Emerson Electric.

What happened isn’t terribly important. So let’s get straight to the motions and the court’s rulings.

Dropped trade secrets

Bladeroom (the plaintiff) moved to exclude evidence related to trade secrets that it dropped from the case. 

Probably what happened here is that Bladeroom asserted trade secrets in everything under the sun. Facebook called BS. Then Bladeroom backpedaled and culled its claimed trade secrets. (Enterprising folks could probably comb the docket to confirm this.)

The court granted the motion. Documents relating to the dropped trade secrets were no longer relevant because they’re no longer in the case. So testimony on that was precluded.

With one caveat. 

The court also noted that the defendants were still allowed to reference the prior trade secret claims if they were otherwise relevant. 

(This hedging is common in motions in limine. Courts don’t know all the evidence or how something could be relevant. So they leave openings for the rulings to be skirted.)

This caveat could maybe allow the defendants to use the dropped trade secret claims to show Bladeroom’s bad faith in suing. For instance, maybe Bladeroom originally claimed 1,000 stolen trade secrets, and now it’s down to 1—so they’re obviously conducting a witch hunt. 

Whether one would want to do this is another question.

It could be a distraction. And it maybe detracts from the more important question of whether the 1 trade secret still in the suit is actually one. Or whether that 1 trade secret was actually misappropriated.

Protective order designations

Imagine you’re a defendant. One of your defenses might be that none of these documents are confidential. So they’re not trade secrets. 

One problem.

The case has a protective order. And everybody (or even just the plaintiff) produced documents with “CONFIDENTIAL UNDER PROTECTIVE ORDER” stamped on everything.

You don’t want a jury looking at that and thinking this stuff is confidential.

The defendants in Bladeroom recognized this. They brought a motion in limine to exclude the protective order designations from the trial exhibits. And the court granted it.

Pre-litigation confidentiality labels

Conversely, the court allowed pre-litigation confidentiality labels to remain on the documents. These designations went to whether the documents were treated confidentially. (Obviously not conclusive. But still. A relevant factor to be considered.)

And the designations were admissible for the non-hearsay purpose of showing the parties’ state of mind.

Non-disclosure agreements with sunsetting provisions

What happens when a non-disclosure agreements expires on a certain date? Is anything that occurs after that automatically legal? 

Emerson tried that argument, bringing a motion in limine to exclude all evidence after that date. 

But it lost. For two reasons.

One was poor drafting. The NDA didn’t say what happens when misappropriation begins before the sunsetting provision and then continues afterwards. Maybe, contractually, the NDA would still apply.

The other was trade secret law. Which generally hinges on whether a plaintiff adequately protected its trade secrets. 

This depends on many factors. One of which is an NDA. But an NDA isn’t conclusive. 

At least not for this court. 

Nor others. 

But maybe you could convince a court otherwise.

Efforts to obtain non-disclosure agreements

There was another non-disclosure agreement issue.

Facebook moved to exclude evidence that Bladeroom attempted to obtain oral non-disclosure agreements. 

It lost. Those attempts are relevant to whether the information was treated confidentially. And they were admissible for the same non-hearsay purpose of state of mind.

Producing over a million pages

Maybe a defendant wants to argue that it produced over a million documents, and there’s still not a single piece of evidence in them supporting the claim.

Bladeroom moved to stop Emerson from doing this. The court denied the motion. 

Witness disclosures

In federal court, you have to disclose your witnesses at the outset of the case and update it throughout. Failure to do so may prevent you from putting them on as witnesses.

Except—and this is a big exception—you can adequately disclose these witnesses in other ways. They don’t have to be in the initial disclosures. They could be in, say, interrogatory responses. Or in documents.

That might be enough.

Here, the interrogatory responses referenced several documents. And in those documents, there were references to desired witnesses. 

But that wasn’t enough for this court. Apparently the interrogatories referenced an obscene amount of documents (a “sheer volume,” in the court’s words). And nobody could be expected to “review [them] and understand the significance of any individual referenced . . . .” 

So these undisclosed witnesses were excluded.

Producing documents in unreadable forms

If you produce a document in its native format, that’s good enough. It shouldn’t be excluded because the other side couldn't access all the document’s metadata because it didn’t have the correct program.

The document was produced, and that’s all that matters.