Trade secrets discovery in a suit for misappropriation, breach of contract, breach of fiduciary duty, etc., can give rise to a number of dilemmas. A recent Northern District of Georgia ruling, DeRubeis v. Witten Technologies, Inc., 244 F.R.D. 676, involves one of those dilemmas. The company asked for identification of the trade secrets the defendants were using in their competing business. The defendants objected, claiming that the company might use the response to “mold its cause of action around the discovery it receives.” On the one hand, the court emphasized, the defendants are entitled to know the nature of the company’s claim and to limit the company’s discovery accordingly. On the other, the company does not necessarily know exactly what trade secret information the defendants allegedly stole and are using.
In DeRubeis, the court required the company to “identify with ‘reasonable particularity’ those trade secrets it believes to be at issue.” The phrase “reasonable particularity” was defined as a sufficient description so that the defendants are “put on notice of the nature of” the claims and “can discern the relevancy of any requested discovery” propounded by the company. “Once [the company] has fulfilled its obligation, it will be entitled to discovery on [the defendants’] trade secrets, provided that what it seeks is relevant.”