Motion Protective Order

Cal. Super. - 6th Dist.August 7, 2019

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Electronically Filed QUINN EMANUEL URQUHART & SULLIVAN LLP by Superior court of CA,David Eiseman (Bar N0. 114758) daVideiseman@quinnemanuel.com Morgan W. Tovey (Bar N0. 136242) morgantovey@quinnemanuel.com 50 California Street, 22nd Floor San Francisco, CA 941 11 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 JAMES POOLEY, PLC James H. Pooley (Bar N0. 58041) james@pooley.com 325 Sharon Park Dr., #208 Menlo Park, CA 94025 Telephone: (650) 285-8520 Attorneys for Defendant Gerard Williams III County of Santa Clara, on 7/23/2021 11:28 PM Reviewed By: D Harris Case #1 9CV352866 Envelope: 6917074 SUPERIOR COURT OF THE STATE OF CALIFORNIA COUNTY OF SANTA CLARA APPLE INC., Plaintiff, V. GERARD WILLIAMS III, Defendant. CASE NO. 19-CV-352866 DEFENDANT GERARD WILLIAMS III’S NOTICE OF MOTION; MOTION FOR A PROTECTIVE ORDER PURSUANT TO § 2019.210; AND MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT THEREOF LODGED CONDITIONALLY UNDER SEAL PURSUANT TO THE PROTECTIVE ORDER Action Filed: August 7, 2019 Judge: Hon. Peter Kirwan Department: 1 9 Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TO THE COURT, PLAINTIFF, AND ITS COUNSEL OF RECORD: PLEASE TAKE NOTICE that 0n a date and time t0 be set by the Court, before the Hon. Peter Kirwan, in Department 19 0f the Superior Court 0f the State 0f California, County 0f Santa Clara, located at 161 North First Street, San Jose, CA 951 13, Defendant Gerard Williams III will, and hereby does, move the Court for a protective order barring Plaintiff Apple Inc. from conducting any further discovery unless and until it complies with Code 0f Civil Procedure Section 2019.210. This Motion is made pursuant t0 Sections 2019.020, 2019.210, 2030.090, and 203 1 .060 0f the Code 0f Civil Procedure and the Court’s inherent power t0 control the proceedings. Williams’ Motion is based 0n this notice; the accompanying memorandum 0f points and authorities; the supporting Declarations 0f Victoria Parker and Dr. Murali Annavaram; all other pleadings and papers on file in this action; such declarations, evidence, and argument as may be presented at 0r before the hearing; and all other matters 0f which the Court may take judicial notice. As indicated in the accompanying Declaration 0f Victoria Parker, the parties met and conferred t0 determine whether an agreement could be reached t0 resolve the dispute reflected in this Motion. N0 agreement was reached during the meet and confer. DATED: July 23, 2021 QUINN EMANUEL URQUHART & SULLIVAN. LLP By /s/David Eiseman QUINN EMANUEL URQUHART & SULLIVAN, LLP David Eiseman Morgan Tovey JAMES POOLEY, PLC James H. Pooley Attorneys for Gerard Williams III Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS Page MEMORANDUM OF POINTS AND AUTHORITIES ................................................................... 1 I. INTRODUCTION ................................................................................................................. 1 II. FACTUAL AND PROCEDURAL HISTORY ...................................................................... 3 A. Apple Hires Williams From ARM To Design SOC Microarchitecture For Apple’s Flagship Products But Declines T0 Pursue Williams’ New Business Idea ............................................................................................................................. 3 B. Williams Finds Apple Information, Never Uses It, And Has It Appropriately Preserved And Sequestered For Litigation ................................................................ 4 C. Based On A False Assumption, Apple Files An Ex Parte Application For A TRO And For Expedited Discovery Without First Alleging A Claim For Trade Secret Misappropriation And Without First Serving A Section 2019.210 Disclosure ................................................................................................................... 5 III. LEGAL STANDARD ............................................................................................................ 6 IV. ARGUMENT ......................................................................................................................... 6 A. The “Reasonable Particularity” Requirement Is Crucial For Governing The Scope Of Discovery And Allowing Defendants T0 Prepare For Trial ...................... 6 B. A Heightened Level Of Particularity Is Required Here ............................................. 6 C. Apple’s Trade Secret Disclosure Is Deficient ............................................................ 7 1. Apple Fails To Identify Any Trade Secrets With The Requisite Particularity .................................................................................................... 7 2. Apple’s Disclosure Fails T0 Differentiate Its Alleged Trade Secrets .......... 12 3. Apple’s Disclosure Fails T0 Provide Reasonable Notice Of The Issues For Trial Or A Reasonable Limit On The Scope Of Discovery .................. 13 D. Until It Provides A Compliant Disclosure, Apple Should Be Barred From Taking Any Additional Discovery ........................................................................... 14 V. CONCLUSION .................................................................................................................... 15 -111- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page CASES Action Learning Sys., Inc. v. Crowe (CD. Cal. Aug. 11, 2014) 2014 WL 12564011 ................................................................... 11 Advanced Modular Sputtering, Inc. v. Superior Court (2005) 132 Cal.App.4th 826 ................................................................................ 6, 10, 14, 15 Attia v. Google LLC (9th Cir. 2020) 983 F.3d 420 ................................................................................................ 12 IDXSyS. Corp. v. Epic Sys. Corp, (7th Cir. 2002) 285 F.3d 581 ................................................................................................ 13 [max Corp. v. Cinema Techs., Inc. (9th Cir. 1998) 152 F.3d 1161 .............................................................................................. 10 J0bsci., Inc. v. CVPartnerS, Ina, (N.D. Cal. Feb. 28, 2014) 2014 WL 852477 ......................................................... 1, 7, 12, 14 Lilith Games (Shanghai) C0. v. uCool, Ina, (N.D. Cal. July 9, 2015) 2015 WL 4149066 .............................................................. 7, 12, 13 M/A-COM Tech. Sols., Inc. v. Litrinium, Inc. (CD. Cal. June 11, 2019) 2019 WL 4284523 ..................................................................... 11 Openwave Messaging, Inc. v. Open-Xchange, Ina, (N.D. Cal. May 8, 2018) 2018 WL 21 17424 ......................................................................... 7 Perlan Therapeutics, Inc. v. Superior Court (2009) 178 Cal.App.4th 1333 ...................................................................................... passim Qpid.Me, Inc. v. Schrom, (SD. Cal. Sep. 9, 2013) 2013 WL 4833990 ........................................................................ 11 Sargent Fletcher, Inc. v. Able Corp. (2003) 110 Cal.App.4th 1658 .............................................................................................. 14 Soc. Apps, LLC v. Zynga, Inc. (N.D. Cal. June 14, 2012) 2012 WL 2203063 ....................................................................... 8 Swarmifiz, Inc. v. Cloudflare, Inc. (N.D. Cal. Mar. 2, 2018) 2018 WL 1142204 ......................................................................... 8 Via Techs., Inc. v. Asus Comput. Int’l (N.D. Cal. Mar. 17, 2016) 2016 WL 1056139 ....................................................................... 8 X6D Ltd. v. Li-Tek Corps. C0., (CD. Cal. Aug. 27, 2012) 2012 WL 12952726 ....................................................... 7, 8, 9, 11 _iV_ Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 STATUTES Cal. Code CiV. P. § 2030.090 ............................................................................................................. 6 Cal. Code CiV. P. § 2031.060 ............................................................................................................. 6 Cal. Code. CiV. P. § 2019.210 .................................................................................................. passim RULES CiV. Code § 3426.1(d) ........................................................................................................................ 9 Fed. R. CiV. P. Rule 12(b)(6) ........................................................................................................... 11 _V_ Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION Williams seeks a protective order precluding Apple from taking further discovery before it identifies each 0f its allegedly-misappropriated trade secrets with “particularity” as required by Code 0f Civil Procedure § 2019.210. Apple’s one-page so-called Trade Secret Disclosure (“Disclosure”) is the epitome 0f an insufficient Disclosure because it is so general that it cannot serve the statute’s purpose 0f defining the exact boundaries 0f the claim which Apple has recently added t0 the case. As Courts applying California law have observed, “it is easy t0 allege theft 0f trade secrets with vagueness, then take discovery into the defendants’ files, and then cleverly specify what ever happens t0 be there as having been trade secrets stolen from plaintiff.” (J0bscz'., Inc. v. CVPartners, Ina, (ND. Cal. Feb. 28, 2014) 2014 WL 852477, at *5.) This is just the kind 0f non-specific disclosure section 2019.210 was intended t0 prevent. “A true trade secret plaintiff ought t0 be able t0 identify, up front, and with specificity the particulars 0f the trade secrets without any discovery” instead 0fusing the “01d trick 0fvague pleading with the blanks t0 be artfully filled in only after discovery.” (Id.) Indeed, two years ago when Apple filed this action against its former employee, it studiously avoided making a trade secret claim and confronting the statutory requirement. Instead, it limited the case t0 baseless theories 0fbreach 0f contract and “duty 0f loyalty,” attempting since then t0 fish for a trade secret claim by pushing for discovery beyond the scope 0f those claims. This Court has repeatedly denied those attempts. Now Apple has amended its complaint t0 assert trade secret misappropriation. Apple bases this claim solely upon Williams’ voluntary disclosure 0f his inadvertent retention 0f certain Apple files within an automatically created “.Trash” folder as a function 0f his iCloud account. Williams properly obtained the files in question during the course 0f his employment and tried t0 delete the files upon his departure. In a sworn declaration, Williams confirmed that he has never used 0r disclosed any information contained in such files and indeed n0 longer has any access t0 it. (EX. D _ 1 _ Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 [June 17, 2021 Williams W 24, 26].)1 Apple has never presented any evidence t0 the contrary. Therefore, Apple’s claim rests 0n a thin reed 0f limited evidence held up with the speculation that Williams intended this unknown technical error as a means t0 steal and deploy Apple secrets. The sheer implausibility 0f Apple’s interpretation underscores the need for it t0 be precise in defining exactly what secret information it asserts was imperiled. hurriedly added t0 a preliminary injunction application that included an (unsuccessful) application for expedited discovery, fails the test for multiple reasons. First, Apple’s Disclosure consists 0f that cannot possibly satsify the “reasonable particularity” requirement 0f section 20 1 9.2 1 0._ Second, the Disclosure fails t0 differentiate technical information that might qualify as trade secrets from information that is generally known and may not be monopolized by Apple. - are so generic that they make any such differentiation impossible. Because the alleged trade secrets purportedly relate t0 technical engineering concepts that build from a substantial body 0fpublicly available information usedfor decades in the field 0f chip architecture, a “more exacting level 0f particularity” is required in order t0 “distinguish the alleged trade secrets from matters already known t0 persons skilled in that field.” (Perlan Therapeutics, Inc. v. Superior Court (2009) 178 Cal.App.4th 1333, 1346 [internal quotation marks omitted].) Indeed, an expert in this field, Dr. Murali Annavaram, has analyzed the Disclosure and confirmed that it fails t0 distinguish the purported trade secrets from knowledge in the field and widely published prior art eefences but precursor t0 analyzing whether that material (whatever it might be) is actually trade secret. (AnnavaramW 26, 31-35.) Finally, the Disclosure is so unfocused that Williams cannot reasonably evaluate, for 1 References t0 “EX.” refer t0 the accompanying Declaration 0f Victoria Parker. -2- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 example, how Apple’s claims are susceptible t0 specific defenses, as opposed t0 being a wholesale attack 0n every part 0fNUVIA’S business. Apple is seeking t0 d0 exactly what section 2019.210 is intended t0 prevent - namely reversing the burden onto the defendant (Williams) t0 establish independent development 0f every aspect 0fNUVIA’S business and technology. But, as a matter 0f law, Apple bears the burden 0f proving misappropriation by improper use 0r disclosure. Apple’s tactic is particularly inappropriate here, because it has n0 evidence that T0 prevent these abuses, Williams respectfully submits the Court should grant a protective order barring Apple from taking any further trade-secret-related discovery unless and until Apple has provided a particularized identification 0f claimed trade secrets that satisfies the statute. T0 provide context for the level 0f specificity that should be necessary here, a brief summary 0f Mr. Williams’ experience and his relationship with Apple follows. II. FACTUAL AND PROCEDURAL HISTORY A. Apple Hires Williams FromARM T0 Design SoC Microarchitecture For Apple’s Flagship Products But Declines T0 Pursue Williams’ New Business Idea For more than a decade before joining Apple, Williams held senior positions at ARM Ltd., designing system-on-a-chip (“SOC”) architectures that are publicly disclosed and licensed t0 other companies, including Apple. (EX. D [June 17, 2021 Williams W 3-7].) Apple licenses ARM’S intellectual property t0 build their own SoCs. (Id.) Apple hired Williams in 2010 specifically t0 put his prior experience designing ARM-based architectures t0 work for Apple, which uses ARM architecture for its SoCs. (Id. 1] 8.) While at Apple, Williams saw potential value in building a chip for servers, as opposed t0 consumer products. (Id. 1] 12.) Williams worked with his supervisor, who presented the idea t0 Steve Jobs. (Id.) But Jobs had n0 interest in non-consumer products, a sentiment various Apple senior personnel echoed. (Id) In early 2018, Williams received recruitment overtures from Google for a position relating t0 mobile technology. (Id. 1] 13.) Meanwhile, Google employees John Bruno and Manu Gulati proposed -3- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 a project within Google t0 develop server technology t0 address Google’s requirements. (Id.) Ultimately, Google decided not t0 pursue the server project, and so Bruno and Gulati decided t0 form a startup that would. (Id.) After Williams left Apple in February 2019, Messrs. Williams, Bruno, and Gulati started NUVIA. (Id. W 13, 14, 16.) B. Williams Finds Apple Information, Never Uses It, And Has It Appropriately Preserved And Sequestered For Litigation Before resigning from Apple, Williams was obliged t0 (and did) return his Apple-issued MacBook t0 his employer. (Id. 1] 21.) But before doing so, Williams needed t0 transfer his own personal material such as photographs (his “Personal Files”) from his Apple-issued MacBook t0 his iCloud. (Id. 1] 18.) During that effort, Williams realized that an automated syncing process had indiscriminately transferred Apple work files from the MacBook t0 his iCloud. (Id.) Williams immediately attempted t0 cancel and reverse the sync. (Id. 1] 19.) While that process restored the state 0f the MacBook, unbeknownst t0 Williams it did not restore the state 0f his iCloud. Out 0f an abundance 0f caution, Williams informed his Apple colleagues 0fthe issue. (Id. 1] 20.) Nonetheless, n0 one at Apple asked t0 inspect Williams’ iCloud 0r MacBook (which he returned) before his departure. (Id. 1] 21.) When the new MacBook that Williams had purchased after separating from Apple arrived a couple 0f weeks later, 0n February 19, 2019, he linked that new MacBook t0 his iCloud account in order t0 retrieve his Personal Files. (Id. 1] 22.) Upon doing so, Williams discovered that the Apple files he had tried t0 delete before returning his company-issued MacBook persisted 0n his iCloud. (Id.) Without opening 0r using the files in any way, Williams tried again-and succeeded-to delete the files from iCloud. (Id.) Williams then synced his Personal Files from iCloud t0 his new MacBook, and promptly disconnected his new MacBook from his iCloud account. (Id. 1] 23.) But unbeknownst t0 Williams, by first syncing then disconnecting his new MacBook from his iCloud account, an automated process within the Apple operating system created an archived, mirrored copy 0f the files in his iCloud trash in a new hidden sync folder 0n Williams’ MacBook, called “iCloud Drive (Archive)/.Trash”. (EX. E [June 17, 2021 Bui w 13-14].) Williams never accessed this folder 0r any 0f the files in it; metadata confirms the files were created 0n the MacBook -4- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 0n February 19, 2019, and never interacted with since. (Id. W 16-18; EX. D [WilliamsW 24, 26].) In fact, Williams had n0 idea the folder even existed until his retained forensic vendor, Lighthouse, found the files during its analysis 0f Williams’ new MacBook in connection with discovery in this litigation. (EX. D [Williams 1] 24]; EX. E [Bui 1] 13].) While Lighthouse maintains a forensic copy 0f Williams’ new MacBook containing the files, it remediated the entire “.Trash” folder from the laptop itself, meaning Williams n0 longer has any access t0 these files. (EX. D [Williams 1] 26]; EX. E [Bui 1] 22].) C. Based On A False Assumption, Apple Files An Ex Parte Application For A TRO And For Expedited Discovery Without First Alleging A Claim For Trade Secret Misappropriation And Without First Serving A Section 2019.210 Disclosure The “iCloud Drive (Archive)/.Trash.” folder contained tens 0f thousands 0f irrelevant synced files. (EX. E [Bui 1] 15].) Yet, after Williams informed Apple 0f the facts surrounding the unintentional, passive retention 0f synced files, Apple responded by filing ex parte for a Temporary Restraining Order and expedited discovery. As fully discussed in other briefing, Apple’s application relied 0n mischaracterized text messages about a different laptop and its potential repair by Apple, which never actually took place anyways. Apple’s application was deficient in other respects. Even though alleged trade secret misappropriation appeared t0 form the ostensible basis 0f its TRO request, in its rush t0 file, Apple neglected t0 obtain leave t0 amend t0 assert such a claim, and it failed t0 serve a section 2019.210 Disclosure. On the same day that Apple filed its precipitous application, Williams notified the Court 0f his intent t0 oppose, Apple’s failure t0 provide an “adequate trade secret identification.” (EX. A, at 3.) Apple’s reflexive response was t0 and to serve it the next day. (Ex. B [Apple’s May 4, 2021 § 2019.210 Disclosure].)2 The Court granted a limited TRO but denied Apple’s request for expedited discovery. (See May 11, 2021 Order.) Apple subsequently filed an Amended Complaint that included its trade secret claim. (July 2, 2021 Am. Compl.) 2 Apple’s Disclosure was “conditionally lodged under seal . . . because the descriptions 0f the trade secrets at issue relate[d] t0 a communication that Williams has designated ‘Confidential.’” (EX. C, at 1.) But, because Williams did not seek t0 seal Apple’s Disclosure as part ofhis May 4, 2021 0r his June 17, 2021 motions t0 seal and Apple did not file a subsequent motion t0 seal its Disclosure, Apple’s time t0 seal its Disclosure has expired. (See Rule 0f Ct. 2.55 1(b)(3)(B).) Accordingly, When the docket is updated, the Disclosure Will be transferred t0 “the public file.” (Id) -5- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Apple now seeks discovery related t0 that claim, t0 which Williams has not yet formally responded. Accordingly, Williams moves for a protective order t0 prevent such discovery until Apple remedies its deficient Disclosure. III. LEGAL STANDARD “In any action alleging the misappropriation 0f a trade secret under the Uniform Trade Secrets Act [. . .], before commencing discovery relating t0 the trade secret, the party alleging the misappropriation shall identify the trade secret with reasonable particularity.” (Code CiV. Proc. § 2019.210.) The Court has “broad discretion” t0 fashion a protective order precluding discovery where the plaintiffhas failed t0 describe its alleged trade secrets with “reasonable particularity” under section 2019.210. (Perlan, supra, 178 Cal.App.4th at 1336; see also Code CiV. Proc. §§ 2030.090, 203 1 .060.) IV. ARGUMENT A. The “Reasonable Particularity” Requirement Is Crucial For Governing The Scope Of Discovery And Allowing Defendants T0 Prepare For Trial Section 2019.210 requires Apple “t0 identify 0r designate the trade secrets at issue with sufficient particularity” so as t0 “distinguishfl the trade secrets from matters 0f general knowledge in the trade 0r 0f special knowledge 0f those persons skilled in the trade.” (Advanced Modular Sputtering, Inc. v. Superior Court (2005) 132 Cal.App.4th 826, 835 [internal quotations omitted].) And while “absolute precision” may not be necessary, the standard does require Apple “t0 identify its alleged trade secret[s] in a manner that will allow the trial court t0 control the scope 0f subsequent discovery, protect all parties’ proprietary information, and allow them a fair opportunity t0 prepare and present their best case 0r defense at a trial 0n the merits.” (Id. at 836.) B. A Heightened Level Of Particularity Is Required Here Where, as here, “the alleged trade secrets consist 0f incremental variations 0n, 0r advances in, the state 0f the art in a highly specialized technical field, a more exacting level 0fparticularizjy may be required t0 distinguish the alleged trade secrets from matters already known t0 persons skilled in that field.” (Perlan, supra, 178 Cal.App.4th at 1346 [emphasis added].) -6- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (Annavaram 1] 16.) Further, the alleged trade secrets, t0 the extent they can even be discerned at a categorical level, are “incremental variations” in a field that has been steadily developing for decades, including variations 0n technology that Williams developed at his prior employer, ARM. (Id. 1] 3 1-35.) The indisputable fact in this case is thatApple’s- so a eefence to this generalized description does nothing t0 identify any putative trade secrets. Indeed, Apple has not sought t0 seal its one-page Disclosure, which in cases involving technical information, “is a telling indication that it does not satisfy the ‘reasonable particularity’ standard.” (Loop AI Labs Inc. v. Gatti (N.D. Cal. 2016) 195 F.Supp.3d 1107, 1113.) C. Apple’s Trade Secret Disclosure Is Deficient 1. Apple Fails To Identify Any Trade Secrets With The Requisite Particularitv “In technical cases such as this, a plaintiff must describe the trade secret, not merely the technology.” (Lilith Games (Shanghaz) C0. v. uCool, Ina, (N.D. Cal. July 9, 2015) 2015 WL 4149066, at *5.) “[A] plaintiff must d0 more than just identify a kind 0f technology and then invite the court t0 hunt through the details in search 0f items meeting the statutory definition 0f a trade secret. The plaintiff must describe its trade secrets with sufficient particularity t0 permit the defendant and the court t0 ascertain at least the boundaries within which the secrets lie.” (X6D Ltd. v. Li-Tek Corps. C0,, (CD. Cal. Aug. 27, 2012) 2012 WL 12952726, at *6.) A trade secret disclosure under section 2019.210 should include: “(1) a summary 0f the specific trade secret; (2) the background 0f the trade secret and a description 0fhow each secret has derived independent, actual 0r potential economic value by Virtue 0f not being generally known t0 the public; (3) a description 0fhow each secret has been the subject 0f reasonable efforts t0 maintain its secrecy; and finally (4) each 0f the precise claimed trade secrets, numbered, with a list 0f the specific elements for each, as claims would appear at the end 0f a patent.” (J0bsci., supra, 2014 WL 852477, at *5; Openwave Messaging, Inc. v. Open-Xchange, Ina, (N.D. Cal. May 8, 201 8) 2018 WL 21 17424, at *4.) Here, every alleged trade secret identified by Apple fails the statutory standard for particularity. (AnnavaramW 3 1 -35.) At most, Apple describes -7- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 instead of the alleged trade themselves. This is msuffic'en. wee, Soc. LLC v. Zynga, Inc. (N.D. Cal. June 14, 2012) 2012 WL 2203063, at *4 [“A description 0f [a] category, 0r even 0f the subcategories 0f information within a category, does not comply with the requirement t0 identify the actual matter that is claimed t0 be a trade secret.”]; Via Techs., Inc. v. Asus Comput. Int’l (N.D. Cal. Mar. 17, 2016) 2016 WL 1056139, at *3 [“[T]he disclosure claims that all 0f VIA’S analog and digital schematics are trade secrets in their entirety[;] the disclosure gives Defendants-and the court-practically n0 guidance 0n precisely what VIA claims as its trade secrets.”]; Swarmzfiz, Inc. v. Cloudflare, Inc. (N.D. Cal. Mar. 2, 2018) 2018 WL 1142204, at *3.) Apple’s Disclosure accordingly “adds little more than an elaborate categorization scheme for a variety 0f related concepts,” which “is n0 substitute for specifically identifying and describing the actual [trade secrets].” (Soc. Apps, supra, 2012 WL 2203063, at *4.) It appears Apple took the (E.g., Via Techs., supra, 2016 WL 1056139, at *3 [reference to “3300 pages [that] are simply whatever [plaintiffs’] employees printed before they left” did not identify a trade secret]; Perlan, supra, 178 Cal.App.4th at 135 1 -52 [identification must segregate claimed trade secrets from accompanying public information].) “[W]hen the plaintiff effectively buries its trade secrets in documentation, we are not required t0 sift through those documents and speculate as t0 what information contained therein is claimed as a trade secret.” (X6D, supra, 2012 WL 12952726, at *8.) Specific deficiencies in Apple’s Disclosure are further detailed below: TradeSm z-s: Apple purports to identify as its first trade score: _8_ Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 1ndeed, Apple «fang to specifically identify what in these documents is a trade secret and where within these documents that information is located. This disclosure is insufficient t0 satisfy [Apple’s] burden 0f identifying for the court exactly what it claims as trade secrets.” (X6D, supra, 2012 WL 12952726, at *6.) It is plainly inadequate for Apple t0 “cite[] and incorporate[] by reference hundreds 0f documents that purportedly reference 0r reflect the trade secret information.” (Id. [internal quotations omitted].) Accordingly, unless Apple “engages in a serious effort t0 pin down the secrets, a court cannot d0 its job.” (X6D, supra, 2012 WL 12952726, at *6.) 3 It is “information” that the Trade Secrets Act protects, not documents Which may 0r may not contain trade secrets along With other data. (See CiV. Code 3426.1 d 4 A le’s designated trade secrets 1-3 alsofl. (See Perlan, supra, 178 Ca1.App.4t at 1350 [p a1nt1 may not “1nc u e roa , ‘catc -a ’ anguage,” such as the word including, “as a tactic t0 preserve an unrestricted, unilateral right t0 subsequently amend its trade secret statement”].) Indeed, in a prior trade secret case against Qualcomm in Which Apple was the defendant, Apple argued that a Disclosure “rife With catch-all phrases that characterize dozens 0f alleged secrets as including but not limited t0 certain information” renders the Disclosure “dead 0n arrival.” (Ex. H, at 2 [emphasis added].) -9- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER “[A] plaintiff must do more than just identify a kind 0f technology and then invite the court t0 hunt through the details in search 0f items meeting the statutory definition 0f a trade secret. (Id. [internal quotations and citations omitted].) Further, as explained below (infra Section IV.C.2), Apple’s Disclosure fails t0 distinguish its alleged trade secrets from matters in the public domain. Trade Secret 4: Section 2019.210 was promulgated t0 avoid the nearly impossible task 0f countering such amorphous claims. (See Advanced Modular, supra, 132 Cal.App.4th at 833-34.) A “listing of concepts”-rather than specific information-is “insufficient” under section 2019.210. (Loop AILabS Ina, supra, 195 F.Supp.3d at 1113-14; Gatan, Inc. v. Nion C0. (N.D. Cal. May 8, 2018) 2018 WL 2117379, at *3 [finding “details 0n” a process, without specifying those details, is inadequate» wee Section No.2 mmf Annavaram 1] 34.) Trade Secret 5: _ 1 0- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 (Ex. B, amI raher than spear information contained therein, which is insufficient. (See, e.g., X6D, supra, 2012 WL 12952726, at *6; Via Team 2016 WL 1056139, at *3»_ which is not permitted. (See Perlan, supra, 178 Cal.App.4th at 1350.) - (QpidMe, Inc. v. Schmm, (SD. Cal. Sep. 9, 2013) 2013 WL 4833990, at *5 [granting Fed. R. CiV. P. Rule 12(b)(6) motion t0 dismiss when plaintiffdescribed alleged trade secrets using generic phrase “business plans and strategies”]; Action Learning Sys., Inc. v. Crowe (C.D. Cal. Aug. 11, 2014) 2014 WL 1256401 1, at *5 [descriptions such as “research-based strategy instruction” provide insufficient particularity for injunction]; M/A-COM Tech. Sols., Inc. v. Litrinium, Inc. (CD. Cal. June 11, 2019) 2019 WL 4284523, at *4 [“[P]hrases such as ‘internally developed information,’ ‘method for developing,’ ‘design for,’ ‘development ‘methodologies,’ etc., followed by general descriptions 0f products 0r processes, untethered t0 more specific description, either using words 0r illustrations, leaves the description too vague”].) Accordingly, Apple’s designation is deficient. (See Section IV.C.2 infra; Annavaram 1] 35.) The Preamble: Apple’s Disclosure is also deficient because it caveats the entire document with a preamble that renders it facially overbroad. The preamble provides: “The Trade Secrets include the following information, and all documents and electronic files containing this information.” (EX. B, at 2 [emphasis added].) Accordingly, Apple’s Disclosure is not tied even t0 a specific volume 0f documents; rather, it attempts t0 designate an unknown and unlimited number 0f documents. -1 1- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - (J0bsci., supra, 2014 WL 852477, at *5.) Efforts t0 Maintain Secrecv: Aprimafacie element 0f a trade secret claim is proof 0f efforts t0 maintain secrecy 0f the claimed information. But in its Disclosure, Apple offers only one conclusory statement 0n the issue: aax. B, am (EX. D [June 17, 2021 Williams 1] 10].) “[D]isclosure 0f a trade secret in a patent application extinguishes the information’s trade secret status.” (Attia v. Google LLC (9th Cir. 2020) 983 F.3d 420, 426.) 2. Apple’s Disclosure Fails T0 Differentiate Its Alleged Trade Secrets Because 0f the lack 0f particularity described above, Apple’s Disclosure fails t0 distinguish its alleged trade secrets from matters in the public domain. (Annavaram W 31-35.) Nowhere in Apple’s Disclosure does Apple even allege that its purported trade secrets are distinct from what is in the public domain. This Court has a “strong basis” t0 reject a disclosure that does not “clearly explain how [the] secrets (0r secret combinations 0f publicly available processes) differed from publicly available knowledge.” (Perlan, supra, 178 Cal.App.4th at 1352.) Lillith provides an example 0f a trade secret disclosure deemed sufficient under section 20 1 9.210: “Lilith’s description would have been inadequate if it had simply declared that Sword andm contained valuable trade secrets and then pointed t0 uCool’s use 0f Sword and Tower as misappropriation. Instead, Lilith specifically identified the trade secret contained in the software and differentiated the trade secret from other components.” (Lilith, supra, 2015 WL 4149066, at *5 [emphasis added].) Here, Apple’s trade secret is precisely what Lillith deemed “inadequate”-Apple has simply “declared” that certain documents “contain[] valuable trade secrets.” (Id.) Apple has not “specifically identified the trade secret” and “differentiated the trade secret from other components” _ 12- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 15 16 17 18 19 20 21 22 23 24 25 26 27 28 set forth in those documents, including those in the public domain. (Annavaram W 31-35.) Accordingly, Williams cannot “understand the boundaries for [Apple’s] trade secret[s]” and therefore cannot “formulate [his] defenses accordingly.” (Lillith, supra, 2015 WL 4149066, at *5.) Apple may argue, as it did at the Hearing 0n Apple’s Motion for a Preliminary Injunction, that Dr. Annavaram’s description 0f some public domain information within these broad categories should be taken as proof that Williams is able t0 discern the permissible boundaries 0f Apple’s trade secret claims. (See EX. F, at 25.) This reflects a deliberate misreading 0f Dr. Annavaram’s declaration, which shines a light 0n the vastly broad range 0f technologies encompassed by Apple’s Disclosure. The issue is not that Dr. Annavaram is able t0 argue that Apple’s alleged trade secrets are public, (AnnavaramW 31-35» only begs the fundamental, critical question that Apple is required t0 answer, but has not answered: “Which aspects are known t0 the trade, and which are not? That’s Vital under the statutory definition.” (IDX Sys. Corp. v. Epic Sys. Corp, (7th Cir. 2002) 285 F.3d 581, 584.)5 3. Apple’s Disclosure Fails T0 Provide Reasonable Notice Of The Issues For Trial Or A Reasonable Limit On The Scope Of Discovery One 0f the core purposes behind section 2019.210 is enabling defendants like Williams to “form complete and well-reasoned defenses, ensuring that they need not wait until the eve 0f trial t0 5 Indeed, Apple recently argued successfully that there is n0 trade secret misappropriation Where some 0f the material identified was generally known t0 the industry. (See, e.g., EX. G[Apple’s Br. 57]; Hooked Media Grp., Inc. v. Apple Inc. (2020) 55 Ca1.App.5th 323, 344-47.) Apple further argued successfully that “mere possession” is not equivalent t0 misappropriation, and that possession 0f a drive With confidential files is not enough Where there is “n0 evidence [the defendant] accessed 0r used any files 0r any trade secret information they contained.” (EX. G, at 52; Hooked, supra, 55 Ca1.App.5th at 332.) The Court agreed: “[M]ere possession 0f information is not enough t0 establish improper acquisition 0f a trade secret. It follows that a trier 0f fact could not reasonably infer there was a Violation 0f the UTSA based solely 0n Apple's possession 0f information.” (Hooked, supra, 55 Ca1.App.5th at 333 [internal citations omitted].) _ 1 3- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 effectively defend against charges 0f trade secret misappropriation.” (AdvancedModular, supra, 132 Cal.App.4th at 834.) Appropriate disclosures are crucial for defining the issues t0 be decided at trial and limiting the scope 0f discovery accordingly. “[L]isting general concepts 0r categories 0f information is plainly insufficient; Defendants cannot fairly be expected t0 rebut Plaintiffs trade secrets claim without a reasonably concrete definition 0f the purported secrets.” (Loop AILabs Ina, supra, 195 F.Supp.3d at 11 14-15.) Disclosures should therefore be rejected if “the parameters 0f the secrets remain unclear” because “a fact finder will not be able t0 determine whether the information in Plaintiff’s disclosure qualifies as trade secrets, including whether they are in fact secret.” (Id. at 1 1 15 .) Apple cannot use disclosures like these t0 flip the law 0n its head, requiring Williams t0 prove that every concept recited in the documents Apple points t0 was either not used, already public, 0r otherwise unprotectable.6 The burden 0f proving what the secret is and that it was misused always remains on the plaintiff, even when independent development is raised as a challenge. (Sargent Fletcher, Inc. v. Able Corp. (2003) 110 Cal.App.4th 1658, 1668-73.) The pervasive lack 0f specificity is strategic. Apple decided t0 designate its purported trade secrets as broadly as possible t0 justify propounding discovery requests that g0 t0 virtually every aspect 0f Williams’ employer’s business. And if Apple has unfettered access t0 Williams’ confidential information, it undoubtedly will “specify what ever happens t0 be there as having been trade secrets stolen from [it].” (J0bsci., supra, 2014 WL 852477 at *5.) A central purpose 0f section 2019.210 is t0 prevent such abuse. (Perlan, supra, 178 Cal.App.4th at 1345 n. 10, 1346.) D. Until It Provides A Compliant Disclosure, Apple Should Be Barred From Taking Any Additional Discovery Section 2019.210 “is not limited in its application t0 a cause 0f action under [CUTSA] for misappropriation 0f the trade secret, but extends t0 any cause 0f action which relates t0 the trade secret.” (Advanced Modular, supra, 132 Cal.App.4th at 830.) Thus, where “each and every cause 6 In the Qualcomm litigation, Apple repeatedly argued that a plaintiff is not permitted t0 “identify a vast p001 0ftrade secrets that may have been misappropriated rather than the secrets that [a plaintiff] has a basis t0 allege were misappropriated [. . .] A plaintiffhas n0 business alleging a claim for trade secret misappropriation as t0 secrets it has n0 basis t0 allege were misappropriated.” (Ex. H, at 2-3 [emphasis added].) Here, Apple has “n0 basis” t0 allege that Williams misappropriated any 0f the files found in his trash folder, and the only direct evidence is t0 the contrary. (EX. D [June 17, 2021 Williams fl 24, 26].) _ 14- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 0f action hinges upon the factual allegation that [the defendant] misappropriated [plaintiffs] trade secrets,” section 2019.210 bars discovery 0n “the entire lawsuit.” (Id. at 834 [emphasis added].) Here, Apple’s other allegations for breach 0f contract and breach 0f duty 0f loyalty are inextricably intertwined with its CUTSA claim, which warrants a complete bar 0n Apple’s discovery. First, as t0 the breach 0f contract claim, Apple specifically contends Williams was in breach when he did not return Apple’s allegedly “proprietary information,”-obviously the same information that forms the basis oprple’s trade secret claim. (Am. Comp].W 65-66, 77-81.) Apple also alleges Williams was in breach when he supposedly recruited Apple engineers t0 join NUVIA precisely because 0f their knowledge 0f the purported trade secrets. (Am. Comp]. 1] 62.) The claim for Williams’ alleged failure t0 disclose his inventions t0 Apple also relies 0n the same set 0f facts, as Apple alleges that his current work “was suggested by Williams’ work at Apple” and relates t0 Apple’s “business, products, research, and development.” (Id. 1] 68.) Second, the duty 0f loyalty claim is also tied t0 the trade secret claim. Apple contends that Williams’ duty 0f loyalty allegedly forbade him from “using or disclosing Apple’s information for his 0r a third party’s purposes.” (Id. 1] 73.) Yet this is merely a re-worded version 0f its trade secret claim. (Id. 1] 79.) T0 the extent other breaches 0f duty 0f loyalty are alleged (e.g., “competing with Apple,” or “failing to disclose [Williams’] work”), these fail for the same reasons previously discussed-they are all interwoven with Apple’s trade secret claim. (Id. W 73-74.) “Under these circumstances, an order that bars discovery 0n the cause 0f action for misappropriation but permits it 0n the others simply makes n0 sense.” (Advanced Modular, supra, 132 Cal.App.4th at 834.) V. CONCLUSION The Court should grant a protective order barring Apple from taking further discovery unless and until Apple complies with section 2019.210. _ 1 5- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DATED: July 23, 2021 By /s/David Eiseman QUINN EMANUEL URQUHART & SULLIVAN, LLP David Eiseman Morgan Tovey Stephen A. Swedlow JAMES POOLEY, PLC James H. Pooley Attorneys for Gerard Williams III _ 1 6- Case No. 19-cv-352866 WILLIAMS’ MOTION FOR PROTECTIVE ORDER