The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
MAREINERS, LLC,
Plaintiff,
v. Civil Action 2:22-cv-3433
Judge Edmund A. Sargus, Jr.
Magistrate Judge Jolson
ANOMATIC CORPORATION,
Defendant.
OPINION AND ORDER
This matter is before the Court on Defendant’s Motion to Compel and for Protective Order
(Doc. 25). For the following reasons, the Motion is GRANTED in part and DENIED in part.
Plaintiff is ORDERED to provide a complete answer to Defendant’s Interrogatory No. 1, listing
all standalone and combination trade secrets Defendant is alleged to have misappropriated, within
thirty days of the date of this Opinion and Order. Defendant need not produce any confidential
discovery until Plaintiff has identified the allegedly misappropriated trade secrets with reasonable
particularity. Defendant’s request for expenses is DENIED.
I. BACKGROUND
Plaintiff Mareiners, LLC is a technology company with a patent and proprietary method
for applying multi-color images to metal surfaces, like aluminum credit cards. (Doc. 1, ¶ 7).
Defendant Anomatic Corporation is in the business of making and selling decorated metal
products. (Id., ¶ 8). So, in 2017, the parties joined in a mutual nondisclosure agreement (“NDA”)
to share information and pursue a potential business relationship. (Id.). This culminated in a
second agreement in August 2018, in which Defendant licensed Plaintiff’s patent and trade secret
information in exchange for a one-time payment and ongoing royalties. (Id.; see also Doc. 9-1).
When no subsequent royalty payments were made, Plaintiff investigated Defendant’s use
of the patent, and learned that Defendant had been approved for a patent of its own. (Doc. 1, ¶¶
8–9). That patent, U.S. Patent No. 11,182,655 (“the ‘655 Patent”), was filed on December 13,
2018, and issued to Defendant on November 23, 2021. (Id., ¶ 11; see also Doc. 1-2). Plaintiff
says that it recognized its own trade secrets in the ‘655 Patent. (Doc. 1, ¶¶ 12–15). As a result,
Plaintiff says it lost trade secrets and its existing business relationships were damaged. (Id., ¶¶
16–17). It brings the present action for claims under the federal Defend Trade Secrets Act and the
Ohio Uniform Trade Secrets Act, as well as claims for breach of contract, tortious interference
with business relationships, correction of inventorship, unjust enrichment, and conversion. (Id.,
¶¶ 18–62).
During discovery in this matter, Defendant sent Plaintiff an interrogatory, Interrogatory
No. 1, asking it to identify with reasonable particularly each trade secret it allegedly disclosed.
(Doc. 25-2 at 5). In response, Plaintiff described “a unique process” which “addresses a complex
series of challenges” in the application of multi-color images to metal surfaces. (Doc. 25-3 at 5).
It said the process “includes, but is not necessarily limited to” seventeen steps “individually and
in combination[.]” (Id. at 6). Defendant then wrote to Plaintiff asking it to clarify whether these
seventeen steps were each standalone trade secrets, or only trade secret in total or in some series
of combinations. (Doc. 25-4). Plaintiff then supplemented its response to the interrogatory, in
which it represented that its method required a licensee to follow “process(es) . . . which include,
but are not limited to” fourteen steps, which themselves included a total of sixteen different sub-
steps. (Doc. 25-5 at 8–9).
Again, Defendant asked Plaintiff to clarify whether its trade secret was a single, fourteen-
step process, or any of the myriad combinations that could be made of the steps and sub-steps.
(Doc. 25-6). During the ensuing conferral, Plaintiff represented that it had “provided . . . the
inclusive list of steps that comprise the trade secret[.]” (Doc. 25-7 at 1). Defendant interpreted
this to mean that the entire fourteen-step process was a single trade secret. (Doc. 25-8 at 1). But
when Defendant attempted to confirm this (id.), Plaintiff said it was not “fair to suggest that there
is only a single trade secret within the 14 steps that are delineated.” (Doc. 25-9 at 1). Defendant
maintained that Plaintiff had to assert its trade secrets with more particularity, while Plaintiff said
it had done enough, and the parties reached an impasse. (Docs. 25-10, 25-11, 25-12).
Now, Defendant brings the instant Motion, in which it makes four requests: (1) an order
compelling Plaintiff to disclose its asserted trade secrets with reasonable particularity; (2) an order
closing Plaintiff’s response to the trade secret interrogatory thereafter; (3) a protective order which
allows Defendant to withhold production of confidential information until after Plaintiff discloses
its trade secrets with reasonable particularity; and (4) an order awarding Defendant its reasonable
expenses incurred in bringing the Motion. (Doc. 25 at 1). The Motion has been fully briefed and
is ripe for consideration. (Docs. 27, 28).
II. STANDARD
Two federal rules matter here. Regarding the Motion to Compel, Rule 26(b) of the Federal
Rules of Civil Procedure provides that “[p]arties may obtain discovery regarding any
nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs
of the case.” Fed. R. Civ. P. 26(b)(1). Rule 37, for its part, allows for a motion to compel discovery
when a party fails to answer interrogatories submitted under Rule 33 or to provide proper responses
to requests for production of documents under Rule 34. See Fed. R. Civ. P. 37(a)(1), (3). “The
proponent of a motion to compel discovery bears the initial burden of proving that the information
sought is relevant.” Gruenbaum v. Werner Enters., Inc., 270 F.R.D. 298, 302 (S.D. Ohio 2010)
(citation omitted). “While relevancy is broad, ‘district courts have discretion to limit the scope of
discovery [when] the information sought is overly broad or would prove unduly burdensome to
produce.’” Plain Local Sch. Dist. Bd. of Educ. v. DeWine, 335 F.R.D. 115, 119 (N.D. Ohio 2020)
(alteration in original) (quoting Surles ex rel. Johnson v. Greyhound, Lines, Inc., 474 F.3d 288,
305 (6th Cir. 2007)). At base, “the scope of discovery is within the sound discretion of the trial
court.” Stumph v. Spring View Physician Practices, LLC, No. 3:19-CV-00053-LLK, 2020 WL
68587, at *2 (W.D. Ky. Jan. 7, 2020) (quotation marks and citations omitted).
Regarding the Motion for Protective Order, a court can issue a protective order under Rule
26 to protect a party from annoyance, embarrassment, oppression, or undue expense and upon a
finding of good cause. Fed. R. Civ. P. 26(c)(1) (“A party or any person from whom discovery is
sought may move for a protective order in the court where the action is pending . . .”). “The burden
of establishing good cause for a protective order rests with the movant.” Smith v. Gen. Mills, Inc.,
No. C2 04-705, 2006 WL 7276959, at *1–2 (S.D. Ohio Apr. 13, 2006) (quoting Nix v. Sword, 11
F. App’x 498, 500 (6th Cir. 2001)). To show good cause, a movant must be “able to demonstrate
that the requested discovery, if not excluded or materially modified, would cause a clearly defined
and serious injury.” Consumer Fin. Prot. Bureau v. Borders & Borders, PLC, No. 3:13-CV-1047-
CRS, 2016 WL 9460471, at *2 (W.D. Ky. June 29, 2016) (citations omitted); see also Smith, 2006
WL 7276959, at *1–2 (citing Nix, 11 F. App’x at 500) (“To show good cause, a movant for a
protective order must articulate specific facts showing a ‘clearly defined and serious injury’
resulting from the discovery sought and cannot rely on mere conclusory statements.”).
Finally, regarding Defendant’s request for expenses, Rule 37(a)(5)(A) of the Federal Rules
of Civil Procedure provides:
(5) Payment of Expenses; Protective Orders.
(A) If the Motion Is Granted (or Disclosure or Discovery Is Provided After Filing).
If the motion is granted—or if the disclosure or requested discovery is provided
after the motion was filed—the court must, after giving an opportunity to be heard,
require the party or deponent whose conduct necessitated the motion, the party or
attorney advising that conduct, or both to pay the movant’s reasonable expenses
incurred in making the motion, including attorney’s fees. But the court must not
order this payment if:
(i) the movant filed the motion before attempting in good faith to obtain the
disclosure or discovery without court action;
(ii) the opposing party’s nondisclosure, response, or objection was
substantially justified; or
(iii) other circumstances make an award of expenses unjust.
Fed. R. Civ. P. 37(a)(5)(A).
III. DISCUSSION
As described above, Defendant makes four requests in its Motion. The Court addresses
each in turn, beginning with its request that Plaintiff be compelled to identify its trade secrets with
reasonable particularity.
A. Plaintiff must supplement its interrogatory response to describe its trade secrets with
reasonable particularity.
In trade secret cases, the party alleging misappropriation must describe its trade secrets
with reasonable particularity. Dura Global, Techs., Inc. v. Magna Donnelly Corp., No. 07-CV-
10945-DT, 2008 WL 2064516, at *1 (E.D. Mich. May 14, 2008). This means the trade secrets
must be described with enough specificity to put the adverse party on notice what it is alleged to
have misappropriated. Dura Global, 2008 WL 2064516, at *2 (citing DeRubeis v. Witten Tech.,
Inc., 244 F.R.D. 676, 681 (N.D. Ga. 2007). Defendant says that two things make Plaintiff’s
description of its trade secrets unspecific. First, it says Plaintiffs’ varying statements about a single
process (or multiple processes) which must be followed, along with its catalog of many steps and
sub-steps, make it unclear which types and how many trade secrets are being alleged. (Doc. 25 at
8–12). And second, it says Plaintiff’s use of vague, undefined terms to describe its process provide
little context for understanding how each step—and the overall method—are conducted. (Id. at
12–14). Plaintiff, on the other hand, says that its “disclosure of the overall method is more than
sufficient to inform [Defendant] what it is alleged to have misappropriated[.]” (Doc. 27 at 11).
The Court agrees that Plaintiff must more specifically define its trade secrets.
i. Clarity in listing trade secrets
First, the Court finds that Plaintiff’s representation that its method requires a licensee to
follow “process(es) . . . which include, but are not limited to” fourteen steps, which themselves
included a total of sixteen different sub-steps, does not sufficiently describe its alleged trade
secrets. (Doc. 25-5 at 8–9). Plaintiff now maintains that “both the overall method and individual
elements of that method qualify as trade secrets.” (Doc. 27 at 11). But,
[i]f a plaintiff “effectively assert[s] that all information in or about its [product] is
a trade secret,” then it brings a case “both too vague and too inclusive,” and does
not allow a jury to “separate the trade secrets from the other information that goes
into any” product in the field.
Caudill Seed & Warehouse Co. v. Jarrow Formulas, Inc., 53 F.4th 368, 381 (6th Cir. 2022)
(quoting IDX Sys. Corp. v. Epic Sys. Corp., 285 F.3d 581, 583–84 (7th Cir. 2002)). Simply put,
by labeling its entire process and all its individual elements trade secret, Plaintiff has not described
how its process is distinct from any other metal application process.
And there is a particular need for clarity here because of the number of interlocking steps
involved in Plaintiff’s process. A trade secret is information which “derive[s] value from its
secrecy and cannot be ‘readily ascertainable by proper means.’” AtriCure, Inc. v. Jian Meng, 842
Fed. App’x 974, 979 (6th Cir. 2021) (quoting Ohio Rev. Code. § 1333.61(D)). But known steps
or processes can be arranged in a unique combination that is itself entitled to trade-secret
protection; this is known as a “combination” trade secret. Caudill Seed, 53 F.4th at 380. Each
individual step in Plaintiff’s process could itself be a trade secret—or might only be a trade secret
in combination with other steps in the process. And Plaintiff has neither affirmatively disclaimed
that its process contains combination trade secrets nor identified which particular steps constitute
combination trade secrets. Given that the several steps and sub-steps and the process could be
arranged in an unwieldly number of potential combinations, Defendant is left to guess at which
trade secrets it is alleged to have misappropriated. (See Doc. 25 at 10–12). This does not fulfill
the guarantee of notice under the reasonable particularity standard.
Said differently, Plaintiff has given Defendant a list of production steps, not a list of trade
secrets. See, e.g., Dura Global, 2008 WL 2064516, at *2 (finding that plaintiff’s submission
should be a “a list of trade secrets” to satisfy reasonable particularity); see also Caudill Seed, 53
F.4th at 381 (finding that “a plaintiff asserting a combination trade secret over highly complex
technical information cannot merely offer lists of broad technical concepts . . . identif[ying]
categories of information without showing which information contained within those categories
constituted a trade secret.”) (quotation marks and citations omitted). This failure to describe the
trade secrets with reasonable particularity amounts to a failure to answer Defendant’s
interrogatory, and Defendant’s request to compel a response must therefore be GRANTED.
Plaintiff is ORDERED to provide a complete answer to Defendant’s Interrogatory No. 1, listing
all standalone and combination trade secrets Defendant is alleged to have misappropriated, within
thirty days of the date of this Opinion and Order.
ii. Language used to describe the trade secrets
Second, Defendant takes issue with what it calls vague and undefined terms used in
Plaintiff’s interrogatory response. (Doc. 25 at 12–14). Plaintiff responds that its terms would be
understood by a person of ordinary skill in its industry. (Doc. 27 at 11–13). By way of example,
the parties discuss steps in Plaintiff’s process which require the use of a “rinse tank.” Defendant
says Plaintiff must describe the components of the rinse tank and how they are used. (Doc. 25 at
12–13). Plaintiff says that a rinse tank is a commonly known device in the industry, and any type
of rinse tank could be used in connection with its method. (Doc. 27 at 12).
Plaintiff rightly identifies that its burden to show that its use of language is “reasonably
particular” at this stage in the litigation is not particularly high. See, e.g., Phoenix Techs., Ltd. v.
DeviceVM, Inc., No. 09-4697-EDL, 2010 WL 8590525, at *4–5 (N.D. Cal Mar. 17, 2010) (finding
that a credible dispute between plaintiff’s and defendants’ experts as to the sufficiency of plaintiff’s
trade secret identification was enough to demonstrate reasonable particularity for the purposes of
discovery); Yoe v. Crescent Sock Co., No. 1:15-CV-3-SKL, 2017 WL 11479991 (E.D. Tenn. May
25, 2017) (considering an expert declaration in support of plaintiff’s position that its trade secrets
were described with reasonable particularity). Yet, significantly, courts rely upon expert
declaration in assessing whether a party has carried that burden. This makes sense. The Court
does not possess the technical expertise to make this determination on its own.
Without any expert evidence, the Court will not make a ruling presently on whether
Plaintiff’s use of language is sufficiently descriptive. However, the Court offers some guidance.
The parties may be positioned—without the involvement of experts—to use their own industry
knowledge to arrive at mutually agreed definitions of these devices and techniques. The Court
therefore urges the parties to confer and attempt to arrive at a common understanding regarding
Plaintiff’s use of terminology. If they cannot, Plaintiff should be prepared to support its use of
language with an expert declaration.
B. Plaintiff’s interrogatory response will be considered final, unless there is an exceptional
reason to reopen it.
Defendant further asks that Plaintiff’s response be closed after it issues the response
compelled by this Opinion and Order. (Doc. 25 at 15–16). This is, in part, because Plaintiff has
maintained that it disclosed trade secrets through oral communications under the NDA executed
by the parties. (Id.). The lack of extrinsic evidence documenting the disclosures creates a risk that
Plaintiff might—after receiving further production in this case—mold its claims regarding
disclosure by oral communications. As noted by another court:
Under the peculiar circumstances of this case, where the alleged disclosure of trade
secrets was entirely oral, the danger of plaintiffs “molding” their claims by way of
subsequent supplementation of their original recollection of those two 2009
conversations is of particular concern. Plaintiffs claim they told defendants their
trade secrets and defendants thereafter misappropriated them. Under that scenario,
it is entirely reasonable for defendants to request, by way of Interrogatory No. 1,
that plaintiffs supply a “closed” recital of their recollection of what was orally
imparted in the two meetings of limited duration in 2009.
Coda Dev. S.R.O v. Goodyear Tire & Rubber Co., No. 5:15-CV-1572, 2019 WL 6219745, at *4
(N.D. Ohio Nov. 21, 2019) (emphasis in original).
And regardless of the particular concern given that this case centers on oral
communication, having a degree of finality provides Defendant notice and a settled expectation of
the claims it must prepare a defense against. See, e.g., Yoe, 2017 WL 11479991, at *11 (ordering
that plaintiff provide a “revised, comprehensive, final list of its trade secrets”) (emphasis added).
Accordingly, Plaintiff’s response to Interrogatory No. 1 pursuant to this Opinion and Order shall
be considered closed. Noting Plaintiff’s concerns that it may need to make some reasonable
supplementation to its interrogatory response in the future, the Court—like the court in Coda—
will “remain open to entertaining limited supplementation upon a showing of an exceptional reason
for doing so.” Coda, 2019 WL 6219745, at *4.
C. Defendant is granted a protective order until Plaintiff has made its supplemental response.
Next, Defendant asks that the Court enter a protective order so that it need not produce its
own confidential information until Plaintiff has identified the trade secrets Defendant is alleged to
have misappropriated. (Doc. 25 at 16–19). It is the normal course for a plaintiff in a trade secret
case “first to identify with reasonable particularity the matter which it claims constitutes a trade
secret before it will be allowed to compel discovery of its adversary’s trade secrets.” Dura Global,
2008 WL 2064516, at *1. On the other hand, all parties enjoy the right to obtain relevant discovery.
Therefore, in trade secret cases, courts “should balance a plaintiff’s general right to broad relevant
discovery with the special implications raised by a trade secret misappropriation claim.” A&P
Tech., Inc. v. Lariviere, No. 1:17-cv-534, 2017 WL 6606961, at *8 (S.D. Ohio Dec. 27, 2017)
(then proceeding to cite favorably the balancing test outlined in DeRubeis v. Witten Techs., Inc.,
244 F.R.D. 676, 680–81 (N.D. Ga. 2007)).
Such special implications are raised here. First, as was described above, there is a danger
of Plaintiff molding its claims to suit discovery it receives from Defendant. Additionally, until
Plaintiff has clearly articulated its trade secrets, Defendant has no barometer to assess which
requested discovery is relevant. See, e.g., DeRubeis, 244 F.R.D. at 680–81 (noting that both of
these factors weigh in favor of delaying trade secret discovery until the trade secret plaintiff “has
sufficiently described the trade secrets at issue.”). Plaintiff has not raised significant
countervailing concerns warranting immediate discovery. And to the extent Plaintiff says that
Defendant’s request is untimely, the record demonstrates that Defendant was conferring urgently
and in good faith to try to resolve the issue without judicial intervention. So, the Court—
considering the special implications of the present case in balance with the broad scope of
discovery—finds good cause supports a protective order, and Defendant’s request is GRANTED.
Defendant need not produce any confidential discovery until Plaintiff has identified the allegedly
misappropriated trade secrets with reasonable particularity.
D. The present dispute is substantially justified and award of expenses is therefore not proper.
Finally, Defendant asks that Plaintiff be ordered to reimburse Defendant for its reasonable
expenses incurred in bringing this Motion. (Doc. 25 at 19–21). Specifically, Defendant says that
Plaintiff’s conduct necessitated the Motion to Compel, and that Plaintiff’s position was not
substantially justified. (Id.). Unsurprisingly, Plaintiff believes its position was substantially
justified. (Doc. 27 at 19–20).
Whether sanctions should be awarded is a matter about which the Court possesses
substantial discretion. See Ruiz-Bueno v. Scott, 2:12-cv-0809, 2014 WL 1764578, at *2 (S.D. Ohio
May 1, 2014) (citation omitted). An award of sanctions is not appropriate if a party’s discovery
responses and objections were “substantially justified[.]” Fed. R. Civ. P. 37(a)(5)(A)(ii).
Substantially justified has elsewhere been defined as raising an issue about which “there is a
genuine dispute, or if reasonable people could differ as to the appropriateness of the contested
action.” Doe v. Lexington-Fayette Urban Cty. Gov’t, 407 F.3d 755, 765 (6th Cir. 2005) (quoting
Pierce v. Underwood, 487 U.S. 552, 565 (1988)).
While the Court finds that Plaintiff failed to describe its trade secrets sufficiently, it cannot
find that Plaintiff’s belief that it had is altogether unreasonable. Accordingly, Plaintiff’s conduct
was substantially justified and Defendant’s request for expenses is DENIED. Still, the Court notes
that Plaintiff’s conduct was not exemplary of meaningful conferral and cooperation toward a
potential resolution of the parties’ dispute. The Court urges both parties to engage in good-faith
conferral and dispute resolution should further disagreements arise throughout this litigation. If
they do not, the Court will not hesitate to award expenses as appropriate.
IV. CONCLUSION
Defendant’s Motion to Compel and for Protective Order (Doc. 25) is GRANTED in part
and DENIED in part. Plaintiff is ORDERED to provide a complete answer to Defendant’s
Interrogatory No. 1, listing all standalone and combination trade secrets Defendant is alleged to
have misappropriated, within thirty days of the date of this Opinion and Order. Defendant need
not produce any confidential discovery until Plaintiff has identified the allegedly misappropriated
trade secrets with reasonable particularity. Defendant’s request for expenses is DENIED.
IT IS SO ORDERED.
Date: August 8, 2023 /s/ Kimberly A. Jolson
KIMBERLY A. JOLSON
UNITED STATES MAGISTRATE JUDGE