On September 26, 2012, Chief ALJ Charles E. Bullock issued the public version of Order No. 7 (dated September 6, 2012) denying Respondents’ motion for a protective order in Certain Rubber Resins and Processes for Manufacturing Same (Inv. No. 337-TA-849).
The investigation is based on a May 21, 2012 complaint and June 12, 2012 letter supplementing the complaint filed by SI Group, Inc. (“SI Group”) alleging violation of Section 337 in the importation into the U.S. and sale of certain rubber resins made using misappropriated SI Group trade secrets. See our June 22, 2012 post for more details.
According to the Order, Respondents collectively moved for a protective order to condition discovery of Sino Legend (Zhangjiagang) Chemical Co., Ltd.’s (one of the Respondents) trade secret chemical process upon an adequate disclosure by SI Group of its allegedly misappropriated trade secrets. Respondents argued that SI Group failed to fully identify the alleged trade secrets at issue, and that SI Group’s “vague or unclear” disclosures do not meet the legal prerequisite of a comprehensive trade secret description before discovery. Respondents asserted that learning the details of the accused process through discovery will allow SI Group to further tailor its purported trade secrets to match the accused processes, “irrespective of whether such purported trade secrets actually reflect any preexisting [SI Group] notion of proprietary technology.”
SI Group opposed the motion, claiming that its trade secret description is comprehensive and detailed. SI Group noted that the detail provided exceeds any standard used by the Commission, and that, contrary to Respondents’ position, a comprehensive description is not a prerequisite to discovery.
The Commission Investigative Staff (“OUII”) filed a response indicating that it did not support Respondents’ motion. More particularly, OUII asserted that SI Group’s description provided notice of the areas at issue, and that the cases upon which Respondents rely are distinguishable. Specifically, OUII noted that SI Group provided “much more particularity of its trade secrets” than the plaintiffs did in the cases cited.
ALJ Bullock noted that, contrary to Respondents’ assertion, a comprehensive trade secret description is not a prerequisite to discovery of a respondent’s accused processes. Regardless, the ALJ considered SI Group’s eighteen page disclosure to be “far from ‘vague’ and ‘unclear.’” Lastly, the ALJ noted only SI Group’s counsel will have access to information about Respondents’ process under the existing protective order and thus, Respondents’ concern about SI Group refashioning its trade secrets is unfounded. As such, the ALJ denied the motion for a protective order, and Respondents were ordered to respond to any pending discovery within five days.