Case 2:17-cv-01434-JFC Document 101 Filed 04/03/18 Page 1 of 5

IN THE UNITED STATES DISTRICT COURT FOR 


THE WESTERN DISTRICT OF PENNSYLVANIA

ARCONIC INC., :
: No. 2:17-CV-01434
Plaintiff, :
:
v. : Chief District Judge
: Joy Flowers Conti
NOVELIS INC., :
NOVELIS CORP., :
:
Defendants. :

ORDER REQUIRING PRE-DISCOVERY

IDENTIFICATION OF TRADE SECRETS AND CONFIDENTIAL INFORMATION

WHEREAS, on December 4, 2017 Defendants Novelis Inc. and Novelis Corp.

(collectively “Novelis”) filed a Motion for Order Requiring Pre-Discovery Identification of

Trade Secrets and Confidential Information (Dkt. 31); and,

WHEREAS, on December 11, 2017, Plaintiff Arconic Inc. (“Arconic”) filed its Response

to Novelis’s Motion (Dkt. 41); and,

WHEREAS, on January 16, 2018, Arconic submitted a “Trade Secret Identification” to

the Court and Novelis (Dkt. 74); and,

WHEREAS, on January 19, 2018, Novelis filed a Reply in support of its Motion (Dkt.

70); and,

WHEREAS, on February 2, 2018, Arconic filed a Sur-Reply in support of its Response to

 Case 2:17-cv-01434-JFC Document 101 Filed 04/03/18 Page 2 of 5

Novelis’s Motion (Dkt. 80); and,

WHEREAS, on February 21, 2018, Special Master Hochberg held oral argument on

Novelis’s Motion;

IT IS THEREFORE ORDERED that:

A. Novelis’ Motion for Order Requiring Pre-Discovery Identification of Trade

Secrets and Confidential Information is GRANTED; Discovery on the Claim of Trade

Secret Misappropriation and Confidential Information breach of contract will commence

upon the identification of the plaintiff’s claimed trade secrets and confidential

information, filed in compliance with the requisites of this Order;

B. Arconic shall file with the Court and effect service of its “Identification of

Asserted Trade Secrets and Confidential Information” or before March 30, 2018, if

Arconic wishes to do so without objection to the Report & Recommendation of the

Special Master; or within 5 days of entry of this Order by the Court;

C. The “Identification of Asserted Trade Secrets and Confidential Information” shall

follow the format of the enclosed Exhibit A and contain the following

information:

1. With respect to each claimed Trade Secret or item of Confidential

Information, identify with reasonable particularity1 the Trade Secret or

1
“Reasonable particularity” shall have the meaning as defined in Hill v. Best Medical
International, Inc., No. CIV.A 09-1194, 2010 WL 2546023, at *3 (W.D. Pa. June 24, 2010)
(“‘Reasonable particularity’ has been defined as a description of the trade secrets at issue that is
sufficient to (a) put a defendant on notice of the nature of the plaintiff's claims and (b) enable the
defendant to determine the relevancy of any requested discovery concerning its trade secrets.”)
“Reasonable particularity” means a specific list and description of the alleged trade secrets and
confidential information and not “general allegations or general references” to categories of
information or processes. See id. at *4. Reasonable particularity requires Arconic to identify
 Case 2:17-cv-01434-JFC Document 101 Filed 04/03/18 Page 3 of 5

Confidential Information Arconic alleges Novelis has disclosed,

misappropriated, and/or misused; and,

2. If Arconic asserts that the 22 claims of the Novelis ‘440 Patent

Application as a claimed Trade Secret or item of Confidential Information

in this case, it shall identify the specific portion of each of the 22 Claims

of the Novelis ’440 Patent Application that Arconic alleges constitutes its

Trade Secret or item of Confidential Information; and,

3. If Arconic claims as a trade secret that an element of the Novelis patent

application at issue in this case is a combination of public and private

information, Arconic shall identify (a) what elements were known in the

public domain, (b) what elements were not publicly known, and (c)

identify the ombination of the private and public elements, and how these

elements are combined to form a Trade Secret and/or Confidential

Information.

D. The Court and the defendant cannot determine the relevancy of discovery requests

propounded with respect to the plaintiff’s claims regarding trade secrets and

confidential information misappropriation until Arconic identifies with reasonable

each Trade Secret or item of Confidential Information “with sufficient particularity so that the
reader understands how each such claim differs from public domain information—including
public [] patent filings.” See USSA v. Mitek Systems, Inc., 289 F.R.D. 244, 249 (W.D. Tex.
2013). Where an asserted Trade Secret or item of Confidential Information is a “combination of
known components”, plaintiff must specifically describe what particular combination of
components is; how these components are combined in a secret process, and how they operate in
such combination to meet the legal requisites of a trade secret. Hill, 2010 WL 2546023 at *4 n.8
(citing Struthers Sci. and Int’l Corp. v. General Foods Corp., 51 F.R.D. 149 (D.Del. 1970)).
 Case 2:17-cv-01434-JFC Document 101 Filed 04/03/18 Page 4 of 5

particularity the Trade Secrets and/or items of Confidential Information that the

plaintiff alleges the defendant has improperly disclosed. Therefore, discovery

requests with respect to this portion of the case shall be propounded after the

identification of such asserted material has been filed and served in compliance

with this Order. If there is a dispute about whether the filing complies with this

Order, the parties shall present the issue to the Special Master for a Report and

Recommendation to the Court.

E. It shall require a showing of good cause to add or amend the claimed trade secrets

identified pursuant to this Order.

SO ORDERED this 3rd day of April, 2018.

BY THE COURT:

s/ Joy Flowers Conti

Chief United States District Judge
 Case 2:17-cv-01434-JFC Document 101 Filed 04/03/18 Page 5 of 5

EXHIBIT A

Identification of Asserted Trade Secrets and Confidential

Information
Asserted Trade Portion of Portion of If Trade Secret/
Secret/Item of Alleged Arconic Alleged Arconic Item of
Confidential Trade Secret or Trade Secret/ Confidential
Information Item of Item of Information is a
Confidential Confidential Combination of
Information Information Public and
That is Not in that was or is Private
the Public Publicly Known Information,
Domain and is or Disclosed Explanation of
Claimed to be Secret/
Secret or Confidential
Confidential Combination

Trade Secret #1:

Trade Secret #2:

Trade Secret #3:

Trade Secret #4:

Confidential
Information #1:

Confidential
Information #2:

Confidential
Information #3:

Confidential
Information #4: