Published in Litigation, Volume 49, Number 4, Summer 2023. © 2023 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may
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To address this issue, California and
Massachusetts have enacted statutes that
require pre-discovery identification with
reasonable or sufficient particularity. In
these states, a plaintiff cannot seek discov-
ery until proper identification has occurred.
A similar trend is underway in federal court,
where plaintiffs are increasingly ordered
to identify the trade secrets with reason-
able particularity before discovery on the
secrets can be had. See, e.g., Kalencom Corp.
v. S hu lm an , No. CV 17-5453, E.D. La. Apr. 17,
2018) (gathering cases).
So what does it mean to identify a trade
secret with reasonable or sufficient partic-
ularity? Though the terminology is similar,
the definitions vary.
For example, some courts have held
that a plaintiff must set out the subject of
the trade secret with enough detail to dis-
tinguish it from matters of general knowl-
edge in the trade and to permit a defen-
dant to determine its boundaries. See, e.g.,
Mallet & Co. Inc. v. Lacayo, 16 F.4th 364,
382 (3d Cir. 2021); InteliClear, LLC v. ETC
Glob. Holdings, Inc., 978 F.3d 653, 658 (9th
Cir. 2020). Others have defined reason-
able particularity as requiring a plaintiff
to identify its trade secrets “in a manner
that will allow the trial court to control
the scope of subsequent discovery, protect
all parties’ proprietary information, and
allow them a fair opportunity to prepare
and present their best case or defense at
a trial on the merits.” Advanced Modular
Sputtering, Inc. v. Superior Court, 132 Cal.
App. 4th 826, 836 (2005).
While a pla intiff may be allowed to
amend or supplement its identification
of trade secrets, courts will often compel a
demonstration of good cause. Because the
purpose of pre-dis covery identification is
to facilitate an understanding of the case
and inform the scope of discovery, amend-
ment may be limited. In any event, a plain-
tiff may have to describe the trade secrets
in response to interrogatories or during
Rule 30(b)(6) depositions.
Strategically, plaintiffs should con-
sider the demands of pre-discovery
identification before filing the complaint
and, if the trade secrets are especially
technical, decide whether to engage out-
side experts to assist in defining them
as part of the pre-discovery disclosure.
Defendants, on the other hand, should
press their adversaries to identify their
trade secrets early on—ideally, before
discovery—and determine whether any
objections to the designation are appro-
priate. Because there is no uniform stan-
dard regarding the timing and content of
trade secret disclosures, both sides should
evaluate the applicable standards when
selecting an appropriate venue.
The identification of trade secrets and
when to identify them will continue to
be crucial and contested issues in trade
secret cases, and courts increasingly
require identification before discovery
even begins. q
LEGAL LORE
The Haunted
Judge
MARTIN J. SIEGEL
The author is with the Law Offices of Martin J.
Siegel in Houston and is a senior editor of Liti-
gation; his book, Judgment and Mercy: The Tur-
bulent Life and Times of the Judge Who Con-
demned the Rosenbergs, was published earlier
this year by Cornell University Press.
Seventy years ago, America and the world
were convulsed as federal authorities car-
ried out the first (and last) peacetime ex-
ecutions for espionage. The frenzied in-
ternational campaign to save Julius and
Ethel Rosenberg in the months before their
deaths at Sing Sing prison on June 19, 1953,
also put a spotlight on the 42-year-old trial
judge who had imposed the sentences two
years earlier: Irving R. Kaufman.
The case would have aroused pas-
sions under any circumstances, but Judge
Kaufman’s stridency hadn’t helped. At
sentencing, he denounced the defendants
for a “diabolical conspiracy to destroy a
God-fearing nation” and blamed the drab
electrician and his wife for nothing less
than sta rting the Korea n War. Not long
ago, the historian Stacy Schiff placed the
speech in the frightened and wrathful
tradition of New England’s witch trials.
Stacy Schiff, Anger: An American History,
N.Y. T imes, Dec. 18, 2015. After a later
hearing in the case, Nobel laureate and
Manhattan Project official Harold Urey,
who believed the Rosenbergs’ importa nce
to the Soviet atomic effort had been exag
-
gerated, lashed out to a reporter: “Now
that I’ve seen what goes on in there, I see
not Irving Kaufman but McCarthy.”
More deeply, there had been little at
trial to connect Ethel Rosenberg to spy-
ing—onl y typing up som e notes on the
bomb to improve their legibility (testi-
mony admitted to be perjurious 50 years
later). Her lawyers gave her virtually no
independent defense, essentially lumping
her in with her more culpable husband.
Yet she received the same, maximum pen-
alty. As the mother of two young sons, she
was especially sympathetic.
As the end approached, Judge Kaufman
was a worn and harried figure. Police
guards stood outside his apartment build-
ing while the FBI repeatedly swept the
interior for bombs. Weeks earlier, he had
packed his young family o ff to a friend ’s
home in Connecticut due to the end-
less threats. He remained at his post in
Manhattan, serially denying last-minute
applications for stays.
To his critics, then, Judge Kauf man
embodied harsh and distorted Cold War
justice. But at the same time that the
Rosenberg saga was nearing its tragic finale,
the U.S. Supreme Court was considering
a different case—a battle over immigra-
tion rules centered on someone reporters
dubbed “the man without a country.”
Ignatz Mezei entered the United States
illegally but lived quietly in Buffalo un-
til leaving to visit his dying mother in
Romania. Returning in 1950, he was
