Welcome to WilmerHale’s bulletin on recent trade secret case law and relevant news items. We’ve affectionately nicknamed it “Readily Ascertainable” because, unlike a trade secret, it should be easy to figure out.
This month’s cases involve a challenge to the assessment of a head start period, whether the DTSA covers misappropriation that occurs outside of the United States, whether a presumption of irreparable harm automatically applies in trade secret cases, and the specificity required for temporary injunctions enjoining the solicitation of a trade secret owner’s customers.
ams-OSRAM USA Inc. v. Renesas Electronics America, Inc., 2025 WL 1007086, __F.4th__ (Fed. Cir. 2025)
Federal Circuit analyzes accessibility of trade secrets in assessing head start period.
Texas Advanced Optoelectronic Solutions, Inc. (“TAOS”) sued Intersil Corporation (“Intersil”) for trade secret misappropriation. On remand, the jury issued an advisory opinion on the head start period, later adopted by the judge, that “the trade secret first became properly accessible to Intersil in January 2005, when Intersil successfully reverse-engineered the trade secret” from TAOS’s product, which first became available to the public in February 2005. The trial court reasoned that “the relevant inquiry for proper accessibility is what the misappropriator did,” rather than “what the misappropriator or other parties could have done.”
On appeal, Intersil argued that TAOS’s “trade secret first became accessible to it when it could have reverse-engineered the trade secret, after TAOS’s release” of the product. The Federal Circuit agreed. Applying Texas law, and citing several Supreme Court cases, the court held that “instant discovery through naked-eye viewing is not required. The practical focus of the inquiry reflects the need to ensure that a trade secret remedy is tailored to preventing or negating the unfair advantage derived from improper acquisition.” The Federal Circuit then explained that Intersil “through proper and straightforward means, could have accessed TAOS’s trade secret by the end of February 2005” because it was undisputed that TAOS’s product, which incorporated the secret, was public by January 2005, and because the evidence was “clear that reverse-engineering a product is a common, pervasive industry practice that could have been done in roughly a week.”
The Federal Circuit eventually found that the district court’s error in determining the beginning of the head start period did not affect the disgorgement remedy, but this case remains noteworthy for the court’s analysis of accessibility and reverse-engineering.
Xcoal Energy & Resources, et al. v. Asanome, 2025 WL 949510 (W.D. Penn. Mar. 28, 2025)
W.D. Penn court finds extraterritorial misappropriation can fall under the scope of the DTSA.
As reported in our February bulletin, questions regarding the extraterritorial reach of the DTSA persist following the Supreme Court’s denial of Hytera Communications cert petition. Xcoal Energy & Resources (“Xcoal”), a coal marketing and logistic company, alleged that its former Marketing Manager, Asanome, misappropriated trade secrets prior to resigning from Xcoal and joining its largest competitor. The “trade secrets were stored on a company server located in Latrobe, Pennsylvania, and accessible by Defendant from a laptop provided by Xcoal,” which is incorporated and headquartered in Pennsylvania. Asanome moved to dismiss on the basis he worked for Xcoal in Japan, and resided in Japan during the time period when the misappropriation allegedly occurred, and therefore the DTSA did not apply to his alleged misappropriation because he failed to meet the DTSA’s requirement of an act in furtherance of the offense within the United States. The court disagreed. The court found that “there must be at least something tying the alleged wrongdoing to the United States, but the bar there is relatively low. As long as the defendant received some of the trade secrets from the United States, subsequent misappropriation, even if it occurs abroad, would fall under the scope of the DTSA.” The court held that “[a]s long as the defendant received some of the trade secrets from the United States, subsequent misappropriation, even if it occurs abroad, would fall under the scope of the DTSA.” Id. at *6. Given that Asanome allegedly “came into possession of control or proprietary information from the United States,” the “alleged misappropriation is directly related to Defendant’s contact with the United States.”
TJT Cap. Grp., LLC v. McFadden, 2025 WL 744280 (D. Conn. Mar. 7, 2025)
Connecticut District Court rules that a presumption of irreparable harm does not automatically apply in trade secret cases.
TJT Capital Group, LLC (“TJT”), a registered investment advising company, alleged that McFadden, a former member of TJT, misappropriated TJT’s trade secrets when he created a list of all clients that he advised while employed at TJT and emailed himself a copy prior to leaving the company. TJT moved for a temporary restraining order. TJT argued for a presumption of irreparable harm “because a trade secret once lost is, of course, lost forever” and the loss of a trade secret “cannot be measured in money damages.” The court found that a presumption of irreparable harm does not automatically apply in trade secret cases, that TJT had not established a realistic danger that McFadden would disseminate TJT’s alleged trade secrets, and that TJT had not explained why the loss of clients could not be remedied with monetary damages.
Coney v. Prodigy Health, LLC, 2025 WL 698136 (Tex. App. Mar. 5, 2025)
Court of Appeals of Texas, Austin rules on the level of specificity required for TRO.
Prodigy Health LLC (“Prodigy”), a specialty drug wholesaler, sued two competing pharmaceutical sales businesses and three former Prodigy employees (collectively “Appellants”) asserting claims for misappropriation of trade secrets. The trial court granted a TRO prohibiting appellants, among other things, “from soliciting Prodigy’s customers.” Appellants filed an interlocutory appeal. The Court of Appeals of Texas, Austin observed that while the TRO attached a list of approximately 1,600 zip codes in which Prodigy’s customers are located, it failed to identify specific customers who were off-limits. Although Prodigy’s former employees could be presumed to know the identity of Prodigy’s customers, the court found that the other two appellants could not be presumed to have the same knowledge. Because the injunction applied not just to Prodigy’s former employees but also to two other businesses, the appellate court found that the term “customers” alone did not provide the requisite level of specificity required under the Texas Rules of Civil Procedure.
