You Decide: May a “Vision” Qualify as a Compilation Trade Secret?

The question facing the United States District Court for the District of Utah was whether Plaintiffs, Brigham Young University and a professor, owned a protectable trade secret for a professor’s vision for finding COX–2 selective nonsteroidal anti-inflammatory drug (NSAID). The Court found that fact issues precluded summary judgment. Specifically, the Court stated: “The Court finds that the professor “had a vision, he did work to facilitate that vision, and communicated his vision and work to Pfizer. His vision could therefore be a compilation trade secret.” Here is the most relevant excerpt from the case:

A vision is protectable if it is not “generally known or readily ascertainable.” The “generally known or readily ascertainable” standard “cannot be viewed as whether the information is generally known and readily ascertainable to the general public, but, based on the defendant['s] knowledge and experience, whether the information was known or ascertainable to [the defendant].” The USA Power court set out the following factors from the Restatement as guidelines to follow in the “generally known” analysis:(1) the extent to which the information is known outside of the business; (2) the extent to which it is known by employees and others involved in its business; (3) the extent of measures taken by the business to guard the secrecy of its information; (4) the value of the information to the business and its competitors; (5) the amount of effort or money expended by the business in developing the information; (6) the ease or difficulty with which the information could be properly acquired or duplicated by others. BYU has presented testimony that during the time BYU was sharing information and materials with Pfizer “ ‘no other research group, either academic or industrial, had access to the unique combination of Dr. Simmons['s] clones, antibodies, research data, expert advice and project.’ ” Dr. Steven Prescott, a BYU expert, testified that he was not aware of “earlier documents describing a plan to find a COX–2 selective NSAID” before Simmons provided his materials to Pfizer. Dr. Randy Bell, another BYU expert, testified that, to his knowledge “no one anywhere prior to March of 1992 had laid out [ ] a plan for finding COX–2 selective NSAIDs…. No other company had this set in 1991, and only Merck had much of it by mid–1993.” This evidence produces a dispute of material fact as to several of the guidelines the USA Power court identified. It would therefore be inappropriate for the Court to undertake such an analysis on summary judgment.

Read the case and decide for yourself, and share your comments here. This is what trade secret misappropriation litigation is made of!!!

Brigham Young Univ. v. Pfizer, Inc., 861 F. Supp. 2d 1320, 1326 (D. Utah 2012).


 

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