PUBLISHED

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

No. 20-2344

AIRFACTS, INC.,

Plaintiff − Appellant,

v.

DIEGO DE AMEZAGA, an individual,

Defendant – Appellee.

Appeal from the United States District Court for the District of Maryland, at Greenbelt. 

Deborah K. Chasanow, Senior District Judge. (8:15−cv−01489−DKC)

Argued: December 9, 2021 Decided: April 6, 2022

Before AGEE and DIAZ, Circuit Judges, and FLOYD, Senior Circuit Judge.

Affirmed in part, reversed in part, vacated in part, and remanded by published opinion. 

Judge Diaz wrote the opinion, in which Judge Agee and Senior Judge Floyd concurred. 

Nicholas Hantzes, HANTZES & ASSOCIATES, McLean, Virginia, for Appellant. Jerry 

R. Goldstein, JERRY R. GOLDSTEIN, P.C., Rockville, Maryland, for Appellee.
2

DIAZ, Circuit Judge:

AirFacts, Inc. appeals—for the second time—the district court’s judgment for the 

company’s former employee, Diego de Amezaga. AirFacts sued Amezaga for breaching 

his employment agreement and misappropriating trade secrets under the Maryland 

Uniform Trade Secrets Act. In AirFacts, Inc. v. de Amezaga, 909 F.3d 84 (4th Cir. 2018) 

(“AirFacts I”), we vacated the district court’s judgment for Amezaga on several breach-ofcontract claims and one misappropriation claim. On remand, the court once again found 

for Amezaga. 

AirFacts appealed. It argues that the district court erred in (1) awarding AirFacts 

only nominal damages for certain contract claims; (2) finding that Amezaga didn’t breach 

the employment agreement as to other claims; and (3) refusing to award AirFacts 

reasonable royalty damages for Amezaga’s trade secrets violation. As we explain, we

affirm in part, reverse in part, vacate in part, and again remand to the district court for 

proceedings consistent with this opinion.

I.

A.

AirFacts develops and licenses revenue accounting software. The company’s 

primary product is TicketGuard, which audits airline ticket sales. In 2008, Amezaga began 

working for AirFacts as a product development analyst. The company later promoted him 

to manager and then director of product development. His responsibilities included 
3

managing programmers and coders, developing new software, and handling client 

relationships. 

When Amezaga first joined AirFacts, the parties signed an employment agreement. 

Paragraph 4.2 of the agreement required Amezaga to return all documents containing 

confidential information to AirFacts before he left the company. Paragraph 2.2 barred 

Amezaga from disclosing confidential information to third parties and clarified that all such 

information is AirFacts’s property. The agreement also contained an indemnification 

clause, which provided,

Employee shall defend, indemnify and hold harmless AirFacts . . . from any 

losses, liabilities, damages, demands, suits, causes of action, judgments, 

costs or expenses (including court costs and reasonable attorney’s fees) 

resulting from or directly or indirectly arising out of any material breach of 

any material provision of this Agreement by Employee. 

J.A. 1422.

During his tenure at AirFacts, Amezaga worked to develop and pitch a new 

“proration” software. The software would help airlines ensure they receive the appropriate 

share of a multi-airline ticket sale. AirFacts began development in 2012, and in early 2014, 

Alaska Airlines agreed to purchase the software. 

Amezaga resigned from AirFacts in February 2015. During his last week, he printed 

out documents related to a project he’d been working on (“pseudocode”). And on his last 

day, he sent documents related to the new proration software to his personal email account

because his superiors told him they may reach out with questions about his work. AirFacts 

says it told Alaska Airlines about this alleged data breach and then redeveloped part of the 

software to the tune of nearly $100,000. 
4

A few weeks after leaving AirFacts, Amezaga applied for a job at Fareportal, a travel 

agency. Fareportal is neither AirFacts’s customer nor competitor, but AirFacts, on behalf 

of its airline clients, has used TicketGuard to audit Fareportal’s ticket sales. In connection 

with his application, Amezaga sent Fareportal two flowcharts he’d created for AirFacts 

displaying ticket price rules, relevant processing information, and “things from [his] head” 

to streamline the auditing process (“the flowcharts”). J.A. 830. He downloaded the 

flowcharts from Lucidchart, an online document-storage provider, using his AirFacts 

employee credentials. Amezaga says he only sent Fareportal the flowcharts to help them 

understand the work he did for AirFacts.

B.

AirFacts sued Amezaga for breaching several provisions of his employment 

agreement and misappropriating trade secrets. After a bench trial, the district court entered 

judgment for Amezaga on all counts. The court first held that AirFacts had abandoned all 

its contract claims except one alleging that Amezaga breached the employment 

agreement’s noncompete clause, which the court then rejected.

1

 

It then turned to AirFacts’s trade secrets claims. AirFacts argued that Amezaga 

misappropriated its trade secrets by taking the flowcharts and proration documents. The 

court rejected the claim for two reasons. First, it held the flowcharts weren’t trade secrets. 

And second, it said that Amezaga didn’t misappropriate the proration documents—which 

1 We affirmed the district court’s judgment for Amezaga on the noncompete claim. 

AirFacts I, 909 F.3d at 95. There’s no live dispute on this issue.
5

were trade secrets—because he accessed them with authorization while he was still an 

AirFacts employee. 

In AirFacts I, we revived some of the company’s contract claims and one of its

misappropriation claims. First, we said that AirFacts had preserved its claims that 

Amezaga breached paragraphs 2 and 4.2 of the employment agreement. AirFacts I, 909 

F.3d at 93, 93 n.6. So we remanded those claims for the district court to consider in the 

first instance. Id. at 93. Then, as for AirFacts’s trade secrets claims, we agreed that 

Amezaga didn’t misappropriate the proration documents. Id. at 98. But contrary to the 

district court, we found that the flowcharts were trade secrets. Id. at 96–97. We then left 

it to the district court to decide whether Amezaga misappropriated them under the 

Maryland statute. Id. at 97.

On remand, the district court first addressed AirFacts’s breach-of-contract claims. 

It considered whether Amezaga breached paragraphs 2.2 or 4.2 of the employment 

agreement by (a) accessing his company Lucidchart account, downloading the flowcharts, 

and sending them to Fareportal; (b) saving the proration documents; (c) printing the 

pseudocode; or (d) retaining two more documents—a straight sales processing diagram and 

a home commission table2

—that AirFacts’s experts found on Amezaga’s devices after 

litigation began. 

2 Amezaga helped create the straight sales processing diagram, which “shows the 

core of AirFacts’[s] processing logic for the TicketGuard software and diagrams that entire 

system.” J.A. 1253. The home commission table relates to AirFacts’s travel agency 

commission audits. It “hous[es], synthesiz[es], and creat[es] a structure for all of the 

commission information and data necessary to conduct commission audits.” J.A. 1252.
6

The court issued three rulings on these claims. First, it held that Amezaga breached 

paragraph 2.2 as to the flowcharts and paragraph 4.2 as to the straight sales processing 

diagram and home commission table. But it said these breaches were de minimis. And 

because the employment agreement’s indemnification clause limited AirFacts’s right to 

recover damages, fees, and costs to those attending material breaches, the court awarded 

only nominal damages.

Second, the court held Amezaga didn’t breach paragraph 4.2 by printing the 

pseudocode because it didn’t contain “confidential information” under the agreement. And 

third, it determined that retaining the proration documents—which were “confidential

information”—didn’t violate paragraph 4.2 because Amezaga had “implicit authority to 

keep these materials.” AirFacts, Inc. v. Amezaga, 502 F. Supp. 3d 1027, 1037 (D. Md. 

2020).

The district court then addressed AirFacts’s trade secrets claim. It concluded that 

Amezaga misappropriated trade secrets—the flowcharts—because he improperly acquired 

and disclosed the documents without consent. AirFacts sought only reasonable royalty 

damages because it couldn’t prove any specific injury. But despite discussing AirFacts’s

damages expert’s testimony in detail, the court said that a plaintiff seeking royalty damages 

under the Maryland trade secrets statute must show the defendant put the trade secrets to 

commercial use. Finding that AirFacts failed to prove Amezaga put the flowcharts to 

commercial use, the court declined to award damages.
7

AirFacts timely appealed the district court’s adverse rulings.

3

 We address each in 

turn. 

II.

“We review a judgment following a bench trial under a mixed standard of review.” 

Roanoke Cement Co. v. Falk Corp., 413 F.3d 431, 433 (4th Cir. 2005). We review factual 

findings for clear error and legal conclusions de novo. Id.

III.

As before, we’ll begin with AirFacts’s breach-of-contract claims, applying

Maryland law per the employment agreement’s choice-of-law provision. 

A.

AirFacts first challenges the district court’s decision to award only nominal damages 

for the breach claims on which the company prevailed on the merits. The court found that 

the flowcharts, home commission table, and straight sales processing diagram all contained 

confidential information.4

 So Amezaga breached paragraph 2.2 of the employment 

agreement by disclosing the flowcharts to Fareportal without AirFacts’s permission. And 

3 One exception. AirFacts didn’t appeal the district court’s ruling that the 

pseudocode wasn’t “confidential information.” That decision stands. 

4 As the district court correctly recognized, our holding in AirFacts I that the 

flowcharts are “trade secrets” also means they’re “confidential information” under the 

agreement. AirFacts, 502 F. Supp. 3d at 1038. The contract defines “confidential 

information” to include “trade secrets.” J.A. 1421. 
8

he violated paragraph 4.2 by keeping the home commission table and straight sales 

processing diagram after his employment ended. 

The district court then turned to a more complicated question: whether AirFacts 

could claim any remedy under the agreement’s indemnification clause. That clause has a 

two-pronged materiality requirement. For AirFacts to recover damages, fees, or costs, an 

employee must materially breach a material provision. The court agreed with AirFacts 

that paragraphs 2.2 and 4.2 were material provisions. But it determined that Amezaga only 

nominally breached them, and so declined to award AirFacts the attorneys’ fees and 

forensic expenses it sought. Finding no error, we affirm.

The district court’s materiality determination is a factual finding we review only for 

clear error. See Weichert Co. of Md., Inc. v. Faust, 19 A.3d 393, 399 n.1 (Md. 2011) (“The 

materiality of a breach of contract is a factual inquiry.”); Schneider v. Saul, 168 A.2d 375, 

380 (Md. 1961) (“[T]he question of the materiality of a breach is usually one of fact.”). 

The employment agreement doesn’t define “material,” so we look to Maryland law. 

A breach is material if it “affects the purpose of the contract in an important or vital 

way.” Sachs v. Regal Sav. Bank, 705 A.2d 1, 4 (Md. Ct. Spec. App. 1998). Williston on 

Contracts offers more guidance, explaining that “[i]n many cases, a material breach of 

contract is proved by the established amount of the monetary damages flowing from the 

breach; . . . Conversely, where a breach causes no damages or prejudice to the other party, 

it may be deemed not to be material.” 23 Williston on Contracts, § 63:3 (4th ed. 2021)

(cleaned up).
9

We agree that Amezaga breached the employment agreement, but only immaterially

because there’s no evidence his conduct harmed or prejudiced AirFacts. Indeed, AirFacts 

hasn’t sought compensatory damages. Both the home commission table and straight sales 

processing diagram were several years old, and the record suggests Amezaga simply forgot 

he had them. He never accessed either document after leaving AirFacts. And although 

disclosing the flowcharts to Fareportal “is a somewhat closer question,” AirFacts hasn’t 

proven any harm. AirFacts, 502 F. Supp. 3d at 1045. Amezaga only sent Fareportal the 

flowcharts as a work sample, and Fareportal isn’t AirFacts’s competitor. There’s simply 

no evidence the disclosure was anything “but a minor, technical, violation of the contract.” 

Id. 

AirFacts makes two arguments to support its view that Amezaga materially 

breached the agreement. First, it baldly asserts that Amezaga undermined the agreement’s

fundamental purpose when he breached paragraphs 2.2 and 4.2, offering only general 

propositions about the importance of protecting confidential information. All this proves

is that paragraphs 2.2 and 4.2 were material provisions. But by limiting the company’s 

ability to recover damages, attorneys’ fees, and litigation costs to material breaches of the 

agreement, the indemnification clause expressly contemplates the potential for immaterial

breaches of material provisions. So we can’t say Amezaga materially violated the 

agreement simply because he breached material provisions, lest we render the materialbreach requirement superfluous. Cf. Owens-Illinois, Inc. v. Cook, 872 A.2d 969, 985–86 

(Md. 2005) (explaining that Maryland courts construe contracts to “giv[e] effect to every 

clause and phrase, so as not to omit an important part of the agreement”). 
10

Second, AirFacts argues it has suffered harm from Amezaga’s breach. But it claims 

no actual damages. The only injuries the company alleges are the legal fees and forensic 

costs incurred in this litigation. This argument is circular. It can’t be that to recover fees 

and costs, the breach must be material, and that the breach is material because AirFacts 

incurred fees and costs. If that were enough, AirFacts alone could transform any 

immaterial breach into a material one simply by resorting to litigation. 

In short, because AirFacts has failed to prove it suffered any harm from Amezaga’s 

contract breaches, the district court didn’t clearly err by awarding only nominal damages 

on these claims.5

B.

AirFacts next contests the district court’s rulings that Amezaga didn’t violate 

paragraph 4.2 of the employment agreement, either by accessing and downloading the 

5 We aren’t swayed by the cases AirFacts cites. See Glynn v. Impact Sci. & Tech., 

Inc., 807 F. Supp. 2d 391 (D. Md. 2011); 21st Century Sys., Inc. v. Perot Sys. Gov’t Servs., 

Inc., 726 S.E.2d 236 (Va. 2012). In both cases, the companies recovered forensic costs as 

damages for claims that former employees retained confidential documents. But neither 

case involved an indemnification clause like the one here. The agreement in Glynn 

seemingly authorized the company to recover damages stemming from any breach, not just 

material breaches. See 807 F. Supp. 2d at 431. And in 21st Century Systems, the company 

also recovered substantial compensatory damages. 726 S.E.2d at 239–40. 

Nor can AirFacts recover attorneys’ fees and forensic expenses as “damages flowing 

from the breach” despite the indemnification clause. Appellant’s Br. at 29. The 

indemnification clause is the exclusive means to recover under the agreement. Indeed, 

without that clause, AirFacts would have been unable to recover fees and costs as a matter 

of law. See Harry’s Thrifty Tavern, Inc. v. Pitarra, 166 A.2d 908, 912 (Md. 1961) (“[I]t is 

the general rule that costs and expense of litigation, other than the usual and ordinary court 

costs, are not recoverable in an action for damages” absent “special circumstances”). 
11

flowcharts or by retaining the proration documents. We agree with the district court that 

nothing Amezaga did with the flowcharts breached paragraph 4.2. We part ways, however, 

over the proration documents. 

1.

AirFacts contends that Amezaga violated paragraph 4.2 of the employment 

agreement when he accessed the flowcharts in Lucidchart. The district court disagreed

because that provision only addresses an employee’s obligation to return documents 

containing confidential information “[u]pon termination of his engagement with 

AirFacts.” J.A. 1422 (emphasis added). And Amezaga didn’t access the flowcharts until 

after he’d left the company. AirFacts counters that paragraph 4.2 required Amezaga to 

“return” his Lucidchart login credentials upon his resignation, so when he used the 

confidential information is irrelevant.

We reject this claim. Even if we assume that Amezaga’s Lucidchart login 

credentials were “confidential information,” there’s no evidence Amezaga took any 

document containing that information with him. Paragraph 4.2 only covers “equipment, 

computer software, drawings, manuals, letters, notes, notebooks, reports, and all other 

material and records.” J.A. 1422. It doesn’t reach information a departing employee has 

in his head (nor could it). Without evidence that Amezaga kept a record containing his 

Lucidchart login credentials, AirFacts can’t prove he violated paragraph 4.2.

2.

In its final contract claim, AirFacts argues the district court erred by holding 

Amezaga didn’t breach paragraph 4.2 of the employment agreement when, on his last day 
12

with the company, he sent the proration documents to his personal email. We agree with 

AirFacts.

The district court began by correctly recognizing that the proration documents 

contained confidential information under the agreement. Still, it found Amezaga didn’t 

violate paragraph 4.2 of the agreement because he “possessed implicit authority to keep 

these materials.” AirFacts, 502 F. Supp. 3d at 1037. But nothing in the employment 

agreement admits an exception to paragraph 4.2’s clear requirement that an employee 

return all documents containing confidential information. Nor does the district court cite 

any cases supporting an “implicit authority” exception to an agreement’s clear terms.

And besides, even under clear-error review, we don’t agree that Amezaga had 

“implicit authority” to keep the proration documents. The district court relied on two 

factual findings to reach this conclusion. First, “[a]s the creator or co-creator of the 

documents, [Amezaga] was clearly authorized to access them,” and “other employees also 

used personal email accounts for AirFacts business or worked on home computers.” Id. 

AirFacts doesn’t dispute this characterization of Amezaga’s authority—while he worked 

for the company. But there’s nothing in the employment agreement suggesting Amezaga 

had a right to retain confidential information he created. In fact, it says the opposite. See 

J.A. 1421 (“The employee agrees that any participation by the employee in the design, 

discovery, conception, production, perfection, development, or improvement of any 

invention by the employee is work done for hire for the sole and exclusive benefit of 
13

AirFacts and employee hereby assigns to AirFacts all of its rights, title, and interest in and 

to any and all inventions.”).6

Second, the court recounted Amezaga’s testimony that two superiors asked him to 

be available for questions about his work after he left AirFacts. Amezaga said he only 

retained the proration documents to reference if he received such a call. The district court 

found this testimony credible, and we don’t disturb that finding. But it’s of no moment 

because no one at AirFacts asked Amezaga to keep confidential information on his personal 

computer. 7

For these reasons, we reverse the district court’s ruling that Amezaga didn’t breach 

paragraph 4.2 of the employment agreement by retaining the proration documents after he 

left AirFacts. But our opinion goes no further. We leave it to the district court to determine 

6 We reach the same conclusion even if we read the district court’s “implicit 

authority” ruling as a factual finding that the parties implicitly modified the agreement to 

allow Amezaga to retain the proration documents. See Richard F. Kline, Inc. v. Shook 

Excavating & Hauling, Inc., 885 A.2d 381, 390 (Md. Ct. Spec. App. 2005) (noting that 

whether the parties implicitly modified a contract is a question of fact). Again, no one at 

AirFacts asked Amezaga to keep the proration documents or to do anything else that would 

have violated paragraph 4.2 without modification. So there’s no evidence AirFacts 

understood it was waiving that provision. 

7 Amezaga contends that our holding in AirFacts I that he didn’t misappropriate the 

proration documents is binding law of the case and should compel us to affirm the district 

court. We disagree. Maryland’s trade-secret statute imposes a scienter requirement on 

misappropriation-by-acquisition claims, requiring that the defendant “know[] or ha[ve] 

reason to know that the trade secret was acquired by improper means.” Md. Code Com. 

Law § 11-1201(c)(1). So Amezaga could have violated paragraph 4.2 by retaining the 

documents while still not knowing or having a reason to know that he initially acquired 

them through “improper means.” The findings are not mutually exclusive.
14

on remand whether this breach was material and, if so, what (if anything) AirFacts is owed 

under the agreement’s indemnification clause.8

IV.

A.

We now turn to AirFacts’s claim that it’s owed reasonable royalty damages under 

the Maryland Uniform Trade Secrets Act. In AirFacts I, we held that the flowcharts are 

“trade secrets” under the Act. On remand, the district court found that by disclosing the 

flowcharts to Fareportal, Amezaga misappropriated those trade secrets. 

As for damages, AirFacts conceded it couldn’t prove Amezaga caused any “specific 

injury” by disclosing the flowcharts. J.A. 1243. So it only sought reasonable royalty 

damages. To obtain this relief, the district court said AirFacts needed to show that 

Amezaga put the flowcharts to “commercial use.” But the way Amezaga used the 

flowcharts—as a work sample for his job application—was personal, not commercial. For 

that reason, the court declined to award damages. 

Because we conclude “commercial use” is not a threshold requirement to obtaining 

reasonable royalty damages under Maryland law, we vacate the district court’s ruling and 

remand.

8 On this claim, AirFacts alleges actual damages beyond costs and fees. The 

company alleges that Alaska Airlines “required AirFacts, as a condition to sale, to 

redevelop and modify the Proration software to overcome the data breach.” Appellant’s 

Br. at 43. On remand, the district court should consider whether the record supports this 

claim, and if so, whether redevelopment damages are justified under the agreement. 
15

B.

Case law addressing royalty damages for misappropriating trade secrets is sparse. 

The leading case is University Computing Co. v. Lykes-Youngstown Corp., 504 F.2d 518 

(5th Cir. 1974). There, the Fifth Circuit said that when “the secret has not been destroyed” 

and “the plaintiff is unable to prove specific injury,” courts can calculate reasonable royalty 

damages by “measur[ing] the value of the secret to the defendant.” Id. at 536. Specifically,

[b]ecause the primary concern in most cases is to measure the value to the 

defendant of what he actually obtained from the plaintiff, the proper measure 

is to calculate what the parties would have agreed to as a fair price for 

licensing the defendant to put the trade secret to the use the defendant 

intended at the time the misappropriation took place.

Id. at 539.

The University Computing court added that, for a plaintiff to recover royalty 

damages, “[t]he defendant must have actually put the trade secret to some commercial use.” 

Id. The district court relied on this passage from University Computing to impose 

“commercial use” as a “threshold requirement for obtaining reasonable royalty damages.”

AirFacts, 502 F. Supp. 3d at 1042 (quoting Steves & Sons, Inc. v. JELD-WEN, Inc., No. 

3:16-cv-545, 2018 WL 2172502, at *8 (E.D. Va. May 10, 2018)).

But University Computing only considered a common law claim for 

misappropriating a trade secret. It didn’t interpret a statute, as we do here. And the 

Maryland Uniform Trade Secrets Act authorizes reasonable royalty damages “[i]n lieu of 

damages measured by any other methods . . . for a misappropriator’s unauthorized 

disclosure or use of a trade secret.” Md. Code Com. Law § 11-1203(c) (emphasis added). 

Because the Act expressly permits royalty damages for mere disclosure, we can’t condition 
16

such awards on a defendant putting a trade secret to commercial use. Cf. Moore v. 

RealPage Util. Mgmt., Inc., 264 A.3d 700, 706 (Md. 2021) (statutory interpretation begins 

with “looking to the normal, plain meaning of the language of the statute, reading the 

statute as a whole to ensure that no word, clause, sentence or phrase is rendered surplusage, 

superfluous, meaningless or nugatory” (cleaned up)). 

The Tenth Circuit reached the same conclusion in StorageCraft Technology Corp. 

v. Kirby, 744 F.3d 1183 (10th Cir. 2014). There, the court also considered whether “a trade 

secret plaintiff [could] seek and obtain a ‘reasonable royalty’ measure of damages . . . 

without proving the misappropriating defendant made commercial use of the secret.” Id.

at 1185. Like the Maryland Act, “Utah’s trade secret statute . . . expressly allows a 

reasonable royalty measure of damages when the misappropriator uses or discloses the 

trade secret.” Id. And as here, no one in StorageCraft disputed the defendant disclosed a 

trade secret to another company. Id.

StorageCraft held that a plaintiff seeking reasonable royalty damages under the 

statute wasn’t required to prove the defendant put a trade secret to commercial use. It 

explained that “nothing in the state’s trade secret statute categorically restricts the 

availability of ‘reasonable royalty’ damages to cases in which the misappropriator used a 

trade secret commercially rather than disclosed it to others.” Id. at 1186. And though such 

damages might not be “the most sensible remedy” in every case, it was “enough for [the]

court to recognize and respect Utah’s policy choice to permit ‘reasonable royalty’ awards 

as a ‘general option’ in ‘disclosure’ cases.” Id. at 1187. So too here.
17

But our holding is limited. We reject only the district court’s dispositive ruling that 

AirFacts was ineligible for reasonable royalty damages because it failed to prove Amezaga 

put the flowcharts to commercial use. That’s not to say AirFacts is entitled to royalty 

damages or that the amount it requests, $440,067, is reasonable. Nor do we pass judgment 

on the district court’s view that “the evidence undermines [AirFacts’s expert’s] reasonable 

royalty calculation.” AirFacts, 502 F. Supp. 3d at 1044. That will all be for the district 

court to decide on remand.

There’s no one-size-fits-all approach to calculating reasonable royalty damages. 

“[E]very case requires a flexible and imaginative approach.” University Computing, 504 

F.2d at 538. And in this respect, University Computing is instructive. On remand, the 

district court should determine “what a fair licensing price [for the flowcharts] would have 

been.” Id. at 539. In doing so, it may consider various factors, including:

the resulting and foreseeable changes in the parties’ competitive posture; 

th[e] prices past purchasers or licensees may have paid; the total value of the 

secret to the plaintiff, including the plaintiff’s development costs and the 

importance of the secret to the plaintiff’s business; the nature and extent of 

the use the defendant intended for the secret; and finally whatever other 

unique factors in the particular case which might have affected the parties’

agreement, such as the ready availability of alternative processes.

Id. at 539. 

Despite our ruling that putting a trade secret to commercial use is not a threshold 

requirement to obtaining royalty damages under the Maryland Uniform Trade Secrets Act, 

the district court may factor how Amezaga used the flowcharts into its analysis on remand. 

Beyond that, we rely on the court to determine which other factors are relevant here, 
18

consider the parties’ evidence, and decide what (if anything) AirFacts deserves in 

reasonable royalty damages.

V.

For these reasons, the district court’s judgment is

AFFIRMED IN PART, REVERSED IN PART, 

VACATED IN PART, AND REMANDED.