Filed 7/17/13 Jasmine Networds v. Marvell Semiconductor CA6 

NOT TO BE PUBLISHED IN OFFICIAL REPORTS 

California Rules of Court, rule 8.1115(a), prohibits courts and parties from citing or relying on opinions not certified for 

publication or ordered published, except as specified by rule 8.1115(b). This opinion has not been certified for publication 

or ordered published for purposes of rule 8.1115. 

IN THE COURT OF APPEAL OF THE STATE OF CALIFORNIA 

SIXTH APPELLATE DISTRICT 

JASMINE NETWORKS, INC., 

Plaintiff and Appellant, 

v. 

MARVELL SEMICONDUCTOR, INC., 

Defendant and Respondent. 

 H036684 

 (Santa Clara County 

 Super. Ct. No. CV801411) 

Appellant Jasmine Networks, Inc. (Jasmine) appeals from a judgment entered after 

a jury verdict in favor of respondent Marvell Semiconductor, Inc. (Marvell). Jasmine 

sued Marvell on three primary claims: misappropriation of trade secrets, breach of 

contract and the implied covenant of good faith and fair dealing, and intentional 

interference with contractual relations. After a trial, a jury returned a verdict in favor of 

Marvell on all of Jasmine’s causes of action. On appeal, Jasmine argues that the trial 

court erred in denying its motion for a judgment notwithstanding the verdict (JNOV) 

because Marvell utilized Jasmine’s trade secrets as a matter of law when it discussed 

potential liability for using Jasmine’s trade secrets in a recorded voicemail. Second, 

Jasmine argues that the jury’s verdict should be reversed because the trial court 

incorrectly failed to give preclusive effect to Marvell’s voluntary dismissal of its crosscomplaint with prejudice. 

 We find that the trial court did not err in denying Jasmine’s motion for a new trial 

as the motion was primarily based on a legal theory not tried before the jury and premised 
2

upon disputed facts. Furthermore, we find that Jasmine’s theory that Marvell’s voicemail 

constituted “use” of a trade secret is without merit. Additionally, we determine that 

Marvell’s evidence of Jasmine’s alleged wrongdoing in the development of JSLIP was 

not barred under the doctrine of res judicata, and that the trial court did not err in 

declining to grant Jasmine’s pretrial motion in limine to exclude the evidence. 

Accordingly, we affirm the judgment. 

FACTUAL BACKGROUND

 Jasmine and Marvell are both technology companies with a focus on developing 

semiconductor chips. Jasmine represented that it had developed a packet switch fabric. 

A packet switch fabric is a code used in an Internet router that directs the flow of 

information packets. There are two components to a packet switch fabric, a switch and a 

scheduler. A switch directs incoming information to an outgoing link. A scheduler 

determines what sequence each packet of information will be delivered so that the 

information packets do not “collide,” rendering the information corrupt. A scheduler is 

vitally important to a router, as the efficiency of the scheduler ultimately impacts the 

router speed. Jasmine’s scheduler was named JSLIP.1

 

The Development of Jasmine’s JSLIP Scheduler 

 Prior to the development of JSLIP, Dr. Nicholas McKeown developed a scheduler 

called ISLIP, which was patented by the Regents of the University of California as 

McKeown developed the code as a Ph.D. student at the University of California, 

Berkeley. Also prior to the development of JSLIP, McKeown developed a scheduler 

called ESLIP while working at Cisco, another technology company, which Cisco then 

 1

 The record contains various iterations of the term “JSLIP.” Some parts of the 

record indicate that the code is spelled J-Slip, and others indicate that it is JSLIP. For 

clarity, we will hereafter refer to the code as JSLIP. 
3

patented.2

 Cisco obtained a license from the Regents of the University of California for 

ISLIP, because though the company owned a patent on ESLIP, using ESLIP would 

invoke ISLIP technology. McKeown is now a professor at Stanford University. 

 Jasmine engineer Patrick Murphy and a friend, Doug Chang, a graduate student at 

Stanford University, discussed methods to obtain the ESLIP and ISLIP codes when 

Murphy was developing JSLIP. After some time, Chang and Murphy decided that 

Murphy could download the code off of a Stanford University computer, so Murphy 

visited the Stanford campus one weekend, accessed a computer, and downloaded the 

ISLIP code. Murphy may have also received some sort of information about McKeown’s 

other scheduler, ESLIP.3

 

 McKeown’s testimony at trial confirmed that there were documents about ISLIP 

that were freely available on the Internet, including code. However, as McKeown 

described, the free availability of the code on the Internet was “different from giving 

someone permission to use it.” McKeown further elaborated that “[i]t’s well-known to 

any professional engineer that you would need to go and get a license for any patented 

material before you would use it.” 

 Jasmine’s JSLIP code essentially incorporated ESLIP and ISLIP, which was 

altered by Jasmine engineers to omit any reference to McKeown’s programs. Murphy 

testified at trial that he sent e-mails to certain Jasmine developers instructing them to 

delete references to ISLIP and ESLIP. In one e-mail, Murphy told another Jasmine 

 2

 Like JSLIP, there are various spellings of ISLIP and ESLIP in the record. For 

clarity, we will hereafter refer to the code as ISLIP and ESLIP. 

3

 During trial, Murphy testified that he only downloaded ISLIP code, which is 

publicly available on the Internet. Nevertheless, Murphy sent an e-mail to Jasmine 

executives after his trip to Stanford, in which he stated that he had made changes to 

ESLIP. When asked about if he also took ESLIP code during the Stanford trip, Murphy 

answered that he only had ISLIP, which was licensable, and that he never possessed the 

ESLIP code. Murphy stated that ESLIP was not available on the Stanford server, and 

that he did not know why he wrote the e-mail referencing ESLIP. 
4

employee to go through the code and change the module names from what McKeown 

used in his original codes to something else. Murphy wrote, “If we don’t do this it will 

be very easy for anyone to see that all we’ve done is copy McKeown’s papers verbatim. 

[¶] Sorry for all the recommendations, but this document will be see[n] by [whomever] 

we partner with, and we need to make sure it’s different to some degree.” 

The Deal Between Jasmine and Marvell

 In March 2001, Jasmine approached Marvell about a possible business deal, as 

Marvell was interested in acquiring some of Jasmine’s intellectual property and assets, 

including its packet switch fabric technology. The parties signed a nondisclosure 

agreement on April 12, 2001. The nondisclosure agreement included a clause that 

Marvell would not “use any Confidential Information for any purpose except to evaluate 

and engage in discussions concerning a potential business relationship between [Jasmine] 

and Marvell.” During discussions regarding Jasmine’s packet switch fabric technology, 

Marvell questioned Jasmine about the similarity of their technology with ESLIP. In one 

exchange, Marvell asked: “How different is your multicast implementation [from 

ESLIP]?” Jasmine answered: “We don’t know since [ESLIP] is not very well 

documented. Only two paragraphs exist that explain how it’s supposed to work.” 

 Sometime in May 2001, Marvell’s focus shifted from developing a business 

relationship with Jasmine to acquiring the entirety of Jasmine’s application-specific 

integrated circuit (ASIC) division including the related intellectual property and the 

associated Jasmine employees. The Jasmine technology specifically at interest to 

Marvell included the packet switch fabric technology, including JSLIP, as well as a chip 

called a SONET (synchronized optical network) framer.4

 

 4

 The SONET chip processes data, and was originally designed to process voice 

data. Jasmine’s SONET chip was different as it concentrated on taking not only voice 

data, but large quantities of data from over the Internet. 
5

 Marvell made an initial offer to purchase Jasmine for $30 million in cash, with a 

$10 million guarantee flowing from Jasmine to Marvell for nonrecurring engineering 

charges, and a $10 million earn-out, with an estimated $20 million in stock options 

provided to certain Jasmine engineers. A letter was sent to Virginia Wei, senior director 

of legal and business affairs at Jasmine, indicating that this initial offer was preliminarily 

made without Marvell’s completion of its due diligence and was therefore not binding. 

Marvell’s letter further instructed Jasmine not to solicit additional offers from 

competitors at that time. 

 Later, Marvell lowered its bid for Jasmine’s ASIC division to $25 million after the 

initial offer, and after Jasmine unsuccessfully attempted to market itself to other 

companies for a competing bid. 

 The Voicemail 

 Jasmine and Marvell proceeded with negotiations regarding Marvell’s acquisition. 

Marvell replaced Manuel Alba, originally in charge of the business deal, with Kaushik 

Banerjee, head of Marvell’s own ASIC division, on August 15, 2001. Alba sent Banerjee 

a series of e-mails that detailed the ongoing business discussions, including due diligence 

issues between Jasmine and Marvell. The e-mails contained the signed nondisclosure 

agreement between Jasmine and Marvell. Nonetheless, Banerjee did not see the e-mail 

with the signed nondisclosure agreement, and became concerned that the two companies 

may have inadvertently shared trade secrets and other confidential information without 

some sort of arrangement. 

 Banerjee met with several other Marvell employees, including Eric Janofsky, 

Marvell’s patent counsel, and Matthew Gloss, Janofsky’s supervisor and Marvell’s 

general counsel. All three Marvell employees, Gloss, Janofsky, and Banerjee, gathered 

together and Gloss called Jasmine executive Virginia Wei. Gloss left Wei a voicemail in 

which he raised certain issues about Marvell and Jasmine’s business negotiations. 

However, Gloss did not end the call correctly when he finished leaving the voicemail 
6

intended for Wei, and without his knowledge the voicemail system continued to record a 

conversation between himself, Janofsky, and Banerjee that was presumably intended to 

be private. 

 In the voicemail, the three Marvell employees discussed possible repercussions, 

including civil and criminal penalties, if they incorporated some of Jasmine’s trade 

secrets into their technology. No specifics of any trade secrets were discussed in the 

voicemail, and the voicemail did not give a clear indication of what trade secrets the 

Marvell employees were discussing as part of their hypothetical situation. 

 The relevant part of the voicemail is as follows: 

 “[Gloss]: Yeah, but you know the problem is so if they’re dumping it into Tigo 

now, that’s a problem.[5]

 “[Janofsky]: Well, no it . . . . 

 “[Banerjee]: But we don’t know that for a fact. 

 “[Janofsky]: One, at least it’s not a criminal problem. I, you know . . . . 

 “[Banerjee]: Well, we don’t know that for a fact though, but we . . . . 

 “[Janofsky]: No, if they gave it to us it is not a criminal problem. 

 “[Gloss]: Yeah, but what did we induce, what did we solicit, what did we 

promise, what did we say . . . . 

 “[Janofsky]: I don’t think--it doesn’t look--Sehat doesn’t go to jail, obviously. 

 “[Gloss]: Sehat doesn’t go to jail. Manuel might go to jail; Manuel gets a black 

eye.[6] 

 “[Janofsky]: I don’t . . . . 

 5

 “Tigo” references a group of products that were being produced by Marvell 

Israel. 

6

 It is inferred from the voicemail that “Manuel” refers to Manuel Alba, the 

Marvell executive originally working on the business deal to acquire Jasmine. It is also 

inferred that “Sehat” refers to Sehat Sutardja, CEO and cofounder of Marvell. 
7

 “[Gloss]: Sure. Marvell VP out there promising big option grants in proposed 

pending acquisitions if technology is transferred in advance to speed development time so 

time to market goal can be reached. That’s what’s going on. 

 “[Janofsky]: I don’t see it going to a criminal level. I see it going to a severe 

civil, civil layer, but not . . . . 

 “[Gloss]: But still hits, would still hit the financial. 

 “[Banerjee]: But it would be okay if we pay them and we close the deal, right? 

 “[Janofsky]: Once the deal closes, it’s fine, but if they realize what they’re doing 

they could hold out for more. Use it as leverage, use it as blackmail. 

 “[Banerjee]: Right, but we don’t want to talk about it. 

 “[Janofsky]: No, we don’t want to talk about it . . . . But my concern twenty 

minutes ago was keeping Sehat out of jail. 

 “[Gloss]: Right. 

 “[Janofsky]: That was my concern. 

 “[Gloss]: Ok. 

 “[Janofsky]: You’ve alleviated that concern. I have other concerns, but Sehat in 

jail would not be a very nice thing. 

 “[Banerjee]: But Sehat is going to jail because he got a . . . ? 

 “[Gloss]: CEO . . . Command responsibility. 

 “[Janofsky]: CEO. If we took that IP on the pretense of just evaluating it, and put 

it in our product . . . . 

 “[Banerjee]: But we don’t know that part. 

 “[Janofsky]: But they gave it to us, you know. We don’t know. But it sounded . . 

. . 

 “[Banerjee]: You are making a deduction that it’s gone into Tigo. 
8

 “[Janofsky]: No, no. I am just saying if it did, from what Matt was telling me . . . 

we got it. You . . . . As I said, you made this story a little clearer and I don’t think it rises 

to the criminal level. 

 “[Banerjee]: Yeah I mean, all I, if you look at it you begin to say hey look it was 

part of technical due diligence. [¶] . . . [¶] 

 “[Gloss]: But, you know, I’m going to sit down with Mr. Alba and talk to him 

about it because it was very poorly handled; there was no coordination with us, and it was 

this total cowboy effort, and it has the potential to absolutely spin into something more 

nefarious.” 

 After some time, another individual called Gloss on his phone, terminating the 

voicemail recording. 

The Aftermath of the Voicemail 

 Unsurprisingly, after Wei listened to the voicemail she grew alarmed about its 

contents and about Marvell’s possible misuse of Jasmine’s intellectual property. On 

August 22, 2001, Jasmine sent a letter to George Hervey, chief financial officer of 

Marvell. The letter disclosed to Marvell that Jasmine had discovered, through statements 

made by Marvell personnel, that Marvell had misappropriated Jasmine’s trade secrets by 

incorporating Jasmine’s proprietary intellectual property into Marvell’s products. 

Jasmine stated that despite Marvell’s conduct, it still wished to proceed with business 

negotiations and that it would like to avoid litigation. Jasmine then proposed that 

Marvell pay Jasmine $20 million in cash, net of any fees, in exchange for a release from 

Jasmine for claims of trade secret misappropriation, breach of contract, and any other 

civil claims arising from Marvell’s alleged misconduct. Jasmine proposed that “[t]he 

transaction will be structured as an ‘as is’ asset acquisition directly from Jasmine.”7

 The 

 7

 Jasmine’s proposed price was $5 million higher in cash than Marvell’s previous 

offer, which had only included $15 million in cash. 
9

letter additionally specified that the offer would expire several days later, at 3:00 p.m. on 

August 24. 

 Marvell responded to Jasmine’s accusations on August 24, 2001. In a letter, 

Marvell denied Jasmine’s accusation of misappropriation by Marvell employees. 

Unequivocally, the letter asserted that “[Marvell has] not and will not incorporate any of 

Jasmine’s proprietary information into any of Marvell’s products without an appropriate 

agreement between our two companies permitting such activity.” Marvell further denied 

violating the signed nondisclosure agreement, and offered Jasmine “immediate and 

reasonable access” to Marvell’s facilities and employees to corroborate its assertion. 

Marvell rejected Jasmine’s offer, and urged Jasmine to initiate contact before August 27, 

2001, if it still wished to continue discussions over the acquisition of Jasmine’s ASIC 

division. Marvell further assured Jasmine that if discussions were not initiated, it would 

return all of Jasmine’s confidential information in accordance with the nondisclosure 

agreement. 

 Jasmine contacted Marvell on August 28, 2001, seeking to proceed with the deal 

on the “old economic terms.” However, due to declining market conditions, Marvell 

concluded that it could no longer proceed with the acquisition of Jasmine’s ASIC group, 

and ceased discussions. Marvell sent a letter to Jasmine dated August 31, 2001, and 

attached a “Certificate of Destruction and Return of Confidential Information.” Marvell 

certified that it had, through due inquiry and diligence, returned all the confidential 

information it held from Jasmine within its possession as listed on a schedule attached to 

the certificate. Marvell asserted that the items listed on the schedule were all of the 

confidential information received from Jasmine pursuant to the nondisclosure agreement, 

and that it had destroyed and deleted all of the tangible confidential information from 

Marvell’s manual files and nonelectronic storage, which was not otherwise returned to 

Jasmine with the letter. The certificate further asserted that Marvell had destroyed all 

intangible and electronic files containing the confidential information received pursuant 
10

to the nondisclosure agreement. Despite the representations in the certificate, Marvell 

attorney Janofsky retained some of the confidential information with the company’s legal 

team. 

Jasmine’s Bankruptcy

 In 2001, Jasmine discovered that several of its ASIC group employees were 

allegedly conspiring to leave the company and to start their own business called 

“CoolComm.” In a typed business strategy, Jasmine employees, including Murphy, 

indicated that they would create this company as an exclusive consulting business for 

Marvell, developing ASIC chips. Based on the business plan, Marvell would pay the 

employees’ salaries and indemnify them against lawsuits brought by Jasmine. 

CoolComm never became a viable company of its own, and Jasmine employees never 

followed through with the business strategy. It was unclear whether or not Marvell 

executives possessed knowledge of this business plan, as fellow Jasmine engineer 

Richard Sowell testified at trial that though Murphy presented him with the typed 

business plan, Sowell rejected the idea and told Murphy not to pursue it any further. 

Sowell stated on the record that to his knowledge, Murphy did not follow through with 

pursuing the business plan. 

 In mid September of 2001, Jasmine terminated the members of its ASIC group. 

Jasmine declared bankruptcy in 2002, and thereafter sold its remaining assets, including 

its technology and intellectual property, to Teradiant Networks for $300,000. 

PROCEDURAL BACKGROUND

The Complaint and Cross-complaint 

 On September 12, 2001, Jasmine filed a complaint against Marvell and several of 

its former employees in its ASIC division, including JSLIP designer Patrick Murphy. 

The complaint alleged that Jasmine had discovered a “conspiracy between many of its 

trusted employees and Marvell Semiconductor, Inc.” to steal one of Jasmine’s trade 

secrets and to undermine the multi-million dollar sale deal. The complaint cited to the 
11

inadvertent voicemail left by Gloss, Janofsky, and Banerjee as evidence of Marvell’s 

alleged wrongdoing. Jasmine sought relief under 11 causes of action including 

misappropriation of trade secrets in violation of the Uniform Trade Secrets Act (UTSA), 

Civil Code sections 3426 through 3426.11, against all defendants, breach of fiduciary 

duty against Jasmine employees Richard Sowell and Murphy, breach of contract against 

all defendants, and breach of the implied covenant of good faith and fair dealing against 

all defendants. 

 On December 28, 2001, Marvell filed an application for a preliminary injunction, 

seeking to enjoin Jasmine from disclosing the contents of the recorded voicemail. 

Marvell characterized the voicemail as containing privileged attorney-client 

communications between Marvell and its attorneys. Marvell also requested that the trial 

court seal the privileged communications, and strike all portions of the first amended 

complaint referring to the privileged communications. The trial court granted the 

preliminary injunction the same day, and also granted Marvell’s motion to strike.8

 

Jasmine filed a second amended complaint on January 11, 2002. Marvell answered on 

February 15, 2002, with a general denial. The answer also raised numerous affirmative 

defenses, including the defense of unclean hands.9

 

 8

 Jasmine appealed the trial court’s order granting the preliminary injunction 

barring Jasmine from using the contents of the voicemail in its complaint. On appeal, 

this court reversed the trial court’s injunction, finding that any attorney-client 

communication between Marvell and its attorneys were waived, and that regardless, 

Jasmine had sufficiently shown a prima facie case of fraud that fit within the crime-fraud 

exception of the attorney-client privilege. (Jasmine Networks, Inc. v. Marvell 

Semiconductor, Inc. (2004) H023991, previously published at 117 Cal.App.4th 794.) 

The opinion in this case was depublished after the California Supreme Court granted 

review on July 21, 2004. (Ibid.) The Supreme Court later dismissed review. (Jasmine 

Networks, Inc. v. Marvell Semiconductor, Inc. (2008) S124914.) 

9

 “The [unclean hands] doctrine demands that a plaintiff act fairly in the matter for 

which he seeks a remedy. He must come into court with clean hands, and keep them 

clean, or he will be denied relief, regardless of the merits of his claim.” (Kendall-Jackson 

(continued) 
12

 In addition to its answer, Marvell filed a cross-complaint. The cross-complaint 

stated causes of action for fraud, fraudulent concealment, breach of contract, breach of 

the implied covenant of good faith and fair dealing. With respect to the cause of action 

for fraud, Marvell alleged that Jasmine employees, including Murphy, falsely and 

fraudulently represented to Marvell that Jasmine had developed a propriety program 

called JSLIP. Marvell asserted that Jasmine did not develop JSLIP independently, and 

that in fact Jasmine misappropriated the JSLIP program by taking information from 

McKeown’s patented ESLIP and ISLIP programs. Marvell further alleged that Jasmine 

breached its contract to Marvell by failing to abide by the terms of the nondisclosure 

agreement, as Jasmine refused to return Marvell’s confidential information including 

some of Marvell’s intellectual property. Jasmine denied all of the allegations in the 

cross-complaint. 

 Prior to the commencement of the jury trial, Marvell sought to dismiss Jasmine’s 

complaint on the basis that Jasmine forfeited its standing to pursue its claims of trade 

secret misappropriation when it sold all rights to its trade secrets and all of its other 

intellectual properties when it declared bankruptcy. (Jasmine Networks, Inc. v. Superior 

Court (2009) 180 Cal.App.4th 980, 986.) The trial court granted Marvell’s dismissal of 

Jasmine’s complaint, and Jasmine appealed. (Ibid.) This court issued a writ of mandate 

directing the trial court to reverse its dismissal and to reinstate Jasmine’s causes of action 

after finding that there was no “current ownership” rule when it came to trade secrets. 

(Id. at pp. 986, 1010-1011.) 

 

Winery, Ltd. v. Superior Court (1999) 76 Cal.App.4th 970, 978.) Marvell raised the 

doctrine of unclean hands as an affirmative defense in its answer to Jasmine’s complaint. 

Toward the end of the jury trial, Marvell requested the instruction be given to the jury, 

but the trial court denied the motion and exercised its discretion not to have this equitable 

defense submitted to the jury. Accordingly, no verdict was given as to whether or not 

Jasmine had “unclean hands.” 
13

 Marvell’s Dismissal of Cross-complaint and Jasmine’s Motion in Limine 

 Marvell dismissed its cross-complaint for fraud and fraudulent concealment with 

prejudice on September 22, 2010. On September 27, 2010, Jasmine filed a motion in 

limine to exclude evidence of Jasmine’s alleged wrongdoing in its development of JSLIP. 

Jasmine argued that under the doctrine of res judicata, once Marvell dismissed its crosscomplaint with prejudice, it was barred from litigating any of the claims it made in its 

cross-complaint in the current action. This included any arguments and evidence Marvell 

sought to introduce as part of its affirmative defenses. In its motion, Jasmine relied upon 

Torrey Pines Bank v. Superior Court (1989) 216 Cal.App.3d 813 (Torrey Pines Bank) 

and our court’s decision in Walsh v. West Valley Mission Community College Dist.

(1998) 66 Cal.App.4th 1532 (Walsh), for the proposition that the dismissal with prejudice 

terminated all offensive claims and affirmative defenses against Jasmine that Marvell 

advanced in its cross-complaint. Marvell opposed the motion and argued that Jasmine’s 

alleged fraud specifically negated several essential elements of Jasmine’s claims, 

including that Jasmine owned the trade secret, that the trade secret had economic value, 

and that Jasmine suffered damages as a result of Marvell’s alleged misappropriation. 

Therefore, Marvell argued that any evidence of fraud and fraudulent concealment 

supported its general denial, not its affirmative defenses. 

 The trial court agreed with Marvell, stating that “I think it is [Jasmine’s] burden to 

show that the plaintiff owned a trade secret; two, that the trade secrets have independent 

economic value; that the theft or compromise of the trade secrets caused the plaintiff 

economic damages. [¶] All of this evidence about [JSLIP], [ESLIP], you know, who 

created it, who owns it[,] I think is relevant to show ownership, value, damages, and so I 

understand plaintiff’s arguments, but I think this is a traverse, and I think it goes to the 

general denial.” The trial court thereafter distinguished the case from Torrey Pines Bank, 

and denied Jasmine’s motion in limine. 
14

The Trial and Verdict

Trial lasted approximately five weeks, from September 30, 2010, to November 9, 

2010, when the jury began its deliberations. At trial, Jasmine argued that Marvell 

wrongfully misappropriated Jasmine’s trade secrets, harming Jasmine in the process. 

According to Jasmine’s trial brief, one of the main trade secrets at issue that Marvell 

allegedly misappropriated was its RTL code. “RTL” stands for “register transfer 

language,” which is a general description for “any computer coding utilized to test the 

functionality of computer hardware,” such as Jasmine’s ASIC chips. Jasmine argued that 

its creation of the verified RTL code represented a real advance in the science of 

computer networking, and was something that possessed tremendous value. Jasmine did 

not list JSLIP as one of its trade secrets, but did admit that without JSLIP some of its 

technology, including its packet switch fabric, would not function. 

 Notably, Jasmine’s trial brief never argued that the voicemail left for Wei 

amounted to “use” of its trade secrets under the UTSA, but simply that the voicemail was 

evidence of improper acquisition, and further suggested improper use of Jasmine’s trade 

secrets. A Jasmine expert testified at trial that the damages incurred by Jasmine was in 

the amount of approximately $25 million. Jasmine also argued that Marvell violated the 

terms of the parties’ nondisclosure agreement when its employees failed to completely 

destroy all traces of Jasmine’s confidential information. Several Marvell employees 

testified that Marvell retained copies of certain documents provided by Jasmine with 

Marvell’s legal department in anticipation of a possible litigation. 

 Marvell rejected these arguments at trial, and asserted that deteriorating market 

conditions, not Marvell’s alleged misappropriation of trade secrets, was the cause of 

Jasmine’s eventual bankruptcy and downfall. Further, Marvell maintained that the 

voicemail at issue was not harmful to Jasmine, as it simply involved several Marvell 

employees discussing hypothetical situations regarding use of Jasmine’s trade secrets. 

Additionally, Marvell presented evidence that Jasmine could not have suffered any harm 
15

because it did not develop the JSLIP scheduler itself, since the company fraudulently and 

deceptively used McKeown’s ESLIP and ISLIP programs as the backbone of its own 

JSLIP scheduler. 

 The trial concluded on November 9, 2010, and the jury returned a verdict after 

approximately two weeks of deliberation. With regards to Jasmine’s first cause of action 

for misappropriation of its trade secrets, the jury found that Jasmine did own certain 

architectural design specifications used to implement its ASIC chip set, and that these 

were trade secrets. The jury, however, found that Marvell did not improperly acquire or 

use the trade secret. 

 With regards to Jasmine’s second cause of action for breach of contract, the jury 

found that Jasmine did not comply with all of the significant aspects of the nondisclosure 

agreement, and that Jasmine was not excused from having to comply with the 

nondisclosure agreement. The jury similarly found, on Jasmine’s claim of breach of 

implied covenant of good faith and fair dealing, that Jasmine failed to comply with all the 

significant aspects of the nondisclosure agreement. The jury did not reach the issue of 

whether Marvell failed to comply with all the significant portions of the nondisclosure 

agreement for any of these two claims. 

 As for Jasmine’s claim of intentional interference with a contractual relationship, 

the jury found that there was a contractual relationship between Jasmine and its ASIC 

employees, that Marvell knew of this contractual relationship, but that it did not intend to 

disrupt the performance of the contract. The trial court entered a judgment for Marvell 

pursuant to the jury’s verdict on January 7, 2011. 

The Posttrial Motions

 Jasmine filed a motion for a partial JNOV on January 20, 2011, pursuant to Code 

of Civil Procedure section 629. Jasmine argued that if a jury’s verdict is incorrect as a 

matter of law, the trial court must enter a JNOV in favor of the aggrieved party. 

(Oakland Raiders v. Oakland-Alameda County Coliseum, Inc. (2006) 144 Cal.App.4th 
16

1175, 1194.) In part, Jasmine argued that the voicemail left by Gloss, Banerjee, and 

Janofsky itself “constituted a misuse of Jasmine’s Misappropriated Trade Secrets.” 

Jasmine also argued that because Marvell dismissed its cross-complaint with prejudice, 

evidence of Jasmine’s alleged fraud should never have been admitted, and accordingly 

substantial evidence did not support some of the jury’s special verdict findings. 

 Jasmine filed a concurrent motion for a new trial on January 20, 2011. The 

motion for new trial asserted that Jasmine was entitled to a new trial because the jury’s 

special verdict answers were inconsistent, that the trial court committed reversible error 

by denying Jasmine’s earlier motion in limine to exclude evidence about the allegedly 

fraudulent development of its JSLIP scheduler, and that Marvell’s repeated allegations 

that Jasmine engaged in fraudulent activity deprived Jasmine of a fair trial. 

 Marvell opposed both of these posttrial motions. In its opposition to the motion 

for a JNOV, Marvell argued that Jasmine was raising, for the first time in the motion for 

JNOV, that Marvell’s voicemail in itself “used” Jasmine’s trade secrets. 

 On March 3, 2011, the trial court denied both of Jasmine’s motions. On March 

14, 2011, Jasmine filed a timely notice of appeal over the judgment entered on January 7, 

2011 and the trial court’s order denying its motion for JNOV on March 3, 2011. 

DISCUSSION

Jasmine pursues two main arguments on appeal. First, Jasmine argues that it is 

entitled to a partial JNOV because the voicemail left by Marvell employees by itself 

constituted a misappropriation of its trade secrets. Second, Jasmine contends that the 

judgment must be reversed because the trial court erred in failing to give Marvell’s 

dismissal with prejudice of its cross-complaint the preclusive effect that was required, 

which therefore allowed Marvell to erroneously introduce evidence of the allegedly 

fraudulent development of Jasmine’s JSLIP scheduler, resulting in prejudicial error 

against Jasmine. 
17

 For reasons that we will explain below, we find that neither of Jasmine’s 

arguments have merit. We address both of Jasmine’s principle contentions in turn. 

1. JNOV

 First, Jasmine argues the trial court erred in denying its motion for a JNOV on the 

basis that the voicemail left for Jasmine executive Wei constituted a misappropriation of 

trade secrets. In short, Jasmine’s first argument hinges on this court’s determination of 

whether or not the voicemail constituted “misappropriation” or “use” of Jasmine’s trade 

secrets in violation of the UTSA. According to Jasmine, any unauthorized use of trade 

secrets is a misappropriation, including transmittal of the voicemail, and accordingly the 

jury’s findings that there was no misappropriation cannot be reconciled with the law. 

However, we find that Jasmine waived this novel argument on appeal, as this contention 

is premised on a new theory of misappropriation that was not presented to the jury or the 

trial court below, and was raised for the first time in posttrial motions. Furthermore, even 

if we were to entertain Jasmine’s arguments on the merits, we find that simply referring 

to a trade secret in a conversation, without discussing any specifics of the trade secret or 

employing the trade secret in some manner, is not a “misappropriation” or “use” of the 

trade secret under the UTSA. 

Standard of Review

 On appeal, we review the trial court’s denial of a motion for a JNOV and examine 

if substantial evidence supports the original verdict. (Sweatman v. Department of 

Veterans Affairs (2001) 25 Cal.4th 62, 68.) A motion for a JNOV can only be granted by 

a court if, after reviewing the evidence in the light most favorable to the prevailing party, 

there is no substantial evidence to support the verdict. (Ibid.) 

Overview of the UTSA

 Before we turn to the merits of Jasmine’s claim, we first briefly overview the 

UTSA, which sets forth guidelines on what constitutes misappropriation or improper use 

of a trade secret. The UTSA is located in the Civil Code, sections 3426 through 3426.11, 
18

and allows plaintiffs to recover damages for improper use or misappropriation of trade 

secrets that they own. (Civ. Code, § 3426.3.) Civil Code section 3426.1 provides a 

definition of a trade secret, and specifies that a trade secret is “information, including a 

formula, pattern, compilation, program, device, method, technique, or process, that: [¶] 

(1) Derives independent economic value, actual or potential, from not being generally 

known to the public or other persons who can obtain economic value from its disclosure 

or use; and [¶] (2) Is the subject of efforts that are reasonable under the circumstances to 

maintain its secrecy.” (Id. § 3426.1, subd. (d).) 

 “A trade secret is misappropriated if a person (1) acquires a trade secret knowing 

or having reason to know that the trade secret has been acquired by ‘improper means,’ (2) 

discloses or uses a trade secret the person has acquired by ‘improper means’ or in 

violation of a nondisclosure obligation, (3) discloses or uses a trade secret the person 

knew or should have known was derived from another who had acquired it by improper 

means or who had a nondisclosure obligation or (4) discloses or uses a trade secret after 

learning that it is a trade secret but before a material change of position. (Civ. Code, § 

3426.1, subd. (b).)” (Ajaxo Inc. v. E*Trade Group Inc. (2005) 135 Cal.App.4th 21, 66 

(Ajaxo).) 

 In sum, under the UTSA, in order to sufficiently state a cause of action of trade 

secret misappropriation, the plaintiff must demonstrate three essential elements (1) it 

owned a trade secret of economic value, (2) that the defendant in question somehow 

acquired, used, or disclosed the plaintiff’s trade secret through improper means as 

described above, and (3) there was resulting harm. (CytoDyn of New Mexico, Inc. v. 

Amerimmune Pharmaceuticals, Inc. (2008) 160 Cal.App.4th 288, 297.) 

 The UTSA does not define “use,” but rather “leaves their delineation to be 

adjudicated in light of the purposes and other provisions of the act.” (Silvaco Data 

Systems v. Intel Corp. (2010) 184 Cal.App.4th 210, 222 (Silvaco), disapproved of on 

another ground in Kwikset Corp. v. Superior Court (2011) 51 Cal.4th 310, 337.) “As it 
19

appears in the act, the noun ‘use’ is surely intended in the ordinary sense, i.e., ‘[t]he act of 

employing a thing for any (esp. a profitable) purpose; the fact, state, or condition of being 

so employed; utilization or employment for or with some aim or purpose, application or 

conversion to some (esp. good or useful) end.’ (19 Oxford English Dict. [(2d ed. 1989)] 

p. 350, italics added.)” (Silvaco, supra, at p. 223.) Accordingly, a trade secret is “used” 

when it is exploited for an advantage, such as if a company takes a written computer code 

and incorporates it into its own program or product. (Id. at p. 224.) 

Forfeiture of Claim

 Preliminarily, Marvell contends that Jasmine forfeited its argument that the 

voicemail constituted “use” of a trade secret because it did not raise this specific 

argument below before the trial court. The theory Jasmine presented to the jury was that 

the voicemail suggested that misappropriation took place, not that the voicemail itself 

was misappropriation, and that Marvell breached the nondisclosure agreement when it 

failed to destroy all documents related to Jasmine’s trade secrets since it retained copies 

of some information with its attorneys. It is Jasmine’s position that because this new 

argument rests “solely on the irrefutable fact that Marvell left the voicemail” (italics 

added), it therefore presents as a question of law based on undisputed facts that this court 

should consider despite the failure to raise the argument below. However, Marvell 

contends that this new theory is actually premised on three disputed facts: that Marvell 

knew the trade secrets, that the voicemail was likely to result in injury, and that the 

voicemail discussion violated the nondisclosure agreement between the two companies. 

 On appeal, a litigant “may not change his or her position” and “assert a new 

theory.” (Brown v. Boren (1999) 74 Cal.App.4th 1303, 1316.) The reason behind this 

rationale is that doing so would be unfair to both the trial court and the opposing party, as 

the opposing party would have no opportunity to present contrary arguments below to the 

trial court and jury. (Ibid.) However, as the reviewing court, we retain the discretion to 

consider new theories on appeal if the theory is a matter of law that simply requires 
20

application to undisputed facts.10 (Ibid.) We agree with Marvell’s argument that 

Jasmine’s new theory of misappropriation is based on disputed facts that were not 

resolved by the jury. 

 From the face of Jasmine’s arguments, it appears that it is their contention that the 

voicemail itself constituted “use” of Jasmine’s trade secrets. Jasmine argues that since 

the existence of the voicemail is an undisputed fact, whether or not the voicemail’s 

existence therefore constitutes “use” is a question of law applied to undisputed facts. 

Jasmine further contends that Marvell need not have possessed actual knowledge of the 

trade secrets for it to “use” Jasmine’s trade secrets, and so it is of no relevance if 

Marvell’s possession of the trade secrets was a disputed fact. Jasmine argues that what 

matters is that the voicemail “clearly presumed that Marvell had Jasmine’s secrets.” In 

Jasmine’s own words, whether or not the participants in the voicemail actually knew of 

the trade secrets in question has no direct bearing on the issue at hand. 

 However, any “use” of a trade secret does not necessarily amount to 

misappropriation. A person only misappropriates a trade secret if the disclosure or use 

was improper, such as if the use violates a nondisclosure agreement. (Ajaxo, supra, 135 

Cal.App.4th at p. 66.) To that end, Jasmine contends that Marvell’s use of the trade 

secrets was improper because it violated the terms of the companies’ nondisclosure 

agreement, which specifies that Marvell will not “use any Confidential Information for 

any purpose except to evaluate and engage in discussions concerning a potential business 

relationship between [Jasmine] and Marvell.” Accordingly, Jasmine infers that the 

contents of the voicemail indisputedly violated the terms of the nondisclosure agreement, 

 10 Jasmine did raise this issue in its posttrial motion to the court for a JNOV and a 

motion for a new trial, but similarly, new theories may not be presented before the trial 

court for the first time on posttrial motions unless it is also a theory based on a question 

of law premised on undisputed facts. (Stevens v. Owens-Corning Fiberglas Corp. (1996) 

49 Cal.App.4th 1645, 1653-1654.) 
21

as Marvell did not use the trade secrets for the purpose of discussing a potential business 

relationship with Jasmine. Marvell argues that whether or not the voicemail constituted a 

violation of the nondisclosure agreement is actually a disputed factual issue that they 

were not able to present below. We agree. 

 Here, Jasmine and Marvell argued before the jury about whether or not Marvell 

violated the nondisclosure agreement when it failed to destroy all scintilla of confidential 

information provided by Jasmine. Marvell employees testified at trial that it retained 

some of the confidential information and turned it over to Marvell attorneys. Jasmine’s 

theory before the jury was that Marvell’s failure to destroy all documents constituted a 

violation of the nondisclosure agreement. However, the jury never reached a verdict on 

whether or not Marvell violated the nondisclosure agreement, as it found that Jasmine 

failed to fully comply with the nondisclosure agreement itself.11 Jasmine never asserted 

that Marvell’s voicemail discussion regarding the trade secret itself constituted a 

violation of the nondisclosure agreement, and in fact has raised this theory, like its theory 

that the voicemail “used” trade secrets under the UTSA, for the first time on appeal. It is 

a disputed fact which Jasmine’s theory relies upon.12

 11 The jury’s special verdict form contained a series of questions divided into 

different sections that tracked Jasmine’s claims against Marvell. Section II, titled “As to 

Jasmine’s cause of action for breach of contract against Marvell,” asked: “8. Did 

Jasmine do all, or substantially all, of the significant things that the contract, known as 

the NDA, required it to do?” The jury put a checkmark next to “no.” The next question 

read, “9. Was Jasmine excused from having to do all, or substantially all, of the 

significant things that the NDA required it to do?” The jury put a checkmark next to 

“no,” and was therefore instructed via the jury form to proceed to section III, skipping 

over the question of whether or not Marvell partook in any activity that may be a 

violation of the nondisclosure agreement. 

12 Marvell also argued that whether or not it actually possessed Jasmine’s trade 

secret was also a disputed fact. However, we determined that whether or not the 

voicemail violated the nondisclosure agreement signed by Jasmine and Marvell is a 

disputed fact. Accordingly, it is not necessary for us to address whether or not Marvell’s 

(continued) 
22

 We therefore find that Jasmine’s new theory of misappropriation relies on 

disputed facts, and is therefore not properly raised for the first time on appeal. 

Additionally, even if we were to consider this argument on the merits, we find that 

Jasmine’s argument that the voicemail itself constituted an inappropriate “use” of its 

trade secrets fails on the merits. 

Discussing a Trade Secret Is Not “Use” in this Context

 As discussed ante, the UTSA does not explicitly define “use,” though case law has 

interpreted “use” as the incorporation or dissemination of trade secrets for a defendant’s 

own advantage, such as taking the trade secret and applying it to the defendant’s own 

products or services for the defendant’s own advantage. (Silvaco, supra, 184 

Cal.App.4th at pp. 222-224.) Jasmine argues that “use” under the UTSA should actually 

be even more broadly defined, such that Marvell’s voicemail discussion of Jasmine’s 

technology would constitute a “use.” We decline to apply such a broad definition. 

 In part, Jasmine relies on Syngenta Crop Protection, Inc. v. Helliker (2006) 138 

Cal.App.4th 1135 (Syngenta), and argues that the holding in Syngenta is applicable in 

showing that a passive use of a trade secret still violates the UTSA. However, Jasmine’s 

reliance on Syngenta is misleading, as Syngenta is distinguishable on several grounds. 

Syngenta was a company that invented metalaxyl, which was used as a pesticide product. 

(Id. at pp. 1146-1147.) Syngenta registered the product with the United States 

Environmental Protection Agency (EPA) and the state Department of Pesticide 

Regulation (Department). (Ibid.) With its registration, Syngenta also submitted studies 

and other information on the chemistry, health effects, and environmental impact of the 

substance as required under law. (Ibid.) Syngenta stopped manufacturing metalaxyl and 

informed the Department that it would not authorize the consideration of any of the data 

 

possession of the trade secrets was also a disputed fact that was not properly raised in 

front of the jury. 
23

it previously submitted to support a product registration by another applicant. (Ibid.) 

Gustafson, another company, also manufactured pesticide products that contained 

metalaxyl and applied for registration with the Department. (Ibid.) In its registration 

materials, Gustafson did not refer the Department to any of the previously-submitted 

Syngenta studies, nor did it reference any of the previously submitted research. (Ibid.) In 

a similar situation, Dow, another pesticide company, also invented a substance which it 

submitted for registration with the Department, along with accompanying reports and 

studies. (Id. at p. 1147.) 

 Syngenta sued Gustafson and the Department, and Dow sued the Department, in 

part alleging that the Department misappropriated trade secrets when it considered past 

data submitted by Syngenta and Dow in support of the new product registrations. 

(Syngenta, supra, 138 Cal.App.4th at pp. 1148-1150.) All parties eventually moved for 

summary judgment, and the trial court sustained summary judgment for Syngenta on one 

cause of action, but sustained summary judgment for the Department and Gustafson on 

the remaining causes of action including the cause of action for violation of the UTSA, 

finding that the Department’s “ ‘passive consideration’ ” of the previously submitted data 

did not constitute “use.” (Id. at p. 1150.) The appellate court held that this finding by the 

trial court was in error, as the Department “used” data when it considered any of 

Syngenta and Dow’s previously submitted information. (Id. at p. 1172.) Once the 

Department considers the previously submitted data, it relieves the current applicant--

such as Gustafson--of the need to spend money to produce data results thereby 

benefitting the new applicant. (Ibid.) 

 Jasmine is correct in asserting that the term “use” under the UTSA has been 

broadly defined, as illustrated by the court’s interpretation in Syngenta. “Use” may 

certainly encompass many applications of a trade secret, including passive consideration 

of data. Furthermore, “[e]mploying the confidential information in manufacturing, 

production, research or development, marketing goods that embody the trade secret, or 
24

soliciting customers through the use of trade secret information, all constitute use.” 

(PMC, Inc. v. Kadisha (2000) 78 Cal.App.4th 1368, 1383.) Federal courts have also 

determined that “internal experimentation with trade secret information not resulting in a 

market product can constitute use.” (02 Micro Intern. Ltd. v. Monolithic Power Systems

(N.D.Cal. 2005) 399 F.Supp.2d 1064, 1072.) 

 Nonetheless, Jasmine’s current theory is dissimilar to the passive consideration of 

trade secrets employed by the Department in Syngenta. A passive consideration in 

violation of the UTSA would, under Syngenta, be properly illustrated as “using” the data 

by considering it without proper permission, thereby relieving a second company of the 

responsibility of providing the same data, to the second company’s economic benefit. 

(Syngenta, supra, 138 Cal.App.4th at p. 1172.) Here, Jasmine’s theory is not that 

Marvell passively considered Jasmine’s trade secrets when it developed its own 

technology. Rather, Jasmine argues that passive consideration or use of a trade secret 

occurs when someone merely references a trade secret in a conversation. 

 Jasmine’s definition of “use” cannot stand under the UTSA. We cannot find law 

directly on point that specifically discusses or analyzes the situation we have before us. 

In short, there is no specific law that has developed that clearly holds that an internal 

discussion of whether or not one company’s use of another company’s trade secret would 

constitute a “use” of a trade secret in of itself. However, in considering the case we have 

before us on the merits, we cannot read the UTSA in such a way that such conversations 

alone would constitute a misappropriation. Here, Janofsky and Gloss engaged in a 

conversation with their client, Banerjee, a Marvell employee, about a hypothetical 

situation about the potential legal implications of using Jasmine’s trade secrets. No 

specifics of Jasmine’s trade secrets were discussed in the voicemail, only that Jasmine 

possessed trade secrets which Marvell may have misappropriated. The voicemail itself, 

as Jasmine argued below to the jury, tends to suggest that Marvell may have 

misappropriated and used Jasmine’s trade secrets in violation of the UTSA. The 
25

voicemail itself is not a “use,” nor can it be. A discussion, in generic terms, of a 

company possessing a trade secret, and a hypothetical discussion of the possible 

ramifications against a company’s executives if a trade secret is somehow 

misappropriated, is not “use” as contemplated by the UTSA. 

 An illustration of such a limitation can be found in the recently decided federal 

district case, Brocade Communications Systems Inc. v. A10 Networks, Inc. (N.D. Cal. 

Feb. 12, 2013) __ F.Supp. __ [2013 WL 557102; 2013 U.S. Dist. LEXIS 18870] 

(Brocade). In Brocade, the federal district court contemplated the legality of an 

injunction imposed against A10 prohibiting the company from further misappropriating 

Brocade’s trade secrets after a jury found A10 liable for misappropriation. (Id. at p. *1.) 

A10 moved to modify portions of the injunction, which the trial court granted in part. 

(Ibid.) As it stood, the injunction as drafted would have prohibited A10’s attorneys from 

utilizing the trade secrets during the course of the litigation before the trial court and 

throughout the pendency of a future appeal. (Id. at p. *9.) A10 argued that this portion 

of the injunction should be modified so that its attorneys would be allowed to have access 

to the trade secrets during the course of the litigation, which Brocade conceded. (Ibid.) 

However, A10 further argued that its attorneys should have ongoing access to Brocade’s 

trade secrets while A10 modified its technology to design and remove the 

misappropriated trade secrets. (Ibid.) Brocade disagreed, arguing that any advice given 

to A10 by attorneys with knowledge of Brocade’s trade secrets would be using the trade 

secrets in violation of the UTSA. (Ibid.) The district court agreed with A10, finding that 

“use” under the UTSA did not extend to include an attorney advising its clients on how to 

avoid practicing the trade secrets. (Ibid.) 

 While we are not bound by the decision of the district court, we find its reasoning 

persuasive. In this instance, the voicemail left by Marvell indicated that Marvell 

attorneys were speculating as to the potential penalties to be imposed if the company was 

found to have misappropriated Jasmine’s trade secrets. Like the attorneys’ contemplated 
26

actions in Brocade (advising its clients on how to avoid using a trade secret), Marvell’s 

attorneys were advising and discussing the potential ramifications against Marvell 

executives if it did use the trade secret. Extending the UTSA to prohibit an attorney, 

even an attorney with knowledge of the trade secret, from contemplating the potential 

legal consequences for misappropriating a trade secret, would frustrate an attorney’s 

ability to serve and advise his or her clients. 

 The UTSA does not protect the amorphous concept of a “trade secret.” Most 

technology companies possess some sort of intellectual property or trade secret not 

commonly known to the public, which is the backbone of the company’s profitability and 

economic viability. Therefore, the fact that Jasmine possessed some sort of trade secret is 

an assumption that can be readily made. It follows that a generic conversation about the 

potential misuse of some sort of trade secret, without going into specifics of the trade 

secret, does not expose the listener to any confidential information, and more importantly 

does not “use” the information as contemplated by the UTSA. In short, the UTSA does 

not prevent misappropriation by prohibiting one company from discussing, in general 

terms, the fact that another company has a trade secret. The UTSA protects a company’s 

specific trade secret from misuse. In the factual situation presented before us, we find 

Jasmine’s theory that the voicemail itself constituted a misappropriation of its trade 

secrets flawed. 

 Further, Jasmine’s argument that the voicemail’s contents soured the relationship 

between the two parties, thereby costing Jasmine the economic benefit of a possible 

acquisition by Marvell, is similarly flawed. Certainly, the misunderstanding that 

occurred as a result of the voicemail likely imparted a negative impact on the burgeoning 

business relationship between the two companies. However, as Jasmine aptly 

characterized the voicemail in its trial brief, the voicemail by itself only provided 

evidence, or an inference, that some of Jasmine’s trade secrets may have been 

misappropriated. It is possible that the voicemail caused economic harm because it 
27

created panic and distrust between the two companies, but this harm was not incurred as a 

result of a misappropriation of trade secrets. 

 As a result, we find that Jasmine’s argument that the voicemail itself constituted a 

misappropriation of its trade secrets would fail on the merits, even if Jasmine had not 

forfeited the argument on appeal for failing to raise it below. We therefore find no error 

with the trial court’s denial of Jasmine’s motion for a JNOV. 

2. Marvell’s Dismissal of its Cross-complaint and Retraxit 

 Jasmine’s second main argument on appeal is that Marvell’s dismissal of its crosscomplaint with prejudice should have precluded the admission of any related evidence or 

claims previously raised in the dismissed cross-complaint. Jasmine argues that the trial 

court incorrectly denied its motion in limine to exclude all such evidence, and 

accordingly the jury trial was improperly tainted with erroneous evidence. Preliminarily, 

Marvell argues that Jasmine is precluded from raising this objection on appeal because it 

forfeited it below by failing to make specific objections to any of the evidence of 

Jasmine’s wrongdoing presented to the trial court and to the jury. We find merit to 

Marvell’s argument regarding forfeiture, and further find that even if we consider 

Jasmine’s contentions on the merits, they would fail. 

A. Standard of Review 

 Jasmine’s argument that the dismissal of the cross-complaint constituted a retraxit 

and therefore acted as a bar against inclusion of any fraud-related evidence is based upon 

undisputed facts. Accordingly, we review Jasmine’s argument de novo. (See Alpha 

Mechanical, Heating & Air Conditioning, Inc. v. Travelers Casualty & Surety Co. of 

America (2005) 133 Cal.App.4th 1319, 1326 (Alpha).)

B. Failure to Make Specific Objections to the Evidence

 As previously described, Jasmine made a pretrial motion in limine to exclude all 

evidence of wrongdoing stemming from Marvell’s dismissed cross-complaint. 

Thisincluded evidence of Jasmine’s allegedly fraudulent development of JSLIP. No 
28

specific evidence, such as a particular testimony or exhibit, was referenced in Jasmine’s 

motion in limine. In support of its pretrial motion, Jasmine argued that retraxit barred 

admission of the evidence, which is the same argument it makes now on appeal.13 

Marvell preliminarily contends that this argument is forfeited because Jasmine failed to 

make specific objections to the evidence introduced below. We agree. 

 Evidence Code section 353 states that a judgment or decision shall not be reversed 

due to an erroneous admission of evidence unless there is a clear record of a timely 

objection or a motion to exclude or to strike the evidence, and if the reviewing court 

determines that it was error to admit the evidence and the error resulted in a miscarriage 

of justice. A motion in limine to exclude evidence can satisfy the requirements of 

Evidence Code section 353 if “(1) a specific legal ground for exclusion is advanced and 

subsequently raised on appeal; (2) the motion is directed to a particular, identifiable body 

of evidence; and (3) the motion is made at a time before or during trial when the trial 

judge can determine the evidentiary question in its appropriate context. When such a 

motion is made and denied, the issue is preserved for appeal. On the other hand, if a 

motion in limine does not satisfy each of these requirements, a proper objection satisfying 

Evidence Code section 353 must be made to preserve the evidentiary issue for appeal.” 

(People v. Morris (1991) 53 Cal.3d 152, 190 (Morris), disapproved of on another ground 

by People v. Stansbury (1995) 9 Cal.4th 824, 830.) Ordinarily, a ruling on a motion in 

limine is not binding on a trial court, as it may reconsider its ruling when the 

objectionable evidence is offered. (People v. Karis (1988) 46 Cal.3d 612, 634, fn. 16.) A 

 13 Jasmine’s opening brief on appeal and its posttrial motion before the trial court 

discussed at length how Marvell’s dismissal of its cross-complaint with prejudice 

amounted to a retraxit, which therefore invoked the doctrine of res judicata, barring 

relitigation of any of the claims previously contained in the cross-complaint. A “retraxit” 

is what is now more commonly known as a dismissal with prejudice. (Torrey Pines 

Bank, supra, 216 Cal.App.3d at p. 820.) 
29

failure to object to the challenged evidence at the time it is offered normally constitutes a 

waiver unless it satisfies the requirements described by Morris. 

 The requirement at issue here is whether or not Jasmine’s motion in limine was 

specific enough to preserve its objections on appeal, despite the lack of reference to any 

specific testimony or exhibit. As Morris described, under Evidence Code section 353, 

those contesting the admissibility of evidence must make an objection to a specific body 

of evidence, such as a particular testimony or exhibit. For example, in Karlsson v. Ford 

Motor Co. (2006) 140 Cal.App.4th 1202 (Karlsson), the Second District determined that 

Ford’s unsuccessful motion in limine to prevent admission of evidence of its alleged 

discovery abuses did not properly preserve the objection for appellate review. (Id. at pp. 

1227-1228.) In Karlsson, Ford filed its motion in limine seeking to exclude evidence of 

its discovery abuses prior to any sanctions being filed, and prior to the filing of the 

discovery report that led to sanctions. For obvious reasons, Ford’s motion in limine 

failed to reference specific passages or identify any particular comments to be excluded, 

as Ford had no knowledge of what kind of evidence would be produced at the time the 

motion was filed. (Ibid.) Accordingly, the court of appeal deemed Ford’s objections 

waived, as the motion in limine was not sufficient under Evidence Code section 353. 

(Ibid.) 

 Similarly, in People v. Cowan (2010) 50 Cal.4th 401 (Cowan), the California 

Supreme Court considered a case where a criminal defendant made a pretrial blanket 

motion to bar “ ‘any and all’ postmortem photographs” of the victims in the case. (Id. at 

p. 476.) The defendant sought to exclude the evidence under Evidence Code section 352, 

which is subject to the same requirements of a specific objection to maintain 

appealability under Evidence Code section 353.14 In Cowan, the trial court overruled the 

 14 Evidence Code section 352 allows a court to exercise its discretion to exclude 

any evidence if the probative value of the evidence is substantially outweighed by the 

(continued) 
30

defendant’s preliminary motion to exclude all photographs of the victims on the basis of 

relevance, as the trial had not yet begun and therefore the court could not determine if all 

photographs would be irrelevant. (Cowan, supra, at p. 476.) However, in its ruling the 

court left open the possibility that upon a later objection, it would reconsider its ruling 

and exclude certain photographs from admission. (Ibid.) Later, the photographs were 

admitted, and defendant failed to object. (Ibid.) The Supreme Court thereafter 

determined that defendant forfeited his contentions on appeal because of his failure to 

object to the photographs when they were admitted. (Ibid.) 

 These cases illustrate that a blanket motion in limine seeking to exclude all types 

of evidence, including a motion in limine to exclude all evidence in a specific category, 

such as evidence of alleged discovery violations, or all postmortem photographs of 

victims, is not specific enough to satisfy Evidence Code section 353. (Morris, supra, 53 

Cal.3d at p. 190.) The motions made by the parties in Karlsson and Cowan identified a 

category of evidence to be excluded, but failed to identify a particular and identifiable 

body of evidence. We find the decision in Karlsson persuasive, and further find that the 

situation contemplated by the court in Karlsson similar to the one presented here. 

Jasmine, in its motion in limine before the trial court, did not specify exactly what 

evidence it sought to exclude, and only in broad strokes informed the court of its desire to 

exclude any evidence of its alleged fraud or wrongdoing in the development of JSLIP. 

Again, no particular, identifiable body of evidence was described in the motion in limine. 

 Undoubtedly, since the motion was filed before commencement of the actual jury 

trial began, Jasmine might not have known what kind of evidence would be presented at 

trial, and under what context Marvell would seek to introduce evidence. Nonetheless, 

 

probability that its admission would produce undue prejudice or mislead the jury, or if the 

probative value is substantially outweighed by the probability that admission of the 

evidence would be unduly time consuming. 
31

that is why motions in limine do not always preserve an objection to the admission of 

evidence on appeal. In order to preserve this objection on appeal, Jasmine would have 

had to voice its objection to the specific evidence it sought to exclude during trial, which 

it failed to do. 

 Jasmine argues that it did not forfeit its retraxit-related arguments here on appeal 

because after the trial court denied its motion in limine it was futile for it to pursue 

objections at trial. It is true that a party need not object when doing so would be futile. 

(See People v. Arias (1996) 13 Cal.4th 92, 159; People v. Sandoval (2001) 87 

Cal.App.4th 1425, 1433, fn. 1.) In this case, we do not find it unequivocal that an 

objection at trial would have been futile. A trial court may reconsider its ruling on a 

motion in limine during the course of the trial. (People v. Karis, supra, 46 Cal.3d at p. 

634, fn. 16.) Though the court made it clear that it believed that evidence of fraud and 

fraudulent concealment in the development of JSLIP was admissible on the basis that 

such evidence supported Marvell’s general denial and not its affirmative defenses, it did 

not make a ruling on each a specific body of evidence presented in a particular context at 

trial. 

 In part, Jasmine relies on our decision in Burch v. Gombos (2000) 82 Cal.App.4th 

352 (Burch), for its argument that an objection would have been futile and thus no 

objection was necessary to preserve the argument on appeal. Burch is not wholly 

applicable to the present case. In Burch, the appellant contended the trial court erred in 

permitting the respondents from introducing evidence of a disputed roadway’s public use 

because respondents had previously responded to a request for evidence regarding the 

same issue by admitting they had no evidence of a public use. (Id. at p. 355.) Prior to the 

commencement of the trial, appellants filed a motion in limine with the trial court arguing 

for exclusion of all evidence of recreational use of the disputed roadway prior to 1972. 

(Id. at p. 357.) During trial, a witness testified to recreational use of the roadway prior to 

1972, though appellant failed to object. (Ibid.) Another witness testified to another 
32

recreational use of the roadway, and appellant raised an objection and asked that her 

motion in limine be addressed. (Ibid.) The trial court denied the motion in limine. 

(Ibid.) At that point, this court surmised that “[w]hile [appellant] did not specifically 

object to any of this testimony, her motion in limine had already been denied and it 

obviously would have been futile to do so.” (Ibid.) 

 Jasmine claims that this case stands for the proposition that if a motion in limine is 

denied, a party to an action need not raise futile evidentiary objections in order to 

preserve appellate review. In the interest of judicial economy, it seems a fair rule that if

raising an objection after a failed motion in limine is futile, further objections need not be 

raised before the trial court. Nonetheless, as Cowan and Karlsson illustrate, a denial of a 

motion in limine does not necessarily render a future objection futile. In certain 

circumstances, as discussed in Burch, a denial of a motion in limine definitively indicates 

that all future objections will be futile. However, this is not always the case. In a similar 

argument to Jasmine’s present contention in Karlsson, Ford argued that it was excused 

from making any objections before the trial court because the trial court made it clear that 

the opposing party could discuss Ford’s concealment of evidence, and because the 

comments made by the trial court denying Ford’s posttrial motions for a new trial and 

JNOV indicated that the court would have overruled any objections. (Karlsson, supra, 

140 Cal.App.4th at p. 1229.) The appellate court determined that the statements Ford 

cited did not render the company excused from making timely objections. (Ibid.) 

 Like the appellate court’s determination in Karlsson, we find that Jasmine was not 

excused from making an objection on the basis that doing so would have been futile. 

Furthermore, we find that factually, Burch is dissimilar. First, the Burch appellant did in 

fact object to some of the specific pieces of contested evidence. Second, the Burch trial 

court denied the motion in limine unequivocally to allow admission of all disputed 

evidence. In contrast, here, Jasmine did not specifically point out what type of evidence 

it sought to exclude, be it testimony or exhibits. Jasmine’s trial counsel even stated 
33

before the trial court’s ruling on its motion in limine that it would reserve its objections 

for specific pieces of evidence for the actual trial itself. In arguing for the trial court’s 

grant of its motion in limine, Jasmine’s trial counsel remarked that “[w]e are asking you 

to rule that they can’t introduce evidence to prove that we’re frauds or, you know, are 

guilty of unclean hands. Now, we’re not asking--we’ll save our objections as the 

evidence is proffered, but the reason I filed this today was I was concerned about 

[Marvell’s] opening statement.” (Italics added.) Marvell asserts, and Jasmine does not 

dispute, that Jasmine never raised a specific objection to any of the theft/fraud evidence it 

sought to exclude under its motion in limine. 

 The trial court also did not make it unequivocally clear that raising a future 

objection to the evidence would be futile, only that it would deny the motion in limine 

insomuch as it believed such evidence was coming in to support Marvell’s general denial. 

An objection at the time the evidence was presented might have allowed the trial court to 

more accurately assess, given the context, whether or not the evidence was coming in to 

support a general denial or whether or not it was coming in to support an affirmative 

defense. Even now on appeal, Jasmine does not specifically identify each piece of 

evidence it now claims was erroneously admitted. Jasmine provides, in its brief, an 

overview of certain pieces of evidence it believes was erroneously admitted, but in no 

way does Jasmine provide an exhaustive list of all evidence it claims should have been 

barred. 

 However, even if Jasmine did not forfeit this contention by failing to object below, 

we determine that the trial court correctly found that evidence of Jasmine’s alleged fraud 

was admissible as part of Marvell’s general denial. 

C. Overview of Res Judicata and Effect of Voluntary Dismissal with Prejudice

 Res judicata gives “ ‘conclusive effect to a former judgment in a subsequent 

litigation involving the same controversy.’ ” (Boeken v. Philip Morris USA, Inc. (2010) 
34

48 Cal.4th 788, 797 (Boeken).) The doctrine of res judicata encompasses two different 

forms. 

 First, there is claim preclusion. Claim preclusion bars a second suit between the 

same parties on the same cause of action. (Boeken, supra, 48 Cal.4th at p. 797.) Second, 

there is issue preclusion, or collateral estoppel. Collateral estoppel occurs when a prior 

judgment in a different action acts as a bar against a second suit, and applies when certain 

requirements are met: “(1) the issue to be precluded must be identical to that decided in 

the prior proceeding; (2) the issue must have been actually litigated at that time; (3) the 

issue must have been necessarily decided; (4) the decision in the prior proceeding must 

be final and on the merits; and (5) the party against whom preclusion is sought must be in 

privity with the party to the former proceeding.” (People v. Garcia (2006) 39 Cal.4th 

1070, 1077.) 

 As our Supreme Court in Boeken stated, “for purposes of applying the doctrine of 

res judicata . . . a dismissal with prejudice is the equivalent of a final judgment on the 

merits, barring the entire cause of action.” (Boeken, supra, 48 Cal.4th at p. 793.) “The 

statutory term ‘with prejudice’ clearly means the plaintiff’s right of action is terminated 

and may not be revived. . . . [A] dismissal with prejudice . . . bars any future action on 

the same subject matter.” (Roybal v. University Ford (1989) 207 Cal.App.3d 1080, 1086-

1087.) “A retraxit arising from a dismissal with prejudice thus operates as a legal fiction, 

and it is given the same finality as if the matter were adjudicated and proceeded to a final 

judgment on the merits.” (Alpha, supra, 133 Cal.App.4th at p. 1331.) 

D. Jasmine’s Retraxit Argument

 On appeal, Jasmine argues that it was error for the trial court to allow Marvell to 

introduce, admit, or make reference to any evidence of Jasmine’s alleged wrongdoing or 

fraudulent conduct during the development of JSLIP. Jasmine argues that since Marvell 

dismissed its cross-complaint for fraud with prejudice, it should have been barred from 

relitigating or bringing forth claims that were already brought in the cross-complaint. We 
35

disagree with this view, and find that the trial court’s denial of Jasmine’s motion in 

limine was not in error. 

 In some instances, dismissal of a complaint with prejudice will bar a party from 

raising the same arguments again in a separate case under the doctrine of res judicata, or 

collateral estoppel. Here, Jasmine argues that the Fourth District’s decision in Torrey 

Pines Bank, supra, 216 Cal.App.3d 813, is applicable as evidence of Jasmine’s 

wrongdoing was improperly admitted in support for Marvell’s affirmative defenses. In 

Torrey Pines Bank, the Fourth Appellate District determined that dismissing a case with 

prejudice effectively bars a party from asserting the same factual claims in the dismissed 

case in an affirmative defense. In Torrey Pines Bank, a guarantor dismissed with 

prejudice a guarantor’s case against a bank for several claims, including breach of 

fiduciary duty and misrepresentation. (Id. at p. 817.) The bank had earlier filed a 

complaint against the guarantor in a separate action, seeking enforcement of the 

guarantor’s continuing guaranty to the bank for a loan. (Ibid.) After the guarantor 

dismissed his action, the bank moved for summary judgment against the guarantor, 

arguing that the guarantor’s dismissal of his action with prejudice barred him from 

bringing the same claims as affirmative defenses in response to the bank’s complaint. 

(Id. at p. 818.) The trial court granted summary judgment on some of the bank’s issues, 

but declined to grant summary judgment on other issues, finding that the retraxit doctrine 

did not bar the plaintiff’s affirmative defenses. (Ibid.) The bank petitioned for a writ of 

mandate, which the Fourth Appellate District granted after finding that the guarantor’s 

affirmative defenses were barred by the principles of res judicata. (Id. at pp. 819-820.) 

 In its reasoning, the appellate court noted that res judicata not only bars a renewed 

claim over a litigated, and resolved, issue, but also bars “ ‘subsequent litigation of all 

issues which were or could have been raised in the original suit.’ ” (Torrey Pines Bank, 

supra, 216 Cal.App.3d at p. 821.) Accordingly, a final judgment on the merits on a 
36

particular issue, such as a voluntary dismissal with prejudice, would be conclusive 

between same parties. (Ibid.) 

 However, this court has made an important distinction that the holding in Torrey 

Pines Bank is confined only to those cases where a party is asserting affirmative defenses 

based upon factual claims barred by the doctrine of retraxit. In Walsh, supra, 66 

Cal.App.4th 1532, we expressly stated that the Torrey Pines Bank decision held that “a 

party who dismisses his or her lawsuit with prejudice may not assert affirmative defenses 

in the nature of new matter where those affirmative defenses concern the same nucleus of 

operative facts as were alleged in the dismissed action.” (Id. at p. 1545.) 

Walsh involved a suit between Sergio Construction, Inc. (SCI) and West Valley 

Mission Community College District (District). (Walsh, supra, 66 Cal.App.4th at p. 

1534.) SCI contracted with the District to build a gymnasium on its college campus, a 

contract that was later terminated when SCI failed to complete the construction project 

within a year. (Id. at p. 1535.) SCI sued the District for breach of contract, and the 

District filed a cross-complaint against SCI. (Id. at p. 1536.) The cross-complaint was 

settled by SCI’s insurer and its bonding company, and the District dismissed its crosscomplaint with prejudice. (Id. at pp. 1536-1537.) SCI then moved for judgment on the 

pleadings, arguing that since the District dismissed its cross-complaint with prejudice, its 

dismissal acted as a retraxit which would therefore render it impossible for the District to 

contest SCI’s claims. (Id. at pp. 1537, 1541.) The trial court denied the motion, and the 

case proceeded to trial with a jury returning verdict for the District, granting it attorney 

fees of approximately $600,000. (Ibid.) SCI appealed, and we affirmed the judgment. 

(Id. at p. 1548.) 

 In order for SCI to prevail on its claim of breach of contract, it would have needed 

to plead and prove several elements: a contract existed, SCI performed on the contract or 

was excused from performance, the District breached the contract, and SCI incurred 

damages. (Walsh, supra, 66 Cal.App.4th at p. 1545.) The District filed a general denial 
37

to SCI’s complaint, which meant it denied, in one sentence, all allegations in the 

complaint. (Ibid.) SCI’s argument, that the District should have been barred from 

presenting evidence of SCI’s breach because it dismissed its cross-complaint with 

prejudice, was therefore flawed. As we surmised in Walsh, this evidence went directly 

towards disproving one or more of the essential elements of SCI’s complaint. (Id. at p. 

1546.) In Walsh, we considered and distinguished Torrey Pines Bank. We found that the 

guarantor in Torrey Pines Bank “did not deny the allegations in the bank’s complaint. 

Rather, he attempted to establish a defense independent of those allegations by asserting 

affirmative defenses, which brought ‘new matter’ into the lawsuit.” (Id. at p. 1547.) In 

contrast, the District did not attempt to bring “new matter” into the lawsuit, but rather 

presented evidence to refute the allegations brought by SCI in its complaint. (Ibid.) 

 Jasmine argues that we should reconsider our decision in Walsh, as our Supreme 

Court’s more recent decision in Boeken, supra, 48 Cal.4th 788, holds that a voluntary 

dismissal with prejudice bars any future action on the same issue. (Id. at p. 793.) 

However, Jasmine misapplies the holding in Boeken. In Boeken, a wife filed suit against 

cigarette manufacturer Philip Morris for loss of consortium. In a separate case, her 

husband, a longtime smoker, filed suit against Philip Morris for wrongfully causing his 

cancer. (Id. at p. 792.) The wife dismissed her suit for loss of consortium with prejudice 

several months after filing the action, and the record remained silent on her reasons for 

dismissal. (Id. at p. 793.) A year after dismissing her loss of consortium suit, and after 

her husband died from cancer, the wife brought a cause of action for wrongful death 

against Philip Morris. (Ibid.) Amongst her claims was a claim that she suffered from 

loss of love, companionship, and comfort. (Ibid.) Philip Morris demurred to the 

wrongful death cause of action, arguing that the wife’s dismissal with prejudice invoked 

the doctrine of res judicata, barring her new cause of action. (Ibid.) The trial court 

sustained the demurrer, and the Court of Appeal affirmed. (Ibid.) 
38

 The California Supreme Court affirmed the Court of Appeal’s decision. (Boeken, 

supra, 48 Cal.4th at p. 805.) In coming to its conclusion, the court first outlined the two 

different forms of res judicata, claim preclusion and issue preclusion. (Id. at p. 797.) The 

Boeken court recognized that in their particular situation they were concerned with claim 

preclusion and whether or not the wife’s dismissal of her first suit for loss of consortium 

acted as a bar against her second suit for wrongful death. (Ibid.) The court noted that 

when it came to issues of res judicata, the phrase “cause of action” has a “more precise 

meaning: The cause of action is the right to obtain redress for a harm suffered, regardless 

of the specific remedy sought or the legal theory (common law or statutory) advanced.” 

(Id. at p. 798.) Accordingly, a cause of action is based on the harm suffered by the 

plaintiff. In the wife’s case, the Supreme Court determined the primary right involved in 

both the loss of consortium suit and the wrongful death suit, insomuch as it sought 

damages for loss of companionship, was the same: the right not to be permanently and 

wrongfully deprived of her husband’s companionship and affection. (Id. at pp. 797, 804.) 

Accordingly, the Supreme Court determined that the wife’s second suit for wrongful 

death was precluded based on her dismissal with prejudice of her loss of consortium 

claim, despite the fact that it was based on a completely different legal theory. (Id. at p. 

804.) 

 The Boeken court explicitly considered the issue based upon claim preclusion, not 

issue preclusion. Here, we are concerned with issue preclusion. Marvell did not attempt 

to relitigate its fraud and misrepresentation claims by filing a new suit or cross-claim 

against Jasmine. Jasmine conflates and confuses the two forms of res judicata in arguing 

that Boeken is applicable. We are not considering whether or not a second claim can be 

brought when a first claim has already been adjudicated conclusively. Here, we are 

considering whether an issue, previously brought in a cross-complaint but dismissed with 

prejudice, may be raised as part of a party’s general denial in a separate litigation. This 
39

distinguishes this case from Boeken, and renders Jasmine’s argument on appeal similar to 

the parties’ contentions found in Torrey Pines Bank and Walsh. 

 Accordingly, despite the fact that in this case some of the issues were previously 

raised by Marvell in its dismissed cross-complaint, the doctrine of res judicata does not 

necessarily bar Marvell from introducing evidence of Jasmine’s alleged wrongdoing. If 

Marvell attempted to relitigate this issue by filing a new complaint against Jasmine 

alleging fraud, the claims would be barred under claim preclusion. Res judicata would 

also bar relitigation of this same claim if Marvell attempted to bring this action as an 

affirmative defense. (Torrey Pines, supra, 216 Cal.App.3d at p. 821.) However, under 

our decision in Walsh, supra, 66 Cal.App.4th at page 1545, if this evidence was brought 

to support Marvell’s general denial, it is not “new matter” and is thus properly 

introduced. 

 The issue is thus whether or not the evidence of Jasmine’s fraud and wrongdoing 

was correctly characterized by the trial court as part of Marvell’s general denial, or if it 

was, as Jasmine asserts, improperly introduced as part of Marvell’s affirmative defense. 

We find that it was properly introduced as part of Marvell’s general denial. 

 The difference between an affirmative defense and a general denial, as explained 

by this court in Walsh, is that “ ‘[u]nder Code of Civil Procedure section 431.30, 

subdivision (b)(2), the answer to a complaint must include “[a] statement of any new 

matter constituting a defense.” The phrase “new matter” refers to something relied on by 

a defendant which is not put in issue by the plaintiff. [Citation.] Thus, where matters are 

not responsive to essential allegations of the complaint, they must be raised in the answer 

as “new matter.” [Citation.] Where, however, the answer sets forth facts showing some 

essential allegation of the complaint is not true, such facts are not “new matter,” but only 

a traverse.’ ” (Walsh, supra, 66 Cal.App.4th at p. 1546.) 

 It is true that Marvell, in its answer to Jasmine’s complaint, asserted an affirmative 

defense of unclean hands, though the instructions for this defense were never given to the 
40

jury. However, as the trial court noted in its denial of Jasmine’s motion in limine, 

evidence of Jasmine’s wrongdoing supported Marvell’s general denial. As we discussed 

earlier, a proper cause of action for trade secret misappropriation under the UTSA must 

allege that the plaintiff company owned a trade secret, the defendant somehow 

misappropriated and used the trade secret through improper means, and there was a 

resulting harm to the plaintiff. (CytoDyn of New Mexico, Inc. v. Amerimmune 

Pharmaceuticals, Inc., supra, 160 Cal.App.4th at p. 297.) The evidence Marvell 

introduced at trial concerning Jasmine’s alleged wrongdoing and fraud in the 

development of JSLIP goes toward disproving that Jasmine possessed a trade secret of 

value, and that there was resulting harm to Jasmine as a result of the misappropriation. It 

follows that if Jasmine did not actually properly own the rights to JSLIP such that it was 

required to obtain a license to use the scheduler from Cisco, it would be difficult for 

Jasmine to prove that its trade secrets that relied upon the JSLIP scheduler had value, and 

that accordingly misappropriation of those trade secrets caused Jasmine harm. 

 Jasmine argues that this argument in part fails because it specifically excluded 

JSLIP as one of its listed trade secrets. However, during the trial Marvell sought to prove 

that many of Jasmine’s trade secrets would not function without JSLIP, including the 

RTL code which it claimed was its most important trade secret.15 As Marvell described 

before the court, proving that Jasmine did not own a trade secret that was of value would 

be part of its general denial against Jasmine’s claim of misappropriation. 

 In light of the circumstances of this particular case, we therefore agree with the 

trial court’s assessment that evidence of Jasmine’s alleged fraud and wrongdoing was a 

vital part of Marvell’s general denial, not its affirmative defense. This evidence is 

 15 The RTL code is comprised of individually numbered software, starting from 

No. 1 through No. 69. Numbers 2 through 39 of the software files referenced JSLIP. 

Jasmine’s trial counsel described the RTL code as being one of the company’s most 

valuable trade secrets in Jasmine’s trial brief. 
41

inextricably linked to whether or not Jasmine actually owned trade secrets that had 

monetary value, and whether or not Jasmine was therefore economically harmed by the 

purported misappropriation. 

 We therefore find no merit to Jasmine’s argument that the jury’s verdict should be 

reversed, as the trial court did not err in denying the motion in limine to exclude evidence 

of Jasmine’s alleged fraud. 

DISPOSITION

 The judgment is affirmed. Marvell is entitled to its costs on appeal. (Cal. Rules of 

Court, rule 8.278(a).) 

 

Premo, Acting P.J. 

WE CONCUR: 

 

 Elia, J. 

 

 Márquez, J.