FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ELI ATTIA; ELI ATTIA ARCHITECT 

PC,

Plaintiffs-Appellants,

v.

GOOGLE LLC; FLUX FACTORY, INC.;

LARRY PAGE; SERGEY BRIN;

SEBASTIAN THRUN; ERIC TELLER, 

AKA Astro Teller; MICHELLE 

KAUFMANN; JENNIFER CARLILE;

AUGUSTO ROMAN; NICHOLAS CHIM,

Defendants-Appellees.

No. 19-15771

D.C. No.

5:17-cv-06037-

BLF

OPINION

Appeal from the United States District Court

for the Northern District of California

Beth Labson Freeman, District Judge, Presiding

Argued and Submitted September 16, 2020

San Francisco, California

Filed December 16, 2020

Before: J. Clifford Wallace, A. Wallace Tashima, and

Bridget S. Bade, Circuit Judges.

Opinion by Judge Wallace
2 ATTIA V. GOOGLE

SUMMARY*

Trade Secrets

The panel affirmed the district court’s dismissal of 

claims brought under the Defend Trade Secrets Act of 2016 

and the Racketeer Influenced and Corrupt Organizations Act 

against Google, LLC, and other defendants by an architect 

and his firm.

The architect first sued Google in 2014 for state law trade 

secret and contract claims. After Congress enacted the 

DTSA in 2016, he added RICO and DTSA claims. The 

panel concluded that the DTSA claim was precluded by 

Google’s pre-enactment disclosures in the publication in 

2012 of patent applications containing plaintiff’s trade 

secrets. The panel held that the misappropriation of a trade 

secret prior to the enactment of the DTSA does not preclude 

a claim arising from post-enactment misappropriation or 

continued use of the same trade secret. Nonetheless, 

plaintiff lacked standing to assert a DTSA claim because 

Google’s 2012 patent applications placed the information in 

the public domain and necessarily extinguished its trade 

secret status. The panel rejected plaintiff’s argument that 

Google was equitably estopped from pointing to the 2012 

publication of its patent applications to defend against 

plaintiff’s DTSA claim.

Affirming the district court’s dismissal of plaintiff’s 

RICO and RICO conspiracy claims, the panel held that 

* This summary constitutes no part of the opinion of the court. It 

has been prepared by court staff for the convenience of the reader.
ATTIA V. GOOGLE 3

plaintiff failed to establish a pattern of racketeering because 

he did not identify two sufficiently related predicate acts.

COUNSEL

John E. Floyd and Jeffrey W. Chen, Bondurant Mixson & 

Elmore LLP, Atlanta, Georgia; Professor G. Robert Blakey 

Emeritus, Notre Dame Law School, Paradise Valley, 

Arizona; James W. Christian, Christian Smith & Jewell, 

Houston, Texas; Eric W. Buether, Beuther Joe & Carpenter 

LLC, Dallas, Texas; Jamie L. Dupree, Futterman Dupree 

Dodd Croley, San Francisco, California; for PlaintiffsAppellants.

Charles Tait Graves (argued), Shelby Pasarell Tsai, and 

Joshua A. Baskin, Wilson Sonsini Goodrich & Rosati P.C.,

San Francisco, California; David H. Kramer, Wilson Sonsini 

Goodrich & Rosati P.C., Palo Alto, California; for 

Defendants-Appellees Google LLC, Larry Page, Sergey 

Brin, Sebastian Thrun, and Eric Teller.

Robert Kent (argued) and Karen I. Boyd, Turner Boyd LLP,

Redwood City, California, for Defendants-Appellees Flux 

Factory, Inc.; Michelle Kaufmann; Jennifer Carlile; Augusto 

Roman; and Nicholas Chim.
4 ATTIA V. GOOGLE

OPINION

WALLACE, Circuit Judge:

In addition to state law claims, Plaintiffs Eli Attia and his 

firm Eli Attia Architect PC (collectively, Attia) asserted 

federal claims pursuant to the Defend Trade Secrets Act of 

2016 (DTSA) and the Racketeer Influenced and Corrupt

Organizations Act (RICO) against Defendants Google, LLC, 

Larry Page, Sergey Brin, Sebastian Thrun, Eric “Astro” 

Teller, Michelle Kaufmann, Jennifer Carlile, Augusto 

Roman, Nicholas Chim, and Flux Factory, Inc. (collectively, 

Google). Attia appeals from the district court’s judgment 

dismissing Attia’s Fifth Amended Complaint’s DTSA and 

RICO claims and declining to exercise supplemental 

jurisdiction over Attia’s state law claims. Attia argues that 

Google’s disclosure of certain trade secrets in 2012, prior to 

the enactment of the DTSA on May 11, 2016, does not 

preclude Attia’s DTSA claim arising from Google’s alleged 

post-enactment misappropriation or continued use of trade 

secrets. In the alternative, Attia argues that Google is 

equitably estopped from invoking its 2012 disclosure to 

defend against Attia’s DTSA claim. Additionally, Attia 

contends that Attia has sufficiently alleged a pattern of 

racketeering activity to support Attia’s RICO claims. We 

have jurisdiction pursuant to 8 U.S.C. § 1291. Reviewing 

“de novo the district court’s dismissal of a complaint for 

failure to state a claim” and “de novo a dismissal without 

leave to amend,” Oki Semiconductor Co. v. Wells Fargo 

Bank, Nat. Ass’n, 298 F.3d 768, 772 (9th Cir. 2002), we 

affirm.

I.

Eli Attia is an architect who developed a new 

architecture technology called “Engineered Architecture” 
ATTIA V. GOOGLE 5

(EA). In July 2010, Google sought to enter into a partnership 

with Attia to develop EA. By September 2010, Google 

began working with Attia to develop a program called 

“Project Genie” to implement EA. In January 2011, Google 

and Attia entered into an Inbound Services Agreement (ISA) 

and a Statement of Work Agreement (SOW). Attia disclosed 

his EA trade secrets to Google with the understanding that 

he would be compensated if the program were successful.

After Attia executed patent assignments, in 2011 Google 

filed patent applications with the U.S Patent and Trademark 

Office relating to the EA trade secrets and showed a 

prototype of the EA technology to investors. The patents 

were published in July and November 2012. Google then 

allegedly excluded Attia from the project and used Attia’s 

EA technology to create a new venture, which eventually 

became Flux Factory.

Attia sued Google in December 2014 for state law trade 

secret and contract claims. In 2016, Congress enacted the 

DTSA, which allows plaintiffs to assert a federal claim for 

the misappropriation of trade secrets occurring on or after 

May 11, 2016. Defend Trade Secrets Act of 2016, Pub. L. 

No. 114-153, § 2(e), 130 Stat. 376, 381–82 (2016). With the 

enactment of the DTSA, criminal misappropriation of a trade 

secret became a predicate act under RICO on May 11, 2016. 

See id. § 3(b), 130 Stat. at 382 (“Section 1961(1) of title 18, 

United States Code, is amended by inserting ‘sections 1831 

and 1832 (relating to economic espionage and theft of trade 

secrets),’ before ‘section 1951.’”). In July 2017, Attia 

amended his pleading to add RICO claims based on 

Google’s alleged trade secret misappropriation. Google 

removed the action to federal district court and moved to 

dismiss. The district court granted the motion to dismiss the 

Fourth Amended Complaint with leave to amend.
6 ATTIA V. GOOGLE

In the Fifth Amended Complaint, Attia asserted a new 

DTSA claim. Attia also asserted two RICO claims: one 

pursuant to 18 U.S.C. § 1962(c), for operation of an 

enterprise through racketeering against Google, Inc. and 

Flux Factory, Inc.; and the other pursuant to 18 U.S.C. 

§ 1962(d) for conspiracy to violate sections 1962(a) and 

1962(c) against all the defendants. With respect to the 

DTSA and RICO claims, the Fifth Amended Complaint 

emphasized that Google’s alleged misappropriation of the 

trade secrets and RICO predicate acts occurred after the 

DTSA’s enactment. Attia cited two separate actions as 

evidence of Google’s pattern of racketeering: the copyright 

infringement case, Oracle Am., Inc. v. Google LLC, 886 F.3d 

1179, 1187 (Fed. Cir. 2018); and a trade secret 

misappropriation case involving VSL Communications, 

LTD (VSL).

The district court dismissed Attia’s federal claims with 

prejudice and declined to exercise supplemental jurisdiction 

over the state law claims. In dismissing the Fifth Amended 

Complaint, the district court found that Attia’s alleged trade 

secrets were completely parallel to what Google disclosed in 

2012 in the published patent applications. The district court 

reasoned that the 2012 publication of Google’s patent 

applications extinguished the relevant trade secrets, and it 

cited Attia’s acknowledgment of this extinguishment in the 

Fifth Amended Complaint. The district court held that Attia 

lacks standing to assert DTSA or RICO claims, and stated 

that neither a theory of estoppel nor continued use could 

convert the 2012 publication of Google’s patent applications 

into a DTSA violation or a RICO predicate act. The district 

court also rejected Attia’s alternative argument that Google 

is equitably estopped from pointing to the 2012 patent 

publications and reasoned that “it would be inequitable to 
ATTIA V. GOOGLE 7

allow RICO or the DTSA to apply retroactively contrary to 

[c]ongressional intent.”

II.

We first consider whether Google’s pre-enactment 

disclosures preclude Attia’s DTSA claim. On this point, 

there are two related issues. We must determine whether, as 

a matter of law, the pre-enactment disclosure of a trade 

secret forecloses the possibility of a DTSA claim arising 

from the continued use of the trade secret after enactment. 

While several district courts in this circuit have considered 

the issue, see, e.g., AlterG, Inc. v. Boost Treadmills LLC, 

388 F. Supp. 3d 1133 (N.D. Cal. 2019); Avago Techs. U.S. 

Inc. v. Nanoprecision Prod., Inc., No. 16-CV-03737-JCS, 

2017 WL 412524 (N.D. Cal. Jan. 31, 2017), it is one of first 

impression for this court. We then will consider whether, 

even if the statute provides for a continued use theory of 

liability, the publication in 2012 of Google’s patent 

applications containing Attia’s EA trade secrets nevertheless 

prevents Attia from asserting the DTSA claim.

A.

Congress enacted the DTSA on May 11, 2016. Defend 

Trade Secrets Act of 2016 § 2 (codified as amended at 

18 U.S.C. § 1831 et seq.). The statute creates a private right 

of action for “any misappropriation of a trade secret . . . for 

which any act occurs on or after the date of the enactment of 

[the] Act.” Id. at 381–82. The DTSA defines a “trade 

secret” as information that “the owner thereof has taken 

reasonable measures to keep . . . secret” and that “derives 

independent economic value, actual or potential, from not 

being generally known to . . . another person who can obtain 

economic value from the disclosure or use of the 

information.” 18 U.S.C. § 1839(3). The statute provides the 
8 ATTIA V. GOOGLE

following three definitions of “misappropriation”: (1) the 

“acquisition of a trade secret of another by a person who 

knows or has reason to know that the trade secret was 

acquired by improper means;” (2) the disclosure of a trade 

secret without the owner’s consent; and (3) the use of a trade 

secret without the owner’s consent. Id. §§ 1839(5)(A), 

(5)(B).

With respect to misappropriations occurring both before 

and after the statute’s enactment, the language of the DTSA 

is distinct from other trade secret statutes. For example, the 

Uniform Trade Secrets Act (UTSA) is a model statute that 

sets out a private claim for the misappropriation of trade 

secrets. Many states have adopted the UTSA to draft their 

own trade secrets statutes. United States v. Chung, 659 F.3d 

815, 825 & n.7 (9th Cir. 2011). The UTSA contains an anticontinued use provision, stating that “[w]ith respect to a 

continuing misappropriation that began prior to the effective 

date,” it “does not apply to the continuing misappropriation 

that occurs after the effective date.” Unif. Trade Secrets Act 

§ 11 (Unif. Law Comm’n 1985). Unlike the UTSA, the 

DTSA does not contain an anti-continued use provision. 

This omission suggests that the DTSA is not limited to 

misappropriation that only began after enactment of the 

DTSA. At least one district court in this circuit has 

highlighted the DTSA’s omission of such a provision to 

determine that the statute applies to the continued use of a 

trade secret where the misappropriation began prior to 

enactment so long as acts of misappropriation continue to 

occur post-enactment. See Cave Consulting Grp., Inc. v. 

Truven Health Analytics Inc., No. 15-CV-02177-SI, 2017 

WL 1436044, at *4–5 (N.D. Cal. Apr. 24, 2017). While the 

DTSA states that “a continuing misappropriation constitutes 

a single claim of misappropriation,” it does so only in the 

context of the limitations period for claims pursuant to the 
ATTIA V. GOOGLE 9

DTSA. 18 U.S.C. § 1836(d). The parties do not dispute 

whether Attia’s DTSA claim is time-barred, and the period 

of limitations provision is not relevant to whether the DTSA 

allows for claims of continued use.

“As in any case of statutory construction, our analysis 

begins with the language of the statute. To aid our inquiry, 

we rely on our established rules of statutory construction.” 

United States v. LKAV, 712 F.3d 436, 440 (9th Cir. 2013) 

(citation omitted). “We also look to similar provisions 

within the statute as a whole and the language of related or 

similar statutes to aid in interpretation.” Id. Here, the 

legislative history of the DTSA shows that Congress was 

expressly aware of the UTSA and its structure. Congress 

acknowledged that “[w]hile 48 states have adopted 

variations of the UTSA, the state laws vary in a number of 

ways and contain built-in limitations that make them not 

wholly effective in a national and global economy.” H.R. 

Rep. No. 114-529, at 198 (2016), reprinted in 2016 

U.S.C.C.A.N. 195, 198. In contrast, Congress stated that the 

DTSA would serve as a “needed update to Federal law” and 

“provide a single, national standard for trade secret 

misappropriation with clear rules and predictability for 

everyone involved.” Id. at 200. Congress was aware of the 

role and limitations of the UTSA as model legislation for the 

states, and it recognized the DTSA and the UTSA as similar. 

This is critical for purposes of our statutory interpretation 

analysis. Congress’s omission in the DTSA of an anticontinued use provision is, therefore, significant. If 

Congress had intended to preclude claims arising from postenactment continued use that began prior to enactment, it 

could have done so by incorporating the language in section 

11 of the UTSA into the DTSA. That it did not include such 

a provision in the DTSA evinces congressional intent for the 

statute to apply also to post-enactment misappropriation that 
10 ATTIA V. GOOGLE

began prior to enactment. Accordingly, we hold that the 

misappropriation of a trade secret prior to the enactment of 

the DTSA does not preclude a claim arising from postenactment misappropriation or continued use of the same 

trade secret.

B.

We now turn to the second key issue of whether the 

nature of Google’s 2012 disclosures prevents Attia from 

asserting a DTSA claim. In 2011, with Attia’s permission 

and knowledge that the patents would be available to the 

public upon publication, Google filed patent applications 

relating to EA. The patent applications were published in 

2012. Attia also alleges that Google separately disclosed 

trade secrets relating to EA to investors in 2012.

We hold that Attia lacks standing to assert a claim 

pursuant to the DTSA because Google’s 2012 patent 

applications relating to EA extinguished the information’s 

trade secret status. When we evaluate whether disclosure of 

information destroyed its trade secret status—i.e., its 

“independent economic value” from being kept secret, 18 

U.S.C. § 1839(3), we “most often consider the degree to 

which the secret information confers a competitive 

advantage on its owner,” Chung, 659 F.3d at 826. “[T]he 

analysis is fact-intensive and will vary from case to case.” 

Id. However, it appears to us to be well-settled that 

publication of information in a patent application eliminates 

any trade secrecy. See Ultimax Cement Mfg. Co. v. CTS 

Cement Mfg. Co., 587 F.3d 1339, 1355–56 (Fed. Cir. 2009) 

(holding that the district court properly granted summary 

judgment disposing of plaintiffs’ trade secret claims under 

California law because plaintiffs could not prove the 

existence of a trade secret where its trade secret had been 

“disclosed in a patent,” making it “generally known to the 
ATTIA V. GOOGLE 11

public”); see also Stutz Motor Car of Am., Inc. v. Reebok 

Int’l, Ltd., 909 F. Supp. 1353, 1359 (C.D. Cal. 1995), citing

Rototron Corp. v. Lake Shore Burial Vault Co., 712 F.2d 

1214, 1215 (7th Cir. 1983) (“It is well established that the 

disclosure of a trade secret in a patent places the information 

comprising the secret into the public domain. Once the 

information is in the public domain and the element of 

secrecy is gone, the trade secret is extinguished. . . .”), aff’d, 

113 F.3d 1258 (Fed. Cir. 1997). Attia admits that 

publication of the EA information in Google’s patents 

extinguished Attia’s trade secrets.

District courts in this circuit have similarly determined 

that, within the context of the DTSA, “a plaintiff has a viable 

trade secret claim that would protect his proprietary 

unpatented technology only if he reveals implementation 

details and techniques beyond what was disclosed in his 

patent.” AlterG, 388 F. Supp. 3d at 1146, quoting AquaLung Am., Inc. v. Am. Underwater Prod., Inc., 709 F. Supp. 

2d 773, 788 (N.D. Cal. 2010). Attia has not done so here 

and admits that its alleged trade secrets were completely 

parallel to what was disclosed in Google’s published patent 

applications.

Thus, disclosure of a trade secret in a patent application 

extinguishes the information’s trade secret status. This is 

consistent with our holding regarding the continued use 

theory of liability pursuant to the DTSA because the plain 

text of the DTSA requires the existence of a trade secret to 

establish a claim. 18 U.S.C. § 1836(b)(1). Therefore, 

disclosure of a trade secret prior to the DTSA’s enactment 

does not preclude a misappropriation claim arising after 

enactment, to the extent that the pre-enactment disclosure 

was not a patent publication. Accordingly, while a factintensive analysis might be warranted to determine if 
12 ATTIA V. GOOGLE

Google’s 2012 disclosure to investors destroyed trade 

secrecy, the 2012 publication of Google’s patent 

applications placed the information in the public domain and 

necessarily extinguished its trade secret status. Attia lacks 

standing to assert a DTSA claim relating to the patented 

information. The district court properly dismissed Attia’s 

DTSA claim.

C.

In the alternative, Attia argues that Google is equitably 

estopped from pointing to the 2012 publication of its patent 

applications to defend against Attia’s DTSA claim. Attia 

cites out-of-circuit cases for the proposition that “a 

wrongdoer who has made an unlawful disclosure of 

another’s trade secrets cannot assert that publication to 

escape the protection of trade secret law.” Syntex 

Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677, 683 (7th Cir. 

1983). However, in Syntex, the court recognized that “the 

holder of the trade secret did not make an election to obtain 

a patent.” Id. Here, the Fifth Amended Complaint states that 

“Mr. Attia did not believe that this conduct by Google 

[Google’s 2012 filing of patent applications] was wrongful, 

because he conditionally authorized Google to use his trade 

secrets and other proprietary information to develop Project 

Genie, but on the condition that Google compensate him for 

such use as provided in the SOW.”

Syntex is neither binding on this court nor applicable 

given Attia and Google’s agreement. Attia cites no authority 

to suggest that, in the context of the DTSA, a party is 

estopped from pointing to its pre-enactment disclosure in a 

patent application to defend against a misappropriation 

claim arising from post-enactment continued use. 

Moreover, even if Google were estopped from doing so, it is 
ATTIA V. GOOGLE 13

not clear that we could ignore the trade secrets’ nonexistence 

after the DTSA’s enactment or any time after 2012.

III.

Lastly, we address Attia’s RICO and RICO conspiracy 

claims. In order to assert a RICO claim pursuant to 18 

U.S.C. § 1962(c), a plaintiff must allege a pattern of 

racketeering activity by showing “that the racketeering 

predicates are related, and that they amount to or pose a 

threat of continued criminal activity.” H.J. Inc. v. 

Northwestern Bell Tel. Co., 492 U.S. 229, 239 (1989). “A 

pattern is defined as ‘at least two acts of racketeering 

activity’ within ten years of each other.” Howard v. Am. 

Online, Inc., 208 F.3d 741, 749 (9th Cir. 2000), quoting

18 U.S.C. § 1961(5).

Attia argues that “the Google Defendants’ modus 

operandi [or] repeated method of commission is to induce 

inventors to reveal their proprietary information through 

NDAs [non-disclosure agreements] then wrongfully use or 

publish the proprietary information to the exclusion of the 

inventors.” Attia cites two separate actions as evidence of 

this pattern of racketeering: (1) Oracle Am., Inc., 886 F.3d 

at 1187; and (2) a case involving VSL. We agree with the 

district court’s reasoning that neither case is sufficiently 

related to this one. As the district court explained, Attia’s 

allegations with respect to Oracle do not present a similar 

modus operandi and only describe failed license 

negotiations, without mention of an NDA. The district court 

also determined that, with respect to the second case, “the 

allegations relating to VSL are similar to those here,” but the 

alleged conduct is not sufficiently related because it does not 

“embrace criminal acts that have the same or similar 

purposes, results, participants, victims, or methods of 

commission, or otherwise are interrelated by distinguishing 
14 ATTIA V. GOOGLE

characteristics and are not isolated events.” Attia fails to 

establish a pattern of racketeering because he has not 

identified two sufficiently related predicate acts.

We also agree with the district court that, “even if 

Plaintiffs’ allegations were sufficient to establish a pattern of 

racketeering against Google LLC, they do not allege that 

either of these [actions] involved any of the Defendants 

except Google LLC—such that no pattern is established as 

to the individual Defendants or Flux Factory.” The district 

court properly dismissed Attia’s RICO and RICO conspiracy 

claims.

AFFIRMED.