1 – OPINION & ORDER

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

VESTA CORPORATION, 

No. 3:14-cv-1142-HZ

Plaintiff,

OPINION & ORDER

v.

AMDOCS MANAGEMENT 

LIMITED and AMDOCS, INC., 

Defendants.

Erick J. Haynie

Daniel T. Keese

Joanna T. Perini-Abbott

Stephen English

Julia E. Markley

PERKINS COIE, LLP 

1120 NW Couch Street, 10th Floor 

Portland, OR 97209

Indra Neel Chatterjee

ORRICK, HERRINGTON & SUTCLIFFE LLP

1000 Marsh Road

Menlo Park, CA 94025

Attorneys for Plaintiff

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Andrew G. Klevorn

Bruce G. Vanyo

Yonaton M. Rosenzweig

Christina Lucen Costley

Jeffrey A. Finn

KATTEN MUCHIN ROSENMAN, LLP

2029 Century Park East, Suite 2600 

Los Angeles, CA 90067

Kristin J. Achterhof

Meegan I. Maczek

Richard H. Zelichov

KATTEN MUCHIN ROSENMAN, LLP

525 West Monroe Street

Chicago, IL 60661

Joshua L. Ross 

Robert A. Shlachter

Timothy S. DeJong

STOLL STOLL BERNE LOKTING & SHLACHTER, PC

209 SW Oak Street, Fifth Floor 

Portland, OR 97204 

Attorneys for Defendants

HERNÁNDEZ, District Judge:

This is a breach of contract and misappropriation of trade secrets case. The parties are in 

a dispute over discovery. Defendants ask for a protective order to excuse them from responding 

to any discovery requests relating to the “Confidential Solutions Methods,” until such time as 

Plaintiff provides full and complete responses identifying its trade secrets with reasonable 

particularity. Defendants also seek an order compelling Plaintiff to amend its responses to 

Interrogatory Nos. 1 and 16 (and the responses incorporating those Interrogatories’ responses) to 

identify with reasonable particularity the trade secrets that it disclosed to Defendants, an order 

striking various objections and answers to Interrogatory Nos. 15 and 16, and an order requiring 

Plaintiff to identify all trade secrets it disclosed to Defendants.

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For the reasons stated below, Defendants’ motion is granted in part. Most importantly, 

the Court grants Defendants’ motion for a protective order excusing them from responding to 

any discovery related to the “Confidential Solutions Methods,” until such time as Plaintiff 

identifies with reasonable particularity the trade secrets it allegedly disclosed to Defendants. 

BACKGROUND

Plaintiff Vesta, an electronic payments and fraud prevention technology company, has 

sued Defendants Amdocs Management Limited and Amdocs, Inc. (collectively, “Defendants”), 

telephone billing software and services companies, for breach of contract and misappropriation 

of trade secrets. First Am. Compl. (FAC) Intro., ECF 52. Beginning in 2006, the parties 

collaborated with one another to integrate their services and platforms in order to appeal to their 

shared customer based. FAC ¶ 13. In 2009, the parties’ relationship became more strategic in 

nature as they worked to jointly market their respective services. Id. at ¶ 14. In addition, since 

2010, Defendants twice approached Plaintiff about the possibility of Defendants acquiring 

Plaintiff. Id. Plaintiff and Defendants entered into a series of Non-Disclosure/Confidentiality 

Agreements (NDAs) to preserve confidentiality while sharing information in their effort to 

develop joint services and products. Id. at ¶¶ 13-15. Now, Plaintiff alleges that Defendants 

breached these NDAs and stole trade secrets that were shared in the course of the collaboration.

Specifically, Plaintiff alleges that in the course of jointly collaborating on marketing and 

the possibility of acquisition of Plaintiff by Defendants, Plaintiff shared information with 

Defendants including “proprietary information about [Plaintiff’s] payment solution” and 

“confidential and proprietary business and financial information.” Id. at ¶ 17. Plaintiff alleges 

that Defendants obtained two types of confidential information from Plaintiff: 

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1) “Solutions Methods,” which include “detailed information about the architecture and 

design of the solutions, including proprietary payment routines, methodologies and 

processes,” and

2) “Risk Information,” which includes detailed statistical information about “the 

prevalence of fraudulent payment transactions in the prepaid mobile device market place” 

and how Plaintiff “uses fraud data to price its payment solutions.” 

Id. at ¶¶ 22, 51. 

The alleged stolen information “relates generally to proprietary software and fraud 

prevention technologies, consumer behavior analyses and service techniques created by 

[Plaintiff] and used to provide its electronic payment services to the national and international 

mobile phone industry.” FAC Intro. Plaintiff’s First Amended Complaint alleges, among other 

things, that Defendants stole a compilation of “Confidential Solution Methods,” defined as:

Detailed architectural drawings and sequence flow diagrams that depicted, on a step-bystep basis, how [Plaintiff] would design and implement its payment solution for Metro 

PCS . . . [and] detailed information about how [Plaintiff] implements its system of direct 

customer notifications to optimize payments and customer retention, including detailed 

information about [Plaintiff’s] proprietary “Text-to-Pay” system . . . [and] detailed 

information about [Plaintiff’s] customer relationship management tools, and how those 

tools serve to optimize customer loyalty and MNO revenues.

Id. at ¶¶ 32, 164-73.

On May 15, 2015, this Court entered a stipulated scheduling order providing that, by June 

5, 2015, Plaintiff would answer Defendants’ interrogatories regarding the trade secrets allegedly 

misappropriated by Defendants. Scheduling Order, May 15, 2015, ECF 62. Throughout the 

summer, the parties communicated about the interrogatories and responses through meet and 

confer letters and discussions. Defs.’ Mot. Compel 8, ECF 105. On September 21, 2015, 

Defendants filed the present motion. Id. The Court heard oral argument on Defendants’ motion 

on November 6, 2015.

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STANDARD

Rule 26(b)(1) of the Federal Rules of Civil Procedure provides in relevant part:

Parties may obtain discovery regarding any nonprivileged matter that is relevant to any 

party's claim or defense—including the existence, description, nature, custody, condition, 

and location of any documents or other tangible things and the identity and location of 

persons who know any discoverable matter. For good cause, the court may order 

discovery of any matter relevant to the subject matter involved in the action. Relevant 

information need not be admissible at the trial if the discovery appears reasonably 

calculated to lead to the discovery of admissible evidence. All discovery is subject to the 

limitations imposed by Rule 26(b)(2)(C).

Fed. R. Civ. P. 26(b)(1). Among the limitations stated in Rule 26(b)(2)(C) is the direction that 

the court must limit the extent of discovery if it determines that “the burden or expense of the 

proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in 

controversy, the parties' resources, the importance of the issues at stake in the action, and the 

importance of the discovery in resolving the issues.” Fed. R. Civ. P. 26(b)(2)(C)(iii). This is 

known as the “rule of proportionality.” In addition, Rule 26 provides that the court may, for good 

cause, issue an order to protect a party or person from oppression or undue burden, including 

“requiring that a trade secret or other confidential research, development, or commercial 

information not be revealed or be revealed only in a specified way.” Fed. R. Civ. P. 26(c)(1)(G).

DISCUSSION

The parties’ dispute centers on whether Plaintiff has identified its trade secrets with 

sufficient particularity for Defendants to be obligated to respond to Plaintiff’s discovery requests.

A careful review of the many cases presented by both parties makes clear that there is no brightline answer as to the degree of particularity that must be disclosed in order for discovery to 

proceed in a trade secrets case. Rather, the Court’s analysis in each case is fact-intensive and the 

outcome is fact-specific. 

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At issue in this case are Defendants’ Interrogatory Nos. 1, 15, and 16.1 Defendants do not 

dispute that Plaintiff’s Response to Interrogatory No. 15 sufficiently identifies trade secrets—

Defendants only challenge Response No. 15’s “reservation of rights” language and reliance upon 

oral discussions. As to Plaintiff’s Response to Interrogatory No. 16, Defendants challenge it for 

the same reasons as No. 15 and on the basis that Plaintiff fails to identify its trade secrets with 

reasonable particularity.

I. Plaintiff must identify its trade secrets with “reasonable particularity”—(Response 

to Interrogatory Nos. 1, 16)

As an initial matter, the parties disagree about which standard controls the Court’s 

resolution of this motion. According to Defendants, Plaintiff must identify with reasonable 

particularity its “Solutions Methods” trade secrets that it alleges Defendants stole before 

Defendants are obligated to respond to discovery requests on the same topic. Plaintiff argues that 

Defendants erroneously rely on a standard based on a California state statute that does not apply 

in this case. According to Plaintiff, no court in Oregon has adopted the “reasonable particularity”

standard and the two District of Oregon cases to address this question have resolved it in favor of 

discovery without such initial disclosures. 

The discovery impasse presented by this case “is not is not uncommon in trade secret 

cases, and brings into conflict many competing policies.” DeRubeis v. Witten Technologies, Inc., 

244 F.R.D. 676, 680 (N.D. Ga. 2007). “These competing policies can make resolving this type of 

dispute difficult” and, as a result, courts have developed different approaches to the problem. Id.

(“Unfortunately, there is no talismanic procedure the Court may apply in order to obtain the best 

result in any given case . . . [i]n other words, “the ‘proper’ approach is clearly fact-dependent.”) 

(citation omitted). Hon. Michael Simon appears to be the only judge within the District of 

 1 Plaintiff’s Response to Interrogatory No. 1 refers the reader to the information outlined in its Responses 

to Interrogatory Nos. 15 and 16.

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Oregon who has issued written opinions on the issue of sequencing discovery in a trade secrets 

case. Accordingly, this Court looks to Judge Simon’s opinions for guidance in this case. 

In Nike, Inc. v. Enter Play Sports, Inc., 305 F.R.D. 642, 645 (D. Or. 2015), the defendant, 

Enter Play Sports, Inc., argued that NIKE should be required to further describe with 

particularity its alleged trade secrets before proceeding with discovery. Id. Judge Simon 

acknowledged that district courts reached conflicting conclusions as to whether a plaintiff must 

identify its alleged secrets before being allowed to conduct discovery. Judge Simon found a case 

out of the District of Arizona to be “particularly instructive for identifying the criteria that a 

district court should consider in deciding this question.” Id. (citing BioD, LLC v. Amnio Tech., 

LLC, 2014 WL 3864658 (D. Ariz. Aug. 6, 2014). In BioD, that court noted:

[d]etermining whether a trade secret has been misappropriated usually involves 

examining things that the other party considers its own trade secrets. There is no privilege 

excepting trade secrets from discovery, but courts must exercise discretion to avoid 

unnecessary disclosures of such information. [P]laintiff will normally be required first to 

identify with reasonable particularity the matter which it claims constitutes a trade secret, 

before it will be allowed (given a proper showing of need) to compel discovery of its 

adversary's trade secrets.

2014 WL 3864658, at *4 (alterations in original) (quoting Dura Global Technologies, Inc. v. 

Magna Donnelly, Corp., 2007 WL 4303294, at *2 (E.D. Mich. Dec. 6, 2007)). The court in BioD

continued, however, by observing: “A plaintiff also might not be required to identify its trade 

secrets with reasonable particularity prior to discovery.” Id. at *5. As explained by the court:

[C]ourts have identified at least three policies which support allowing the trade secret 

plaintiff to take discovery prior to identifying its claimed trade secrets. First, courts have 

highlighted a plaintiff's broad right to discovery under the Federal Rules of Civil 

Procedure. Second, the trade secret plaintiff, particularly if it is a company that has 

hundreds or thousands of trade secrets, may have no way of knowing what trade secrets 

have been misappropriated until it receives discovery on how the defendant is operating. 

Finally, if the trade secret plaintiff is forced to identify the trade secrets at issue without 

knowing which of those secrets have been misappropriated, it is placed in somewhat of a 

“Catch–22” [because] [i]f the list is too general, it will encompass material that the 

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defendant will be able to show cannot be trade secret. If instead it is too specific, it may 

miss what the defendant is doing.

Id. (alterations in original) (quoting DeRubeis, 244 F.R.D. at 680). 

Judge Simon applied the considerations raised in BioD and concluded that NIKE’s 

descriptions of the trade secrets at issue were sufficient to permit discovery to proceed. Judge 

Simon cited the fact that Enter Play Sports answered the Complaint and “asserted in its first 

counterclaim that NIKE’s alleged trade secrets either were not disclosed in EPS's patent 

Applications or, to the extent they were, then they were not subject to the protections of the NDA 

based on the NDA's express exclusions.” NIKE, 305 F.R.D. at 646. Accordingly, Judge Simon 

explained that NIKE’s claimed trade secrets must have been sufficiently clear to Enter Play 

Sports to permit Enter Play Sports to make those assertions. Id. 

Judge Simon employed the same analysis in St. Jude Med. S.C., Inc. v. Janssen-Counotte, 

305 F.R.D. 630 (D. Or. 2015) reconsideration denied, No. 3:15-MC-00099-SI, 2015 WL 

2359568 (D. Or. May 18, 2015). In St Jude, Judge Simon considered the circumstances under 

which a plaintiff alleging misappropriation of trade secrets may proceed with formal discovery, 

notwithstanding the assertion by a third-party subpoena recipient that the plaintiff has failed to 

describe with particularity the trade secrets at issue. Id. The St. Jude defendant was a highranking officer and employee of the plaintiff who, before leaving her employment to become the 

president of operations of one of the plaintiff’s primary competitors, allegedly copied, emailed, 

and downloaded trade secrets. Id. at 633. The defendant allegedly inserted 41 separate “thumb 

drives” into her computer and emailed contracts and benefits information to her personal email 

address. Id.

As in Nike, Judge Simon applied the considerations from BioD and concluded that the 

plaintiff did not need to identify its trade secrets with any greater particularity before taking 

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discovery from the third-party. Id. at 641. The St Jude plaintiff had a “broad right to discovery.” 

Id. In addition, the plaintiff had “numerous trade secrets but . . . ‘no way of knowing what trade 

secrets ha[d] been misappropriated until it receive[d] discovery on how the defendant is 

operating.’” Id. (quoting BioD, 2014 WL 3864658, at *5). Finally, requiring the plaintiff to 

identify its trade secrets without first knowing which had been misappropriated by the defendant 

and placed into use at defendant’s subsequent employer would have placed the plaintiff in the

“Catch-22” situation posed by BioD. Id.

Neither of Judge Simon’s opinions adopted the rule applied by many federal courts 

across the country requiring the party alleging a claim for misappropriation of trade secrets to 

identify its alleged trade secrets with reasonable particularity before compelling discovery of its 

adversary's trade secrets.2 However, Judge Simon did not reject the rule either. Instead, Judge 

Simon considered the rule, as well as additional policy considerations. Judge Simon found that 

those policies weighed against requiring the Nike or St. Jude plaintiffs to provide further 

specificity as to their trade secrets.

As in Nike and St. Jude, this Court applies the BioD analysis to resolve the present case. 

In doing so, the Court recognizes the “growing consensus” of courts from around the country 

who have applied the “reasonable particularity” standard to determine whether a party alleging a 

claim for misappropriation of trade secrets has sufficiently identified its trade secrets before it 

 2 Numerous courts have held that a party alleging a claim for misappropriation of trade secrets is required 

to identify its alleged trade secrets with reasonable particularity before it will be allowed to compel 

discovery of its adversary's trade secrets. See, e.g. Engelhard Corp. v. Savin Corp., 505 A.2d 30, 12 Del. 

J. Corp. L 249 (Del.1986), citing Xerox Corp. v. International Business Machines Corp., 64 F.R.D. 367, 

371–72 (S.D.N.Y. 1974); DeRubeis v. Witten Technologies, Inc., 244 F.R.D. 676, 680–81 (N.D. Ga.

2007); Automed Techs., Inc. v. Eller, 160 F .Supp. 2d 915, 925 (N.D. Ill. 2001); Dura Global 

Technologies, Inc. v. Magna Donnelly, Corp., 2007 WL 4303294 (E.D. Mich. 2007); Del Monte Fresh 

Produce Co. v. Dole Food Co., Inc., 148 F.Supp.2d 1322 (S.D. Fla. 2001); and Ikon Office Solutions v. 

Konica Minolta Business Solutions, 2009 WL 4429156, *4–*5 (W.D.N.C. 2009). This list is not 

exhaustive.

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may compel discovery of its adversary's trade secrets. See StoneEagle Servs., Inc. v. Valentine, 

No. 3:12-CV-1687-P, 2013 WL 9554563, at *2 (N.D. Tex. June 5, 2013) (“The growing 

consensus seems to be in favor of requiring those plaintiffs bringing claims of trade secret 

misappropriation to identify, with reasonable particularity, the alleged trade secrets at issue.”). It 

is clear to this Court that such a requirement is not limited to cases applying California’s unique 

statutory requirement, as Plaintiff contends.3 Rather, the “reasonable particularity” standard 

reflects the Court’s authority, pursuant to the Federal Rule of Civil Procedure 26 requirements of 

early disclosure of evidence, and the Court’s authority to control the timing and sequencing of 

discovery in the interests of justice.4

Requiring Plaintiff in this case to make pre-discovery disclosures of its alleged 

misappropriated trade secrets is supported by strong practical and policy reasons, including the 

goal of assisting this Court in “in determining relevancy and the scope of discovery.” See Ikon 

Office Sols., Inc. v. Konica Minolta Bus. Sols., U.S.A., Inc., No. 3:08-CV-539-RLV-DCK, 2009 

WL 4429156, at *4 (W.D.N.C. Nov. 25, 2009). The requirement also prevents a “fishing 

expedition” into Defendants’ trade secrets, see, e.g., Ray v. Allied Chemical Corp., 34 F.R.D. 

456, 457 (S.D.N.Y.1964) (observing that without pre-discovery identification, “it would be a 

simple matter to obtain one's trade secret by the mere assertion of a claim”), and denies Plaintiff 

the opportunity to craft a trade secret claim to fit the evidence from the Defendants, see, e.g., 

Switch Commc'ns Grp. v. Ballard, No. 2:11-CV-00285-KJD, 2012 WL 2342929, at *4 (D. Nev. 

June 19, 2012) (“[R]equiring the plaintiff to state its claimed trade secrets prior to engaging in 

 3 California Code of Civil Procedure § 2019.20 provides that “[i]n any action alleging the 

misappropriation of a trade secret under the Uniform Trade Secrets Act . . ., before commencing 

discovery relating to the trade secret, the party alleging the misappropriation shall identify the trade secret 

with reasonable particularity[.]” Oregon has not enacted any such rule.

4 The Judicial Conference of the United States approved several significant proposed changes to the 

Federal Rules of Civil Procedure, including changes to Rule 26(b). These proposed changes will become 

effective December 1, 2015. This ruling is based on the Rules that are now in effect.

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discovery ensures that it will not mold its cause of action around the discovery it receives.” 

Finally, the requirement prevents “needless exposure of the defendant's trade secrets,” see, e.g., 

DeRubeis, 244 F.R.D. at 680–81, and allows well-investigated claims to proceed while 

discouraging meritless trade secret claims. United Servs. Auto. Ass'n v. Mitek Sys., Inc., 289 

F.R.D. 244, 248 (W.D. Tex. 2013) aff'd, No. CIV.A. SA-12-CA-282, 2013 WL 1867417 (W.D. 

Tex. Apr. 24, 2013) (“[pre-discovery identification] allows the Court to utilize its resources more 

effectively by exposing the viable claims, permitting early dismissal of the nonviable claims, and 

allowing the case to proceed unfettered by needless discovery disputes pertaining to 

unquestionably relevant information central to the parties' claims and/or defenses”).

At the same time, the policy considerations that weight against this requirement, while 

important, weigh less heavily in this case than in other cases like Nike and St. Jude. As in every 

case, Plaintiff has a broad right to discovery under the Federal Rules of Civil Procedure. See, 

e.g., Epstein v. MCA, Inc., 54 F.3d 1422, 1423 (9th Cir. 1995) (“The Federal Rules of Civil 

Procedure creates a ‘broad right of discovery’ because ‘wide access to relevant facts serves the 

integrity and fairness of the judicial process by promoting the search for the truth.’”) (citation 

omitted). However, this case differs from other cases where plaintiffs may face an inherent 

difficulty identifying what portions of trade secrets have been misappropriated prior to receipt of 

discovery from defendants. See, e.g., DeRubeis, 244 F.R.D. at 680 (“[T]he trade secret plaintiff, 

particularly if it is a company that has hundreds of thousands of trade secrets, may have no way 

of knowing what trade secrets have been misappropriated until it receives discovery on how the 

defendant is operating.”). Unlike the plaintiff in St. Jude, for example, Plaintiff here should know 

exactly what trade secrets were shared with Defendants because such disclosures took place in a 

discreet number of joint meetings and exchanges of information over a defined time frame. See

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Pl.’s Memo. Opp. Mot. Compel 14 (noting that Plaintiff has details “regarding when and how the 

information was shared”). This is not a case where Defendants stole large volumes of documents 

or secrets from Plaintiff without Plaintiff’s knowledge. Similarly, Plaintiff fails to provide any 

argument that premature trade secret identification in this case risks encompassing non-trade 

secret information or may be too specific to capture all misappropriated trade secrets. See, e.g., 

DeRubeis, 244 F.R.D. at 680 (“If the list is too general, it will encompass material that the 

defendant will be able to show cannot be trade secret ... If instead it is too specific, it may miss 

what the defendant is doing.”).

The Court must strike a balance in assessing these considerations and determining the

appropriate sequence of discovery where misappropriation of trade secrets has been alleged. See 

Microwave Research Corp. v. Sanders Assocs., Inc., 110 F.R.D. 669, 672 (D. Mass. 1986) (“In 

cases involving the disclosure of confidential information and/or trade secrets, the Court must 

strike a balance.”). Assessing these various considerations in the context of the facts here, the 

Court is persuaded by the reasoning in cases requiring pre-discovery disclosure of trade secrets. 

Plaintiff is required to identify the trade secrets it claims Defendants misappropriated with 

reasonable particularity before Defendants are required to produce their confidential information 

and trade secrets to Plaintiff in discovery.

II. Plaintiff has not identified its trade secrets with “reasonable particularity” —

(Response to Interrogatory No. 1, 16)

Plaintiff argues that, even if this Court applies the “reasonable particularity” standard, 

Plaintiff has met that standard. The Court disagrees.

Ultimately, whether a plaintiff has sufficiently disclosed its trade secrets is “a factspecific question to be decided on a case-by-case basis.” L-3 Commc'ns Corp. v. Jaxon Eng'g & 

Maint., Inc., No. 10-CV-02868-MSK-KMT, 2011 WL 10858409, at *2 (D. Colo. Oct. 12, 2011)

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(citations omitted). The Ninth Circuit has not defined “reasonable particularity” in the context of 

identification of trade secrets. Therefore, the Court looks to the standard outlined in BioD. 

“Reasonable particularity” is defined as:

a description of the trade secrets at issue that is sufficient to (a) put a defendant on notice 

of the nature of the plaintiff's claims and (b) enable the defendant to determine the 

relevancy of any requested discovery concerning its trade secrets.

BioD, 2014 WL 3864658, at *5 (quoting Hill v. Best Medical Int'l, Inc., Case No. 09–1194, 2010 

WL 2546023, at *3 (W.D. Pa. June 24, 2010). A “working definition” from the District Court of 

the Southern District of Florida is helpful as well:

The court in Del Monte Fresh Produce Co. set forth a working definition of “reasonable 

particularity” in identifying allegedly misappropriated trade secrets. As that court noted, 

it is insufficient to describe the trade secrets by generic category, such as the components 

of the night vision devices to which the alleged trade secrets relate. Rather, [the party]

must identify the specific characteristics of each trade secret, such as a particular 

drawing, process, procedure or cost/pricing data. It must also describe with reasonable 

particularity all of its trade secrets, including those involving “business methods, knowhow, machines, manufacturing process and procedure, marketing information, pricing 

data, product designs and manufacturing information, ... [and] supplier and vendor lists” 

as alleged in the amended counterclaim.

Knights Armament Co. v. Optical Sys. Tech., Inc., 254 F.R.D. 463, 467 (M.D. Fla.) aff'd, 254 

F.R.D. 470 (M.D. Fla. 2008) (citing Del Monte Fresh Produce Co. v. Dole Food Co. Inc., 148 F. 

Supp. 2d 1322, 1324 (S.D. Fla. 2001). To ensure that plaintiffs adequately disclose their trade 

secrets, courts commonly order a list of trade secrets at the outset of the litigation. Dura Glob. 

Techs., 2007 WL 4303294, at *2. 

Plaintiff’s Amended Complaint and Interrogatory Responses offer lengthy narrative 

descriptions of the alleged trade secrets at issue. In addition, Plaintiff provides “architectural 

drawings” and “sequence flow diagrams” for Plaintiff’s payment solution. Eads Decl. Ex. 4, ECF 

104. In response to Defendants’ Interrogatory No. 16, Plaintiff provides additional information 

about the trade secrets it believes that Defendants misappropriated. Plaintiff’s Supplemental 

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Responses to First Set of Interrogatories 37, ECF 103. Plaintiff alleges that it provided 

Defendants with “a complete, high-level explanation of how to design and implement a 

comprehensive payment services solution” and “a compilation of several of [Plaintiff’s] key 

methodologies, business rules and best practices.” Id. at 36-37. Plaintiff lists the following 

categories of information that were included in this “compilation”: omni-channel payment 

processing methods, mobile user fingerprinting, channel-specific credential and authentication 

management strategies, idempotent communications protocols, bifurcated funds capture, edgecase management strategies, best practices scorecard and recommendations, text-to-pay 

strategies, and proprietary management tools. Id. at 37-43. 

However, the actual trade secret descriptions Plaintiff offers are broadly stated and lack 

particularity. Defendants’ expert, Professor Michael Shamos, summarizes Plaintiff’s responses as 

either identifying trade secrets that are not, in fact, trade secrets at all, or identifying trade secrets 

with such a lack of particularity that Defendants or any expert in the field would be unable to 

compare and determine whether the alleged trade secret is contained within Defendants’ 

proprietary system. Shamos Decl. ¶ 14, ECF 107. The Court similarly finds that Plaintiff’s 

responses are too general and generic to satisfy the reasonable particularity standard. Plaintiff’s 

disclosures do not specify any trade secrets, “but rather reveal[] the end results of, or functions 

performed by, the claimed trade secrets.” See Switch Commc'ns Grp., 2012 WL 2342929, at *4-

6. 

Plaintiff contends that Defendants erroneously “nitpick” each component of Plaintiff’s 

trade secret claim, ignoring that the claim is that of a “compilation trade secret.” Pl.’s Memo. 

Opp. Mot. Compel 9, ECF 121. Plaintiff’s expert, Charles Abbey, explains that “the particular 

manner in which individual technologies or methods are used, or assembled with other 

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technologies or methods or how they are applied to a particular use [] to form a comprehensive 

payments solution can constitute highly proprietary information.” Abbey Decl. ¶ 13. However, 

Plaintiff may not claim that a particular method or process is a trade secret at this stage of the 

litigation “without identifying the steps in the process and explaining how those steps make [the] 

method or process unique.” BioD, 2014 WL 3864658 at *5. As the BioD court stated: 

Plaintiffs must explain how the combination of much of what appears to be generally 

known information can constitute a trade secret. It is simply not sufficient for plaintiffs to 

identify a trade secret as a “method” without some explanation of why that “method” 

could be considered a legally protectable trade secret. Plaintiffs must provide some basis 

for their contention that their methods and processes are unique and thus legally 

protectable. Contrary to their contention, plaintiffs are not being asked to prove their 

trade secret claim prior to being able to take discovery. But, they must provide enough 

detail about their alleged trade secrets to at least suggest that the alleged trade secrets 

might be legally protectable. To date, they have not done so. In short, plaintiffs must 

identify their trade secrets with more specificity than they have done so far.

Id.; see also Switch Commc'ns Grp., 2012 WL 2342929, at *5; Struthers Sci. & Int'l Corp. v. 

Gen. Foods Corp., 51 F.R.D. 149, 153 (D. Del. 1970) (“If [the plaintiff] is, in fact, relying for its 

trade secret allegations on a unique combination of known components disclosed to [the 

defendant], [the plaintiff] should be required to specifically describe what particular combination 

of components it has in mind, how those components are combined, and how they operate in a 

unique combination. This matter cannot be left to pure speculation and conjecture.”); see 

generally DeRubeis, 244 F.R.D. at 681.

In sum, the Court finds that Plaintiff fails to identify its alleged trade secrets with 

reasonable particularity, as required. See Stoneeagle Servs., 2013 WL 9554563, at *3 (“By 

requiring Plaintiffs to provide a list of trade secrets, the Court and Defendants will be able to 

more accurately determine relevant responses and appropriate objections. Plaintiffs will not be 

required to sift through mounds of irrelevant information produced by Defendants because they 

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were uncertain as to what information was relevant. And Defendants will not be required to 

waste time guessing at the basis of Plaintiffs' claims.”)

III. Whether Plaintiff should be prevented from amending its trade secret disclosure as 

discovery progresses—(Response to Interrogatory Nos. 1, 15, 16)

Defendants argue that Plaintiff should be barred, absent a showing of good cause, from

supplementing or changing what it claims to be the trade secrets it disclosed to Defendants.

Plaintiff responds that Defendants’ argument is “overreaching.” 

Plaintiff’s responses to Interrogatory Nos. 15 and 16 both contain the following 

“reservation of rights” language:

Vesta specifically reserves the right to complete its investigation and discovery of the 

facts, and to rely at trial or in other proceedings on documents and information in 

addition to the information provided herein, regardless of whether such information is 

newly discovered or newly in existence. Additional discovery and investigation may lead 

to additions to, changes in, or modifications of these Responses.

Pl.’s Supp. Resp. 30, 36; ECF 103. Defendants cite six cases for the proposition that Plaintiff 

should not be allowed to “leave the door open to ‘re-construct’ what it claims it disclosed” after 

seeing Defendants’ discovery responses. Defs.’ Mot. Compel 22, ECF 105. In addition, 

Defendants allege that Plaintiff has structured its responses in a vague manner to provide a 

“backdoor” reservation of rights to supplement its responses after it receives discovery. Id. at 23.

The cases cited by Defendants do not, in fact, foreclose the possibility of Plaintiff 

reserving the right to amend its responses.5 The only case cited by Defendants that is on point is 

 5 Five of the six cases cited by Plaintiff do not directly address whether or not a plaintiff may reserve the 

right to supplement its trade secret identification after receiving discovery from a defendant. See

DeRubeis v. Witten Technologies, Inc., 244 F.R.D. 676, 681 (N.D. Ga. 2007); Switch Commc'ns Grp. v. 

Ballard, No. 2:11-CV-00285-KJD, 2012 WL 2342929, at *2 (D. Nev. June 19, 2012); Avago 

Technologies, Inc. v. IPtronics Inc., No. 5:10-CV-02863-EJD, 2015 WL 2395941, at *5 (N.D. Cal. May 

19, 2015); Jobscience, Inc. v. CVPartners, Inc., No. C 13-04519 WHA, 2014 WL 1724763, at *2 (N.D. 

Cal. May 1, 2014); Big Vision Private Ltd. v. E.I. DuPont De Nemours & Co., 1 F. Supp. 3d 224, 265 

(S.D.N.Y. 2014) aff'd sub nom. Big Vision Private Ltd. v. E.I. du Pont de Nemours & Co., 610 F. App'x 

69 (2d Cir. 2015).

Case 3:14-cv-01142-HZ Document 141 Filed 11/30/15 Page 16 of 19
17 – OPINION & ORDER

Soc. Apps, LLC v. Zynga, Inc., No. 4:11-CV-04910 YGR, 2012 WL 2203063, at *5 (N.D. Cal. 

June 14, 2012). However, in Soc. Apps, the court provided no explanation for why amendment 

should not generally be allowed. Therefore, it has limited persuasive value in this case.

Plaintiff cites one case that expressly holds that a plaintiff may supplement a trade secret 

identification according to Federal Rule of Civil Procedure 26(e). See StoneEagle Servs., 2013 

WL 9554563, at *5. The other case cited by Plaintiff, Dura Global Technologies, 2011 WL 

4527576, at *9, allowed the plaintiff to present additional trade secrets added during the 

plaintiff’s proposed pretrial order. However, the court allowed this supplementation after a 

finding of good cause, which is the standard that Defendants request the Court apply in this case.

In sum, the Court does not find that either party cites controlling authority to provide a 

definitive answer as to whether Plaintiff should be allowed to reserve the right to supplement its 

trade secret identification. In the absence of such authority, the Court grants Defendants’ motion 

that Plaintiff be required to show good cause for such supplementation. 

IV. Whether Plaintiff may identify oral trade secrets in this case--(Response to 

Interrogatory Nos. 15, 16)

Defendants contend that, because of the express terms of the parties’ 2009 NonDisclosure Agreement (NDA), any information that Plaintiff shared with Defendants orally but 

not in writing cannot constitute a trade secret. Defendants ask the Court to compel Plaintiff to 

remove any purported “oral” discussions from its Response to Interrogatory Nos. 15 and 16. 

Plaintiff responds that Defendants are effectively seeking summary judgment that all information 

shared in a non-written manner between the parties cannot be a trade secret because it was 

purportedly shared non-confidentially. The Court agrees that Defendants’ argument is premature

and denies their request. 

Case 3:14-cv-01142-HZ Document 141 Filed 11/30/15 Page 17 of 19
18 – OPINION & ORDER

The 2009 NDA provides that “[d]isclosure of the disclosing party’s Proprietary 

Information to the receiving party may only be made in writing or other tangible or electronic 

form that is marked as proprietary and/or confidential information of the disclosing party, or 

occur by demonstration of any product within the AMDOCS product.” Rosenzweig Decl. Ex. F ¶

6 (emphasis added), ECF 112-2. Defendants argue, therefore, that any information that was not 

shared in writing and marked proprietary and/or confidential cannot constitute a trade secret 

because the parties did not have a duty to maintain the secrecy of the information. 

Plaintiff disputes Defendants’ interpretation of the text of the 2009 NDA. Plaintiff argues 

that Defendants’ construction of the contract gives rise to an absurd result: “the parties could not 

share any trade secret information orally or in face-to-face meetings without waiving the 

confidentiality of such information.” Pl.’s Memo. Opp. Mot. Compel 17, ECF 121. Second, 

Plaintiff argues that, at the very least, the 2009 NDA is ambiguous with respect to orally shared 

confidential and trade secret information. Third, Plaintiff argues that there is an open question as 

to whether the parties expressly or impliedly waived any contractual provision during their faceto-face meetings. 

The Court finds Plaintiff’s arguments persuasive. While Defendants may have a 

compelling argument at summary judgment, granting the motion at this point would be 

inappropriate because it requires resolving a disputed issue of contract interpretation.

///

///

Case 3:14-cv-01142-HZ Document 141 Filed 11/30/15 Page 18 of 19
19 – OPINION & ORDER

CONCLUSION

Defendants’ motion for a protective order [105] is granted in part. Defendants do not 

have to respond to any of Plaintiff’s discovery relating to the “Confidential Solutions Methods”

until Plaintiff has identified, with reasonable particularity, the trade secrets which Plaintiff

contends it disclosed to Defendants. Within 21 days of this Order, Plaintiff must amend its 

responses to Defendants’ Interrogatory Nos. 1, 15 and 16, consistent with this Opinion & Order.

IT IS SO ORDERED.

Dated this ____________day of ________________________, 2015.

________________________________________________

MARCO A. HERNÁNDEZ

United States District Judge

Case 3:14-cv-01142-HZ Document 141 Filed 11/30/15 Page 19 of 19