In trade secret misappropriation cases, the scope and sufficiency of the trade secret identification are central issues. And, once resolved, plaintiffs may allege new trade secrets thefts gleaned during fact discovery, which rekindles those issues. Recently, the United States District Court, Northern District of Illinois closely scrutinized just such lately raised trade secrets in Motorola Solutions, Inc. v. Hytera Communications Corp. There, after two years in a “hard-fought, contentious case,” with just twelve days left in fact discovery, Motorola moved for an order compelling Hytera to produce documents relating to a newly alleged trade secret – related to its TETRA products. This was in addition to the 142 trade secrets related to DMR products that Motorola had previously claimed were at issue.

According to Motorola, Hytera’s TETRA products had similar functions as Hytera’s DMR products which were already part of the lawsuit, so Motorola sought “without further delay” the source code and sales data for Hytera’s TETRA products. The timeliness of this request was at the forefront of the discovery dispute. Motorola argued that it first learned of the stolen TETRA trade secrets in February 2019, when it found a document within Hytera’s December 2018 document production of nearly 3 million pages. And, Motorola went on to argue that once it learned of this new misappropriation, it promptly supplemented its prior interrogatory responses to identify the TETRA products as being misappropriated. Finally, Motorola claimed that Hytera admitted in previous pleadings that the TETRA products were part of the trade secret misappropriation and had agreed to extend the discovery period in order to produce the requested TETRA information.

Unfortunately for Motorola, the Court did not agree. First, the Court forcefully rejected Motorola’s claim that Hytera had agreed that the TETRA products were part of the case. The Court found that “context matters” and Motorola’s reliance on that single sentence was “not an approach guaranteed or even likely to arrive at a fair and accurate approximation of the truth.” The Court determined that the context showed that Hytera firmly opposed any expansion of Motorola’s trade secret claims. Second, the Court concluded that the 5-week extension of the close of discovery was clearly not done to allow Hytera time to produce TETRA documents. Instead, the Court concluded that Hytera would not have agreed to such a short continuance to deal with the unresolved discovery issues in the case (including Motorola’s late production of 37 million pages of documents) as well as Motorola’s claims of a new basis of trade secret misappropriation. Finally, the Court noted that the document which Motorola claims triggered its “epiphany” in February 2019 was similar to a document Hytera produced in January 2018. Thus, it found that Motorola had waited too long to seek discovery on the TETRA products.

In short, the Court rejected Motorola’s request to expand the litigation significantly so late in discovery. The outcome might have been different had the request came earlier in the case. However, this case highlights the difficulty practitioners may have when balancing the requirement that trade secrets be defined early on against the later discovery of other potential trade secret misappropriations.