Motion to Compel Search Terms and Custodians Denied in Trade Secrets Case

7 Jul 2017

motion to compel search termsIn PolyOne Corporation v. Lu et. al., Case No. 14-10369 (N.D. Ill., June 20, 2017), Plaintiff alleged that Defendants stole its trade secrets and reverse engineered one of its products to develop their own formulation which they eventually sold to a third party in competition with Plaintiff. Defendants counterclaimed that Plaintiff performed testing on their products as well.

During discovery, Defendants filed a Motion to Compel documentation related to Plaintiff’s former employee, Joe Kutka, and his travels to China for work as well as refined search criteria. Allegedly, Kutka was in China for a trip on behalf of Plaintiff when he took a “detour” and met with Defendant Yun Martin Lu. Kutka allegedly divulged Plaintiff’s trade secrets to Lu to assist him in developing the competing product. Plaintiff argued that it had provided all the documents it was able to locate concerning Kutka’s travels to China and it was currently trying to locate another document. The court found the Motion moot as to this request.

The Motion also sought to compel certain search terms and custodians related to Plaintiff’s internal discussions about the competing product, alleging such information would support their counterclaims, particularly that Plaintiff is using this lawsuit as a pretext to disparage Defendants.

Plaintiff argued that the request was unduly burdensome and would cost over $120,000 in processing costs alone. The court found that the only document before it that purportedly supports Defendant’s disparagement allegations is a LinkedIn message from a former Plaintiff employee to Defendant Tom Castile stating that Plaintiff had won a lawsuit against Kutka for theft of trade secrets. The court denied the motion to compel search terms based upon the “attenuated connection” between Defendants’ counterclaims and this message, as well as the extensive discovery already completed and the burden on Plaintiff to comply. Further, discovery was already closed.

ILS – Plaintiff eDiscovery Experts