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Intellectual Property – Trade Secrets – Civil Practice – Discovery – Destructive Testing

Teresa Bruno, Opinions Editor//January 14, 2016//

Intellectual Property – Trade Secrets – Civil Practice – Discovery – Destructive Testing

Teresa Bruno, Opinions Editor//January 14, 2016//

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DSM Dyneema, LLC v. Thagard (Lawyers Weekly No. 020-002-16, 11 pp.) (Louis Bledsoe III, J.) 2015 NCBC 112

Holding: Although plaintiff’s requested production of the Honeywell defendants’ unidirectional tape would place Honeywell’s proprietary materials and information in its competitor’s possession for as long as six months, plaintiff’s proposed testing is relevant to plaintiff’s trade secrets misappropriation claim and is reasonably calculated to lead to the discovery of admissible evidence.

The proposed testing of unidirectional tapes is allowed to proceed in strict conformity with plaintiff’s proposed testing protocols. Plaintiff’s proposed testing of molded panels and helmet inserts and shells is not allowed to proceed at this time, without prejudice to plaintiff’s right to renew the motion. Plaintiff’s motion for attorney’s fees is denied.

Plaintiff and Honeywell (Honeywell Specialty Materials, LLC, Honeywell Advanced Composites, Inc., and Honeywell International, Inc.) compete for U.S. Department of Defense contracts for the development of fibers used in enhanced combat helmets. Honeywell hired away plaintiff’s chief scientist, defendant Thagard, and plaintiff alleges that Honeywell has misappropriated plaintiff’s trade secrets.

Plaintiff has requested production of Honeywell’s unidirectional tape, which plaintiff plans to subject to destructive testing in order to determine whether Honeywell’s product began mimicking plaintiff’s material after Honeywell hired Dr. Thagard, and whether the product evolved at a rate that was more accelerated than would typically be expected.

The risks to, and burdens on, Honeywell are substantially mitigated through the protections provided by the three tiers of confidentiality protections available under the court’s protective order, the restrictions plaintiff and its expert, Dr. Stuart Phoenix, have agreed upon to ensure Dr. Phoenix’s independence from plaintiff, and plaintiff’s agreement to permit Honeywell’s attorneys and experts to attend all proposed testing.

Plaintiff’s request for production did not ask Honeywell to produce molded panels or helmet inserts and shells for inspection and testing. Moreover, plaintiff has not sought or received the required authorizations from the U.S. military to conduct testing of these military-grade materials. Therefore, consideration of plaintiff’s proposed testing of these materials is not properly before the court at this time.

Honeywell’s opposition to plaintiff’s motion to compel was substantially justified. Each party will bear its own costs and fees in connection with the motion.

Motions granted in part and denied in part.

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