Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 1 of 16 PageID #: 13388
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`BOSTON SCIENTIFIC CORP. and
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`BOSTON SCIENTIFIC
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`NEUROMODULATION CORP.,
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`Plaintiffs and Counter-
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`Defendants,
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`v.
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`NEVRO CORP.,
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`Defendant and
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`Counterclaimant.
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`Civil Action No. 16-1163-CFC-CJB
`CONSOLIDATED
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`MEMORANDUM ORDER
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`Presently pending before the Court are the parties’ discovery disputes regarding trade
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`secret discovery. (See D.I. 331; D.I. 375)1 The Court2 has considered the parties’ letter briefs,
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`(D.I. 341; D.I. 344), and the parties’ arguments made during the September 23, 2020
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`teleconference, (“Tr.”). It ORDERS that the disputes be resolved in the manner set out below.
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`I.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`The Court here writes primarily for the parties, who are well familiar with the discovery
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`disputes relating to Plaintiffs Boston Scientific Corp. and Boston Scientific Neuromodulation
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`Corp.’s (“Plaintiffs” or “BSC”) trade secret claim (which is set out in Count IX of the operative
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`1
`These disputes originally arose in Civil Action No. 18-644-CFC-CJB (“Nevro
`II”). On June 22, 2020, the District Court consolidated Civil Action No. 16-1163-CFC-CJB
`(“Nevro I”) and Nevro II. (Civil Action No. 18-644-CFC-CJB, June 22, 2020 Oral Order) All
`citations herein, unless otherwise noted, are to the docket in Nevro I.
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`Nevro I and Nevro II have been referred to the Court to hear and resolve
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`discovery disputes and protective order disputes. (Aug. 7, 2020 Docket Entry; Civil Action No.
`18-644-CFC-CJB, D.I. 51 at 9)
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` 2
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 2 of 16 PageID #: 13389
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`Second Amended Complaint (“SAC”)). In its August 21, 2020 Memorandum Order (“August 21
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`MO”), the Court provided an overview of the relevant background regarding BSC’s and
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`Defendant Nevro Corp.’s (“Defendant” or “Nevro”) continuing disputes regarding trade secret
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`discovery; the Court incorporates that summary herein by reference. (D.I. 326 at 1-4) The Court
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`will only set out additional background facts as needed, in light of the current case posture.
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`The August 21 MO first addressed the parties’ disputes regarding certain specific
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`interrogatories and requests for production of documents propounded by BSC on February 10,
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`2020 in connection with its trade secret claim (the “February 2020 Discovery Requests”). (Id. at
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`6-13; see also Civil Action No. 18-644-CFC-CJB, D.I. 114, exs. A-B) In connection with these
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`disputes, the Court had to determine what is the relevant time period relating to BSC’s trade
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`secret claim (the “relevant time period”)—such that requests for discovery that sought
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`information from outside of this time period would be deemed presumptively not relevant, absent
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`the parties’ agreement otherwise or some further order of the Court. Based on the record before
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`it at the time, the Court concluded that the relevant time period “is the date in 2009 when [James]
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`Thacker joined Nevro (whenever that is) to the time period when Nevro developed its own
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`[spinal cord stimulation, or ‘SCS’] system (which the Court understands, from the record before
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`it, to be May 2010).” (D.I. 326 at 8)
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`In addition to resolving disputes regarding specific February 2020 Discovery Requests,
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`the Court provided guidance on the parties’ overarching dispute about whether BSC has
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`sufficiently identified 64 purported trade secrets that it says were misappropriated and thus are
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`subsumed within Count IX’s allegations. (Id. at 13-18) The parties were ordered to further meet
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`and confer on the issue in light of this guidance; to the extent they could not resolve their
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`2
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 3 of 16 PageID #: 13390
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`disputes about these 64 purported trade secrets, they were ordered to utilize the Court’s
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`discovery dispute procedures. (Id.)3
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`On August 31, 2020, the parties submitted a joint status report regarding three issues that
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`remain in dispute with respect to BSC’s trade secret discovery. (D.I. 331) First is the parties’
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`lingering dispute regarding the appropriate “relevant time period” to govern such discovery. (Id.
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`at 2-3) Second is the parties’ continuing dispute about whether BSC has sufficiently identified
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`the 64 trade secrets at issue. (Id. at 1-2) To that end, BSC suggested that the Court provide its
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`views “concerning the level of detail provided in [BSC’s] Supplemental Disclosure [], which the
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`parties will then use as a guide for the remaining 60 trade secrets.” (Id. at 1) Third, the parties
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`explained that they had a dispute regarding Nevro’s trade secret document production, with
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`Nevro withholding production based on its position that each of BSC’s document requests
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`requires further identification of the trade secrets at issue. (Id. at 3) The Court thereafter set
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`telephonic argument for September 23, 2020, ordered the parties to submit supplemental letter
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`briefs regarding the first two issues, and indicated that the Court would address the third issue
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`during the teleconference. (D.I. 333)
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`BSC submitted its supplemental letter brief on September 9, 2020, (D.I. 341), and Nevro
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`submitted its supplemental letter brief on September 16, 2020, (D.I. 344). The Court heard
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`3
`By way of further background about this issue, after Nevro objected to the
`February 2020 Discovery Requests for, inter alia, failing to set out the particular trade secrets at
`issue, BSC identified these 64 purported trade secrets in an Initial Disclosure of Trade Secrets
`(“Initial Disclosure”). (Civil Action No. 18-644-CFC-CJB, D.I. 115, ex. F) Nevro disputed the
`sufficiency of BSC’s Initial Disclosure, and provided, by way of illustrative example, an
`explanation as to why BSC’s identification of four of the 64 trade secrets (Trade Secrets Nos. 2,
`10, 47 and 56) were deficient. (Id., ex. G) On May 29, 2020, BSC served a Supplemental
`Disclosure for Trade Secrets Nos. 2, 10, 47 and 56 (“Supplemental Disclosure”) that included
`additional details and evidentiary citations. (Civil Action No. 18-644-CFC-CJB, D.I. 161 at 4;
`Civil Action No. 18-644-CFC-CJB, D.I. 162, ex. B; see also D.I. 332; D.I. 341 at 1)
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`3
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 4 of 16 PageID #: 13391
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`argument from the parties on September 23, 2020. (“Tr.”) Thereafter, on September 29, 2020,
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`without first seeking leave from the Court, Nevro filed another letter regarding these disputes, in
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`which it, inter alia, made a new proposal as to how the Court might resolve them. (D.I. 358)
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`Because the letter did not follow the Court’s discovery dispute procedures, and because Nevro
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`had not sufficiently met and conferred about the letter’s content with BSC, the Court struck the
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`letter; it further ordered the parties to meet and confer regarding Nevro’s new proposal. (D.I.
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`360) The parties did so and submitted a status report on October 9, 2020, in which it was
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`reported that BSC did not agree to Nevro’s proposal. (D.I. 371) Thus, the Court advised the
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`parties that it would proceed to resolve the instant disputes. (D.I. 372)
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`II.
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`STANDARD OF REVIEW
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`The Court incorporates by reference the legal principles regarding relevant discovery, and
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`limits to discovery, set out in the August 21 MO. (D.I. 326 at 4-5)
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`III. DISCUSSION
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`The Court will first address the relevant time period issue, and will then turn to whether
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`BSC has sufficiently identified Trade Secrets Nos. 2, 10, 47 and 56.
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`A.
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`The Relevant Time Period
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`As described above, the Court recently concluded that the relevant time period for trade
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`secret discovery is the date in 2009 when Mr. Thacker joined Nevro through May 2010 (i.e., the
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`date by which Nevro had developed its first SCS system). (D.I. 326 at 8) For the following
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`reasons, however, the current record demonstrates that the relevant time period for trade secret
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`discovery should be modified to be December 2008 through May 2015.
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`As for the starting point of the relevant time period, it appears that Mr. Thacker was
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`employed by Nevro first as a consultant in December of 2008 and then as a full-time employee
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`4
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 5 of 16 PageID #: 13392
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`beginning on January 1, 2009. (Tr. at 11, 19; D.I. 341, ex. A) The SAC alleges that “[o]n
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`multiple occasions, while employed by Nevro, Mr. Thacker disclosed Boston Scientific’s
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`confidential, proprietary information to Nevro.” (Civil Action No. 18-644-CFC-CJB, D.I. 48
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`(hereinafter, “SAC”) at ¶ 194 (emphasis added)) Thus, it is reasonable for the time period to
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`begin in December 2008.
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`And as for the right ending point, May 2015 is when Nevro launched its first SCS
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`product in the United States. (D.I. 341 at 1-2 & ex. D at 18-20; Tr. at 10, 22-23) The SAC
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`alleges that during “the relevant time period” for the claim, Nevro was “developing its own SCS
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`[‘Senza’] system, and conducting its own clinical investigations.” (SAC at ¶ 197) The Court
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`now understands that there is no dispute that Nevro was conducting pivotal clinical trials (i.e.,
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`“clinical investigations”) and related work up through its first U.S. product launch in 2015. (D.I.
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`341, ex. D at 18-20; Tr. at 29) And the SAC alleges that Mr. Thacker took over 34,000 files that
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`included proprietary data regarding BSC’s clinical investigations (as well as “research and
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`development, product development plans, manufacturing plans and methods . . . patient data,
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`programming specifications, marketing and sales force plans, product component lists, product
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`specifications and diagrams, and budgetary, financial, and cost data”). (SAC at ¶ 192)
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`In opposing a time period extending up through May 2015, Nevro reads the SAC as
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`alleging that the only relevant time period is that during which Nevro was conducting its “initial
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`development” with respect to the Senza product, and that accordingly, the only “clinical
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`investigations” relevant to BSC’s trade secrets claim are any that occurred before Nevro’s Senza
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`product received CE Mark approval in Europe in 2010 (i.e., Nevro’s “first clinical
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`5
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 6 of 16 PageID #: 13393
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`investigation”). (D.I. 344 at 2; Tr. at 25, 27-28, 70-71)4 But the Court agrees with BSC that the
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`SAC’s trade secret allegations are not limited to the “first” such clinical investigation, and it is
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`plausible that information that Mr. Thacker took from BSC regarding “clinical investigations”
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`could have been utilized throughout the entire clinical development program for Nevro’s SCS
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`product through May 2015. (Tr. at 44-45; D.I. 331 at 2-3; D.I. 341 at 2) Therefore, the Court
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`agrees with BSC that—now that BSC has provided the Court with a more robust record that
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`makes this clear—the proper relevant time period for trade secret discovery is December 2008
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`through May 2015.5
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`B.
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`BSC’s Trade Secrets Nos. 2, 10, 47 and 56
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`4
`According to the record before the Court, the only “clinical investigation” that
`BSC undertook prior to CE Mark approval in 2010 was a single clinical trial: a one-week United
`States feasibility clinical trial. (D.I. 341, ex. D at 18; Tr. at 45-46)
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`When Nevro previously raised the issue of the relevant time period in connection
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`with an earlier discovery dispute, BSC should have then specifically explained why the SAC’s
`allegations warranted a time period that extended beyond May 2010. (D.I. 333; Tr. at 7) At the
`time, BSC was arguing that the relevant time period was up through the filing of the original
`complaint in 2018 in the Nevro II action. But BSC did not then provide a good explanation as to
`why that 2018 date made sense, either in light of SAC’s allegations or the current record. (Tr. at
`7-8; see also D.I. 326 at 7 & n.8; D.I. 344 at 3; Civil Action No. 18-644-CFC-CJB, D.I. 165 at 9-
`11, 35-36) Despite BSC’s prior failure in this regard, the Court provided the parties an
`additional opportunity to brief this issue. That is because with regard to a hotly-contested claim
`like this, which potentially spans many years and could implicate a significant amount of
`document discovery, establishing the right temporal limitation for discovery is particularly
`important. (See, e.g., Tr. at 43)
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`In that vein, the Court again notes that the relevant time period as defined herein
`(December 2008 through May 2015) is a presumptive one, which, absent the parties’ agreement
`otherwise or further order of the Court, shall govern Nevro’s discovery responses and Nevro’s
`production of documents with respect to BSC’s trade secret discovery requests. If, during the
`course of discovery, BSC learns about documents created in or relating to a date that falls outside
`of this time period, but which BSC believes are clearly relevant to Count IX, it can of course
`raise the issue with Nevro. If Nevro disagrees with BSC’s position, the parties may utilize the
`Court’s discovery dispute procedures to address the issue. (See id. at 12-13, 38-39)
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`6
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 7 of 16 PageID #: 13394
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`The Court next addresses whether BSC’s Trade Secrets Nos. 2, 10, 47 and 56 are
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`sufficiently specific. As a general matter, BSC’s Supplemental Disclosure with respect to these
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`trade secrets clearly adds a great amount of detail, as compared to what was provided in BSC’s
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`Initial Disclosure. The Initial Disclosure described each trade secret in one broad sentence,
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`while the Supplemental Disclosure begins with a similarly broad sentence, but then adds
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`additional language to further describe the trade secret at issue. (Compare Civil Action No. 18-
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`644-CFC-CJB, D.I. 115, ex. F, with D.I. 332, ex. A; see also Tr. at 89) Indeed, BSC has
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`explained that the first sentence of each trade secret in the Supplemental Disclosure “is provided
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`for context, with the specific details following” and that it “would be willing to delete the first
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`sentence of each” trade secret. (D.I. 341 at 3 n.3; see also Tr. at 56-57, 59)6
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`With respect to BSC’s Supplemental Disclosure, the Court ordered BSC to provide its
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`view as to how the four trade secrets at issue are not only described in a sufficiently specific
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`way, but also how they: (1) relate to the misappropriation that occurred in the relevant time
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`period described in the claim; (2) concern the subject matter described in the SAC and/or in
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`materials taken by Mr. Thacker; and (3) concern information then regarded by BSC as
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`proprietary. (D.I. 333) The Court will assess each trade secret in turn.
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`1.
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`Trade Secret No. 2 (“TS2”)
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`TS2 is based on information set out in a qualification test protocol (“QTP”) meant to
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`ensure and demonstrate the accurate operation of an SCS system. (D.I. 341 at 3 & ex. F) The
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`QTP is one of the 34,000 documents taken by Mr. Thacker, and it concerns BSC’s information
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`relating to “research and development . . . programming specifications . . . [and] product
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`6
`The parties may meet and confer on the issue, with Nevro indicating whether or
`not it would find it helpful for BSC to delete the first sentence of each trade secret in the
`Supplemental Disclosure. (D.I. 341 at 3 n.3; Tr. at 59)
`7
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 8 of 16 PageID #: 13395
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`specifications[.]” (SAC at ¶ 192; see also D.I. 341 at 3) The SAC further alleges that at least
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`Mr. Thacker (and thereby Nevro) acquired Boston Scientific’s trade secrets by improper means;
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`that “[o]n multiple occasions, while employed by Nevro, Mr. Thacker disclosed Boston
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`Scientific’s confidential, proprietary information to Nevro[;]” and that Nevro has “used the
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`information provided by Mr. Thacker in connection with its business activities, including in its
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`research and development, design, clinical investigation, and testing of the Senza Systems.”
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`(SAC at ¶¶ 194, 197, 202) And BSC has sufficiently explained (at this juncture) that the
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`information constituting TS2 was and is proprietary to it.7 The QTP itself bears a “confidential”
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`label instructing that the information therein may not be disclosed without “prior written
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`permission[.]” (D.I. 341, ex. F)
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`Nevro claims that BSC’s Supplemental Disclosure still fails to specify what testing
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`methods BSC is claiming to be a misappropriated trade secret because the description of five
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`testing methods is “exemplary” and “merely recite[s] the names of various test scenarios[.]”
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`(D.I. 344 at 3-4) With respect to Nevro’s first complaint, BSC’s counsel confirmed that the use
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`of the term “includes” in the Supplemental Disclosure is not intended to allow for additional
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`undescribed test methods to fall within the ambit of the trade secrets. (See Tr. at 58-59)8 And
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`with respect to Nevro’s second complaint, the Supplemental Disclosure clearly does more than
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`merely recite the name of various test scenarios. It goes on to describe what the specific
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`scenarios are meant to verify. (D.I. 332, ex. A at 1)
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`7
`Nevro may of course later challenge on the merits whether or not BSC’s
`purported trade secrets actually amount to such under the law. See, e.g., Prostar Wireless Grp.,
`LLC v. Domino’s Pizza, Inc., 360 F. Supp. 3d 994, 1013 (N.D. Cal. 2018) (considering on
`summary judgment whether plaintiff’s asserted trade secrets were publicly available or widely
`known in a given industry).
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`This applies to each of the four trade secrets at issue.
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 9 of 16 PageID #: 13396
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`During the teleconference, Nevro raised a new concern with respect to BSC’s
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`Supplemental Disclosure, using TS2 as an example. Nevro’s counsel pointed out that one of the
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`cited pages of the QTP at issue in TS2 describes a test to “verify input of patient demographics”
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`and recites as one step (among others) to “[p]ower on the [c]linician’s [p]rogrammer.” (D.I. 341,
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`ex. F at BSC-NEVRO-DE0008346 (cited in Tr. at 75)) According to Nevro, this simple
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`individual step cannot itself be said to be a trade secret, yet it is ambiguous as to whether BSC is
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`claiming that it is. (Tr. at 75-76) Nevro’s counsel then acknowledged that if it is the
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`combination of steps that amounts to the purported trade secret, “that would at least narrow it a
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`little bit.” (Id. at 88) The Court, however, does not understand how it could be viewed in any
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`other way. Another step in this test, for example, is to “[c]lick [o]k.” (D.I. 341, ex. F at BSC-
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`NEVRO-DE0008346) There is no way that BSC could be claiming that that step, in isolation,
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`amounts to a trade secret. It has to be the substance of the combination of steps described in the
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`QTP that amounts to BSC’s asserted trade secret, and the Court interprets TS2 in that way.
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`Another complaint that Nevro raised during the teleconference is that taking all of BSC’s
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`purported trade secrets together, they cover “every aspect of an SCS system, basically” such that,
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`for example, the trade secrets relating to testing methodologies, taken together, “would
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`eventually amount to every testing document that Nevro has.” (Tr. at 86-87) But there are at
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`least two responses to that line of attorney argument that prevent it from having an impact on the
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`Court’s task here. One, Nevro has not made any record to support the argument. In the absence
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`of such a record, the Court has no real way of knowing whether the claim is true. (Id. at 87)9
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`9
`In any event, the concern seems like it would go more to the issue of what amount
`of discovery regarding TS2 would be unduly burdensome or expensive to produce pursuant to
`Federal Rule of Civil Procedure 26(b), not whether the trade secret at issue had been sufficiently
`identified.
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`9
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 10 of 16 PageID #: 13397
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`Two, while it seems that, taken together, BSC’s purported trade secrets likely cover a lot of
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`information, that does not seem surprising, in light of BSC’s allegation that Mr. Thacker took
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`over 34,000 files spanning numerous categories of information relating to an SCS system. (SAC
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`at ¶ 192; see also Tr. at 42, 90-91)
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`For these reasons, and after incorporating the modification set out above, in the Court’s
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`view BSC has identified TS2 with sufficient specificity.
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`Trade Secret 10 (“TS10”)
`2.
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`TS10 is based on information set out in a BSC document describing guidelines for the
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`functional assessment of cochlear implant systems. (D.I. 341 at 3 & ex. G) BSC explains that
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`the techniques described in the document “confirm key aspects” of operability to be utilized by
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`personnel involved in the clinical management of implant systems. (Id. at 3-4; D.I. 332, ex. A at
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`1) This document was one of the 34,000 documents taken by Mr. Thacker, and it includes
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`BSC’s information relating to “clinical investigations,” “programming specifications” and “sales
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`force plans[.]” (D.I. 341 at 3-4; SAC at ¶ 192) The SAC further alleges that at least Mr. Thacker
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`(and thereby Nevro) acquired Boston Scientific’s trade secrets by improper means; that “[o]n
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`multiple occasions, while employed by Nevro, Mr. Thacker disclosed Boston Scientific’s
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`confidential, proprietary information to Nevro[;]” and that Nevro has “used the information
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`provided by Mr. Thacker in connection with its business activities, including in its research and
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`development, design, clinical investigation, and testing of the Senza Systems.” (SAC at ¶¶ 194,
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`197, 202) And BSC has sufficiently explained (at this juncture) that the information constituting
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`TS10 is proprietary to it. The document serving as the basis for TS10 itself bears a
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`“confidential” designation instructing that it not be disseminated outside of the company. (D.I.
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`341, ex. G)
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`10
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 11 of 16 PageID #: 13398
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`Nevro argues that BSC’s Supplemental Disclosure with respect to TS10 remains deficient
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`for a few different reasons.
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`First, Nevro asserts that TS10 fails to “identify any specific ‘materials or methods for
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`training’ or ‘functional assessments of implantable stimulation systems’” that BSC claims are
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`misappropriated trade secrets, and that BSC’s language merely constitutes “restatements of titles
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`of various sections of the document.” (D.I. 344 at 4) But this ignores the actual content of the
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`disclosure. BSC’s Supplemental Disclosure (particularly the second paragraph describing TS10)
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`names particular tests at issue and identifies what it is about those tests that amount to BSC’s
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`trade secrets. (D.I. 332, ex. A at 1-2)
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`Next, Nevro asserts that BSC fails to show how the document at issue here regarding
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`cochlear stimulation products (which Nevro does not offer) relates to misappropriation of BSC’s
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`trade secrets to aid in the development of Nevro’s first SCS system. (D.I. 344 at 5) But the
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`document relates to devices that are implanted, as are SCS devices. And Mr. Thacker took the
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`document with him from BSC. This all makes BSC’s retort—that there is overlapping
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`information and technology that is relevant to both types of devices—a plausible one. (Tr. at 61-
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`63)
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`Finally, during the teleconference, Nevro also contended that certain cited material in the
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`document at issue describing the purportedly proprietary electric field imaging (“EFI”) test “talks
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`about Ohm’s law, which is basic electrical theory, basic physics.” (Id. at 81)10 This leads to
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`ambiguity, according to Nevro, with respect to what exactly BSC is claiming to be its trade
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`10
`Nevro also previously raised this concern to BSC in connection with the parties’
`meet and confer regarding BSC’s Initial Disclosures. (Civil Action No. 18-644-CFC-CJB, D.I.
`115, ex. G at 2)
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`11
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`Case 1:16-cv-01163-CFC-CJB Document 377 Filed 10/19/20 Page 12 of 16 PageID #: 13399
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`secret. (Id.) It is true that the document includes a subsection that “cover[s] the basic electrical
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`theory that is vital for understanding the EFI[,]” including a reference to “ohms.” (D.I. 341, ex.
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`G at BSC-NEVRO-DE0008832-33) And BSC’s Supplemental Disclosure does include “the
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`theory behind EFI” as being encompassed in its TS10. (D.I. 332, ex. A at 2) It is not clear to the
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`Court how “basic electrical theory” would constitute a BSC trade secret (though it may be that
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`BSC does not mean to be asserting this in TS10). The parties shall further meet and confer on
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`this issue in an attempt to resolve it.
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`But otherwise, aside from the basic electrical theory issue, BSC has identified TS10 with
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`sufficient specificity.
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`
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`3.
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`Trade Secret 47 (“TS47”)
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`TS47 is based on information set out in BSC documents describing a Functional
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`Specification for designing an SCS device. (D.I. 341 at 4-5 & exs. H, I) These documents
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`“cover[] numerous aspects of an SCS product, including not only the way the device operates,
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`but also product safety requirements and cost information.” (Id. at 4 & exs. H-I; Tr. at 66-67)
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`These documents were two of the 34,000 documents taken by Mr. Thacker, and they include
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`BSC’s information relating to “research and development . . . programming specifications . . .
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`[and] product specifications[.]” (SAC at ¶ 192; see also D.I. 341 at 4)11 The SAC further
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`alleges that at least Mr. Thacker (and thereby Nevro) acquired Boston Scientific’s trade secrets
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`by improper means; that “[o]n multiple occasions, while employed by Nevro, Mr. Thacker
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`disclosed Boston Scientific’s confidential, proprietary information to Nevro[;]” and that Nevro
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`has “used the information provided by Mr. Thacker in connection with its business activities,
`
`
`11
`BSC contends that the information disclosed in the two documents serving as the
`basis for TS47 is the “same sort of information as that described in the ‘Module Specification,’
`cited in the SAC.” (D.I. 341 at 4; see also SAC at ¶ 201)
`12
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`including in its research and development, design, clinical investigation, and testing of the Senza
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`Systems.” (SAC at ¶¶ 194, 197, 202) And BSC has sufficiently explained (at this juncture) how
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`the information constituting TS47 is proprietary to it. The documents serving as the basis for
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`TS47 themselves bear a “confidential” designation instructing that they not be distributed
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`without “prior express written consent.” (D.I. 341, exs. H-I)
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`Nevro, in response, argues that BSC’s Supplemental Disclosure fails to provide any
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`additional detail as to what specific information regarding an SCS device’s hardware and
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`software constitutes BSC’s misappropriated trade secrets. (D.I. 344 at 5) The Court does not
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`agree. Here again, the second paragraph of BSC’s disclosure describes the specific components
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`of an SCS device referenced in the functional specification documents that constitute BSC’s
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`trade secrets (and further, what about those components amounts to BSC’s trade secret
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`information). (D.I. 332, ex. A at 2-3)
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`Nevro also complains that TS47 claims as a trade secret the “‘physical description’” of
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`the components making up an SCS system “when this information could have been obtained
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`merely by purchasing a BSC device.” (D.I. 344 at 5) But whether one could see that a
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`component had a certain physical attribute after purchase is one thing. It is another thing to
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`know that internally, BSC felt it crucial that the component have that attribute (and why), or that
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`BSC had certain (undisclosed) requirements relating to that attribute that led to the component
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`looking the way it did.
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`For these reasons, in the Court’s view, BSC has identified TS47 with sufficient
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`specificity.
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`
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`4.
`
`Trade Secret 56 (“TS56”)
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`
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`13
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`TS56 is based on information set out in a BSC document providing an “Updated []
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`Summary Report” of a clinical study designed to investigate a new method of fitting SCS
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`patients. (D.I. 341 at 5 & ex. J) This document was one of the 34,000 documents taken by Mr.
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`Thacker, and it includes BSC’s information relating to “research and development . . . clinical
`
`investigations, [and] patient data[.]” (SAC at ¶ 192; see also D.I. 341 at 5) The SAC further
`
`alleges that at least Mr. Thacker (and thereby Nevro) acquired Boston Scientific’s trade secrets
`
`by improper means; that “[o]n multiple occasions, while employed by Nevro, Mr. Thacker
`
`disclosed Boston Scientific’s confidential, proprietary information to Nevro[;]” and that Nevro
`
`has “used the information provided by Mr. Thacker in connection with its business activities,
`
`including in its research and development, design, clinical investigation, and testing of the Senza
`
`Systems.” (SAC at ¶¶ 194, 197, 202)
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`However, BSC has not provided the Court with any information to allow it to understand
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`how the document was proprietary and confidential, i.e., that it derived value because it was not
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`generally known to the public and that BSC took reasonable steps to keep it secret. See Loop AI
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`Labs Inc. v. Gatti, 195 F. Supp. 3d 1107, 1111 (N.D. Cal. 2016) (citing Cal. Civ. Code §
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`3426.1(d)). The document at issue does not bear a “confidential” designation or other similar
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`indicia on its face. (D.I. 341, ex. J) And BSC has not presented a declaration or other similar
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`evidence to provide the Court with some other reasonable basis to understand how this is so. Cf.
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`Lilith Games (Shanghai) Co. v. uCool, Inc., Case No. 15-CV-01267-SC, 2015 WL 4149066, at
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`*5 (N.D. Cal. July 9, 2015). BSC’s counsel just says it is so, (D.I. 341 at 5; Tr. at 64-65), which
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`is insufficient. For this reason, the Court does not now have a sufficient record to understand
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`
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`14
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`how TS56 is relevant to Count IX (i.e., how it is encompassed by the trade secrets referenced in
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`that Count).12
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`
`
`Conclusion
`C.
`BSC has alleged a plausible trade secret claim in this litigation. And BSC has attempted
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`to get its case with respect to that claim underway, serving the February 2020 Discovery
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`Requests over eight months ago. It is time for discovery to get going on this claim. On that
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`front, in light of the Court’s decisions above, the parties shall meet and confer and agree on a
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`date by which production of documents relating to TS2, TS10 and TS47 shall be completed. The
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`parties shall further meet and confer with respect to how the Court’s guidance regarding the four
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`trade secrets at issue here shall be applied to the remaining 60 trade secrets, as well as to BSC’s
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`Requests for Production Nos. 1-56. (See D.I. 331 at 3) To the extent the parties have lingering
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`disputes after meeting and conferring, they shall utilize the Court’s discovery dispute procedures.
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`Lastly, the parties shall submit a joint status report on these subjects, of no more than three
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`single-spaced pages, by no later than October 29, 2020.
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`IV. CONCLUSION
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`The Court therefore orders that the parties’ trade secret discovery disputes shall be
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`resolved as set out above.
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`Because this Memorandum Order may contain confidential information, it has been
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`released under seal, pending review by the parties to allow them to submit a single, jointly
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`
`12
`Additionally, during the teleconference, BSC’s counsel explained that the
`underlying methodology of the clinical study is proprietary, but the “results of course [are]
`not[.]” (Tr. at 64-66) The Supplemental Disclosure in the first paragraph describes the trade
`secret as including “the analysis” of the results of the study, while the second paragraph
`references “analysis of and results from the study[.]” (D.I. 332, ex. A at 3 (emphasis added)) To
`the extent TS56 is claiming that the results themselves are proprietary, BSC’s counsel seemed to
`back of