Dakota County District Court File No. 19-C1-07-007480.
Dean A. LeDoux, Samuel W. Diehl, Gray, Plant, Mooty, Mooty & Bennett, P.A., Minneapolis, Minnesota (for respondent)
Jon S. Swierzewski, Richard J. Reding, Larkin Hoffman Daly & Lindgren Ltd., Minneapolis, Minnesota (for appellants)
Considered and decided by Halbrooks, Presiding Judge; Ross, Judge; and Crippen, Judge.[*]
In this appeal following remand in a trade-secrets dispute, appellants Dimation, Inc. and Edward Knutson assert that the district court did not comply with our instruction to clarify the terms of an injunction to satisfy the requirements of Minn. R. Civ. P. 65.04. Appellants argue that the modifications to the injunction on remand do not resolve the infirmities of the original injunction—it is still impermissibly vague, does not adequately describe the conduct to be enjoined, lacks adequate findings of fact, and improperly references a separate document. We affirm.
This matter is before us for a second time. The facts underlying this matter are set forth in Analog Tech. Corp. v. Knutson, No. A10-1181, 2011 WL 1236164 (Minn.App. Apr. 5, 2011) (Analog I). In that decision, we held that the district court properly denied appellants' posttrial motions and awarded exemplary and injunctive relief, but we remanded for the district court to address a "lack of clarity in the scope and specificity of the injunction." Analog I, 2011 WL 1236164, at *5. In particular, we instructed the district court to modify paragraphs (a), (b), (c), and (d) of the November 3, 2009 injunction. Id. at *7. We observed that "[w]ithout describing which aspects of the flip-chip and BGA processes derive from [the] misappropriated trade secrets, the order does not adequately guide the parties as to the specific conduct restrained." Id. at *6. We also noted a durational incongruity between the injunction and its accompanying memorandum. Id.
On remand, the district court asked the parties to submit proposed amendments to the injunction. Analog submitted proposed amended language that prohibits appellants from any use or disclosure of Analog's flip-chip or BGA processes as described in its confidential Exhibit A. Analog's Exhibit A is a nine-page, single-spaced, technical description of Analog's flip-chip and BGA processes as of the time of trial in May 2009.
Appellants also submitted proposed modifications. Appellants' proposed amended language generally tracked the structure of Analog's and also contained references to Analog's Exhibit A. But appellants' submission provided an explicit exception from restrained conduct for any flip-chip or BGA process that "is generally known and is readily ascertainable." Appellants argued in their brief to the district court that the processes described in Exhibit A are generally known and readily ascertainable. Appellants submitted a second proposed order that recited a conclusion that the information identified in Exhibit A is "generally known" and "readily ascertainable" and therefore terminated the injunction on the basis that the trade secret no longer exists.
The district court held a hearing. The parties offered affidavits and other evidence not in the trial record and advocated their respective positions regarding the injunctive language. Appellants again argued that the content of Analog's Exhibit A does not meet the definition of a trade secret because it describes processes generally used in the flip-chip and BGA industry rather than Analog's particular trade secrets within that field. But appellants offered no alternative injunctive language to aid the district court in clarifying the injunction.
Analog offered the affidavit of its president and founder, William Berg, that explains that Exhibit A is a high-level description of Analog's misappropriated flip-chip and BGA processes, and is not intended to be an exhaustive description of each and every aspect of Analog's flip-chip and BGA processes. The Berg affidavit also references trial testimony about Analog's flip-chip and BGA processes "and the unique aspects that caused them to be confidential and trade secret information."
The district court issued a modified injunction on March 13, 2013. While the November 2009 injunction prohibited appellants from using or disclosing Analog's flip-chip and BGA "processes, " "confidential information, " and "trade secrets, " the March 2013 injunction prohibits the use or disclosure of Analog's flip-chip and BGA "processes as described in Exhibit A." The modified injunction also ...