A perennial issue in trade secret litigation is: what factual allegations must be pled regarding what trade secrets are left when there are related patents from the same company on the same technology. The recent decision Safe Haven Wildlife Removal and Property Management Experts, LLC v. Meridian Wildlife Services LLC provides insight on this issue at the motion to dismiss phase.
In this case, the court inferred differences between the alleged trade secrets and publicly-available patent based on the owner's general allegations, stating there were differences and that the patent covered "non-proprietary" aspects of Meridian's technology. Under the permissive Rule 12 standard for review of a complaint, this was enough to survive dismissal and enter discovery.
The case started more than two and a half years ago when Safe Haven sued Meridian for patent infringement. After a transfer of venue and a brief stay, in May 2023 Meridian filed counterclaims asserting infringement of its own two patents and trade secret misappropriation by Safe Haven and its founder Derek Tolley, a former employee of Meridian.
Meridian's asserted U.S. Patent Nos. 9,943,073 and 10,154,663 are entitled "Indoor Live Bird Capture System" and are directed to a method and device for the safe live capture of a flying bird inside a building using bird netting with adjustable height support poles.
Meridian's claimed trade secrets include (1) Meridian's proprietary non-lethal practices, methods, and techniques for removing birds from commercial spaces and its unique application of bird behavior analysis and netting in that process; (2) Meridian's bird behavior assessment methods, techniques, and processes; and (3) Meridian's compiled, confidential customer and potential customer database including pricing, confidential contact information, customer buying preferences and history.
Safe Haven and Tolley, in their motion to dismiss, challenged Meridian's claim of trade secret misappropriation on several grounds, including that Meridian's trade secrets under categories (1) and (2) relating to the bird behavior assessment and capture techniques were not "secret" because Meridian filed and obtained patents on those assessment and capture techniques. In other words, because the information was subject to patent, it was known to the public and could not be secret.
The court rejected this argument, finding that Meridian explicitly described its patents as covering "non-proprietary" aspects of its bird capture systems. Taking all alleged facts as true and construing the counterclaim in a light most favorable to Meridian, the court inferred that Meridian's allegations were that "the public filing of the patents did not contain the trade secrets implicated" which therefore does not impact their purported "secrecy."
The court took a relatively permissive view on any potential overlap between publicly-known information disclosed in a Meridian's asserted patent and that which it claimed as trade secrets. The court inferred differences based on Meridian's general allegations that the patents cover "non-proprietary" aspects of its bird capture systems. In effect, the court took Meridian at its word that there is a distinction. As the proceedings unfold, Meridian may be required to more specifically identify the differences between its trade secrets and its patents, or it may be subject to continued challenges from Safe Haven and Tolley.
Originally published on February 22, 2024
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