ACI Worldwide Corp. v. Baldwin Hackett & Meeks
296 Neb. 818
Neb.2017Background
- ACI Worldwide sued BHMI (and principals) alleging trade secret misappropriation related to middleware (XPNET v. TMS); BHMI counterclaimed for breach of NDA, tortious interference, and violation of Nebraska's Junkin Act.
- The district court limited trade-secret discovery: it required ACI to pursue non-trade-secret discovery and identify trade secrets with particularity before BHMI would be required to produce source code/manuals.
- First trial (2014): jury found for BHMI on ACI’s claims (ACI failed to prove misappropriation).
- ACI later obtained additional email attachments in federal litigation and sought to reopen discovery, vacate the 2014 verdict, and use the materials in state proceedings.
- Second trial (2015): jury found for BHMI on counterclaims, awarding ~$43.8M; court awarded BHMI ~$2.73M in attorney fees.
- ACI appealed, arguing discovery denial, improper exclusion of federal materials, insufficiency of BHMI’s evidence (including damages), and that Noerr-Pennington immunity barred BHMI’s claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether denial of trade-secret discovery before non-trade-secret discovery warranted vacatur of 2014 judgment | ACI: court’s refusal to compel BHMI source code/manuals deprived ACI of evidence and merited new trial | BHMI: ACI failed to pursue non-trade-secret discovery and had not shown particularized basis for trade-secret production | Court: No abuse of discretion; balancing need v. harm justified sequencing discovery |
| Whether Noerr-Pennington barred BHMI’s antitrust/tort claims | ACI: petitioning immunity protects filing suit and precludes BHMI’s counterclaims | BHMI: Noerr-Pennington is an affirmative defense and ACI waived it by not pleading it timely | Court: Noerr-Pennington is an affirmative defense; ACI waived it by late invocation; defense not available on appeal |
| Sufficiency of evidence for Junkin Act and breach of NDA (including damages) | ACI: BHMI failed to show antitrust injury, breached-contract proof insufficient, and damages speculative/unreliable | BHMI: evidence showed market impact, NDA breach (use of confidential info in suit), and lost-profits supported by company principal and corroborating testimony | Court: Jurors had competent evidence; verdict not clearly wrong—antitrust injury, NDA breach, and damages proven with reasonable certainty |
| Whether exclusion/admission of federal email attachments or related testimony required vacatur of 2015 judgment | ACI: federal attachments and favorable federal rulings would show good faith and should be admitted | BHMI: attachments were not timely offered in state trial; many attachments were BHMI/MasterCard confidential; ACI never furnished or properly offered them | Court: No record of offer at trial; motion to admit was waived/abandoned; even if excluded, materials would not have shown prejudice or changed outcome |
Key Cases Cited
- Eastern R.R. Presidents Conference v. Noerr Motor Freight, 365 U.S. 127 (1961) (Noerr-Pennington petitioning immunity principle)
- United Mine Workers v. Pennington, 381 U.S. 657 (1965) (extension of Noerr-Pennington to antitrust context)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., 508 U.S. 49 (1993) (sham litigation exception requires objective baselessness and subjective bad faith)
- Eastman Kodak Co. v. Image Technical Servs., 504 U.S. 451 (1992) (monopolization elements and market-power inference)
- Brunswick Corp. v. Pueblo Bowl-O-Mat, Inc., 429 U.S. 477 (1977) (antitrust standing and antitrust-injury concept)
- Jacobs v. Tempur-Pedic Int’l, Inc., 626 F.3d 1327 (11th Cir. 2010) (examples of actual anticompetitive effects: reduced output, increased price, deterioration in quality)