ACI Worldwide Corp. v. Baldwin Hackett & Meeks
296 Neb. 818
| Neb. | 2017Background
- ACI Worldwide sued Baldwin Hackett & Meeks, Inc. (BHMI) alleging misappropriation of trade secrets (relating to ACI’s XPNET middleware) after BHMI developed competing middleware (TMS) for MasterCard; most non–trade-secret claims were dismissed pretrial.
- The parties executed an NDA before ACI representatives inspected certain BHMI technical manuals; the NDA barred ACI from using BHMI confidential information in any legal action against BHMI or its customers.
- ACI sought BHMI’s source code and manuals in discovery; the district court denied broad trade-secret disclosure until ACI pursued more non–trade-secret discovery and identified alleged misappropriations with particularity.
- First trial (2014): jury found for BHMI on defenses to ACI’s claims (ACI failed to prove misappropriation).
- Between trials ACI obtained email attachments from MasterCard via federal litigation and sought to reopen discovery and vacate the 2014 judgment; the district court declined to reopen before the second trial.
- Second trial (2015): jury awarded BHMI $43,806,362.70 on counterclaims (breach of NDA and violations of Nebraska’s Junkin Act); district court awarded BHMI $2,732,962.50 in attorney fees. ACI appealed.
Issues
| Issue | Plaintiff's Argument (ACI) | Defendant's Argument (BHMI) | Held |
|---|---|---|---|
| Denial of trade-secret discovery before first trial | Court’s protective-order sequencing improperly blocked ACI from obtaining BHMI source code and manuals, prejudicing ACI’s misappropriation claim | Court properly required ACI to pursue non–trade-secret discovery and particularize alleged trade secrets before disclosure | Court did not abuse discretion; requiring non–trade-secret discovery first was a permissible balance of need vs. harm |
| Motion to vacate 2014 judgment based on newly obtained federal attachments | Newly obtained email attachments show ACI could have won; judgment should be vacated and new trial granted | Attachments were obtained later and ACI had not exhausted non–trade-secret discovery before first trial | Denial of vacatur affirmed; ACI waived opportunity and district court reasonably exercised discovery discretion |
| Noerr–Pennington immunity to BHMI’s antitrust and tort claims | Filing the suit is immune under Noerr–Pennington; thus BHMI’s claims barred | Noerr–Pennington is an affirmative defense and ACI waived it by not pleading it timely | Court held Noerr–Pennington is an affirmative defense and ACI waived it; judgment not vacated on this ground |
| Sufficiency of Junkin Act (antitrust) evidence | BHMI failed to prove antitrust injury (no market-wide price, output, or quality harm) | BHMI presented evidence TMS would have provided cheaper, higher-quality alternative and ACI’s suit foreclosed market access; FNBO loss shows anticompetitive effect | Jury had competent evidence of antitrust injury; appellate court affirms jury verdict |
| Breach of NDA | The information ACI relied on was public; NDA not a ‘never-sue’ covenant | NDA prohibited use of BHMI confidential information in any legal action; ACI used information to bring suit | Contract language is clear; jury could find ACI utilized confidential info in suit; verdict for BHMI affirmed |
| Damages & expert qualification | BHMI’s damages testimony (company principal Jack) was unqualified and speculative; lost-profits calc omitted costs | Jack had 30 years’ proprietary knowledge, used actual contracts and market testimony; overhead not required to be deducted | Trial court did not abuse discretion admitting Jack; damages evidence sufficient for jury; award affirmed |
| Attorney-fee award | Fee award excessive and unsupported because invoices not admitted; multiplier improper | BHMI submitted detailed affidavit of hours/rates and court may apply enhancement for risk/complexity | Affidavit furnished sufficient proof; district court’s fee determination (including multiplier) was reasonable and affirmed |
Key Cases Cited
- Eastern R. Conf. v. Noerr Motors, 365 U.S. 127 (1961) (establishes petitioning immunity doctrine)
- Mine Workers v. Pennington, 381 U.S. 657 (1965) (extends Noerr petitioning immunity principles)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993) (defines the ‘‘sham’’ exception to Noerr immunity)
- Eastman Kodak Co. v. Image Technical Services, Inc., 504 U.S. 451 (1992) (monopolization elements and market-power inference)
- Health Consultants v. Precision Instruments, 247 Neb. 267 (Neb. 1996) (Nebraska precedent applying monopolization elements under Nebraska law)