ACI Worldwide Corp. v. Baldwin Hackett & Meeks
296 Neb. 818
| Neb. | 2017Background
- ACI sued BHMI in 2012 alleging trade secret misappropriation (primarily that BHMI’s TMS improperly used ACI’s XPNET material); most non-trade-secret claims were dismissed pretrial and the misappropriation claim proceeded to a 2014 jury trial where ACI lost.
- BHMI counterclaimed (breach of NDA, tortious interference, and violations of Nebraska’s Junkin Act) and in a separate 2015 trial the jury found for BHMI on the counterclaims, awarding $43,806,362.70; the district court later awarded BHMI attorney fees and costs.
- Before the first trial the district court denied ACI’s motions to compel BHMI’s source code and manuals, requiring ACI to do further non-trade-secret discovery and identify trade secrets with particularity before forcing disclosure. ACI did limited non-trade-secret discovery.
- Between trials ACI obtained email attachments from MasterCard in federal litigation that it claimed showed BHMI had received ACI materials; ACI sought to reopen discovery and to use those materials but did not offer them at the second trial.
- After the 2015 verdict ACI moved to vacate both judgments and for new trials on grounds including denied discovery, insufficient evidence, Noerr-Pennington immunity, and erroneous exclusion of the email attachments; the district court denied those motions and the Nebraska Supreme Court affirmed.
Issues
| Issue | Plaintiff's Argument (ACI) | Defendant's Argument (BHMI) | Held |
|---|---|---|---|
| Whether the court abused discretion by denying ACI trade-secret discovery and refusing to vacate the 2014 judgment | Denial of source‑code/manual discovery prevented ACI from proving misappropriation; new MasterCard attachments warranted vacatur/new trial | Court properly required ACI to pursue non‑trade‑secret discovery and particularize its claims before risking disclosure of BHMI trade secrets | No abuse of discretion; court reasonably balanced ACI’s need vs. BHMI’s harm and ACI had not exhausted non‑trade discovery |
| Whether ACI preserved or waived Noerr‑Pennington immunity to BHMI’s counterclaims | Noerr‑Pennington is a defense that precludes BHMI’s antitrust/tort claims; immunity applies | ACI failed to plead Noerr‑Pennington as an affirmative defense and raised it too late, so it was waived | Waived: Noerr‑Pennington is an affirmative defense and ACI raised it untimely; district court did not err |
| Sufficiency of evidence for BHMI’s Junkin Act (antitrust) claim — antitrust injury element | BHMI failed to prove market‑wide anticompetitive effects (prices, output, quality) | BHMI showed TMS would be lower‑priced, multi‑platform alternative; ACI’s suit prevented marketing and licensing, causing reduced output and higher prices | Competent evidence supported an antitrust injury; jury verdict was not clearly wrong |
| Sufficiency of evidence for breach of NDA (use of confidential information in lawsuit) | ACI argued alleged facts were public so could not be confidential; NDA shouldn’t be read as a blanket "no‑sue" bar | NDA explicitly barred ACI from utilizing BHMI confidential information "in any manner whatsoever," including in litigation | Contract clear; jury could find ACI used BHMI confidential info in its suit; breach finding upheld |
| Damages and expert testimony (Jack’s lost‑profits testimony and admissibility) | Jack lacked formal accounting qualifications and failed to deduct certain costs; damages were speculative and unsupported by business records | Jack had 30 years’ direct business knowledge, used actual contracts and market testimony; overhead fixed and need not be deducted | Trial court did not abuse discretion in admitting Jack; evidence sufficed to allow jury to reasonably estimate lost profits |
| Attorney‑fee award amount | BHMI failed to introduce invoices; multiplier was unsupported | BHMI submitted affidavit summarizing hours/rates and court applied recognized factors (complexity, result, hours) | Fee award supported by record and not an abuse of discretion |
Key Cases Cited
- Eastern R.R. Conf. v. Noerr Motor Freight, 365 U.S. 127 (1961) (establishes petitioning immunity from tort/antitrust liability absent a sham)
- United Mine Workers v. Pennington, 381 U.S. 657 (1965) (extends Noerr doctrine to collective petitioning; foundation for Noerr‑Pennington)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., 508 U.S. 49 (1993) (defines the “sham” exception to Noerr: objective baselessness plus subjective bad faith)
- Eastman Kodak Co. v. Image Technical Servs., 504 U.S. 451 (1992) (monopolization/market‑power principles used in assessing antitrust elements)
- Jacobs v. Tempur‑Pedic Int’l, Inc., 626 F.3d 1327 (11th Cir. 2010) (illustrates examples of anticompetitive effects relevant to antitrust injury)
- Koster v. P & P Enters., 248 Neb. 759 (1995) (Nebraska standard: jury verdict will not be set aside unless clearly wrong)