ACI Worldwide Corp. v. Baldwin Hackett & Meeks
296 Neb. 818
Neb.2017Background
- ACI sued BHMI in 2012 alleging misappropriation of trade secrets (XPNET vs. BHMI’s TMS); most of ACI’s non–trade-secrets claims were dismissed pretrial, and ACI proceeded on the trade-secret theory.
- The district court repeatedly refused to compel BHMI’s source code/manuals unless ACI first performed non–trade-secret discovery and identified trade secrets with particularity; ACI took limited depositions before the first trial.
- First jury trial (2014): the jury found for BHMI (ACI failed to prove misappropriation). ACI later obtained email attachments (and related materials) from federal discovery against MasterCard that it claimed supported its trade-secret theory.
- BHMI counterclaimed for breach of the NDA, tortious interference, and violation of Nebraska’s Junkin Act (state antitrust statute); at the second trial (2015) the jury found for BHMI and awarded $43.8 million.
- The district court awarded BHMI ~$2.73 million in attorney fees under the Junkin Act. ACI moved to vacate/reopen based on the newly obtained federal materials and raised other challenges; the district court denied relief. ACI appealed.
Issues
| Issue | Plaintiff's Argument (ACI) | Defendant's Argument (BHMI) | Held |
|---|---|---|---|
| Whether denial of pretrial trade-secret discovery required vacating 2014 verdict | ACI: district court wrongly refused source code/manuals; without them ACI couldn’t prove misappropriation | BHMI: ACI had not exhausted non–trade-secret discovery or identified trade secrets with required particularity; protective interests warranted sequencing | Court: No abuse of discretion — sequencing non–trade-secret discovery before source-code disclosure was reasonable and ACI failed to pursue available discovery |
| Whether Noerr–Pennington immunity barred BHMI’s counterclaims | ACI: litigation activity is immune under Noerr–Pennington; immunity should preclude antitrust/tort claims | BHMI: Noerr–Pennington is an affirmative defense; ACI waived it by not pleading it earlier; sham exception not established | Court: Noerr–Pennington is an affirmative defense; ACI waived it by late assertion; denial of vacatur on this ground affirmed |
| Sufficiency of evidence for Junkin Act (antitrust injury/monopoly effect) | ACI: BHMI failed to prove antitrust injury (no market-wide price increase, reduced output, or quality deterioration) | BHMI: ACI’s suit kept TMS out of market, depriving customers of lower-cost (and multi-platform) alternative — evidence of reduced output and higher price | Court: Competent evidence supported antitrust injury (reduced output, increased price, quality effects); jury verdict not clearly wrong |
| Adequacy of damages proof and expert qualification; and attorney-fee award | ACI: BHMI’s principal (Jack) was unqualified and damages were speculative/failed to account for overhead; fee award lacked invoice support and multiplier was unsupported | BHMI: Jack had 30 years’ practical knowledge of finances/customers and provided substantiation; fee affidavit provided hours/rates and justification for enhancement | Court: Jack was sufficiently qualified; damages evidence allowed reasonable estimation of lost profits; fee affidavit was adequate and district court reasonably applied a multiplier — no abuse of discretion |
Key Cases Cited
- Eastern R. Conf. v. Noerr Motors, 365 U.S. 127 (1961) (establishes immunity for petitioning government, subject to sham exception)
- Mine Workers v. Pennington, 381 U.S. 657 (1965) (applies/extends Noerr doctrine to certain private petitioning activity)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49 (1993) (defines two-part test for sham exception: objectively baseless and subjectively in bad faith)
- Eastman Kodak Co. v. Image Technical Servs., Inc., 504 U.S. 451 (1992) (monopolization elements and inference of market power from predominant share)
- Jacobs v. Tempur-Pedic Int’l, Inc., 626 F.3d 1327 (11th Cir. 2010) (examples of actual anticompetitive effects: reduced output, increased price, deteriorated quality)