ACI Worldwide Corp. v. Baldwin Hackett & Meeks
296 Neb. 818
| Neb. | 2017Background
- ACI sued BHMI in 2012 alleging trade secret misappropriation involving ACI’s middleware (XPNET) and BHMI’s TMS; BHMI counterclaimed for breach of a nondisclosure agreement (NDA), tortious interference, and violations of Nebraska’s Junkin Act (antitrust).
- Pretrial: the district court repeatedly denied ACI’s requests to obtain BHMI’s source code and manuals without first conducting more non-trade-secret discovery and identifying alleged trade secrets with particularity. ACI pursued discovery from MasterCard and later obtained email attachments in separate federal litigation.
- First trial (2014): jury found for BHMI on ACI’s misappropriation claim (ACI lost). ACI later obtained additional documents from federal proceedings and moved to vacate/reopen based on that “new” evidence; the court denied relief.
- Second trial (2015): jury found for BHMI on its counterclaims (breach of the NDA and Junkin Act) and awarded $43,806,362.70; the court awarded BHMI attorney fees and costs (~$2.73M and ~$7.6K).
- ACI appealed, arguing among other things that (1) discovery limits prevented it from proving misappropriation, (2) Noerr-Pennington immunity barred BHMI’s claims, (3) BHMI’s evidence and damages were insufficient, and (4) exclusion of the email attachments and other rulings required vacatur of the judgments.
Issues
| Issue | Plaintiff's Argument (ACI) | Defendant's Argument (BHMI) | Held |
|---|---|---|---|
| Whether court abused discretion by denying ACI trade-secret discovery before non-trade-secret discovery | Court should have compelled BHMI’s source code and manuals; denial prevented ACI from proving misappropriation and warranted vacatur/new trial | Court properly required ACI to pursue non-trade-secret discovery and particularize alleged trade secrets before exposing BHMI’s confidential code | No abuse of discretion; court permissibly limited trade-secret discovery pending further non-trade-secret discovery and ACI’s particularization |
| Whether Noerr‑Pennington immunity barred BHMI’s antitrust and tort claims | Filing suit is privileged; immunity applies and should have precluded BHMI’s claims | Noerr‑Pennington is an affirmative defense; ACI waived it by failing to plead it timely | ACI waived Noerr‑Pennington by not pleading it as an affirmative defense; doctrine not applied to bar claims |
| Sufficiency of evidence for Junkin Act (antitrust) claim | BHMI failed to prove antitrust injury (no market-wide price increase, output reduction, or quality deterioration) | BHMI showed anticompetitive effects: TMS was prevented from entering market, offered lower price and broader platform support, and FNBO canceled contract due to ACI’s suit | Competent evidence supported antitrust injury (reduced output, higher prices, reduced quality options); jury verdict sustained |
| Sufficiency and admissibility of BHMI’s damages evidence | Lost-profits evidence was speculative; company principal (Jack) lacked formal accounting qualifications and omitted overhead/new-version costs; email attachments (new evidence) were improperly excluded | Jack had 30 years’ practical knowledge of BHMI finances; overhead costs were fixed and need not be deducted; attachments were not offered at trial or were obtained after initial pleadings | Trial court did not abuse discretion: Jack’s testimony admissible; damages evidence sufficient; ACI did not properly offer the federal attachments at trial and had not shown prejudice |
Key Cases Cited
- Eastern R.R. Conf. v. Noerr Motors, 365 U.S. 127 (1961) (establishes petitioning immunity from antitrust liability)
- United Mine Workers v. Pennington, 381 U.S. 657 (1965) (extends Noerr immunity principles)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., 508 U.S. 49 (1993) (defines the "sham" exception to Noerr immunity: objectively baseless and subjectively in bad faith)
- Eastman Kodak Co. v. Image Technical Servs., 504 U.S. 451 (1992) (defines monopoly power and antitrust analysis elements)
- Brunswick Corp. v. Pueblo Bowl‑O‑Mat, 429 U.S. 477 (1977) (requires proof of antitrust injury for antitrust damages)
- Jacobs v. Tempur‑Pedic Int’l, Inc., 626 F.3d 1327 (11th Cir. 2010) (examples of actual anticompetitive effects: reduced output, increased prices, deterioration in quality)