ACI Worldwide Corp. v. Baldwin Hackett & Meeks
296 Neb. 818
| Neb. | 2017Background
- ACI Worldwide sued BHMI in 2012 for trade secret misappropriation (XPNET v. TMS); BHMI counterclaimed for breach of a nondisclosure agreement (NDA), tortious interference, and violations of Nebraska’s Junkin Act (state antitrust law).
- District court limited BHMI trade-secret discovery (source code and manuals) until ACI pursued non–trade-secret discovery and identified alleged misappropriation with particularity; ACI proceeded largely with circumstantial proof at a 2014 trial and lost on its claims.
- ACI later obtained email attachments and other materials in a separate federal action; it moved to vacate the 2014 judgment and to reopen discovery, but the district court denied relief and sealed the materials pending further proceedings.
- In a 2015 trial on BHMI’s counterclaims, the jury found for BHMI on the NDA breach and Junkin Act claims, awarding $43.8 million; the district court awarded BHMI $2.73 million in attorney fees and costs.
- ACI appealed, arguing (inter alia) discovery errors (denial of BHMI trade-secret production), that Noerr-Pennington immunity barred BHMI’s claims, insufficiency of evidence (including damages), erroneous exclusion of federal materials, and abuse in the fee award.
Issues
| Issue | Plaintiff's Argument (ACI) | Defendant's Argument (BHMI) | Held |
|---|---|---|---|
| Whether denying pretrial access to BHMI source code/manuals required vacatur of 2014 verdict | Denial prevented ACI from proving misappropriation; new federal materials later showed missing proof | Court properly required non–trade-secret discovery and particularity before risking disclosure of BHMI trade secrets | District court did not abuse discretion; denial proper given ACI’s limited non–trade-secret discovery |
| Whether Noerr‑Pennington immunity barred BHMI’s antitrust/tort claims | Filing suit is petitioning activity; immunity applies | ACI waived the defense by failing to plead it as an affirmative defense and raised it too late | ACI waived Noerr‑Pennington; district court did not err in rejecting the defense |
| Sufficiency of evidence for Junkin Act, NDA breach, and damages | Jury lacked competent evidence of antitrust injury, contract breach, and measurable damages | BHMI presented testimony on market (ACI’s dominance), lost contracts (FNBO), lost sales projections, and founder/finance testimony supporting lost‑profits calculus | Viewing evidence in light most favorable to winner, jury had competent evidence; verdicts upheld |
| Attorney fees award reasonableness | Fee award excessive; BHMI failed to produce billing invoices and improperly used a multiplier | BHMI submitted detailed affidavit summarizing hours/rates and case complexity justified enhanced fee | District court did not abuse discretion in awarding $2.73M; affidavit sufficed and multiplier justified by factors (complexity, results, novelty) |
Key Cases Cited
- Eastern R.R. Conf. v. Noerr Motors, 365 U.S. 127 (U.S. 1961) (establishes petitioning immunity that later became Noerr‑Pennington)
- United Mine Workers v. Pennington, 381 U.S. 657 (U.S. 1965) (extends Noerr immunity to certain competitive petitioning conduct)
- Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., 508 U.S. 49 (U.S. 1993) (defines the "sham" exception to Noerr‑Pennington: objectively baseless and subjectively bad faith)
- Eastman Kodak Co. v. Image Technical Servs., 504 U.S. 451 (U.S. 1992) (explains monopolization elements and inference of monopoly from market share)
- Brunswick Corp. v. Pueblo Bowl‑O‑Mat, 429 U.S. 477 (U.S. 1977) (requires proof of antitrust injury to recover under antitrust statutes)