Eli Attia v. Google LLC
983 F.3d 420
9th Cir.2020Background
- Eli Attia developed an architecture technology called "Engineered Architecture" (EA) and disclosed EA trade secrets to Google under an Inbound Services Agreement and Statement of Work in 2010–2011.
- Google filed patent applications relating to EA in 2011; those applications were published in 2012. Attia alleges Google then excluded him and used his EA technology to form Flux Factory.
- Attia sued in state court in 2014 for trade secret and contract claims; after the DTSA was enacted in 2016, he amended to add federal DTSA and RICO claims (alleging post-enactment continued use and RICO predicates).
- The district court dismissed the Fifth Amended Complaint with prejudice, finding the 2012 patent publications extinguished the trade secrets and that Attia failed to plead a RICO pattern; it declined supplemental jurisdiction over state claims.
- On appeal, the Ninth Circuit reviewed de novo and affirmed: (1) holding DTSA permits claims for continued post-enactment use when secrets remain trade secrets, but (2) finding Attia lacked DTSA standing because the 2012 patent publications placed the EA material in the public domain, and (3) rejecting Attia’s RICO theory for failure to plead related predicate acts forming a pattern.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether DTSA covers continued use of a trade secret that began pre-enactment | DTSA covers post-enactment misappropriation or continued use of secrets first misappropriated before May 11, 2016 | DTSA should not apply retroactively to conduct that occurred before enactment | Held: DTSA can reach continued post-enactment misappropriation; omission of UTSA’s anti-continued-use clause shows Congress intended coverage of continued use |
| Whether Google’s 2012 patent publications destroyed trade secret status and foreclose a DTSA claim | Attia: post-enactment continued use (and investor disclosures) supports a DTSA claim despite the patent publications | Google: publication in patent applications placed the information in the public domain, extinguishing trade secret status | Held: Patent application publication in 2012 extinguished trade secret status for the disclosed material; Attia lacks standing to assert DTSA for the patented disclosures |
| Whether Google is equitably estopped from invoking its pre-enactment patent publications | Attia: a wrongdoer cannot rely on its own unlawful disclosure to defeat trade secret claims; equitable estoppel should apply | Google: Attia previously authorized conditional use; Syntex is distinguishable and not controlling | Held: Rejected estoppel argument—Syntex not controlling here and Attia’s allegations (including authorization) undermine estoppel; court need not ignore that the secrets were extinguished |
| Whether Attia pleaded a RICO pattern based on related predicate acts | Attia: Google’s repeated modus operandi (induce disclosure via agreements then misuse) plus two other cases (Oracle, VSL) show a pattern | Google: The cited cases are not sufficiently related or involving the same defendants/methods to establish a RICO pattern | Held: Dismissed RICO and RICO-conspiracy claims—Plaintiff failed to allege two related predicate acts forming a pattern, and alleged acts did not tie to individual defendants or Flux Factory |
Key Cases Cited
- Oki Semiconductor Co. v. Wells Fargo Bank, Nat. Ass'n, 298 F.3d 768 (9th Cir. 2002) (standard of de novo review for dismissal)
- H.J., Inc. v. Northwestern Bell Tel. Co., 492 U.S. 229 (1989) (requirement that racketeering predicates be related and pose continued criminal activity for a RICO pattern)
- Howard v. Am. Online, Inc., 208 F.3d 741 (9th Cir. 2000) (definition that a pattern requires at least two predicate acts within ten years)
- United States v. Chung, 659 F.3d 815 (9th Cir. 2011) (trade secret analysis focuses on competitive advantage and fact-intensive inquiry)
- Ultimax Cement Mfg. Co. v. CTS Cement Mfg. Co., 587 F.3d 1339 (Fed. Cir. 2009) (publication in a patent extinguishes trade secret protection)
- Syntex Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677 (7th Cir. 1983) (discussing equitable estoppel where wrongful disclosure by a third party occurs)