371 F. Supp. 3d 864
W.D. Wash.2019Background
- Plaintiff (Washington LLC) licensed its Inteum C/S® KMS to Defendant (National University of Singapore) under a 2012 License Agreement, a 2015 Software Maintenance Plan (SMP), and an NDA; SMP expired Aug 6, 2016 and Defendant was not required to renew.
- In 2016 NUS selected Wellspring for a migration; Defendant exported data from 399 Inteum database tables into .csv files and provided a subset (233 .csv files) to Wellspring via a secure portal; Defendant also sent a 39‑page Filename List of database objects and engaged in communications about functionality.
- Plaintiff alleges breaches of the License Agreement and NDA and misappropriation of trade secrets (secondary tables, Filename List, Inteum front end, backup database), seeking contract and trade secret damages including R&D costs.
- Key contested facts: whether Defendant provided Wellspring a full backup/database capable of restoring Inteum (vs. only .csv exports), whether information disclosed (secondary tables, Filename List, front‑end discussions) is legally protectable as trade secrets, and whether Plaintiff suffered recoverable damages.
- Court considered summary judgment and denied striking a late expert; allowed contract and trade secret claims to be based on same facts under Boeing/Modumetal line of authority.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendant breached License/NDA by sending a full Inteum backup to Wellspring | NUS provided a full backup/database to Wellspring in April 2016, violating confidentiality/transfer prohibitions | Evidence shows Defendant only provided .csv exports and other documents; disputed documentary proof insufficient | Genuine factual dispute exists; summary judgment denied on this breach theory |
| Whether disclosure of secondary tables (.csv) breached License/NDA or constituted trade secrets | Secondary tables (DD, AICS, RAC) are proprietary materialized data and trade secrets; disclosure was improper | .csv files contain only data/plain headers, no code or structure; techniques are industry‑known; not protectable | Disclosure did not breach License Agreement; Plaintiff failed to show secondary tables are trade secrets; summary judgment granted for Defendant |
| Whether Filename List (list of DB objects) is a trade secret and breach | Filename List is a ‘‘blueprint’’ of database; valuable to competitors | List shows only object names/types and counts; not functional detail; publicly similar info exists; not protectable | Filename List is not a trade secret; summary judgment granted for Defendant |
| Whether referring to / discussing Inteum front end or using data dictionary during migration breached agreements or misappropriated trade secrets | Front‑end discussions were efforts to reverse engineer/port functionality; data dictionary use facilitated misappropriation | Discussion of user‑visible functions and internal use of data dictionary for migration falls within licensee’s permitted use; data dictionary not shared with Wellspring | Disagreement on front‑end discussions: genuine dispute remains (summary judgment denied as to breach based on front‑end discussion). Use of data dictionary by NUS for migration did not breach contracts (summary judgment granted) |
| Whether disclosure to Wellspring (even if a backup) constituted actionable WUTSA misappropriation | Disclosure to Wellspring disclosed trade secrets and caused unjust enrichment/loss | Wellspring had previously received full Inteum backups and knew database structure; nothing new was disclosed; Plaintiff has not shown actual loss or unjust enrichment | Even if a backup was provided, unrebutted evidence shows Wellspring already had such backups; no actionable disclosure under WUTSA; summary judgment granted on trade secret claims premised on backup disclosure |
| Whether Plaintiff proved recoverable damages (lost contract, R&D costs, unjust enrichment) | Seeks value of lost contract and total R&D costs as damages/unjust enrichment | SMP was not required to be renewed; Defendant had no obligation to continue contract; damages theory is speculative and not tied to defendant’s profits or actual loss | Loss‑of‑contract damages fail as a matter of law; R&D / unjust enrichment damages unsupported—court grants summary judgment on those theories and ordered Plaintiff to show cause on remaining damages within 7 days |
Key Cases Cited
- Boeing Co. v. Sierracin Corp., 738 P.2d 665 (Wash. 1987) (WUTSA does not displace independent breach of contract claims)
- Modumetal, Inc. v. Xtalic Corp., 425 P.3d 871 (Wash. Ct. App. 2018) (Washington Court of Appeals follows Boeing; common‑law confidentiality/contract claims not preempted by WUTSA)
- Thola v. Henschell, 164 P.3d 524 (Wash. Ct. App. 2007) (articulated a broader preemption test that courts later questioned)
- Anderson v. Liberty Lobby, 477 U.S. 242 (1986) (summary judgment standard requiring view of evidence in light most favorable to nonmoving party)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986) (summary judgment and requirement for specific facts showing genuine issue)
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (party opposing summary judgment must show elements essential to case)