Sandvik, Inc. v. Mecca C & S, Inc.
38 Pa. D. & C.5th 332
| Pennsylvania Court of Common P... | 2014Background
- Sandvik, Inc. sues former Sandvik employee Mecca for misappropriation of trade secrets, breach of non-disclosure agreements, and unjust enrichment, alleging Mecca’s current spring software incorporates Sandvik’s confidential information.
- Mecca contends his software was independently developed from public concepts and his own ingenuity, and appeals a special trial master’s discovery ruling requiring access to Mecca’s spring technology software.
- Discovery framework in trade secrets disputes requires protected status to be proven first, then a compelled showing of compelling need balancing against harm; a court-appointed expert may review the software with confidentiality protections.
- Mecca worked at Sandvik from 1995–2009 and formed Mecca C & S, Inc. in 2009; Sandvik alleges he had access to proprietary spring software and information and that Mecca’s website markets Mecca’s own spring design software.
- Sandvik seeks production and access to Mecca’s software to prove misappropriation; the master initially denied a protective order for software discovery, and Mecca appeals; the court proposes appointing a spring technology software expert to resolve the dispute with a strict confidentiality protocol.
- The court ultimately orders appointment of a court expert to analyze both sides’ software, with confidential handling, and outlines procedures for disclosure, review, and cost allocation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Sandvik entitled to access Mecca’s spring software for trade secrets discovery? | Sandvik needs the software to prove misappropriation; confidentiality will protect secrets. | Access would reveal Mecca’s trade secrets and confidential info; no compelling need. | Yes; appoint a court expert to determine access and scope. |
| Should a court-appointed spring technology software expert review the software? | Expert review is necessary to resolve whether Sandvik’s trade secrets are misappropriated. | Independent development and public concepts negate the need for disclosure. | Yes; proceed with court-appointed expert and in-camera review if objections arise. |
| Is a confidentiality order sufficient to protect trade secrets during discovery? | Confidentiality provisions will prevent disclosure beyond the process. | Disclosure even under confidentiality risks irreparable loss of trade secrets. | Confidentiality together with expert review and in-camera steps provide protection. |
| Does the court have inherent authority to appoint a discovery master for this dispute? | Courts may appoint special masters to resolve discovery disputes. | Authority is uncertain; litigation should proceed without a master. | Yes; the court has inherent power to appoint a spring software expert. |
| Who bears the fees of the court-appointed spring software expert? | Fees to be shared equally by the parties. |
Key Cases Cited
- Rohm and Haas Company v. Lin, 992 A.2d 132 (Pa. Super. 2010) (trade secrets discovery requires balancing relevance and harm; protective orders may be used)
- Crum v. Bridgestone/Firestone No. Amer. Tire, LLC, 907 A.2d 578 (Pa. Super. 2006) (confidentiality of trade secrets is irreparably lost upon disclosure to adversary)
- Markwest Liberty Midstream & Resources, LLC v. Clean Air Council, 71 A.3d 337 (Pa. Cmwlth. 2013) (defines trade secret factors and shifting burden in PA discovery)
- Eiseman v. Department of Public Welfare, 85 A.3d 1117 (Pa. Cmwlth. 2014) (substantial secrecy and competitive value are crucial trade secret criteria)
- Playboy Enterprises, Inc. v. Welles, 60 F. Supp. 2d 1050 (S.D. Cal. 1999) (forensic expert approach to electronic discovery with protective orders)
- Liss & Marion, P.C. v. Recordex Acquisition Corp., 937 A.2d 503 (Pa. Super. 2007) (recognizes authority of special masters in discovery)