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JAMEEL AHED, ROBOTIC FX, INC., Defendants. CIVIL ACTION NO. 1:07 CV 11611 - NG
DEFENDANTS’ MEMORANDUM OF LAW PURSUANT TO THE COURT’S OCTOBER 3, 2007 ORDER The Court requested Defendants Jameel Ahed and Robotic FX, Inc. (collectively “Robotic FX”) to provide additional briefing regarding the relationship between the bid protest and the instant action. (See Hearing Tr., Day IV, 569:24-574:8). Robotic FX’s counsel has obtained and reviewed the bid protest, and it appears that the bid protest addresses issues not at issue in the present action. The Court also asked whether it even needs to address an injunction so long as there is a stay deriving from the bid protest. Id. Robotic FX asserts that any need for an injunction is moot in light of the stay, but Plaintiff iRobot Corporation (“iRobot”) has argued that an injunction is still appropriate. In addition to iRobot’s failure to meet its burden to obtain a preliminary injunction, the scope of iRobot’s proposed injunction is overly broad and improper. An injunction is inappropriate here. Indeed, iRobot’s proposed preliminary injunction seeks, in part, to enjoin Robotic FX “from selling or offering for sale Robotic FX, Inc.’s Negotiator tactical robot, or any other Robotic FX product that embodies iRobot Corporation’s trade secrets or confidential information.” (D.I. 5). Yet, the evidence presented during the four hearing days fails to warrant an injunction against Robotic FX, and its Negotiator tactical robot.
If this Court, however, were to grant a preliminary injunction, it should not adopt iRobot’s overly broad proposed injunction.1 The practical effect of iRobot’s proposed injunction is an injunction against Robotic FX’s entire Negotiator product line and, ultimately, its performance on the xBot Contract. An injunction against the entire Negotiator product is overly broad and improper. An injunction, at most, should only enjoin the use of iRobot’s trade secrets and confidential information. See, Solutions, Inc. v. Eastman Kodak Co., 345 F.Supp. 2d 23 (D. Mass., 2004). In this regard, iRobot should be required to identify with specificity the trade secrets and confidential information it alleges has been misappropriated, and which it seeks to enjoin. Typically, before any discovery relating to trade secrets is permitted, the trade secret plaintiff should provide to the Court and the Defendants a designation: in affidavit form and under oath, that sets forth with rigorous and focused particularity what, and only what, the plaintiffs claim to constitute the trade secrets allegedly misappropriated by either of the defendants that form the basis for this law suit. The designation must, with clarity that can be understood by a lay person, make clear and distinguish what is protectable from that which is not. See, e.g., Staffbridge, Inc. v. Gary D. Nelson Assocs., 2004 Mass. Super. LEXIS 215, 10-11 (Mass. Super. Ct. 2004); See also L-3 Communications Corp. v. Reveal Imaging Technologies, Inc. et al., 18 Mass. L. Rep. 512, 2004 Mass. Supr. LEXIS 519, *33-5 (Mass. Sup. Ct. 2004). Here, iRobot has been able to conduct discovery and has yet to identify with any specificity the trade secrets and confidential information it alleges have been misappropriated. Indeed, hearing
Just prior to Robotic FX’s filing the instant brief, iRobot filed an October 10, 2007 letter to the Court and accompanying revised proposed preliminary injunction. (D.I. 52) iRobot’s revisions to its proposed preliminary injunction do not remedy the defects of its prior proposal. Robotic FX reserves the right to fully respond to iRobot’s letter and revised proposed preliminary injunction.
testimony of iRobot’s Tim Ohm was fashioned around the Declaration of Jameel Ahed, Mr. Ahed’s deposition testimony and documents produced by the Defendants.2 To prevail on its misappropriation of trade secrets claim, iRobot must first show the existence of trade secrets. Echomail, Inc. v. American exp. Co., 378 F.Supp. 2d 1, 2-3 (D.Mass. 2005). Defendants have repeatedly argued, and the Court has suggested, that iRobot should identify with specificity the trade secrets and confidential information it alleges has been misappropriated. Once iRobot has submitted its designation, Defendants should be entitled to respond with the same specificity. Without a specific identification of iRobot’s alleged trade secrets, iRobot’s proposed injunction should be denied as overly broad. In order to meet the specificity requirements set forth in Federal Rule 65(d), a preliminary injunction must identify the trade secrets that it bars the defendant from misappropriating. Fed.R.Civ.P. 65(d); Corning, Inc. v. PicVue Electronics, Ltd., 365 F.3d 156, 159 (2nd Cir. 2004) (holding preliminary injunction impermissibly vague where it failed to identify the trade secrets and copyrighted works that it barred plaintiff from misappropriating and infringing); See also Schmidt v. Lessard, 414 U.S. 473, 476 (1974) (Federal Rule 65(d) “was designed to prevent uncertainty and confusion on the part of those faced with injunctive orders, and to avoid the possible founding of a contempt citation on a decree too vague to be understood.”) and See Burke v. Guiney, 700 F.2d 767, 769 (1st Cir., 1983) (“To be enforceable in contempt an injunctive decree must satisfy the specificity requirements of
This situation is compounded by the fact that iRobot now seeks to substantially review all documents and things seized under the temporary restraining order previously entered in the Alabama patent case. While there is no pressing reason for iRobot to immediately view this information for purposes of the Alabama patent case, iRobot’s motives clearly lie in reviewing this information for use in the instant action. This is improper, as discussed above, under the prevailing Massachusetts trade secret case law. See also L-3 Communications Corp., 18 Mass. L. Rep. 512 (denying a preliminary injunction and granting a protective order requiring a statement from plaintiffs “specifically identifying those trade secrets that form basis of their misappropriation claims before any discovery may be had on those claims.”).
Fed.R.Civ.P. 65(d)). It is possible that a sufficiently narrow injunction may not enjoin the Negotiator product altogether, thereby permitting performance under the xBot Contract. Such an injunction would avoid the concerns previously raised including, for example, (i) the harm to the public that would occur by enjoining the entire contract; and (ii) the question of the Court’s authority to enjoin a government procurement contract. For the foregoing reasons, iRobot’s motion for preliminary injunction should be denied.
Dated: October 10, 2007
Respectfully submitted, JAMEEL AHED, ROBOTIC FX, INC. By: /s/ Patricia Kane Schmidt One of their Attorneys
David J. Brody (BBO No. 058200) John L. DuPre (BBO No. 0549659) Hamilton, Brook, Smith & Reynolds, P.C. 530 Virginia Road P.O. Box 9133 Concord, Massachusetts 01742-9133 Telephone: (978) 341-0036 Facsimile: (978) 341-0136 Alan L. Barry (pro hac vice) Patricia Kane Schmidt (pro hac vice) Jason A. Engel (pro hac vice) BELL, BOYD & LLOYD LLP 70 West Madison Street, Suite 3100 Chicago, Illinois 60602 (312) 372-1121
CERTIFICATE OF SERVICE I HEREBY CERTIFY that true and correct copies of the foregoing Defendants’ Memorandum of Law Pursuant to the Court’s October 3, 2007 Order were served in the manner indicated below: Via ECF: Michael H. Bunis Michael S. Forman Fish & Richardson, PC 225 Franklin Street Boston, MA 02110-2804 617-521-7852 Fax: 617-542-8906 Email: email@example.com Email: firstname.lastname@example.org on this 10th day of October, 2007. /s/ Patricia Kane Schmidt One of the Attorneys for JAMEEL AHED, ROBOTIC FX, INC.
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