Cases from Eighth Circuit

Eighth Circuit, United States Court of Appeals
Eighth Circuit holds that compilations of publicly available and proprietary information may qualify as trade secrets

In AvidAir Helicopter Supply Inc. v. Rolls-Royce Corp., the Eighth Circuit interpreted the state’s implementation of the Uniform Trade Secrets Act, holding that compilations including both proprietary and public information may be entitled to trade secret protection where time and money were expended in their preparation and reasonable efforts were taken to maintain their secrecy.

The case involved engine repair procedures developed by Rolls-Royce, the manufacturer of said engines. Rolls-Royce documented its federally-approved methods, techniques, and specifications in Distributor Overhaul Information Letters (“DOILs”), which it exclusively distributed to selected authorized maintenance centers (“AMCs”). DOILs were periodically updated to keep pace with federal certification requirements. Although Rolls-Royce’s predecessor did not restrict access to DOILs, upon acquisition of the company in 1995, Rolls-Royce made efforts to establish proprietary control over the documents, stamping each subsequent revision with a proprietary legend and enforcing previously-executed nondisclosure agreements. The Eighth Circuit affirmed the trial court, holding that, based on value and efforts to maintain secrecy, revisions issued after Rolls-Royce’s takeover and implementation of precautionary measures were protectable as trade secrets. In response to AvidAir’s argument that the minimal amount of new information in the updated DOILs was insufficient to sustain a trade secret claim, the Court stated,

“Compilations are valuable, not because of the quantum of secret information, but because the expenditure of time, effort, and expense involved in its compilation gives a business a competitive advantage.”

AvidAir's petition for certiorari was denied on October 1, 2012.

Eighth Circuit
8th Circuit Questions Award of Attorney’s Fees in Mayo Clinic Case

The Eighth Circuit affirmed a district court judgment against Dr. Peter Elkin (Elkin) a clinician and researcher formerly employed by the Mayo Clinic (Mayo), while calling into question the district court’s award of attorneys’ fees. Mayo originally brought ten causes of action against Elkin relating to Elkin’s misappropriation of natural language processing software that Elkin developed during his employment with Mayo.

While overruling a number of Elkin’s objections and affirming the judgment against Elkin, the unanimous Eighth Circuit panel took issue with the district court’s award of $1,900,139.90 in attorneys’ fees. Only one of the ten claims brought against Elkin, the Minnesota trade secret claim, provided a statutory basis for recovering attorneys’ fees. Despite this, Mayo asserted and the district court agreed that $1,900,139.90 of $2,447,058.36 (78%) in total attorneys’ fees were attributable to the trade secret claim.

The Eighth Circuit found that Mayo’s broad monthly summaries of litigation expense did not provide a sufficiently detailed basis for the district court’s award, and found that rather than performing a proper Lodestar analysis, the district court had spent its time “lambasting Elkin for his employment of time-consuming litigation strategies.” The panel remanded the case for a new determination of attorneys’ fees, and ordered Mayo to “strike an appropriate balance between the 4,000 pages [of total documentation] and the 5-page chart provided” in its original request.