Cases from U.S. District Court for the Northern District of Illinois

U.S. District Court for the Northern District of Illinois
Attempted Theft of Trade Secrets Upheld Even if Not Trade Secrets Stolen

At issue here is whether Defendant Robert O’Rourke's post-conviction motion for a new trial should be granted in a case involving attempted and actual trade secret theft. O’Rourke argued that he could only be convicted of attempted trade secret theft if the information at issue actually constituted a trade secret. However, the Northern District Court of Illinois denied the motion and upheld the conviction, affirming that one can be convicted of attempted trade secret theft if one believed the information to be a trade secret, regardless of whether the information actually constituted a trade secret; it is the intent of the alleged theft that is judged.

Background: O'Rourke was an engineer at Dura-Bar, a cast-iron manufacturer. He accepted a position as vice president of Hualong, a competing cast-iron manufacturer, without Dura-Bar's knowledge. On a Sunday prior to his last day at Dura-Bar, O'Rourke entered Dura-Bar with his key and downloaded over 1,900 documents onto his personal hard drive. After his last day of at Dura-Bar, O'Rourke went to drinks with coworkers and informed them for the first time he was going to work at Hualong. The coworkers informed Dura-Bar management which contacted law enforcement for emergency search warrants. About 5 days later, O'Rourke was boarding a flight where he was stopped and searched by the U.S. Customs and Border Patrol. They found the hard drive with all of Dura-Bar's documents in his checked baggage. In July 2017, a grand jury returned a 13-count Indictment against O’Rourke, charging him with stealing, downloading, and possessing trade secrets (and attempting to do the same) in violation of 18 U.S.C. § 1832.

The charges against O’Rourke proceeded to trial in February 2019. At trial, O’Rourke did not contest that he took materials without Dura-Bar’s permission. But his counsel contended that the documents in question were not trade secrets and that he did not believe them to be so when he took them. Following a three week trial, the jury found O'Rourke guilty of attempting to steal, stealing, downloading, and possessing certain, but not all of the documents. The mixed verdict suggests that the jury questioned whether some of the documents constituted trade secrets and if O’Rourke considered them to be trade secrets. O’Rourke appealed for this new trial based on, among other reasons, the Government's requirement to prove whether or not the documents were trade secrets.

Analysis: O’Rourke took issue with the Court’s decision to allow the Government to pursue an “attempt” theory of criminal liability at trial, arguing that § 1832 only allows for an attempt violation when a defendant tries and fails to misappropriate actual trade secrets, so he could only be held responsible for committing the substantive offense and not for attempting to commit that offense. The Court looked to U.S. v. Hsu, 155 F.3d 189, 198 (3d Cir. 1998) and reasoned that the attempt violations for which O’Rourke was charged do not require proof that a trade secret exists; instead, they require proof that O'Rourke believed that information to be a trade secret.

The Court held "an attempt charge allows the Government to charge not only individuals who are unsuccessful in stealing actual trade secrets, but also those who successfully steal information that they believe to contain trade secrets but in fact do not." Judge Wood analogized the situation to one involving attempted distribution of illegal drugs, explaining that “a would-be cocaine buyer cannot avoid criminal responsibility even if the only substances he managed to purchase were fakes planted by police officers.” Therefore, if the jury concluded that O’Rourke believed a document was a trade secret when he took it, he is guilty for attempted theft even if the document ultimately was not a trade secret.

As a note, it was undisputed that O’Rourke went to Dura-Bar’s facility, placed copies of Dura-Bar’s documents on his personal hard drive, and attempted to take that hard drive with him overseas. The issue at trial was whether the documents that O’Rourke took were actually trade secrets and whether he also believed them to be so. O'Rourke also appealed the conviction order based off of alleged errors in the jury instructions, which we do not mention in this summary as it is outside the scope of our forum. However, the Northern District Court of Illinois ultimately denied O'Rourke's motion for a new trial, including his allegedly erred jury instruction claims.

For Judge Wood's entire Memorandum Opinion and Order, please see below.

U.S. District Court for the Northern District of Illinois
Illinois district court rules that unjust enrichment and fraudulent inducement claims concerning information not rising to level of trade secrets are not preempted by ITSAe

In Miller UK Ltd. v. Caterpillar, Inc., the U.S. District Court for the Northern District of Illinois held on April 26, 2012 that the Illinois Trade Secrets Act, 765 ILCS §1065/1 et seq., preempted only common law claims of misappropriation of trade secrets and did not preempt unjust enrichment and fraudulent inducement claims involving misappropriated information that did not constitute trade secrets. In its ruling, the district court refused to follow an Illinois Appeals Court decision in Pope v. Alberto-Culver Co., 26 Ill. App. 3d 512 (1st Dist. 1998), which held that the Act preempted both common law claims for misappropriation of trade secrets and confidential information that did not rise to the level of trade secrets. The district court found that the Appeals Court in Pope failed to address §1065/8(b)(2), which provided that the Act would not affect “other civil remedies that are not based upon misappropriation of a trade secret.” The Illinois Supreme Court had not ruled yet on whether the Act preempted claims involving misappropriated confidential information that did not constitute trade secrets. But the district court was confident that the State’s highest court would have also, at least, declined to follow Pope.

Miller UK, Ltd. (“Miller”), a supplier of parts for construction and mining equipment, filed its claims for misappropriation against Caterpillar, Inc. (“Caterpillar”) on June 17, 2010. Miller’s claims arise from a 1999 supply agreement to supply parts to Caterpillar for its machines. During this relationship, Miller disclosed to Caterpillar its trade secrets and confidential information about the design, manufacture, and testing of Miller’s coupler technology. Miller asserted that the disclosed information was subject to confidentiality requirements in the supply agreement. Caterpillar, however, allegedly took the information and used it to design its own parts.