Struthers Scientific & International Corp. v. General Foods Corp.

51 F.R.D. 149, 14 Fed. R. Serv. 2d 1290, 168 U.S.P.Q. (BNA) 202, 1970 U.S. Dist. LEXIS 9483
District Court, D. Delaware·Decided November 18, 1970·No. Civ. A. Nos. 3665, 3725, 3850 and 3566·Published·Cited by 13 cases

Opinion

OPINION

LATCHUM, District Judge.

These four cases between Struthers Scientific and International Corporation, Struthers Wells Corporation (collectively “Struthers”) and General Foods Corporation (“General Foods”) raise issues of the validity and infringement of six Struthers’ United States Patents.1 The patents in suit generally relate to machinery or processes for processing coffee by wax removal, freeze concentration and freeze drying of extract to produce a freeze dried instant coffee. In addition, either by complaint or counterclaim filed in these actions, Struthers has charged (a) that it possessed trade secrets for processing coffee by freeze concentration including wax removal and freeze drying coffee extract to produce an instantly soluble coffee beverage product, (b) that certain of its trade secrets were disclosed to General Foods in confidence and (c) that General Foods misappropriated its trade secrets and [151]*151used them in violation of that confidence to Struthers’ detriment and damage.

These cases are presently before the Court on four interrelated discovery motions filed by the parties. General Foods has filed a motion under Rule 37(a) (2), F.R.Civ.P., to compel Struthers to file more responsive answers to General Foods’ interrogatories 119 and 120. General Foods’ interrogatory 119 requests Struthers to describe in detail each trade secret which Struthers has disclosed to General Foods since 1962 and to identify the person who disclosed it, to whom it was disclosed and the date and manner of disclosure.2 Interrogatory 120 asks Struthers, on the basis of extensive information which General Foods has heretofore supplied Struthers concerning its commercial operations for making freeze dried coffee in the United States and Canada, to identify specifically each feature of General Foods’ operations which Struthers contends embodies any trade secret which Struthers had previously disclosed to General Foods.3

Struthers has filed three motions: (1) for an order compelling certain General Foods’ employees to answer questions propounded to them on oral depositions relating to the confidential information allegedly misappropriated by General Foods from Struthers, (2) for an order requiring General Foods to produce a video tape prepared in 1969 showing General Foods’ Canadian process for the manufacture of freeze dried coffee, and (3) for letters rogatory to examine on oral deposition a witness in Belgium4 and two witnesses5 in the Federal Republic of Germany.

I. General Foods’ Motion To Compel Answers To Interrogatories 119 and 120.

By way of background, Struthers on January 26, 1970 filed a motion to compel General Foods’ employee-witnesses to answer certain questions on oral depositions dealing with Struthers’ trade secrets which Struthers has alleged General Foods misappropriated. General Foods vigorously opposed this motion on the ground that Struthers had failed to specifically identify the confidential information which it allegedly disclosed to General Foods. Thus, General Foods argued that before Struthers should be allowed to discover further into General Foods’ sensitive confidential information and trade secrets under the guise of seeing whether Struthers’ trade secrets have been misappropriated, it should first specify in detail those trade secrets which Struthers supposedly disclosed to General Foods. At that time Struthers had not specified the trade secrets which it allegedly disclosed to General Foods. However, at argument the Court was handed an unverified copy of a document, dated March 25, 1968, the original [152]*152of which apparently had been filed in an action between the same parties in the Supreme Court of the State of New York, which purported to specify what Struthers’ trade secrets had been disclosed to General Foods. This Court denied Struthers’ Eule 37 motion on February 6, 1970 stating:

“The Court is unable pending further clarification and study of the present record to conclude that Struthers should be able to delve into plaintiff’s [General Foods’] confidential industrial processes and operations without restriction on the scope of inquiry until the Court is satisfied that there has been an adequate delineation or particularization of the disclosures of the confidential information—including inventions, trade secrets, know-how and technology—that Struthers alleges were made to General Foods pursuant to a confidential relationship between the parties.”

On February 10, 1970 General Foods filed its interrogatories 119 and 120. Struthers answered interrogatory 119 under oath but objected to number 120. Struthers’ answer to 119 lists some 103 separate items, covering 54 typewritten legal pages, sworn to be trade secrets which it disclosed to General Foods. The answer also purports to identify the persons who made the disclosures, the persons to whom they were disclosed and the time period and means of disclosure.

In support of its motion to compel a more responsive answer to interrogatory 119, General Foods contends the present answer is a “sham” because it characterizes a “mishmash” of obviously public information as Struthers’ trade secrets. General Foods says that the public character of the information has been conceded by Struthers’ employees and that the compendium of information contains old information which has been completely discredited in proceedings before the United States Tariff Commission.

It is true that matters alleged to be trade secrets must be secret and matters of public or general knowledge cannot be appropriated by one and claimed as his trade secrets. Of course, Struthers will have the burden at trial of proving the secrecy of its alleged trade secrets at the time of disclosure but the cases have not yet reached that point. They are still in the discovery stage with the parties attempting to define and sharpen the issues for trial. The Court is unable on the present record to determine whether the separate items of information set forth in Struthers’ answer to interrogatory 119 are trade secrets, as sworn to by Struthers, or whether they consist of information in the public domain, as contended by General Foods. These are ultimate issues which cannot be resolved until after the presentation of evidence at trial. The Court cannot on any valid basis, from its own knowledge or otherwise, at this time determine whether or not the 103 separate items of information listed in the answer are bona fide trade secrets of Struthers. To rule on these questions now would require a full blown hearing on each separate item. No such burden was intended to be placed on the Court during discovery. In addition, I do not find that Struthers has ever conceded that the information was public knowledge. While the list of alleged trade secrets has been revealed to General Foods in one form or another in other litigation and to that extent may appear somewhat old and shopworn to General Foods, the present answer to interrogatory 119 is the first separate itemization which has been filed under oath in this proceeding setting out what Struthers claims to be its bona fide trade secrets. Furthermore, the Court is unable to fully understand the basis for the United States Tariff Commission’s order which dismissed Struthers’ complaint before the Commission and for that reason attributes to it no binding effect upon this Court.

Therefore, General Foods’ motion to compel a further answer to interrogate

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Struthers Scientific & International Corp. v. General Foods Corp., 51 F.R.D. 149, 14 Fed. R. Serv. 2d 1290, 168 U.S.P.Q. (BNA) 202, 1970 U.S. Dist. LEXIS 9483 (D. Del. 1970).

51 F.R.D. 149 (Struthers Scientific & International Corp. v. General Foods Corp.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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