Wyeth v. Natural Biologics, Inc.
Opinion of the Court
Wyeth brought an action against Natural Biologies, Inc. and Natural Biologies, LLC (“Natural Biologies”) for misappropriation of a trade secret, in violation of the Minnesota Uniform Trade Secrets Act, Minnesota Statute sections 325C.01 — .08 (“MUTSA”). Wyeth alleged that Natural Biologies illegally acquired Wyeth’s trade secret process for producing bulk natural conjugated estrogens used in the development of Premarin, the only hormone replacement therapy drug on the market derived from a natural source.
Wyeth manufactures and sells Premarin, which is prescribed for the treatment of symptoms associated with menopause. Premarin has been on the market since 1942 without any natural generic substitute. Wyeth manufactures natural conjugated estrogens at its Brandon, Manitoba facility using a process called the Brandon Process.
Natural Biologies, founded by David Saveraid, manufactures natural conjugated estrogens. In 1991, Saveraid began to explore manufacturing conjugated estro-gens, and over a decade later, in March 2002, Natural Biologies entered into an agreement with Barr Laboratories, Inc., under which Barr agreed to purchase material from Natural Biologies and convert the material into a tablet to sell as a generic form of Premarin, pending FDA approval. Natural Biologies claims to have independently developed its extraction process through review of Wyeth’s expired patents, scientific literature, and Wyeth’s Brandon Facility waste manifests, which reveal the names and volumes of chemicals used at the Brandon Facility. Saveraid also collaborated with scientists and pharmaceutical companies to develop Natural Biologics’s process. In October 1994, Saveraid began communication with former Wyeth chemist Dr. Douglas Irvine, and within a year, Natural Biologics’s extraction process yielded material that was the same as Premarin.
I. The Brandon Process As a Trade Secret
We review the district court’s findings of fact for clear error. Vekamaf Holland B.V. v. Pipe Benders, Inc., 696 F.2d 608, 610 (8th Cir. 1982). We must first decide whether the district court erred in holding that Wyeth’s Brandon Process is a trade secret. Under MUTSA, a trade secret is information that: (1) is not generally known or readily ascertainable, (2) has value as a result of its secrecy, and (3) is the subject of reasonable efforts under the circumstances to protect its secrecy. Minn.Stat. § 325C.01, subd. 5.
Natural Biologies apparently concedes that the Brandon Process is not generally known or readily ascertainable, and that it has value as a result of its secrecy. It contends, however, that Wyeth failed to adequately secure its trade secret in many ways: non-Wyeth employees toured the Brandon Facility without having signed confidentiality agreements; there were no posted signs inside the facility indicating that the Brandon Process information was confidential; unmarked
The district court held that the Brandon Process is a trade secret, and that Wyeth had implemented reasonable efforts to
Based on the lack of repeated losses of confidential information regarding the Brandon Process and Wyeth’s use of physical security, limited access to confidential information, employee training, document control, and oral and written understandings of confidentiality, the Court concludes that Wyeth subjected the Brandon Process to efforts that are reasonable under the circumstances to maintain its secrecy.
(Order at 41.) Absolute secrecy is not required by MUTSA. See Surgidev Corp. v. Eye Tech., Inc., 828 F.2d 452, 455 (8th Cir. 1987) (“Only reasonable efforts, not all conceivable efforts, are required to protect the confidentiality of putative trade secrets.”); LaserMaster Corp. v. Sentinel Imaging, 931 F.Supp. 628, 635 (D.Minn. 1996) (noting “absolute secrecy” is not required to maintain trade secret’s confidential nature). Furthermore:
The existence of a trade secret is not negated merely because an employee or other person has acquired the trade secret without express or specific notice that it is a trade secret if, under all the circumstances, the employee or other person knows or has reason to know that the owner intends or expects the secrecy of the type of information comprising the trade secret to be maintained.
Minn.Stat. § 325C.01, subd. 5. Having considered the totality of the circumstances, we hold the court below did not clearly err in finding that Wyeth took appropriate steps to maintain the secrecy of the Brandon Process.
We next consider whether Natural Biologies misappropriated the Brandon Process. A defendant is liable for misappropriation of a trade secret if the defendant has acquired the trade secret through improper means. Minn.Stat. § 325C.01, subd. 3. In some instances, the secret is so unique that the emergence of a similar, slightly altered product gives rise to an inference of misappropriation. See Pioneer Hi-Bred Inti v. Holden Foundation Seeds, Inc., 35 F.3d 1226, 1239-40 (8th Cir. 1994) (interpreting similar Iowa state trade secret law).
David Saveraid engaged in communications with Dr. Irvine from October 1994 through early 1996. Saveraid’s subsequent attempts to conceal such communications, Natural Biologics’s financial motives for copying the Brandon Process, Saveraid’s questionable ability to develop an extraction process identical to the Brandon Process,
Natural Biologies next asserts that Wyeth’s misappropriation claim is barred by MUTSA’s statute of limitations. “An action for misappropriation must be brought within three years after the misappropriation is discovered or by the exercise of reasonable diligence should have been discovered.” Minn.Stat. § 325C.06 (2000).
Natural Biologies argues that Wyeth should have discovered its claim before November 17, 1995, more than three years prior to the commencement of the action. It asserts that Wyeth received a brochure from Natural Biologies in August 1994 announcing that Natural Biologies was in possession of a trade secret for the estrogen extraction process. In September 1994, Dr. Michael Dey, vice president and general manager of a generic subsidiary of Wyeth, ESI Pharma, called David Saver-aid about Natural Biologics’s products, and in December 1994, Saveraid left Dr. Dey a voice message regarding natural conjugated estrogen supply, the pilot manufacture of material, and whether Wyeth might be interested in Natural Biologics’s supply. Natural Biologies asserts that had Wyeth been diligent, and had it accepted Saver-aid’s offer to supply material, or even requested a product sample from Natural Biologies, it would have had enough evidence of misappropriation to file a lawsuit by September 1995.
The district court found that before November 17, 1995, Wyeth had only four sources of information about Natural Bio-logies: (1) the Natural Biologies marketing brochure; (2) Dr. Dey’s telephone conversation with David Saveraid; (3) the previously mentioned voice message to Dr. Dey; and (4) Ken Saveraid’s
With regard to the last two sources of information.' related to Natural Biologics’s activities, Wyeth argues that Saveraid’s December 1994 telephone message to Dr. Dey revealed nothing about Natural Bio-logies’s extraction process, and that in Ken Saveraid’s conversation with Chambers in September 1995, he mentioned Natural Biologics’s use of the “Chicago Process” method of extraction, which could have been an entirely independent process. The record does not suggest that prior to November 17, 1995, Wyeth knew or should have known facts sufficient to support a lawsuit against Natural Biologies for trade secret misappropriation.
We hold that the district court did not clearly err in concluding that Wyeth had no knowledge of any misappropriation pri- or to November 17, 1995, and that its claim was therefore not barred. The Natural Biologies brochure had been drafted and sent before Saveraid’s first contact with Dr. Irvine, and presumably before the misappropriation had occurred. The brochure did not reveal that Natural Bio-logies had misappropriated the Brandon
III. Equitable Relief
Misappropriation of a trade secret constitutes irreparable harm that, under certain circumstances, warrants injunctive relief to prevent the misappropriator from selling or manufacturing the product embodying the secret. Minn.Stat. § 325C.02. We review the court’s grant of injunctive relief for an abuse of discretion. See FDIC v. Bell, 106 F.3d 258, 262-63 (8th Cir. 1997).
At oral argument Natural Biologies asserted its right to oppose Wyeth’s request for equitable relief. In paragraph 23 of its Conclusions of Law, the district court held that because Natural Biologies concealed its misappropriation of the Brandon Process, it has unclean hands, and was therefore not entitled to the equitable defenses of laches, unclean hands, waiver, or estoppel. The doctrine of “unclean hands” bars a party who acted inequitably from obtaining equitable relief. Heidbreder v. Carton, 645 N.W.2d 355, 371 (Minn. 2002); Gully v. Gully, 599 N.W.2d 814, 825 (Minn. 1999). However, the party with unclean hands is not barred from opposing a request for equitable relief by the other side. Heidbreder, 645 N.W.2d at 371.
Natural Biologies asserts that the district court abused its discretion by issuing a permanent injunction against all activity related to the development of natural conjugated estrogens. It concedes that temporary injunctions may be appropriate for a reasonable period of time to eliminate commercial advantage from the misappropriation, see Minn.Stat. § 325C.02(a), but claims that a permanent injunction imposes unnecessary hardship against it. An injunction for trade secret misappropriation, it argues, should continue only for the approximate period of time it would take a legitimate competitor, either by independent development or reverse engineering, to develop a successful product or process without the use of plaintiffs trade secret. See Cheme Indus., Inc. v. Grounds & Assocs., Inc., 278 N.W.2d 81, 93 (Minn. 1979).
The district court held that the misappropriation would cause Wyeth irreparable
Natural Biologies attempted to conceal its misappropriation of the Brandon Process by destroying evidence, giving false testimony, and improperly redacting evidence[.][T]he Court concludes that Natural Biologies cannot be trusted to avoid using the misappropriated process and cannot be trusted to obey an Order that permits them to exercise any discretion. Accordingly, the Court concludes that the scope of the injunction requested by Wyeth is appropriate.
(Order at 52.) The district court reasoned that a permanent injunction was appropriate because “[i]n its decades-long history, nobody has legitimately replicated the Brandon Process despite its value.” Id. at 52-53. Having thoroughly considered Natural Biologics’s conduct and arguments, we hold that the district court did not abuse its discretion in issuing a permanent injunction against Natural Biologies.
For the reasons cited above, we affirm the district court.
. The key ingredient for Premarin is made by extracting conjugated estrogens from pregnant mare urine ("PMU”).
.The Honorable Joan N. Ericksen, United States District Judge for the District of Minnesota.
. Documents not identified as trade secrets or as confidential are considered unmarked.
. Saveraid devoted most of his professional life to agricultural sales and had no prior work experience in chemistry. We agree with the district court that he “was not qualified to independently develop a process that is the same as the Brandon Process.” (Order at 19-20.)
. Ken. Saveraid is David Saveraid's father. Throughout the opinion, “Saveraid” refers to David Saveraid.
. Heidbreder involves a paternity action in which the biological mother allegedly promised she would not place her unborn child for adoption, and then rescinded that promise after she moved to an undisclosed location. The biological father invoked the doctrine of estoppel, and claimed the mother could not oppose equitable relief because of her unclean hands. The court held otherwise, finding the mother's unclean hands irrelevant to the father's request for equitable relief.
. We note, however, that MUTSA contemplates that under certain circumstances, Natural Biologies may move for termination of the injunction. Minn.Stat. § 325C.02(a).
Reference
- Full Case Name
- WYETH, formerly known as American Home Products Corporation, a Delaware corporation v. NATURAL BIOLOGICS, INC., a Minnesota corporation, Natural Biologics, LLC, a Minnesota limited liability company, Appellant Wyeth, formerly known as American Home Products Corporation, a Delaware corporation v. Natural Biologics, Inc., a Minnesota corporation, Natural Biologics, LLC, a Minnesota limited liability company
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- Status
- Published