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IN THE SUPREME COURT OF FLORIDA
AAR MANUFACTURING, INC., an $.Illinois corporation,
Petitioner, Case No.: SCl2-2470
On Review from the District ourt dfMATRIX COMPOSITES, INC., Appeal, Fifth District, No.: 5D11-3802
Respondent.
PETITIONER'S SECOND AMENDED JURISDICTIONAL BRIEF ANDAPPENDIX
Of Counsel:
SEAN M. MCDONOUGH
Florida Bar No. 896446WILSON ELSER MOSKOWITZ EDELMAN & DICKER LLP
105 East Robinson Street - 4th F]OOrOrlando, Florida 32801(407) 423-7287
Table of Contents
Table of Authorities .................................................................................................. ii
Statement of the Case and Facts ............................................................................... 1
Summary of the Argument........................................................................................ 2
Argument................................................................................................................... 3
The decision of the Fifth District Court of Appeal in this case expressly anddirectly conflicts with the decision of the Second District Court of Appeal inRer eilo, supra............................................................................................................ 3
A. The Second DCA's opinion in Revello ..................................................... 3
B. The Fifth DCA's opinon here.................................................................... 6
Conclusion................................................................................................................. 8
Table of Authorities
Cases
A A R Manufacturing, Inc. v. Matrix Composites, Inc.,98 So. 3d 186 (Fla. 5'h DCA 2012).................................................................. passim
Aravena v. Miami-Dade County,928 So. 2d 1163 (Fla. 2006)................................................................................. 2, 7
Beck v. Dumas,709 So. 2d 601 (Fla. 4'" DCA 1998)................................................................. 4, 5, 8
Breed Technologies, Inc. v. A liiedSignal Inc.,861 So. 2d 1227 (Fla. 2d DCA 2003)....................................................................... 6
Crosslev v. State,596 So. 2d 447 (Fla. 1992).................................................................................... 2, 7
Del Monte Fresh Produce Co. v. Dole Food Co.,148 F. Supp. 2d 1322 (S.D. Fla. 2001). .................................................................4-5
DeRubeis v. Witten Technologies, Inc.,244 F.R.D. 676 (N.D. Ga. 2007)............................................................................... 6
Knights Armament Co. v. Optical Systems Technology, Inc.,254 F.R.D. 463 (M.D. Fla. 2008)............................................................................. 4
Levenger Co. v. Feldman,516 F. Supp. 2d 1272 (S.D. Fla. 2007).................................................................... 4
Revello v. Medical Management, Inc. v. Med-Date Infotech, USA, Inc.,50 So. 3d 678 (Fla. 2d DCA 2010)..................................................................passim
Sununitbridge National Investments, LLC v. 1221 Palm Harbor, L.L.C.,67 So. 3d 448 (Fla. 2d DCA 2011)........................................................................... 4
Superior Ins. Co. v. Cano,829 So. 2d 991 (Fla. 2d DCA 2002)..................................................................... 4, 5
11
Florida Rules of Appellate Procedure
Rule 9.030 .................................................................................................................2
Other Authorities
Webster's New World Dictionary (1990)................................................................. 7
111
I. Statement of the Case and Facts.
In this trade secret misappropriation action, AAR Manufacturing, Inc. ("AAR")
petitioned the Fifth District Court of Appeal for issuance of a writ of certiorari to
quash the non-final discovery order of the Circuit Court of the 18'" Judicial Circuit in
and for Brevard County, Florida. The circuit court's order was rendered on October
13, 2011 and compelled AAR to produce its trade secrets to plaintiff-respondent
Matrix Composites, Inc. ("Matrix"). AAR contended that the circuit court's order
departed from the essential requirements of the law because, inter alia, the circuit
court did not make a prior finding that Matrix's allegedly misappropriated trade
secrets are in fact trade secrets as required by Revello v. Medical Management, Inc. v.
Med-Data Infotech, USA, Inc., 50 So. 3d 678 (Fla. 2d DCA 2010). At the time,
Revello was the only Florida state case on point at the time.
On September 7, 2012, the Fifth DCA handed down its opinion denying AAR's
petition in part and granting it in part. AA R Manufacturing, Inc. v. Matrix Composites,
Inc., 98 So. 3d 186 (Fla. 5'" DCA 2012). The Fifth DCA agreed with AAR that the
circuit court's order was overbroad in numerous respects not pertinent here. However,
the Fifth Circuit denied AAR's request that Matrix be compelled to make a threshold
showing that its allegedly misappropriated trade secrets are in fact trade secrets and
specifically rejected Revello, supra. AAR timely moved for rehearing, certification,
and rehearing en banc. That motion was denied on October 19, 2012. On November
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16, 2012, AAR timely filed its notice invoking the discretionary jurisdiction of this
Court on the ground that the Fifth DCA's opinion in this case expressly and directly
conflicts with the Second DCA's opinion in Revello.
II. Summary of the Argument.
This Court has discretionary jurisdiction to review a decision of a district court
of appeal that expressly and directly conflicts with a decision of this Court or another
district court of appeal on the same point of law. Rule 9.030(a)(2)(A)(iv). Two
decisions expressly and directly conflict with each other where they are irreconcilable.
See, e.g., Aravena v. Miami-Dade County, 928 So. 2d 1163, 1166-1167 (Fla. 2006);
Crossley v. State, 596 So. 2d 447, 449 (Fla. 1992)(concluding that because the court
below "reached the opposite result on controlling facts which, if not virtually identical,
more strongly dictated" the result reached by the alleged conflict case, a conflict of
decisions existed that warranted accepting jurisdiction).
Here, the Second DCA in Revello held that a plaintiff in a trade secret
misappropriation case must make a threshold showing that the allegedly
misappropriated trade secrets were in fact trade secrets before defendant can be
compelled to produce its own trade secrets in discovery. The Fifth DCA in this case
specifically "rejected" Revello (the Fifth DCA's word) and found that such a threshold
showing is not required of a trade secret misappropriation plaintiff. Revello and AAR
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Manufacturing are the only two Florida cases opining on this critical issue in trade
secret litigation, and they are irreconcilable. This Court's review is thus permissible i
III. Argument.
The decision of the Fifth District Court of Appeal in this case expresslyand directly conflicts with the decision of the Second District Court ofAppeal in Revello, supra.
A. The Second DCA's opinion in Revello.
I n Revello Medical Management, Inc. v. Med-Data Infotech USA, Inc., 50 So.
3d 678 (2d DCA 2010), the Second DCA established that a plaintiff seeking damages
for the alleged misappropriation of trade secrets (such as Matrix here) must establish
two things before defendant (such as AAR here) can be compelled to disclose its own
trade secrets in discovery. First, plaintiff "must as a threshold matter" establish that
the information which it contends to be a misappropriated trade secret is in fact a trade
secret. And second, plaintiff must describe the information which it contends to be a
misappropriated trade secret with "reasonable particularity." Revello, 50 So. 3d at
579-680. The reason for these requirements is simple: to ensure that defendant's
disclosure of its own trade secrets is truly warranted so as to avoid the potential for
Indeed, when Revello is cite-checked on Westlaw, the following notation appearsfirst: "Declined to Follow by AAR Mfg., Inc. v. Matrix Composites, Inc., 98 So.3d 186, 188, 37 Fla. L. Weekly D2165, D2165 (Fla. App. 5 Dist. Sep. 07, 2012)(NO. 5D11-3802)."
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irreparable harm through unnecessary disclosure. See, e.g., Superior Ins. Co. v. Cano,
829 So. 2d 991, 992 (Fla. 2d DCA 2002); Beck v. Dumas, 709 So. 2d 601, 603 (Fla.
4* DCA 1998).
Revello is a holding of first impression in Florida state court. It has long been
established that "when trade secret privilege is asserted as the basis for resisting
production[,] the court must first determine whether the requested production
constitutes a trade secret; if so, the court must require the party seeking production to
show reasonable necessity for the requested materials; if production is then ordered,
the court must set forth its findings." Beck, 709 So. 2d at 603. See also,
Sununitbridge National Investments, LLC v. 1221 Palm Harbor, L.L.C., 67 So. 3d 448,
450-451 (Fla. 2d DCA 2011). Revello extended this principle to the context of
misappropriation of trade secret actions such as that presented here.
Revello was co1Tectly decided and is in accord with established Florida law
regarding discovery of trade secrets. See, e.g., Knights Armament Co. v. Optical
Systems Technology, Inc., 254 F.R.D. 463, 467 (M.D. Fla. 2008) ("It is axiomatic that
a party may not assert a cause of action for misappropriation of trade secrets without
identifying for the opposing party the trade secrets at issue."); Levenger Co. v.
Feldman, 516 F. Supp. 2d 1272, 1287 (S.D. Fla. 2007) (one claiming misappropriation
of trade secrets must prove that misappropriated information constitutes trade secrets);
Del Monte Fresh Produce Co. v. Dole Food Co., 148 F. Supp. 2d 1322, 1324-1325
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(S.D. Fla. 2001) ("Florida courts recognize that in order to ascertain whether trade
secrets exist, the information at issue must be disclosed. Because Del Monte is asking
this court to fmd that trade secrets exist and were misappropriated by Dr. Funk, Del
Monte must reveal the information it ultimately seeks to protect.") (citations omitted).
Simply put, there is no material difference between compelling defendant's
disclosure of trade secrets in a non-trade secret action wherein defendant asserts the
trade secret privilege in discovery, and compelling defendant's disclosure of trade
secrets in a trade secret misappropriation case. No matter the context in which the
discovery of defendant's trade secrets is sought, the essential requirements of law
demand that defendant be protected from irreparable harm as a result of such
disclosure. Revello, 50 So. 3d at 579-680; Superior Ins., 829 So. 2d at 992; Beck,
709 So. 2d at 603. Such harm to defendant is significant and has been recognized
repeatedly by the courts:
[C]ourts have identified at least four policieswhich support delaying trade secret discovery until thetrade secret plaintiff has sufficiently described the tradesecrets at issue. First, if discovery on the defendant'strade secrets were automatically permitted, lawsuitsmight regularly be filed as "fishing expeditions" todiscover the trade secrets of a competitor. * * *
Second, until the trade secret plaintiff hasidentified the secrets at issue with some specificity, thereis no way to know whether the information sought [fromdefendant] is relevant. * * * Thus, requiring the plaintiffto sufficiently identify its trade secrets prior to allowingdiscovery on the defendant's trade secrets helps the court
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to determine the outer permissible bounds of discoveryand prevent needless exposure of the defendant's tradesecrets.
Third, it is difficult, if not impossible, for thedefendant to mount a defense until it has some indicationof the trade secrets allegedly misappropriated. Often, atrade secret defendant will defend the claim by showingthat it does not use the claimed secret or that theinformation is in fact not a secret. Until the defendantknows what information is at issue, it cannot attempt torebut the plaintiff's charges of misappropriation. Finally,requiring the plaintiff to state its claimed trade secretsprior to engaging in discovery ensures that it will notmold its cause of action around the discovery it receives.* * * If plaintiff is not forced to define his allegeddisclosures before gets into defendant's files, he maysimply claim whatever he finds there.
DeRubeis v. Witten Technologies, Inc., 244 F.R.D. 676, 680-681 (N.D. Ga. 2007)
(citations omitted).
B. The Fifth DCA's opinion here.
As set out in the Statement of Facts, supra, the Fifth DCA here specifically
rejected Revello.2 The Fifth DCA's rejection creates an express and direct conflict
2 AAR notes further that the circuit court had no discretion to disregard Revello or toignore its holding, even if it believed that Revello was incorrect in its analysis orotherwise wrongly decided. This is because, when presented with an appellateopinion directly on point, the circuit court is "obliged to follow the precedents of otherdistrict courts of appeal absent a controlling precedent of this Court or the SupremeCourt." Breed Technologies, Inc. v. AlliedSignal Inc., 861 So. 2d 1227, 1231 (Fla. 2dDCA 2003) (emphasis added). Pursuant to this well-established rule of decision, thecircuit court's failure to follow Revello requires that its order be quashed. AAR madethis point in its petition for writ of certiorari to the Fifth DCA and the Fifth DCA didnot address it.
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with Revello because the Fifth DCA's opinion here and Revello are irreconcilable
results based upon nearly identical facts. Aravena, supra, 928 So. 2d at 1166-1167;
Crossley, supra, 596 So. 2d at 449.
In its response to AAR's motion for rehearing, certification, and rehearing en
banc, Matrix acknowledged that Revello and the Fifth DCA's opinion here are in
conflict, but asserted that the conflict between the two decisions is merely "indirect"
and "implied" as follows:
This Court [the Fifth DCA] provided only that, "[t]o theextent that Revello Medical Management, Inc. v. Med-Data Infotech USA, Inc., 50 So. 3d 678 (Fla. 2d DCA2010), can be read to require a threshold finding as to theexistence of the trade secret in misappropriation cases,we reject that notion." (Opinion, p. 3). Accordingly, atbest it can be urged that the conflict with the RevelloOpinion is "indirect" and "implied", neither of which aresufficient to meet the dual mandated prongs requiredbefore the Florida Supreme Court could considerinvoking discretionary jurisdiction. (Matrix Resp. at p. 5,filed in the Fifth DCA on October 5, 2012)
Matrix's assertion has no basis in the language used by the Fifth DCA. The Fifth
DCA used the word "reject"- "to reject" is defined as "to refuse to take, agree to, use,
believe." Webster's New World Dictionary (1990) at 497. By contrast, "to imply" is
defined as "to indicate indirectly, hint, suggest." Webster's, supra, at 296. Applying
these definitions, the Fifth DCA - through its use of the word "reject"- explicitly and
directly refused to agree with the Revello threshold showing requirement. There is
nothing "indirect," "hinting," or "suggestive" here; this is only common sense.
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In sum, it is uniformly recognized that anyone who is erroneously compelled to
disclose a trade secret "will have suffered a material harm for which there would be no
adequate remedy by appeal." Beck, 709 So. 2d at 603. Defendants in
misappropriation actions may now be required to disclose their trade secrets without
knowing if the information in dispute is plaintiff's trade secret - or they may not,
depending on where they are sued. Supreme Court review is thus warranted because
all trade secret misappropriation litigants need a uniform discovery rule in this highly
sensitive area.
IV. Conclusion.
This Court has discretionary jurisdiction to review the decision below, and it
should exercise that jurisdiction to consi r th merits of AAR's argument.
Respectfull s mi ,
By: u \SEAN M. MCDÕNOUGH
FLA. BAR NO. 896446
WILSON, ELSER, MOSKOWITZ, EDELMAN & DICKER LLP
105 East Robinson Street - 4'h FloorOrlando, Florida 32801(407) 423-7287
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CERTIFICATE OF SERVICE
I hereby certify that a copy hereof has been furnished to JOHN Y. BENFORD,
ESQUIRE, Benford Law Firm, P.A., 1065 West Morse Blvd., Suite 101, Winter Park,
FL 32789 (ivb@ivblaw.com); GREGORY K. MAUSSR, ESQUIRE, The Law Ofc of
Gregory K. Mausser, (Attorneys for Plaintiff), 5224 W. State Road 46, PMB #343,
Sanford, Florida 32771; NICHOLAS A. SHANNIN, ESQUIRE, Page, Eichenblatt,
Bernbaum & Bennett, P.A., (Attorneys for Plaintiff), 214 East Lucerne Circle, Orlando,
Florida 32801, (nshannin@floridalawonline.com); RICHARD WOMBLE, ESQUIRE,
AMY BAKER, ESQUIRE, Rissman Barrett Hurt Donahue & McLain P A (Attorneys
for DeCillis), 201 E Pine Street, Ste. 1500, Orlando, Florida 32801-2729;
(rsw.service@rissman.com) (alb.service@rissman.com); and ALBERT D. GIBSON,
ESQUIRE, Blank Rome LLP (Attorneys for Simmons), 1200 N Federal Hwy Suite 312,
Boca Raton, Florida 33432-284 (agibson bl2 r)me.com); by electronic mail delivery
on December 6, 2012.
SEAN M Mc ONOUGH, ESQUIREFlorida Bar No. 896446Wilson Elser Moskowitz Edelman & Dicker LLPPost Office Box 531086Orlando, Florida 32853-1086407-423-7287 - Phone407-648-1376 - FacsimileAttorneys for Defendant, AARMANUFACTURING, INC.
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CERTIFICATE OF COMPLIANCE
I HEREBY certify that the foregoing jurisdictional brief complies with the
font requirements of Fla. R. App. P. 9100.
SEAN M. McDO OUGH, ESQUIRE
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Appendix
AAR Manufacturing, Inc. v. Matrix Composites, Inc.,98 So. 3d 186 (Fla. 5'" DCA 2012)
IN THE DISTRICT COURT OF APPEAL OF THE STATE OF FLORIDAFIFTH DISTRICT JULY TERM 2012
NOT FINAL UNTIL TIME EXPIRES TOFILE MOTION FOR REHEARlNG ANDDISPOSITION THEREOF |F FILED
AAR MANUFACTURING, INC., et al.,
Petitioners,
v Case No. 5D11-3802
MATRIX COMPOSITES, INC.,
Respondent./
Opinion filed September 7, 2012
Petition for Certiorari Review of OrderFrom the Circuit Court for Brevard County,George W. Maxwell lil, Judge.
Sean M. McDonough of WilsonElser Moskowitz Edelman & DickerLLP, Orlando, for Petitioner, AARManufacturing.
Nicholas A. Shannin of Page,Eichenblatt, Bernbaum & Bennett,PA, Orlando, and John Y. Benfordof Benford Law Firm, P.A.,Orlando, for Respondent.
PER CURIAM.
Petitioner, AAR Manufacturing, Inc. ("AAR"), seeks certiorari relief from the trial
court's non-final order denying its motion for a protective order in this trade secret
misappropriation action. Pursuant to the motion, AAR sought to prevent the discovery
of its own trade secrets until such time as Respondent, Matrix Composites, Inc.
("Matrix"), had identified with reasonable particularity the trade secrets allegedly
misappropriated by AAR, as required by the terms of the parties' agreed-upon discovery
order. Following an evidentiary hearing, thgtrial court denied AAR's motion, finding that
Matrix had identified with reasonable particularity its trade secrets related to: (1) the
trapped rubber molding process; (2) the resin transfer molding process; and (3)
compression molding of continuous fiber thermoplastic composite. The trial court
ordered AAR to produce within sixty days all documents requested in Matrix's first
request for production.
We are compelled to grant the petition to the extent the trial court concluded that
Matrix identified with reasonable particularity the trade secrets associated with the resin
transfer molding process and compression molding of continuous fiber thermoplastic
composite. It is clear from the record that the parties and the trial court agreed the
evidentiary hearing below was to be limit olely to the trade secrets related to the
trapped rubber molding process. Matrix's 'identification of the trade secrets associated
with the resin transfer molding process and compression molding of continuous fiber
thermoplastic composite was not before the trial court for its consideration. Accordingly,
the trial court's order is overbroad to the extent that it encompasses these two trade
secret areas. However, we deny the instant petition to the extent that AAR challenges
the trial court's determination that Matrix identified with reasonable particularity its trade
secrets involving its trapped rubber molding process because we conclude that there
has been no departure from the essential requirements of the law. See McDonald's
Rests. of Fla., Inc. v. Doe, 87 So. 3d 791, 793 (Fla. 2d DCA 2012).
Furthermore, we reject AAR's arguinent that the trial court departed from the
essential requirements of the law by failing to make a threshold finding that Matrix's
2
allegedly misappropriated trade secrets actually existed before ordering AAR to disclose
its own trade secrets. In trade secret misappropriation cases, a plaintiff is required to
identify with reasonable particularity the trade secrets at issue before proceeding with
discovery. See Del Monte Fresh Produce Co. v. Dole Food Co., 148 F. Supp. 2d 1322,
1324 (S.D. Fla. 2001) (noting difference between trade secret misappropriation cases
and cases involving trade secret privilege, and explaining trade secrets are ultimate
issue to be decided by court in misappropriation cases). To the extent that Revello
Medical Management, Inc. v. Med-Data Infotech USA, Inc., 50 So, 3d 678 (Fla, 2d DCA
2010), can be read to require a threshold finding as to the existence of the trade secret
in misappropriation cases, we reject that notion.
PETITION GRANTED in part: DENIED l'n part,
LAWSON, EVANDER and COHEN, JJ., concur.
3
IN THE DISTRICT COURT OF APPEAL OF THE STATE OF FLORIDAFIFTH DISTRICT
AAR MANUFACTURING,INC., ET AL.,
Petitioner,
v. CASE NO. 5D11-3802
MATRIX COMPOSITES,INC.,
Respondent./
DATE: October 19, 2012
BY ORDER OF.THE COURT:
ORDERED that Petitioner's Motion for Rehearing, Certification, and
Rehearing En Banc, filed September 21, 2012, is denied.
I hereby certify that the foregoing is(a true copy of) the original Court order.
PAMELA R. MASTERS, CLERK %ño*
cc:
Nicholas A.Shanrjin Gregory K.Mausser Thomas T.SteeleSean M.McDonough John Y.Benford Albert D.Gibson
M A N D A T Efrom
DISTRICT COURT OF APPEAL OF THE STATE OF FLORIDA
FIFTH DISTRICT
THIS CAUSE HAVING BEEN BROUGHT TO THlS COURT BY APPEAL OR BY PETITION, AND
AFTER DUE CONSIDERATION THE COURT HAVING ISSUED ITS OPINION OR DECISION;
YOU ARE HEREBY COMMANDED THAT FURTHER PROCEEDINGS AS MAY BE REQUIRED
BE HAD IN SAID CAUSE IN ACCORDANCE WITH THE RULING OF THIS COURT ATTACHED HERE
TO AND INCORPORATED AS PART OF THIS ORDER, AND WITH THE RULES OF PROCEDURE
AND LAWS OF THE STATE OF FLORIDA.
WITNESS THE HONORABLE RICHARD B. ORFINGER, CHIEF JUDGE OF THE DISTRICT
COURT OF APPEAL OF THE STATE OF FLORIDA, FIFTH DISTRICT, AND THE SEAL OF THE SAID
COURT AT DAYTONA BEACH, FLORIDA ON THIS DAY.
DATE: October 19, 2012
FIFTH DCA CASE NO.: 5D 11-3802
CASE STYLE: AAR MANUFACTURING, INC., ET AL. v.
COUNTY CF ORIGIN: Brevard
TRIAL COURT CASE NO.: 05-2007-CA-020904-X
I hereby certify that the foregoing is(a true copy of) the original Court mandate.
CW\AL
PAMELA R. MASTERS, CLERK %Fho*
cc:
Nicholas A.Shannin Sean M.McDonoughClerk Brevard
MATRIX COMPOSITES, INC.
John Y.Benford
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