7-5 EXPERT TESTIMONY ABOUT THE EXISTENCE OF A TRADE SECRET

• Jurisdiction: United States

7-5 Expert Testimony about the Existence of a Trade Secret

Both the Federal and Texas Rules of Evidence provide that an expert opinion is not to be excluded solely because it "embraces an ultimate issue."⁵⁷ In a trade secret case, however, both state and federal courts in Texas have struggled to balance this permissive rule with the fact that it is the province of the courts to interpret and decide legal issues—specifically, the legal issue of whether the plaintiff's information qualifies as a trade secret. In Texas, courts do generally permit expert testimony about the existence and nature of claimed trade secrets.⁵⁸ But some have excluded expert testimony about whether certain information qualifies as a trade secret as unhelpful to the jury.⁵⁹

In one recent Texas federal court case, the plaintiff sought to exclude the defendant's expert on the grounds that his testimony constituted impermissible legal opinions establishing trade secrets were "not trade secrets."⁶⁰ The court rejected the plaintiff's argument, ruling that whether something was a trade secret "is a factual opinion that is both relevant and within [the expert's] sphere of expertise."⁶¹ By contrast, the court in this same case prohibited the expert from testifying that the plaintiff "does not actually own the trade secrets it asserts because they are allegedly subject to independent discovery [on the grounds that such testimony] would be an inadmissible legal opinion."⁶² The distinction highlighted by this opinion helps conceptualize how courts draw this line: the expert may testify as to a question of ultimate fact ("X is not a trade secret."), but may not tell the jury what the legal effect of a fact finding would be ("If X is subject to independent discovery, it is not a trade secret.").

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Notes:

^[57] Fed. R. Evid. 704(a); Tex. R. Evid. 704.

^[58] See, e.g., Wellogix, Inc. v. Accenture, L.L.P., 716 F.3d 867, 881-82 (5th Cir. 2013) (approving trial court's admission of expert testimony that plaintiff's source code was a trade secret); Raytheon Co. v. Indigo Sys. Corp., 598 F.Supp. 2d 817, 820-22 (E.D. Tex. 2009) (finding engineer qualified and his testimony admissible to dispute trade secret claims of plaintiff concerning design of infrared imaging device).

^[59] Joe N. Pratt Ins. v. Doane, No. V-07-07, 2009 WL 5220646, at *5 (S.D. Tex. Dec. 30, 2009).

^[60] Raytheon Co. v. Indigo Sys. Corp., 598 F.Supp. 2d 817, 821 (E.D. Tex. 2009).

^[61]...