U.S. District Court Case Summaries: May 29, 2014.

Byline: Massachusetts Lawyers Weekly Staff Report

Editor's note: The full text of these decisions can be found on Lawyers Weekly's website, masslawyersweekly.com. Employment Non-compete - Proprietary information Where a plaintiff medical device manufacturer has requested a preliminary injunction preventing the defendant, a former employee, from working for a competitor, the request must be denied because the defendant's employment agreement contains a non-disclosure clause but not a non-compete provision. The defendant will be ordered, however, to return the plaintiff's proprietary information.

'Inevitable disclosure' issue "During the course of the parties' expedited discovery, (defendant] Dr. (Dongchul] Lee has produced over 300,000 pages to (plaintiff] Boston Scientific. ... These documents were stored on Dr. Lee's personal gmail account, his Google drive cloud-based storage account, an external hard drive and a USB 'thumb' drive. ... These pages include confidential documents that provide details about Boston Scientific's plans for present and future research, results of the company's research and agenda for meetings regarding the company's research. ... "Upon review of the exhibits proffered, ... it is apparent that these documents meet some if not all of the Jet Spray Cooler (Inc. v. Crampton, 361 Mass. 835 (1972)] factors. As a general matter, other courts have found that information concerning plans for research or business methods and practices can constitute trade secrets. ... The plans and results described in these documents were, according to Boston Scientific, distributed to only a select few individuals under a confidentiality agreement in preparation for an in-person meeting in October 2013. ... In addition, Boston Scientific has taken some measure to keep these documents confidential by stamping them as such at or about the time of distribution. ... Although there may be some question as to whether the information contained in these documents could be duplicated by others, this does not necessarily vitiate the essential nature of these documents, where 'no general and invariable rule can be laid down' as to the existence of a trade secret. ... "Moreover, Boston Scientific has taken reasonable steps to protect its trade secrets. ... "Here, the documents discussed above were distributed to only a select few individuals under a confidentiality agreement in preparation for an in-person meeting in October 2013. ... Accordingly, Boston Scientific had a reasonable expectation that these documents would remain confidential and the recipients of these documents were on notice that further disclosure was prohibited. ... "Boston Scientific's expedited discovery has demonstrated that Dr. Lee has retained many pages of documents belonging to Boston Scientific in his personal email account, Google Drive account, external hard drive and 'thumb' drives. ... Dr. Lee has testified that the retention of this swath of documents belonging to Boston Scientific was inadvertent. ... Nevertheless, his employment agreement required him upon termination of his employment to 'immediately deliver to Boston Scientific ... all documents and materials of any nature containing Proprietary Information ... without retaining any copies.' ... 'As a matter of law, an individual who breaches contractual duties to obtain trade secrets has used improper means.' ... Accordingly, Boston Scientific has demonstrated that Dr. Lee used improper means to obtain trade secrets. ... "... The Court can discern no harm to Dr. Lee from a court-ordered return of all Boston Scientific materials that he has retained and from the nondisclosure of that information. Such an injunction would not prevent Dr. Lee from working in the (spinal cord stimulation (SCS)] field, in California or even at Nevro. On the other hand, a court order imposing a restrictive covenant (where none exists) into Dr. Lee's employment agreement, prohibiting him from working at Nevro, would unfairly deprive Dr. Lee of his livelihood. Moreover, it would be inherently inequitable to impose a restrictive covenant to which Dr. Lee never agreed and after he has already accepted a position at a competing company. The Court is particularly disinclined to impose a restrictive covenant on Dr. Lee where even the grant of a preliminary injunction itself is an 'extraordinary and drastic remedy.' ... Accordingly, to the extent Boston Scientific seeks injunctive relief barring Dr. Lee from competing with Boston Scientific, the Court declines to grant that relief. ... "Boston Scientific cites Marcam Corp. v. Orchard, 885 F. Supp. 294, 297 (D. Mass. 1995); Aspect (Software, Inc. v. Barnett, 787 F. Supp. 2d 118 (D. Mass. 2011)]; Lombard Med. Tech., Inc. v. Johannessen, 729 F. Supp. 2d 432, 442 (D. Mass. 2010); Corp. Techs. (Inc. v. Harnett, 943 F. Supp. 2d 233, 248 (D. Mass. 2013)]; and C.R. Bard, Inc. v. Intoccia, No. 94-11568-Z, 1994 WL 601944, at *3 (D. Mass. Oct. 13, 1994) for the notion that an employee, now employing at a new company in the same field, will inevitably disclose confidential information absent an injunction. ... In these cases, however, the court did not enjoin the defendant from competing with the plaintiff where the defendant had not executed a covenant not to compete. ... "Even if Boston Scientific had provided further support for the contention that courts can, effectively, transform non-disclosure agreements into non-competition agreements, the Court cannot say on this record that Dr. Lee's work at Nevro will necessarily lead to the disclosure of any Proprietary Information. First, Dr. Lee's non-disclosure of the Proprietary Information is a term of his employment at Nevro. ... In addition, Dr. Lee is not developing products for Nevro, but rather researching the underlying science. ... Although it is true that Nevro may develop a product that competes with a Boston Scientific product, Dr. Lee's testing the efficacy of SCS, either high or low frequency, does not necessarily bear upon the future research plans of Boston Scientific or the development of their products. ..." Boston Scientific Corp. v. Lee (Lawyers Weekly No. 02-259-14) (15 pages) (Casper, J.) (USDC) (Civil Action No. 13-13156-DJC) (May 14, 2014). Immigration Detention - Release Where plaintiff aliens have been detained after release from criminal custody, they are entitled to summary judgment and equitable relief. "Plaintiffs represent a class of aliens who, subsequent to their release from criminal custody, were detained by Immigrations & Customs Enforcement ('ICE') under the mandatory detention provisions of 8 U.S.C. s.1226(c). That statute permits ICE to detain an alien 'when (he or she] is released' from the predicate criminal custody - a phrase this court has interpreted as limiting the class of individuals subject to mandatory detention to those taken into ICE custody promptly. Three issues warrant analysis before this case reaches its terminus. "First, on March 27, 2014, the court granted Plaintiffs' motions for class certification. ... "Second, Plaintiffs have filed two identical motions for summary judgment. ... Because this case presents a single question of law - one already settled - no genuine dispute of fact exists. Accordingly, the court will allow Plaintiffs' motions and direct the clerk to enter judgment as a matter of law in their favor. "Finally, since summary judgment is appropriate, the question of the proper relief must be addressed. This analysis presents three related issues: (1) whether 8 U.S.C. s.1252(f)(1) bars class-wide injunctive relief; (2) if not, whether a permanent injunction is warranted; and (3), if so, what the substance of the injunctive order should be. As an injunction here would not enjoin the operation of the law but merely require Defendants to comply with it, and because Plaintiffs have established a need for equitable relief, the court will grant Plaintiffs equitable relief in the form set forth in the conclusion of this memorandum. ... "An individual's right to due process is not eradicated simply because he or she has been convicted of a crime at some point in his or her life. Congress, recognizing this, only mandated mandatory immigration detention without bail in narrow circumstances: where a prompt transfer from criminal to immigration custody was essential to protect the public and ensure that the specified alien would be available for ultimate removal. When the government does not detain an alien promptly upon release from criminal custody, the rationale for mandatory detention dissolves. When delay beyond two to five days occurs, the individual - one who has already returned to society - is entitled to the opportunity to argue for his or her conditional release. Since the phrase 'when ... released' simply cannot mean 'whenever immigration authorities get around to it, even decades later,' the court's construction of the statute reflects the most likely expression of Congress's intent "Accordingly, the court hereby allows Plaintiffs' Motions for Summary Judgment. ... The court declares as follows: "* As to every class member, the mandatory detention provision, 8 U.S.C. s.1226(c), applies only to aliens detained by the Department of Homeland Security ('DHS') within forty-eight hours of release from criminal custody, or if a weekend or holiday intervenes, within no more than five days. "* As to every class member, an alien who is not taken into immigration custody within forty-eight hours of release from the relevant prior non-DHS custody (or if a weekend or holiday intervenes, within no more than five days) is subject to 8 U.S.C. s.1226(a), and is entitled to a bond hearing. "In accordance with that finding, the court hereby orders the following: "* Defendants shall immediately cease and desist subjecting all current and future class members - that is, aliens not detained within forty-eight hours of release from the relevant prior non-DHS...