Bytemark, Inc. v. Xerox Corp. et al
ORDER: For the reasons discussed above, the parties' objections to Judge Fox's January 13, 2021 and January 21, 2021 orders (Dkt. Nos. 133-34) are sustained. Plaintiff's motion to strike (Dkt. No. 125) is denied. Plaintiff's mot ion to compel (Dkt. No. 119) is granted, and Defendant's motion to compel and for a protective order (Dkt. No. 115) is denied. Defendants are directed to respond to Plaintiff's Requests 38-40 and 60-62 of Plaintiff's Second Request forProduction by January 19, 2022. SO ORDERED. (Signed by Judge Paul G. Gardephe on 1/11/2022) (ama)
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
XEROX CORP., ACS TRANSPORT
SOLUTIONS, INC., XEROX
TRANSPORT SOLUTIONS, INC.,
CONDUENT INC., and NEW JERSEY
17 Civ. 1803 (PGG)
PAUL G. GARDEPHE, U.S.D.J.:
Plaintiff Bytemark, Inc. brings this action against Defendants Xerox Corp., ACS
Transport Solutions, Inc., Xerox Transport Solutions, Inc., Conduent Inc., and New Jersey
Transit Corp. (collectively “Defendants”), asserting claims for patent infringement, breach of
contract, trade secret misappropriation, unfair competition, and unjust enrichment. (See Third
Am. Cmplt. (“TAC”) (Dkt. No. 139) ¶ 1)
This Order addresses the parties’ discovery dispute and their objections to a
discovery order issued by the assigned magistrate judge – the Hon. Kevin N. Fox – as well as his
denial of motions for reconsideration. (Dkt. Nos. 129, 132-35)
On December 10, 2020, the parties filed a joint letter setting forth a discovery
dispute. (Dec. 10, 2020 Joint Ltr. (Dkt. No. 108)) Plaintiff sought an order compelling
Defendants to produce information and documents responsive to its requests for production. (Id.
at 1-3) Defendants refused to respond to Plaintiff’s discovery request until Plaintiff disclosed
“the allegedly misappropriated trade secrets that form [Plaintiff’s] good-faith basis for filing its
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lawsuit.” (Id. at 4) Defendants moved to compel Plaintiff to disclose its trade secret
information, and sought a protective order as to the discovery sought by Plaintiff. (Id. at 4-5)
On December 11, 2020, this Court referred the parties’ discovery dispute to
Magistrate Judge Fox. (Dkt. No. 109)
In a December 14, 2020 order, Judge Fox directed the parties to brief their
The parties’ December 10, 2020 joint request for a pre-motion conference, Docket Entry
No. 108, is denied. On or before December 28, 2020, any motions limited solely to the
issues raised in the December 10, 2020 joint letter shall be made. The Local Civil Rules
of this court govern the timing of oppositions and replies. Memoranda of law in support
of and in opposition to a motion shall be no longer than 15 double-spaced pages in 12point font, inclusive of a table of contents and a table of authorities, and reply
memoranda of law shall be no longer than 6 double-spaced pages in 12-point font. No
footnotes are permitted. The Court will not entertain any requests to extend the number
of pages or filing deadlines absent a showing of extraordinary circumstances. COVID-19
related issues do not constitute extraordinary circumstances.
(December 14, 2020 Order (Dkt. No. 110))
On December 28, 2020, the parties served their respective motions and supporting
documents. On January 4, 2021, Plaintiff served Defendants with its opposition brief. On
January 5, 2021, at 12:03 a.m., Defendants emailed Plaintiff their opposition brief. Certificates
of service for all papers were filed on the Court’s docket. (Dkt. Nos. 111-114)
On January 6, 2021, the parties filed their respective motions, briefs, and
supporting documentation. (Dkt. Nos. 115-24)
On January 7, 2021, Plaintiff moved to strike Defendants’ reply (Dkt. No. 118),
arguing that Defendants had exceeded Judge Fox’s six-page limit. (Pltf. Motion to Strike (Dkt.
No. 125); Pltf. Br. (Dkt. No. 126) at 1) In its brief, Plaintiff also noted that Defendants had
served their opposition brief at 12:03 a.m. on January 5, 2021, three minutes after the deadline.
(Pltf. Br. (Dkt. No. 126) at 2-3)
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In a January 8, 2021 letter, Defendants stated that they had “inadvertently
overlooked the Court’s Order limiting replies to 6 pages.” (Jan. 8, 2021 Def. Ltr. (Dkt. No. 127))
Defendants submitted a new reply brief that complied with Judge Fox’s page limits, and asked
that their shorter reply be substituted for their previous filing, thus mooting Plaintiff’s motion to
strike. (Id.) In a January 8, 2021 letter, Plaintiff opposed Defendants’ request. (See Jan. 8, 2021
Pltf. Ltr. (Dkt. No. 128))
In a January 13, 2021 order, Judge Fox denied with prejudice both sides’
discovery motions (Dkt. Nos. 115, 119), and denied Plaintiff’s motion to strike as moot.
(January 13, 2021 Order (Dkt. No. 129) at 9) In his order, Judge Fox found that both sides had
violated his December 14, 2020 Order by not timely filing their motions and opposition papers
on the court’s docket. (Id. at 5-8)
Judge Fox noted that his December 14, 2020 Order states that “[o]n or before
December 28, 2020, any motions limited solely to the issues raised in the December 10, 2020
joint letter shall be made. The Local Civil Rules of this court govern the timing of opposition
and replies.” (Id. at 5 (quoting December 14, 2020 Order)) Rather than filing their respective
motions on the court’s docket by December 28, 2020, the parties had instead merely filed a
certificate of service on that date. (Id. at 6)
The parties moved for reconsideration (Jan. 14, 2021 Pltf. Ltr. (Dkt. No. 130);
Jan. 15, 2021 Def. Ltr. (Dkt. No. 131)), noting that they had followed this Court’s “bundling
rule,” which requires that motion papers be filed on the court docket only after they are fully
briefed. (See Individual Rules IV.C) On January 21, 2021, Judge Fox denied the motions for
reconsideration. (Jan. 21, 2021 Order (Dkt. No. 132))
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On January 27, 2021, the parties filed objections to Judge Fox’s January 13, 2021
and January 21, 2021 orders. (Pltf. Obj. (Dkt. No. 133) at 5 & n.1; Def. Obj. (Dkt. No. 134) at 2)
Plaintiff asks this Court to “decide the parties’ discovery dispute briefing on the merits.” (Pltf.
Response (Dkt. No. 137) at 1)
REVIEW OF JUDGE FOX’S ORDERS
Under Federal Rule of Civil Procedure 72, a district judge reviews a “pretrial
matter not dispositive of a party’s claim or defense” under the “clearly erroneous or . . . contrary
to law” standard. Fed. R. Civ. P. 72(a). “A finding is ‘clearly erroneous’ when . . . the district
court is left with the definite and firm conviction that a mistake has been committed. A finding
is ‘contrary to law’ when it fails to apply or misapplies relevant statutes, case law or rules of
procedure.” Shim-Larkin v. City of New York, No. 16-CV-6099 (AJN), 2020 WL 5758751, at
*1 (S.D.N.Y. Sept. 28, 2020) (citations and quotation marks omitted)).
This Court concludes that – in denying the parties’ (1) original motions without
reaching the merits and with prejudice; and (2) motions for reconsideration – Judge Fox acted in
a clearly erroneous fashion and contrary to law.
The Court sees no willful effort to violate Judge Fox’s December 14, 2020 Order.
Instead, the parties were attempting to follow this Court’s Individual Rules, which require that
motion papers not be filed on the docket until the matter is fully submitted. Assuming arguendo
that the parties erred in following this Court’s Individual Rules without consulting with Judge
Fox’s chambers, the sanction imposed by Judge Fox – a denial of the motions with prejudice –
was not proportional to their error, which was not willful. See Shim-Larkin, 2020 WL 5758751,
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at *6-7 (sustaining objection where magistrate judge’s imposition of sanctions did not adequately
take into account defendant’s explanations).
Accordingly, the parties’ objections to Judge Fox’s January 13, 2021 and January
21, 2021 orders are sustained, and this Court will address the parties’ original motions on the
PLAINTIFF’S MOTION TO COMPEL, AND DEFENDANTS’
MOTION TO COMPEL AND FOR A PROTECTIVE ORDER
Plaintiff seeks an order compelling Defendants to respond to Plaintiff’s First and
Second Set of Requests for Production. These requests seek documents regarding the creation
and development of Defendants’ allegedly infringing mobile ticketing application. (Pltf. Br.
(Dkt. No. 120) at 2; Notice of Motion (Dkt. No. 119)) The requests at issue are as follows:
REQUEST NO. 38: All documents and communications shared between Bytemark and
Defendants using Privia project management software.
REQUEST NO. 39: All documents and communications shared between Bytemark and
Defendants using YouSendIt, Google Drive, Dropbox, and any filing sharing and/or
REQUEST NO. 40: All documents and communications shared between Bytemark and
Defendants between 2012 and 2016.
REQUEST NO. 60: All versions of the New Jersey Transit app and MyTix app.
REQUEST NO. 61: The original API documentation for the MyTix app.
REQUEST NO. 62: The mobile application source code for the first released version of
the MyTix app.
(Pltf. Br., Ex. B (Dkt. No. 120-2) at 6-7, 9)
Defendants do not dispute the relevance of these documents, nor do they dispute
their obligation to produce them in this litigation. (Def. Opp. Br. (Dkt. No. 122) at 10) Instead,
Defendants maintain that they are only required to produce this material after Plaintiff “identifies
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its alleged trade secrets with reasonable particularity.” (Id. at 3) Defendants contend that
“overwhelming precedent set by this jurisdiction and others” and “[n]otions of fairness” require a
plaintiff such as Bytemark to identify its trade secrets prior to discovery. (Id. at 3) Defendants
also contend that the Complaint’s allegations do not satisfy the “reasonable particularity
standard,” because it contains “generic descriptions of trade secret categories.” (Id. at 9
(quoting, with alterations, Uni-Sys., LLC v. U.S. Tennis Ass’n, No. 17CV147KAMCLP, 2017
WL 4081904, at *4 (E.D.N.Y. Sept. 13, 2017))) According to Defendants, Plaintiff should be
required to identify its trade secrets either “via a trade secret disclosure or a response to
Interrogatory No. 1.” 1 (Notice of Motion (Dkt. No. 115)) Defendants seek an order compelling
Plaintiff to make this disclosure, as well as a protective order postponing disclosure of
Defendants’ confidential information until Plaintiff has identified its trade secrets. (Id.; Def. Br.
(Dkt. No. 116) at 13)
Federal Rule of Civil Procedure 26 provides that “[p]arties may obtain discovery
regarding any nonprivileged matter that is relevant to any party’s claim or defenses and
proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1). Discovery may proceed “in
any sequence,” and “discovery by one party does not require any other party to delay its
discovery.” Fed R. Civ. P. 26(d)(3). “Cases involving trade secret claims follow the normal
In Defendants’ First Set of Interrogatories, they request that Plaintiff:
“Specify with particularity each and every alleged trade secret that Bytemark claims that
Defendants misappropriated by separately explaining in detail the following information
for each alleged trade secret: (a) the substantive content of the formula, pattern,
compilation, program device, technique or process or any other information alleged to be
a trade secret; (b) the means by which the alleged trade secret derives independent
economic value from not being generally known; (c) any and all efforts taken by
Bytemark to maintain the confidentiality of the trade secret; (d) the Bates Numbers of all
documents relating to the contention that the alleged trade secret is, in fact a trade secret;
and (e) the persons most knowledgeable about such trade secret.”
(Moore Decl., Ex. B (Dkt. No. 117-2) at 3)
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procedures set by the Federal Rules.” Uni-Sys, 2017 WL 4081904, at *4. However, many
federal courts – in recognition of the proprietary concerns in trade secrets cases and the related
difficulty in defining the scope of discovery – have required plaintiffs to identify alleged trade
secrets with “reasonable particularity”:
Although definitions vary, that standard generally requires that the plaintiff provide
enough information about the alleged trade secrets (1) to put the defendant on notice of
the nature of plaintiff’s claims, and (2) to allow defendant to discern the relevancy of any
discovery requests. Id.; accord Switch Commc’ns Grp. v. Ballard, No. 2:11-cv-00285,
2012 WL 2342929 (D. Nev. June 19, 2012).
The standard is flexible and is driven by the Court’s discretion. Courts have recognized
that a very general showing may be sufficient, particularly in the common scenario where
the trade secrets plaintiff may not know which parts of its trade secrets have been
misappropriated or cannot determine the full scope of its claims until it gains a better
understanding of how a defendant operates. See Vesta Corp. v. Amdocs Mgmt. Ltd., 147
F. Supp. 3d 1147, 1154 (D. Or. 2015) (quoting DeRubeis v. Witten Techs., Inc., 244
F.R.D. at 680). Thus, the strength of the showing sufficient to identify trade secrets with
sufficient particularity varies with the facts and stage of the case. See Storagecraft Tech.
Corp. v. Symantec Corp., No. 2:07 cv 856 CW, 2009 WL 361282, at *2 (D. Utah Feb.
Here, Plaintiff asserts that they are willing, and have offered on many occasions,
to produce all source code and confidential information that form the basis of its trade secret
claims. (Pltf. Reply Br. (Dkt. No. 121) at 3) Citing Local Rule 33.3(c), however, Plaintiff states
that it should not be required to respond to Defendants’ Interrogatory 1 until Defendants have
responded to Plaintiff’s document requests. 2 (Pltf. Opp. Br. (Dkt. No. 124) at 4, 7, 11-13)
Local Civil Rule 33.3 provides:
(a) Unless otherwise ordered by the Court, at the commencement of discovery,
interrogatories will be restricted to those seeking names of witnesses with knowledge of
information relevant to the subject matter of the action, the computation of each category of
damage alleged, and the existence, custodian, location and general description of relevant
documents, including pertinent insurance agreements, and other physical evidence, or
information of a similar nature.
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Plaintiff argues that this procedure is consistent with this jurisdiction’s case law, in which
plaintiffs are not required to specify their trade secrets until after “substantial discovery has taken
place.” (Id. at 7-8 (citing Sit-Up Ltd. v. IAC/InterActiveCorp., No. 05 CIV. 9292 (DLC), 2008
WL 463884, at *6 (S.D.N.Y. Feb. 20, 2008) and Xerox Corp. v. Int’l Bus. Machines Corp., 64
F.R.D. 367, 371 (S.D.N.Y. 1974)))
This case is in its very early stages. Defendants have not produced any
confidential documents, and no depositions have been taken. (Pltf. Opp. (Dkt. No. 124) at 12)
At this stage of the litigation, Plaintiff is not required – as a prerequisite for obtaining relevant
discovery from Defendants – to identify its trade secrets with the specificity that Defendants
demand. See Uni-Sys., 2017 WL 4081904, at *4 (“[T]he requirement of reasonable particularity
does not create a procedural device to litigate the ultimate merits of the case – that is, to
determine as a matter of law on the basis of evidence presented whether the trade secret actually
exists.” (internal quotations and citations omitted)); Local Rule 33.3(b) (“During discovery,
interrogatories [seeking the claims and contentions of the opposing party] may only be served (1)
if they are a more practical method of obtaining the information sought than a request for
production or a deposition, or (2) if ordered by the Court.”).
Defendants’ arguments to the contrary are not persuasive. Defendants do not
contend that they are insufficiently “inform[ed] . . . of the nature of plaintiff’s claims” or that
(b) During discovery, interrogatories other than those seeking information described in
paragraph (a) above may only be served (1) if they are a more practical method of obtaining
the information sought than a request for production or a deposition, or (2) if ordered by the
(c) At the conclusion of other discovery, and at least 30 days prior to the discovery cut-off
date, interrogatories seeking the claims and contentions of the opposing party may be served
unless the Court has ordered otherwise.
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they cannot “determine the relevancy of discovery requests.” Uni-Sys., 2017 WL 4081904, at
*4. Defendants merely state, in a conclusory fashion, that “continued disputes . . . will arise over
Bytemark’s failure to define its claims.” (Def. Reply (Dkt. No. 127-1) at 6-7; see also Def. Br.
(Dkt. No. 116) at 10 (“Absent such a disclosure, the uncertainty in Bytemark’s claims will lead
to unnecessary disputes, inefficient motions practice, and burdensome discovery.”)) This
speculative assertion provides no basis to deny Plaintiff relevant discovery.
Defendants also argue that, absent a prior disclosure of Plaintiff’s trade secrets,
“plaintiff . . . could tailor their theory of misappropriation to defendants’ work.” (Def. Br. (Dkt.
No. 116) at 8 (internal quotation marks and citations omitted)) But Plaintiff has agreed to
“identify its trade secrets immediately through production of all of the source code and
confidential information in its possession . . . and to do so prior to any production of confidential
or proprietary materials by Defendants.” (Pltf. Opp. (Dkt. No. 124) at 14 (emphasis omitted))
Accordingly, it is not clear how Plaintiff could “tailor [its] theory of misappropriation to
The cases cited by Defendants are not to the contrary. Many arise in a different
procedural posture or context. See PaySys Int’l, Inc. v. Atos Se, No. 14-CV-10105 (KBF), 2016
WL 7116132, at *11 (S.D.N.Y. Dec. 5, 2016) (summary judgment); Big Vision Private v. E.I.
DuPont De Nemours & Co., 1 F.Supp.3d 224, 262-66 (S.D.N.Y. 2014) (same); ValveTech, Inc.
v. Aerojet Rocketdyne, Inc., No. 17-CV-6788-FPG, 2019 WL 4688737, at *4 (W.D.N.Y. Sept.
26, 2019) (motion to dismiss); Heyman v. AR. Winarick, Inc., 325 F.2d 584, 590 (2d Cir. Dec.
24, 1963) (same); DS Parent, Inc. v. Teich, No. 5:13-CV-1489 LEK/DEP, 2014 WL 546358, at
*8 (N.D.N.Y. Feb. 10, 2014) (preliminary injunction); Power Conversion, Inc. v. Saft America,
Inc., No. 83 Civ. 9185-CSH, 1985 WL 1016, at *2 (S.D.N.Y. May 1, 1985) (allegations of
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misappropriation of trade secrets by both parties). Other cases cited by Defendants support
Plaintiff’s position. See Sit-Up Ltd., 2008 WL 463884, at *5-7 (months after “massive
document discovery,” court noted that “it is unfair to your clients and to the defendants to
conduct discovery without knowing what the assertions are”); Ferguson v. Ferrante, No. 13 CIV.
4468 VEC, 2014 WL 1327968, at *2 (S.D.N.Y. Apr. 3, 2014) (holding that plaintiff need not
provide defendants with “the full basis for the belief” that trade secrets were misappropriated
because “this can be obtained at [plaintiff’s] deposition”); Uni-Systems, 2017 WL 4081904, at
*4 (noting that “a very general showing may be sufficient,” particularly where “plaintiff [does]
not know which parts of its trade secrets have been misappropriated or cannot determine the full
scope of its claims until it gains a better understanding of how a defendant operates”) (citations
For the reasons discussed above, the parties’ objections to Judge Fox’s January
13, 2021 and January 21, 2021 orders (Dkt. Nos. 133-34) are sustained. Plaintiff’s motion to
strike (Dkt. No. 125) is denied. Plaintiff’s motion to compel (Dkt. No. 119) is granted, and
Defendant’s motion to compel and for a protective order (Dkt. No. 115) is denied. Defendants
are directed to respond to Plaintiff’s Requests 38-40 and 60-62 of Plaintiff’s Second Request for
Production by January 19, 2022.
Dated: New York, New York
January 11, 2022
Paul G. Gardephe
United States District Judge
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