Bayer Corp. v. Roche Molecular Systems, Inc.

ORDER DENYING MOTION FOR PRELIMINARY INJUNCTION BUT IMPOSING PERIODIC DISCOVERY TO MONITOR PROTECTION OF TRADE SECRETS; DENYING CROSS-MOTION TO STRIKE EXPERT DECLARATION; DENYING CROSS-MOTION TO DISMISS

INTRODUCTION

This motion for a preliminary injunction presents a conflict between two strong public policies of California — -the policy favoring employee mobility free of encumbering restriction and the policy favoring protection of genuine trade secrets. On the present record, the Court concludes that employee mobility must prevail and denies plaintiffs motion to prohibit a former employee from pursuing his trade at a competitor. The theory of “inevitable disclosure” is not the law in California and, at trial, plaintiff will have to demonstrate actual use or disclosure, or actual threat thereof. For the purposes of a preliminary injunction, under California law, the theory of inevitable disclosure does not supply the proof needed to establish a probability of success on the merits nor does it suffice to raise serious questions about actual use or threat. In light of the substantial issues raised concerning actual use in this case and the ongoing risk of trade-secret disclosure,…