Connecticut commercial litigators sometimes overlook an archaic civil procedure tool which can be used very successfully to obtain discovery of information before a company commits itself to what could be expensive litigation. We’ve used this procedure in employment cases, toxic tort cases and trade secret matters. And a recent Superior Court opinion validates this litigation strategy.
First, a little background before talking about that case. The procedural tool is called a “bill of discovery” under Conn. Gen. Stat. § 52-156a. While its roots are ancient, the procedure is still on the books, and has been in use for centuries. The law directs judges to grant an application for a bill of discovery unless there is “some well-founded objection” against it. The petitioner, or the person who is asking for the information, has to show that he needs the information because it is “material and necessary” to prove a potential action, and there is no other adequate method to obtain the information. Finally, the petitioner has to show “probable cause” in support of the potential action she intends to bring, and some describable sense of wrong that supports the potential action. Probable cause is a very low standard of proof that lawyers have to meet in court for their clients.
The whole point is to conserve judicial resources and allow the petitioner to discover if it has a factual basis to bring a later lawsuit, and to litigate that lawsuit more efficiently and frame the issues. But, proceed cautiously, because the Connecticut Supreme Court says don’t file a bill of discovery simply “to indulge a hope that a thorough ransacking of any information and material which the defendant may possess would turn up evidence helpful to his case.” Berger v.Cuomo, 230 Conn. 1, 7 (1994).
In Connecticut trade secret litigation, which often arises out of a non-competition or non-solicitation agreement between an employer and an employee, a company is usually harmed when an employee moves to a competitor and uses or threatens to use the company’s trade secrets to compete. What the company may not know is whether or not that employee actually stole or took trade secrets with him or her to the competitor.
Typically these lawsuits start with the company pursuing what can be an expensive preliminary injunction hearing against the former employee and often his new employer. To shortcut this, the company can file an application for a bill of discovery, can name the former employee and his new employer, seeking documents (electronic evidence is critical) and even depositions to determine whether or not the company has a claim worth pursuing. The court can hold a hearing on the application for a bill of discovery or, if the parties agree, the petition can be decided on affidavits and other information.
But the threat and cost of the hearing, and the competitor possibly having to turn over documents and submit to depositions will often tee the case up for a swift resolution. Thus, you can possibly avoid expensive drawn out litigation, that is if the parties are thinking rationally.
In this case from October 2018, a company called Dur-a-Flex was convinced one of its former chemists had taken its formulas and research and was selling that information to competitors. Rather than go headstrong into full-scale litigation, Dur-a-Flex petitioned the court for discovery, and got it.
This means Dur-a-Flex gets to find out much of the goings-on between its former employee and the competitor, here it was a company called Crown, before filing a lawsuit. And given that Crown aggressively resisted the petition for bill of discovery, my hunch is they had something to hide.
So, think outside the box, and think of a way to lessen the upfront cost for your client in pursuing a trade secret claim. Get some discovery first, you may be surprised with what you find.