1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
*E-FILED 6/16/05*
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
DIGITAL ENVOY, INC.,
Plaintiff,
v.
GOOGLE, INC.,
Defendant.
/
NO. 5:04-cv-1497 RS
SUPPLEMENTAL ORDER
DENYING GOOGLE'S
MOTION FOR SUMMARY
JUDGMENT ON TRADE
SECRET CLAIM
On May 20, 2005, the Court issued an order denying the summary judgment motion filed by
defendant Google, Inc. ("Google") on all six claims for relief advanced by plaintiff Digital Envoy, Inc.
("Digital"), but granting Google's motion for partial summary judgment on four of Digital's claims for unfair
competition and unjust enrichment. Upon receipt of the Court's order, Google requested that a further
ruling issue to address its argument that Digital failed to sustain its burden of establishing the requisite mens
rea for its trade secret misappropriation claim. The Court instructed each party to submit an additional
brief addressing that specific issue. Based on the supplemental briefs submitted, as well as on the papers
and arguments previously presented, the Court finds that triable issues of fact remain in connection with
Digital's trade secret claim which preclude the entry of summary judgment.
As Google acknowledges, the Ninth Circuit has not embraced the principle adopted by the D.C.
Circuit in International Engineering Co. v. Richardson, 512 F.2d 573, 578 (U.S.App.D.C. 1975) and
Case 5:04-cv-01497-RS Document 203 Filed 06/16/2005 Page 1 of 4
Digital Envoy Inc., v. Google Inc.,
Doc. 203
Dockets.Justia.com
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
2
Aktiebolaget Bofors v. United States, 194 F.2d 145, 147 (D.C. Cir. 1951), that the licensee of a trade
secret who exceeds the scope of the license may be subject only to contract and not tort liability. See e.g.,
Tracer Research Corp. v. National Environmental Services Company, 42 F.3d