Trade Secret Defense Toolkit: Independent Development Records, Public Domain Charts, and Bad Faith Fee Motions

How to use this toolkit

These are working papers, not finished filings. Each form opens with its purpose, who should own it, and when it is needed, and closes with drafting notes that explain the choices and the authority behind them. Replace anything in [brackets], delete what does not fit, and have litigation counsel in your forum review anything that goes outside the company. Forms 3 to 8 are privileged work product if prepared at counsel's direction, so keep them that way: mark them, limit distribution, and do not paste them into shared engineering tools.

The companion Building a Trade Secret Defense From the First Demand Letter: A Practical Guide explains when each form comes into play, and Defending a Trade Secret Claim: Reverse Engineering, Independent Development, Public Disclosure, and Readily Ascertainable Information explains the law. For a one-page task view, use the Trade Secret Defense Checklist: A Practical Checklist.

Contents

1. Defense decision matrix
2. Demand response letters (holding, substantive, and quarantine notice)
3. Independent development record (ledger, provenance sheet, anchors, repository runbook, lab variant, declaration skeleton)
4. Public domain mapping chart and combination worksheet
5. Similarity triage chart
6. Limitations worksheet
7. Identification motion outline and proposed orders
8. Clean team protocol
9. Deposition materials (Rule 30(b)(6) topics, examination modules, witness preparation sheet)
10. Defect and safe harbor letter
11. Bad-faith fee motion outline

Form 1: Defense decision matrix

Purpose: decide in one sitting which defenses are worth funding. Owner: lead counsel, with a technical lead. Timing: first version within two weeks; update after each identification.

Drafting notes. The rating column should reflect evidence you actually have, not doctrine you like. An "H" requires a document. Revisit the "readily ascertainable" row first if the case is in California or has a California-law count. Under ABBA Rubber, the defense depends on how the defendant actually got the information, so it may need different witnesses from the DTSA argument in the same case.

Form 2: Demand response letters

Purpose: answer without overcommitting. Owner: outside counsel. Timing: by the stated deadline or an agreed extension.

2A: Holding letter

[Date]

Re: Your letter of [date] to [Company]

Dear [Counsel]:

We represent [Company] in connection with your letter. Please direct future communications on this subject to me. [Company] takes these matters seriously, is evaluating your letter, and has taken steps to preserve potentially relevant information.

Your letter does not identify the information [Claimant] contends is a trade secret. To evaluate it, we ask that you provide the information described below. We expect to respond further by [date].

[Insert identification request from 2B.]

Nothing in this letter is an admission or a waiver of any right or defense.

2B: Substantive response with identification demand

[Company] denies that it has acquired, used, or disclosed any trade secret of [Claimant]. [Include only if the investigation supports it. If it does not yet, use: "Based on its review to date, [Company] is aware of no basis for your contention."]

Your letter refers to [general categories]. Information that is generally known in the industry or readily ascertainable by proper means is not a trade secret, and neither independent derivation nor reverse engineering is an improper means. 18 U.S.C. § 1839(3), (6). We also note that [Claimant's] [patent/publication] discloses [general subject].

Please provide the following:

1. A description of each claimed trade secret with enough particularity to separate it from general knowledge in the trade and to allow us to determine the boundaries of the claim.
2. The facts on which [Claimant] bases its belief that [Company] acquired, used, or disclosed each one.
3. The date [Claimant] first learned of those facts, and how.
4. The measures taken to protect each one, including any agreements under which it was shared with third parties.

We will accept this information on an outside-counsel-and-expert-only basis under a short confidentiality agreement, a draft of which we can provide. [Company] is not agreeing to, and does not accept, the demands in your letter, including the demand of [date]. [Company] reserves all rights, including the right to seek fees under 18 U.S.C. § 1836(b)(3)(D) if a claim is made in bad faith.

Drafting notes.

• A statement that "all work was independently developed" is a factual representation. Use it only when Form 3 backs it up.
• Keep the fee sentence neutral. A threat is not persuasive on its own, and a pre-suit demand by the other side does not establish bad faith either. Gorovenko v. Activate Clean Energy LLC, No. 24-5840 (9th Cir. Oct. 14, 2025). A specific later letter (Form 10) does the real work.
• Item 3 starts building the limitations record. See Form 6 and Insulet Corp. v. EOFlow, Co., No. 25-1807 (Fed. Cir. May 28, 2026).
• Do not rely on a "Rule 408" label. Fed. R. Evid. 408 covers compromise negotiations, and these paragraphs are not an offer of compromise.
• General letter strategy appears in Responding to a Cease and Desist Letter: A Practical Guide.

2C: Quarantine notice

Use when claimant-origin material may be in your possession and you need to answer a return-or-destroy demand.

[Company] is preserving information as required by law, and for that reason will not delete or alter potentially relevant material. Without admitting that any item is confidential or a trade secret, [Company] has arranged for any material located that appears to have originated with [Claimant] to be segregated in the custody of [outside counsel / neutral vendor], with access limited to that custodian. We are prepared to discuss a protocol for inspection, return of copies, and later remediation, once preservation issues have been resolved between the parties.

Drafting notes. Destroying files in response to a demand risks sanctions under Fed. R. Civ. P. 37(e) and undermines the story. Have the vendor record hash values and the file system metadata first, and keep a custody log. Add your own business-side instruction that no one may access the material.

Form 3: Independent development record

Purpose: let a stranger, and later a jury, reconstruct where each accused feature came from. Owner: a technical lead not accused of anything, directed by counsel, with a forensic examiner. Timing: start now; first complete version within 30 days; update after each identification. Keep privileged drafts separate from the set you plan to produce.

3A: Feature ledger

3B: Provenance sheet (one for each significant feature)

Feature ID:
What problem were we solving, and who defined it?
What alternatives did we consider? (attach evidence)
What did we try that failed, and how do we know? (attach evidence)
What outside sources did we use? (attach copies; note date of access if known)
Who made the final decision, when, and why?
Did anyone involved have prior exposure to [Claimant]'s work in this area?
    If yes: who, what exposure, and what did they contribute here?
Is this feature dictated by a standard, a customer spec, physics, or a library default?
What about this feature differs from what we know of [Claimant]'s approach?
Known gaps or awkward facts:
Prepared by / under direction of counsel on:

3C: Evidence anchors

Rank by independence from the people accused.

Drafting notes.

• Git dates and names are written by the machine making the commit. The hash chain proves internal consistency, not time, unless some outside record captured a hash. That is why the "who controls" column exists.
• "Use" is read broadly, and modifications are no defense where the substance is derived. Mangren Research & Development Corp. v. National Chemical Co., 87 F.3d 937 (7th Cir. 1996). So the ledger focuses on the origin of each feature rather than differences alone.
• A plaintiff's similarity evidence must reach shared innovative features. Stratienko v. Cordis Corp., 429 F.3d 592 (6th Cir. 2005). Use the "dictated by" question to separate those from function and standards.
• Look for the failure that would be absurd if you had the answer already. It is often the most persuasive exhibit.
• For the certification forms, see the Business Records Toolkit: Rule 902 Certifications, Foundation Scripts, and Hearsay Response Charts.

3D: Repository collection runbook

Have a forensic examiner or a trusted engineer who is not accused run this, and keep a log with the operator's name, date, and machine. Adapt the commands to your platform.

# 1. Full mirror of the hosted repository (all refs)
git clone --mirror [REMOTE_URL] repo.git

# 2. Integrity check and inventory
git -C repo.git fsck --full                > fsck.txt 2>&1
git -C repo.git for-each-ref               > refs.txt
git -C repo.git rev-list --all --count     > commit_count.txt

# 3. Export metadata for every commit reachable from any ref
git -C repo.git log --all --date=iso-strict \
  --format='%H|%P|%an|%ae|%ad|%cn|%ce|%cd|%s' > commits.psv

# 4. Package and hash
tar -cf repo_mirror.tar repo.git
sha256sum repo_mirror.tar fsck.txt refs.txt commits.psv > manifest.sha256

Also collect, separately:

• Hosting provider exports: audit log, push and branch events, pull request and review data, and any record of force pushes.
• Developer machines: a clone does not carry reflogs or unreachable objects. Those exist only in the original local repository, so image the machine and do not run garbage collection.
• CI and artifact stores: build logs with commit hashes, and release artifacts with their checksums.
• Older systems: a previous repository or version control tool, shared drives, and archived zip files, particularly if the current history begins with a large import.

Then analyze for anomalies:

• Commits whose committer date precedes a parent's committer date.
• Author dates far from committer dates (normal after a rebase, but they need an explanation).
• A commit dated before the matching server event by a large margin.
• Very large single commits, especially soon after a relevant hire.
• Rewrites or force pushes after the date of the letter.

Drafting notes. The hold should already have disabled force pushes. If a large import exists, find its source before anyone characterizes it. Under Fed. R. Evid. 902(14), data copied from a device or file can be certified by a qualified person using a process of digital identification, such as hash comparison, so the manifest supports that route. Do this collection before the discovery fight, not because of it.

3E: Lab and formulation variant

Drafting notes. The Supreme Court's description of reverse engineering, "starting with the known product and working backward," assumes that the product was fairly obtained. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974). Check whether analysis truly reveals the claimed process, since composition and process are often different secrets.

3F: Declaration skeleton (technical witness)

1. I am [title] at [Company]. I have worked in [field] for [years]. I make this declaration from personal knowledge and my review of the records identified below.
2. Background. Before joining [Company], I [education, prior work]. [State any prior exposure to Claimant's work, plainly.]
3. The problem. In [month, year], [Company] set out to [objective], because [reason].
4. What we tried. [Chronological narrative, one approach per paragraph. Attach Exhibit [ ] for each.]
5. What failed. [Specific results, with data.]
6. Where the solution came from. [Sources attached as exhibits.]
7. Records. Exhibits [ ] are true copies of records of [Company], made at or near the time, kept in the course of regularly conducted activity, and it was the regular practice to make them. [Or use a separate custodian.]
8. No use. In doing this work, I did not use or refer to [any document or information from Claimant]. [Only if true, and only if the witness can say it with confidence. Limit to what is personally known.]

I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct. 28 U.S.C. § 1746. Executed on [date].

Drafting notes. Courts accept declarations from interested employees, as Stratienko did, but the weight comes from attached records. Do not let the witness see the plaintiff's attorneys' eyes only identification to prepare this, and do not have the witness vouch for what others did. Avoid absolute language the witness cannot defend at deposition. For an examination plan on the plaintiff side of the same issues, see Form 9.

Form 4: Public domain mapping chart

Purpose: test each element of each identified secret against the public record. Owner: expert or technical consultant, reporting to counsel. Timing: skeleton before identification; complete after each identification.

Search list: the plaintiff's own patents, published applications, foreign counterparts, and file histories; third-party patents; textbooks and handbooks; standards; journal articles and conference papers; theses; supplier datasheets and application notes; trade press; plaintiff's marketing, manuals, videos, and old website versions; public code repositories; regulatory and government filings; plaintiff's court filings; competitors' products and teardown reports.

Drafting notes.

• Patents. Publication extinguishes secrecy for what is disclosed. Attia v. Google LLC, 983 F.3d 420 (9th Cir. 2020). A foreign patent counts. Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339 (Fed. Cir. 2009). Applications usually publish at 18 months. 35 U.S.C. § 122(b). A rejected application may also disclose. BondPro Corp. v. Siemens Power Generation, Inc., 463 F.3d 702 (7th Cir. 2006). Fill in the "what is missing" column honestly, because what a patent leaves out may survive. On-Line Technologies, Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133 (Fed. Cir. 2004).
• Other publications. The "who would see it" column exists because of Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411 (4th Cir. 1999), where a document in one public court file was not enough, and BondPro's remark that "no one may have noticed." Contrast Internet posting in Religious Technology Center v. Netcom On-Line Communication Services, Inc., 923 F. Supp. 1231 (N.D. Cal. 1995). Record download counts, citations, and any evidence of use in the trade.
• User-visible information. Add screenshots. IDX Systems Corp. v. Epic Systems Corp., 285 F.3d 581 (7th Cir. 2002).
• Timing. Compare "Date public" with the plaintiff's date of alleged first use. Use after publication is often not actionable for what was published. On-Line; Stutz Motor Car of America, Inc. v. Reebok International, Ltd., 909 F. Supp. 1353 (C.D. Cal. 1995).

4A: Combination worksheet

Use this when the plaintiff answers your chart with "the secret is the combination."

Claimed combination: [elements A + B + C + D]
1. Does any single source disclose the whole combination?  Y / N  [cite]
2. If not, do people in the field actually read these sources together?
     Evidence: [survey article citing both; textbook chapter; standard]
3. Is there a reason a skilled person would make this combination?
     Evidence: [functional need; only commercially available parts; supplier application note]
4. How many practical alternatives existed?
     Evidence: [expert; competitor products]
5. Time and cost of assembling it, from an actual test or actual project:
6. Has anyone else in the trade used it?  Evidence: [product teardown; literature]
7. Is the "combination" just the plaintiff's whole product?
     (If so, is the identification too broad to separate from general knowledge?)
8. What does the plaintiff's own evidence say makes the combination valuable?

Drafting notes. A combination of public parts can qualify. Minnesota Mining & Manufacturing Co. v. Pribyl, 259 F.3d 587 (7th Cir. 2001); AvidAir Helicopter Supply, Inc. v. Rolls-Royce Corp., 663 F.3d 966 (8th Cir. 2011); Tewari De-Ox Systems, Inc. v. Mountain States/Rosen, L.L.C., 637 F.3d 604 (5th Cir. 2011). Item 7 is where a generic list can fail for overbreadth. Also keep Compulife Software Inc. v. Newman, 959 F.3d 1288 (11th Cir. 2020) in mind: if your position is "we gathered public data," the volume and method of gathering may be the next question.

Form 5: Similarity triage chart

Purpose: decide what the similarity really shows, before an expert commits to it. Owner: outside technical consultant, under counsel. Timing: when you have the plaintiff's claim, and again when you have its code or documents.

Drafting notes. Arbitrary coincidences are the dangerous rows. In Motorola Solutions, Inc. v. Hytera Communications Corp., 108 F.4th 458 (7th Cir. 2024), the court recited that minor coding errors appeared in the same spots in both codebases. Rapid development is another indicator. Vermont Microsystems, Inc. v. Autodesk, Inc., 88 F.3d 142 (2d Cir. 1996). An "H" row should go to counsel orally before anyone writes it up further.

Form 6: Limitations worksheet

Purpose: find the critical date, and the evidence that the plaintiff knew or should have known before it. Owner: counsel. Timing: at intake; update with each production.

Filing date (or expected):                    [date]
Critical date (filing minus 3 years):         [date]
State limitations period, if different:       [statute; period]
Tolling agreement in effect?                  [dates; carve-outs]

ACCESS: facts before critical date showing plaintiff knew
  - Former employee joined competitor:        [date; source]
  - Plaintiff knew of that move:              [email, LinkedIn, exit interview]
  - Plaintiff knew role on competing product: [source]

SIMILARITY: facts before critical date
  - Public launch / demo / trade show:        [date; photo; attendee list]
  - Prospectus, patent, or web description:   [date]
  - Plaintiff's personnel examined it:        [names; website visits; samples]
  - Internal reaction:                        [quote; Bates]

ESCALATION
  - To legal / outside counsel:               [from privilege log date]
  - Litigation hold issued:                   [date]
  - Investigation or forensic engagement:     [date]

PLAINTIFF'S COMPLAINT
  - What facts does it rely on for access + similarity?
  - Which of those were available before the critical date?

GROUPING
  - One source, one relationship, one period?  [Y/N; treat as single claim?]
  - Is any claimed secret part of a broader one?

Drafting notes. This worksheet follows the analysis in Insulet, where a majority of a Federal Circuit panel used the plaintiff's own complaint to measure what knowledge suffices, relied on internal emails such as "EOFlow has cloned our product," treated a known former employee's move as notice of access, and treated related secrets as a single claim. Judge Prost dissented, other circuits are not bound, and Insulet petitioned for rehearing en banc in July 2026, so check the docket. See also 18 U.S.C. § 1836(d); CMI Roadbuilding, Inc. v. Iowa Parts, Inc., 920 F.3d 560 (8th Cir. 2019); Cadence Design Systems, Inc. v. Avant! Corp., 29 Cal. 4th 215 (2002); Forcier v. Microsoft Corp., 123 F. Supp. 2d 520 (N.D. Cal. 2000). Also calendar any deadlines of your own using the Federal Deadline Toolkit: Calendaring Protocols, Extension Motions, and Excusable Neglect Declarations.

Form 7: Identification motion outline and proposed orders

Purpose: get a usable identification before your technical production. Owner: outside counsel. Timing: after the Rule 26(f) conference, or as soon as the plaintiff refuses. First meet and confer as local rules require.

Outline: motion to compel identification and sequence discovery

I. Introduction. One paragraph: the defendant cannot evaluate, and the court cannot manage, a claim to [category]. The motion asks for sequencing, not dismissal.

II. Background.

• The complaint's description (quote).
• Letters requesting identification (attach).
• Plaintiff's response (attach; table of versions).
• Plaintiff's requests for defendant's source code (attach).

III. Legal standard.

• Fed. R. Civ. P. 26 and Rule 16 give authority to control sequence and scope.
• Courts require a showing that separates the secret from general knowledge. InteliClear, LLC v. ETC Global Holdings, Inc., 978 F.3d 653 (9th Cir. 2020); Imax Corp. v. Cinema Technologies, Inc., 152 F.3d 1161 (9th Cir. 1998).
• DeRubeis v. Witten Technologies, Inc., 244 F.R.D. 676 (N.D. Ga. 2007), collects the competing policies on sequencing, including those favoring pre-discovery identification. Address the plaintiff-side policies directly. [Confirm current law in your district.]
• Candor: Quintara Biosciences, Inc. v. Ruifeng Biztech, Inc., No. 23-16093 (9th Cir. Aug. 12, 2025), holds the DTSA has no freestanding pleading-stage identification rule, and that striking secrets was improper. This motion seeks case management, not a sanction.

IV. Argument.

• A. The current description does not identify a secret. Compare IDX Systems Corp. v. Epic Systems Corp., 285 F.3d 581 (7th Cir. 2002); AMP Inc. v. Fleischhacker, 823 F.2d 1199 (7th Cir. 1987); NEXT Payment Solutions, Inc. v. CLEAResult Consulting, Inc., No. 24-1377 (7th Cir. Jan. 13, 2026).
• B. Sequencing prevents the plaintiff from molding its claim to what it finds, and protects the defendant's confidential information.
• C. Sequencing costs the plaintiff little, because it knows its own secrets. A protective order will protect them. 18 U.S.C. § 1835.
• D. The proposal is specific and fair: date certain, amendment for good cause, and no prejudice to reciprocal discovery about access.

V. Conclusion. Relief requested. Attach proposed order.

Proposed order (federal)

1. Within [30] days of entry of this Order, Plaintiff shall serve, under the Protective Order, a written identification of each trade secret it contends Defendant misappropriated. Each must be described with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge of persons skilled in the trade, and to permit Defendant to ascertain at least the boundaries within which the secret lies. Listing a category of information or a document or range of documents, without more, does not satisfy this Order.
2. Plaintiff shall number each identified secret. For a claimed combination, Plaintiff shall list each element.
3. Until [14] days after service of the identification, Defendant need not produce source code or technical documents concerning the accused [product]. Discovery on other subjects may proceed.
4. Plaintiff may amend only with leave of Court, on a showing of good cause and diligence.
5. Any dispute about sufficiency shall be raised within [14] days through the Court's discovery dispute procedure.

California variant

Pursuant to Code of Civil Procedure section 2019.210, before commencing discovery relating to the trade secret, Plaintiff shall identify the trade secret with reasonable particularity, subject to any orders that may be appropriate under Civil Code section 3426.5.

Drafting notes. The standard language in the federal order paraphrases the Imax and Mallet & Co. v. Lacayo, 16 F.4th 364 (3d Cir. 2021) formulations. The doctrine and the plaintiff's version of this document are in Identifying Trade Secrets in Litigation: Reasonable Particularity, Sequencing Discovery, and Protecting the Secret While You Sue and the Trade Secret Litigation Toolkit: Identification Statements, Two-Tier Protective Orders, and Forensic Protocols, so use this outline alongside those. Save each version the plaintiff serves.

Form 8: Clean team protocol

Purpose: keep future development defensible while the case proceeds, and keep the claimant's identification from your engineers. Owner: counsel, with an engineering manager. Timing: before you receive the plaintiff's identification, or before any rewrite.

1. Scope. This protocol applies to [project/module] during [matter].

2. Groups.
   Exposed group: [outside counsel; retained experts; named in-house counsel].
     May see plaintiff's identification and designated materials as the
     Protective Order allows. Must not contribute to product development.
   Clean group: [named engineers]. Have not seen plaintiff's identification.
     Each signs Attachment A confirming prior exposure history.
   Walled-off individuals: [names]. Any person with prior access to plaintiff's
     information is excluded from [module] until counsel says otherwise.

3. Communication. Requirements pass from Exposed to Clean only in writing,
   through [named reviewer], who confirms they state functional requirements
   and do not reveal plaintiff's information. Questions from Clean go the same
   way. Keep a numbered log of every request and answer.

4. Inputs. Clean group works only from [public sources; own prior code; written
   requirements]. Every external source is recorded in Form 3B.

5. Tools. AI coding assistants and search tools must not index repositories
   or chat containing quarantined material. [Name approved tools; note
   logging and retention.]

6. Records. No squash merges or history rewrites. Design notes go in [system].

7. Quarantined material. Held by [custodian]. Nobody on the Clean team may access.

8. Violations. Report immediately and orally to counsel. Do not investigate
   by opening the material.

9. Duration. Until released in writing by counsel.

Drafting notes. In Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), the company on counsel's advice excluded the programmer who had copied, locked away his copy, and assigned eight programmers who had not been involved. That record helped on the later version, though the trade secret question on the earlier conduct went back for decision. Stratienko credited a company policy that limited engineers' exposure to outside submissions. Check the protocol against the protective order. See also Negotiating a Protective Order and Filing Under Seal: A Practical Guide, and for the tool issues, Trade Secrets and Generative AI: Reasonable Measures, Prompt Leakage, and Vendor Terms.

Form 9: Deposition materials

Purpose: lock in the plaintiff's definition, measures, and date of knowledge, and prepare your own witnesses properly. Owner: lead counsel. Timing: Rule 30(b)(6) early, after identification; supplemental fact witnesses after documents.

9A: Rule 30(b)(6) topics

Confer on these as Fed. R. Civ. P. 30(b)(6) requires.

1. The identity and boundaries of each trade secret identified in [document], including what distinguishes it from information known in the trade.
2. The development of each, including persons, dates, and cost.
3. Each measure taken to protect each secret, including agreements, access controls, marking, audits, and exceptions.
4. Each disclosure of each secret outside [Plaintiff], including to vendors, customers, regulators, and in publications, patents, and court filings.
5. The value of each secret, including how secrecy confers advantage.
6. When and how [Plaintiff] first learned of each fact supporting its claim, including the identity of those involved, without seeking the content of privileged communications.
7. [Plaintiff]'s monitoring of [Defendant] and its products, including trade shows, samples, and competitive reports.
8. The factual basis for the contention that [Defendant] acquired, used, or disclosed each secret.
9. [Plaintiff]'s retention and hold practices for relevant records.
10. The factual basis for any claim of harm.

9B: Examination modules

Module 1: Definition.

• "Exhibit [ ] is your identification. Is it complete?"
• "Is there any other secret you claim we took?"
• "Reading TS-[n], which words state what is secret, and which are context?"
• "Would an experienced [formulator / engineer] in the field know [component]?"
• "Which element, if removed, would leave it no longer secret?"
• "What does your company say is unique about the combination, and where is that written down?"

Note: The goal is a tight, testable definition. In Stutz, a designee's narrow answer about what the secret was set up summary judgment.

Module 2: Public record.

• Walk through the plaintiff's patent, element by element. "Is this what you claim is secret? Is there anything in TS-[n] not here?"
• "Who decided what went into the patent? Did you consider keeping any of it out?"
• "Your engineer presented at [conference]. What was on these slides?"
• "Is this page from your website? When?"

Module 3: Measures.

• "Show me the policy. Who has access today? How many people?"
• "Which vendors received it? Under what paper? Did every vendor sign?"
• "Your NDA requires confirmation in writing within [n] days. Where is the writing for [date]?" Convolve, Inc. v. Compaq Computer Corp., 527 F. App'x 910 (Fed. Cir. 2013).
• "Has anyone ever been disciplined? Have you ever audited this?"

Module 4: First knowledge.

• "When did you first hear of [Defendant's product]?"
• "Who went to [trade show]? What did they report? Who received the report?"
• "When did you first learn [former employee] was at [Defendant]?"
• "Did anyone say the products looked similar? When did anyone first obtain a sample?"
• "Without telling me what was said, when did you first involve counsel?"

Note: Use the words in the plaintiff's complaint. Ask which of the facts it alleges were known before the critical date.

Module 5: Basis for use.

• "What facts show that [Defendant] used TS-[n]? Have you seen our source code or batch records?"
• "What feature of our product do you say embodies it? What makes that feature innovative rather than standard?"
• "Could someone arrive at that independently? How long did it take your company?"
• "Have you tested or torn down our product? When?"

Module 6: Value.

• "Do competitors use different approaches? Do they do as well commercially?"
• "Would anyone pay for this information? Has anyone?" Direct Technologies, LLC v. Electronic Arts, Inc., 836 F.3d 1059 (9th Cir. 2016).

Module 7: Motive (for fee record).

• "When did the company decide to send the demand? Who was involved, apart from counsel?"
• "What did management say about [Defendant's] entry into the market?" FLIR Systems, Inc. v. Parrish, 174 Cal. App. 4th 1270 (2009), relied on testimony that the company could not tolerate a direct competitive threat.

9C: Preparation sheet for an accused engineer

Purpose: proper witness preparation, not scripting. Give it through counsel, orally or under privilege, and see Preparing a Witness for Deposition: What Is Proper, What Is Coaching, and What the Other Side Can Discover and the Witness Preparation Toolkit: Session Agendas, Instruction Sheets, and Practice Examinations for limits on what you can do.

- Tell the truth. If you don't remember, say so. Don't guess.
- Review your own records beforehand. Your counsel will choose what to show you,
  and it may be discoverable under Fed. R. Evid. 612 if used to refresh you.
- You will be asked where you learned things. Think about real sources:
  school, textbooks, earlier jobs, open source projects, suppliers, trial and error.
- You are allowed to use general skill and experience. You may be asked to
  distinguish that from specifics. Answer plainly.
- You will be asked what you took when you left, what is on your personal accounts,
  and when you last looked at them. Tell your lawyer about all of it now.
- Do not look at old files to prepare unless your lawyer has told you to.
- Do not speculate about what others knew or did.
- Do not volunteer opinions about "their" product.
- Do not discuss your testimony with coworkers.

Drafting notes. The line between general skill and specifics comes from AMP Inc. v. Fleischhacker, 823 F.2d 1199 (7th Cir. 1987), and SI Handling Systems, Inc. v. Heisley, 753 F.2d 1244 (3d Cir. 1985). Memorized specifics can still count. Ed Nowogroski Insurance, Inc. v. Rucker, 971 P.2d 936 (Wash. 1999). An individual with criminal exposure under 18 U.S.C. § 1832 needs separate advice before testifying.

Form 10: Defect and safe harbor letter

Purpose: give the plaintiff a specific chance to withdraw, and build the record for fees. Owner: outside counsel. Timing: whenever a defect becomes clear, and again before dispositive motions.

Re: [Case]: Request to withdraw claims

Dear [Counsel]:

We write regarding [TS-n]. [Plaintiff's] own [patent no.], published [date], discloses [element] at [col./line], and your Rule 30(b)(6) witness testified on [date] that this is the claimed secret ([Tr. page]). A copy of each is enclosed. Information so disclosed is not a trade secret. Attia v. Google LLC, 983 F.3d 420 (9th Cir. 2020).

[Separately, the record shows that [Plaintiff] knew the facts on which it relies no later than [date], more than three years before suit. [Bates]. 18 U.S.C. § 1836(d).]

[Plaintiff] has now served [n] versions of its identification and has not identified [specifics].

We ask that you withdraw [claims] with prejudice by [date]. If [Plaintiff] does not, [Defendant] will rely on this letter in seeking relief, including attorney's fees under 18 U.S.C. § 1836(b)(3)(D) and [state statute], and reserves its right to serve a motion under Rule 11.

Drafting notes. Keep facts specific. Courts have awarded fees when a claim is pursued after the defect is known. Gabriel Technologies Corp. v. Qualcomm Inc., 560 F. App'x 966 (Fed. Cir. 2014). A letter does not substitute for the formal Rule 11 process. Rule 11(c)(2) requires a separate motion, served 21 days before filing. Compare Recoop LLC v. Outliers Inc., No. 1:24-cv-01810 (S.D.N.Y. June 20, 2025), in which Rule 11 relief failed on procedural grounds. Also consider the plaintiff's possible reaction: withdrawal without prejudice. See Form 11, Part I.

Form 11: Bad-faith fee motion outline

Purpose: recover fees after winning. Owner: outside counsel. Timing: calendar now; generally due within 14 days of judgment under Fed. R. Civ. P. 54(d)(2), unless a statute or order provides otherwise. Check state practice for state-law counts.

Part I: Before judgment: protecting prevailing party status

Language for an opposition to a Rule 41(a)(2) motion:

Plaintiff seeks to dismiss after [n] months of litigation, on the eve of [summary judgment]. Under Rule 41(a)(2), dismissal may be on "terms that the court considers proper." The Court should dismiss with prejudice. Alternatively, it should condition any dismissal on payment of Defendant's fees, or on an order that any refiled action bear those fees. A dismissal without prejudice would otherwise deny Defendant prevailing party status. See Dunster Live, L.L.C. v. LoneStar Logos Mgmt. Co., 908 F.3d 948 (5th Cir. 2018).

Part II: Motion outline

I. Introduction. What the plaintiff claimed, how it ended, and the single best fact.

II. Factual record.

• A. The claim as first made.
• B. Each identification version (table).
• C. Each warning (Form 10 letters).
• D. What the plaintiff did next.
• E. Evidence of purpose: testimony, documents, competitive context.
• F. Outcome.

III. Legal standard.

• 18 U.S.C. § 1836(b)(3)(D): claim "made in bad faith, which may be established by circumstantial evidence." Also [state statute, e.g., Cal. Civ. Code § 3426.4].
• Prevailing party. CRST Van Expedited, Inc. v. EEOC, 578 U.S. 419 (2016); Dunster.
• Bad faith: objective speciousness and subjective bad faith. Gemini Aluminum Corp. v. California Custom Shapes, Inc., 95 Cal. App. 4th 1249 (2002); FLIR; Direct Technologies. Identify your circuit's formulation. Recoop surveys variations and adopts this test. Gorovenko assumes without deciding that the California meaning applies.

IV. Argument.

• A. The claim was objectively specious. Complete lack of evidence on [element]. Failure to identify. Applied Predictive Technologies, Inc. v. MarketDial, Inc., No. 2:19-cv-00496 (D. Utah Mar. 25, 2025).
• B. Subjective bad faith.
  1. Knowledge or recklessness at filing, if available.
  2. Maintaining after the defect was clear. Gabriel; Hark'n Technologies, Inc. v. Orange Whip Fitness X, LLC, No. 1:21-cv-00054 (D. Utah Mar. 24, 2026). FLIR explains that a claim brought in good faith can warrant fees if pursued past the point where it clearly lacks merit.
  3. Improper purpose. FLIR's executive testimony. Plaintiff's market position, compared with the defendant's.
  4. Litigation conduct as circumstantial evidence.
• C. Answering the plaintiff's points.
  1. "Losing is not bad faith." Agreed. Wilbur-Ellis Co. v. Gompert, No. 8:21-cv-00340 (D. Neb. July 22, 2025); Christiansburg Garment Co. v. EEOC, 434 U.S. 412 (1978). This motion rests on [specific conduct], not on the outcome.
  2. "We had a good faith suspicion." Compare Double Eagle Alloys, Inc. v. Hooper, No. 4:19-cv-00243 (N.D. Okla. Nov. 19, 2024). Explain why suspicion ended on [date].
  3. "Pre-suit demands are normal." Gorovenko. Agreed; the motion does not rest on the demand.
  4. Distinguish Dental Health Services Inc. v. Miller, No. 2:23-cv-00383 (W.D. Wash. Oct. 22, 2024), where subjective bad faith was missing.
  5. If the plaintiff won something else, Hark'n holds that other success does not excuse a baseless trade secret count.
• D. The court should exercise its discretion. Deterrence. Cost imposed on a smaller competitor.

V. Amount.

• Hours, rates, and apportionment (claims that share a common core versus claims that do not).
• Applied Predictive (10,260 hours; $2,807,755.79; on appeal to the Federal Circuit as of late 2026) is a useful comparison for an unusually long case, and its reasoning relied on the plaintiff's aggressive litigation conduct.
• Bifurcate entitlement and amount if local rules allow.

VI. Conclusion.

Evidence matrix

Drafting notes. The DTSA's fee provision is discretionary and carries no presumption. Under § 1833(b)(3)(C), an employer that failed to provide the required immunity notice cannot recover exemplary damages or fees against that employee, which is something to check in the opposite situation, when the employer seeks fees from you. 18 U.S.C. § 1833(b). Because a fee award is a form of sanction, FLIR describes broad trial court discretion, and the appellate standard is deferential. Do not plan on reversing a denial. Calendar the deadline with the Federal Deadline Toolkit: Calendaring Protocols, Extension Motions, and Excusable Neglect Declarations.

Keeping these papers useful

Update Forms 3 through 6 whenever the plaintiff's identification changes, and date each version. Keep privileged analyses separate from documents you may produce. When the case ends, keep the set until any retention obligations have lapsed, because a second claimant will often raise the same technology. These forms are a starting point for general use, and they should be adapted with counsel to your facts, contracts, and forum.

Related Documents

Related Articles

• Defending a Trade Secret Claim: Reverse Engineering, Independent Development, Public Disclosure, and Readily Ascertainable Information: the law behind each form.
• Identifying Trade Secrets in Litigation: Reasonable Particularity, Sequencing Discovery, and Protecting the Secret While You Sue: the standards behind Form 7.
• Trade Secrets and Generative AI: Reasonable Measures, Prompt Leakage, and Vendor Terms: the AI tool issues in Form 8.

Related Guides

• Building a Trade Secret Defense From the First Demand Letter: A Practical Guide: when to use each form, in sequence.
• Managing Discovery in a Trade Secret Case: A Practical Guide: the discovery context for Forms 7 through 9.
• Responding to a Cease and Desist Letter: A Practical Guide: general letter strategy.
• Negotiating a Protective Order and Filing Under Seal: A Practical Guide: the order that makes Form 8 work.

Related Checklists

• Trade Secret Defense Checklist: A Practical Checklist: tasks and red flags, by phase.
• Software Interoperability and Reverse Engineering Clearance Checklist: A Practical Checklist: clearing a teardown.
• Rule 11 Sanctions and Safe Harbor Checklist: A Practical Checklist: process for the motion behind Form 10.

Related Toolkits

• Trade Secret Litigation Toolkit: Identification Statements, Two-Tier Protective Orders, and Forensic Protocols: the plaintiff-side identification statement and forensic protocols.
• Trade Secret Remedies Toolkit: Damages Models, Head Start Analyses, and Injunction Briefing: damages and injunction papers.
• Lateral Hire Toolkit: Candidate Certifications, Onboarding Instructions, and Cease-and-Desist Responses: hiring and cease-and-desist responses for new employees.
• Business Records Toolkit: Rule 902 Certifications, Foundation Scripts, and Hearsay Response Charts: certifications supporting Form 3.
• Clawback Toolkit: 502(d) Orders, Clawback Notices, and Privilege Review Protocols: protecting privileged reviews in production.
• Witness Preparation Toolkit: Session Agendas, Instruction Sheets, and Practice Examinations: session plans to use with Form 9C.
• Federal Deadline Toolkit: Calendaring Protocols, Extension Motions, and Excusable Neglect Declarations: calendaring the fee motion and other deadlines.