United States District Court, D. New Jersey
MEMORANDUM AND ORDER
G. SHERIDAN, U.S.D.J.
matter comes before this Court on Defendant's motion to
Dismiss Plaintiff's Complaint. [ECF No. 22].
AND PROCEDURAL HISTORY
Auribindo Pharma U.S.A., Inc. (“Aurobindo USA”),
Aurobindo Pharma Ltd. (“Aurobindo Pharma”), and
Auromedics Pharma LLC (“Auromedics”) are generic
drug manufacturers that make generic drugs and drugs
products, or copies of what are typically brand-name drugs.
(Compl. ECF No.1 ¶¶39-40).
Oakwood Laboratories LLC (“Oakwood”) also makes
generic drugs and drug products. (Id. at 16).
Defendant, Bagavathikanun Thanoo (“Thanoo”)
formerly worked as a Vice President of Product Development at
Oakwood. (Id. at ¶24). He was first hired by
Oakwood in 1997 as a Senior Scientist. As a condition of his
employment, Oakwood required Thanoo to sign both an Invention
Agreement (“Invention Agreement”) and a
Non-Disclosure Statement Agreement (“Non-Disclosure
agreement”). (Compl. 20; ECF No.1-1 and 1-2). As part
of the agreement, Thanoo consented to
promptly disclose to Oakwood Laboratories, L.L.C., through
its President or other duly authorized designee, all
invention and improvements, whether then believed or later
found to be patentable or not, made or conceived solely by
[Thanoo], or jointly with another or other within the whole
term of his employment by Oakwood Laboratories, L.L.C., and
for twenty-four months (24) after the termination of such
employment, which relates to or are useful in the business,
research, investigations, products, machines, and all lawful
interests and activities of Oakwood Laboratories, L. L.C.
[ECF No.1.1 pg. 1, ¶2].
pursuant to the agreement, Thanoo agreed to preserve all of
Oakwood's secret and confidential information. (Compl.
¶21; Id.). Similarly, Thanoo also signed a
Non-Disclosure Agreement prohibiting him from disclosing or
using at any time Oakwood's confidential information and
proprietary information (Id. ¶22; ECF No. 1-2).
In his role as Vice President of Product Development and his
prior position as Senior Scientist, Plaintiff supports that
Thanoo designed or directly supervised the design of the
Oakwood products. Thanoo also directly designed Oakwood's
microsphere systems technology, including the design,
research, and development of a new leuprolide injection
product that relies on microsphere technology
(“Leuprolide Project”) that Oakwood began
developing in 2013, during Thanoo's employment. (Compl.
October and November 2013, Mr. Ramnan, General Manager of
Sales and Marketing at Aurobindo USA and Aurobindo Chief
Executive Officer, Mr. Govindarajan, met with Mark Smith,
Oakwood's Chief Executive Officer, to discuss a business
venture in which Aurobindo USA would sell active
pharmaceutical ingredients (“API”) to Oakwood for
its Leuprolide Project. (Compl. ¶¶26-29). On
November 29, 2013, Aurobindo executed a Confidentiality
Agreement between it, Auromedics, another U.S. subsidiary of
Aurobindo based in New Jersey, and Oakwood. Pursuant to the
agreement the parties allegedly decided not to disclose or
use any confidential information, including trade secrets,
shared by the parties while discussing the Leuprolide Project
(Compl. ¶31; ECF No. 1-3, 2).
December 3, 2013, Oakwood sent the fully executed
Confidentiality Agreement to Aurobindo and Auromedics, along
with Oakwood's confidential information and trade
secrets. (Compl. ¶32). Ultimately, Aurobindo told
Oakwood that it was not interested in pursuing the Leuprolide
Project with Oakwood due to financial considerations. (Compl.
April 2014, Thanoo resigned from Oakwood and was hired as
Vice President of R&D Injectable with Aurobindo USA.
(Compl. ¶34-36). Upon resigning, Thanoo informally told
another Oakwood employee that he would be working for
Aurobindo. However, aside from that conversation, he has not
notified Oakwood of any inventions or improvements which he,
solely, or jointly with others, has developed that are
related to or useful to Oakwood's research,
investigations, products, machines after his resignation, as
required by the Inventions Agreement he executed when his
employment at Oakwood began. (Id. at ¶45).
12, 2017, Oakwood filed a Complaint against Dr. Thanoo for
misappropriation of Oakwood's trade secrets and
confidential information in violation of the Defend Trade
Secrets Act (DTSA) and the New Jersey Trade Secrets Act
(NJTSA). (Id. at ¶¶39-66).
Complaint, Plaintiff alleges that in late 2016, Oakwood
learned -- from a published transcript of an investor call
with Mr. Govindarajan -- that Aurobindo had been developing
“four peptide based microsphere products which have
around $3 billion top line.” (Id. at
¶41). Oakwood subsequently learned that Aurobindo has
been working on the microsphere system technology since at
least February 2016, and that Aurobindo expected to bring the
product to the market in 2017. (Id.). Plaintiff
alleges that Defendants are developing or have developed a
product substantially similar to Oakwood's Leuprolide
Project without Oakwood's consent and knowledge.
(Id. at ¶42). Plaintiff further contends that
Defendants could not have developed this product without
Thanoo's assistance and his use of Oakwood's
confidential information and trade secrets in violation of
his non-disclosure agreement. (Id.) Additionally,
Defendants could not develop this product without the
confidential information and trade secrets that Oakwood
disclosed to them as part of the discussions related to their
potential business venture. (Id. at ¶43).
explains in the Complaint,
Oakwood has devoted extensive time, money, and other
resources to the research design, and development of the
Oakwood Products it manufactures, including the design,
development, and testing of various injectable drugs, the
design, development, and testing of microsphere systems
technologies, the design and development of various research
processes, the design and development of various
manufacturing processes, contractual arrangements with
customers, the identities of contact persons with customers
and suppliers, batch record formats and content, standard
operating procedures, drug master files, freeze dry cycles
and development, product development lists, formation
development research, validation methods, validation data and
reports, and new drug application (“NDA”)
filings, planned filings, and associated data.
(Compl. ¶17). The Complaint further asserts in paragraph
18 that “[t]he design, development, and testing
processes, the research processes, the quality assurance and
compliance processes, and the manufacturing processes for the