United States District Court, D. New Jersey
MEMORANDUM AND ORDER
G. SHERIDAN, UNITED STATES DISTRICT JUDGE
matter comes before this Court on Defendant's motion to
Dismiss Plaintiffs Amended Complaint. [ECF No. 37] and
Plaintiffs Notice to strike the Declaration of Michael A.
Sitzman [ECF No. 4l]. As a preliminary matter, the Court will
not consider the declaration and attachments submitted by Mr.
Sitzman in deciding this motion to dismiss. When deciding a
motion to dismiss a court may, but it is not bound to, take
judicial notice of appropriate facts without converting the
motion into one for summary judgment. Clements v.
Sanofi-Aventis, __ U.S. __, Inc., 111 F.Supp.3d 586,
596, (D.N.J. 2015). Here, the Court finds taking judicial
notice of the proposed documents, for the reasons sought by
Defendants, to be inappropriate. Accordingly, Plaintiffs
motion to strike Michael A. Sitzman's declaration (ECF
No. 41) is granted.
12, 2017, Plaintiff filed a complaint against Defendant for
misappropriation of trade secrets and confidential
information in violation of the Defend Trade Secret Act
(DTSA) and the New Jersey Trade Secrets Act (NJTSA). Upon
Defendant's unilateral motion to dismiss, on November 28,
2017, the complaint was dismissed pursuant to Fed.R.Civ.P.
12(b)(6), for failure to state a claim, specifically for
Plaintiffs failure to allege with sufficient specificity that
there was misappropriation of trade secrets by Defendant.
[ECF No. 34]. The Court also granted Plaintiffs motion to
strike Sitzman's declaration [ECF No. 32]. On December
28, 2017, Plaintiff filed the First Amended Complaint where
Plaintiff sets forth facts as explained below. [ECF No. 35].
Aurobindo 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.
(First Amended Complaint, "FAC" ECF No. 35,
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 and is now employed with Aurobindo USA. (Id.
at ¶ 17, ¶23). He was first hired by Oakwood on
November 24, 1997 as a Senior Scientist. As a condition of
his employment, Oakwood required Thanoo to sign both an
Invention Agreement and a Non-Disclosure Statement.
(Id. ¶23). As part of the Invention 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. 35, ¶24].
pursuant to the agreement, Thanoo agreed to preserve all of
Oakwood's secret and confidential information.
(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. ¶25).
Specifically, the Non-Disclosure Agreement stated in part,
I understand and acknowledge my obligation to refrain from
disclosing Oakwood Laboratories' confidential and
proprietary information and to refrain from using it for the
benefits of any other person or entity without the permission
of Oakwood Laboratories. I understand that my obligation
results from the nature of my employment and the
circumstances of disclosure, and will remain even after
termination of my employment relationship.
non-disclosure agreement does not restrict Thanoo from
working for a competitor of Oakwood, but rather it only seeks
to prevent Thanoo from disclosing or using Oakwood's
confidential and proprietary information. (Id.
¶26). Plaintiff avers that the trade secrets Thanoo
acquired during his employment with Oakwood include
Oakwood's product formulations, product designs and
ingredients, manufacturing process, testing procedures and
protocols, quality control procedures, and process design
controls. (Id. ¶28). Plaintiff asserts that, in
his role as Vice President and Senior Scientist, Thanoo was
principally responsible for the development of the Oakwood
Products, including designing or directly supervising the
design of Oakwood's microsphere systems technology as
well as other injectable drug delivery system, and
coordinating the research, development and testing of such
Oakwood Products. Thanoo also designed Oakwood's
microsphere system technology, including the design, research
and development of leuprolide and octreotide sustained
released products that rely on microsphere technology.
("Microsphere Project") (Id. ¶28).
alleges that Thanoo directed the Microsphere Project which
required Oakwood to design numerous formulations based on a
number of variables that were determined after extensive
trial and error testing. (Id. ¶29). Among
these, the testing included: (1) the type of polymer
selected, including ratio of lactide to glycolide, and type
of end group used; (2) molecular weight and inherent
viscosity of the polymer; (3) ration of drug to polymer, both
targeted and achieved; (4) type of process used to form
microspheres; (5) mixing speeds used in the process; (6)
types and quantities of solvents used in the process; (7)
flow rates used in the process; and (8) processing times and
holding times for various solutions and suspensions of
microspheres. Oakwood asserts that such information is not
generally known to public and were useful in the development
of microsphere technology. (Id. ¶29).
avers that Thanoo knew, possessed, or had access to all of
this information and data when he joined Aurobindo.
(Id. ¶3O). Oakwood employed reasonable efforts
to maintain the secrecy of its confidential research and
development, manufacturing, business and financial
of background, in 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. ¶¶36).
Specifically, on November 18, 2013, Mr. Govindarajan visited
Oakwood's headquarters where he met with Smith, to
discuss Aurobindo's and Aurobindo USA's capabilities.
Govindarajan also spoke with Thanoo on this visit.
(Id. ¶39) During this visit, Aurobindo informed
Oakwood that it had no prior experience with peptide based
microsphere products. (Id. ¶40). On November
20, 2013, Govindarajan connected via email with Thanoo and
J.V.N. Reddy, vice-president of Aurobindo. (Id.
¶41). 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
December 3, 2013, Oakwood and Aurobindo entered into the
Confidentiality Agreement; and Oakwood sent the
Confidentiality Agreement to Aurobindo and Auromedics, along
with Oakwood's confidential information and trade
secrets. This includes a 27-page memorandum explaining the
leuprolide products (the "Leuprolide Memo") (Compl.
¶¶43-44). On December 16, 2013, representatives
from Oakwood, including Thanoo, Aurobindo and AuroMedics
engaged in a conference call to discuss the Leuprolide
Products. (Id. ¶46). On ...