Advantor Systems Corporation v. DRS Technical Services, Inc. , 678 F. App'x 839 ( 2017 )

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[DO NOT PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 15-14992
________________________
D.C. Docket No. 6:14-cv-00533-GAP-DAB
ADVANTOR SYSTEMS CORPORATION,
a Florida Corporation,
Plaintiff - Appellant,
versus
DRS TECHNICAL SERVICES, INC.,
a Maryland Corporation,
Defendant - Appellee,
DRS TECHNOLOGIES, INC.,
Defendant.
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________________________
No. 16-11273
________________________
D.C. Docket No. 6:14-cv-00533-GAP-DAB
ADVANTOR SYSTEMS CORPORATION,
a Florida Corporation,
HOLLAND & KNIGHT LLP,
Plaintiffs - Appellants,
versus
DRS TECHNICAL SERVICES, INC.,
a Maryland Corporation,
Defendant - Appellee,
DRS TECHNOLOGIES, INC.,
a Delaware Corporation,
Defendant.
________________________
Appeals from the United States District Court
for the Middle District of Florida
________________________
(January 31, 2017)
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Before WILSON, JULIE CARNES and ROYAL, * Circuit Judges.
JULIE CARNES, Circuit Judge:
This consolidated appeal relates to a competitive dispute between Plaintiff-
Appellant Advantor Systems and Defendant-Appellee DRS Technical Services,
both of which are in the business of managing electronic security systems used on
United States military bases. Advantor claims that, over the course of about two
years, DRS executed “a multi-pronged scheme to usurp Advantor’s [preexisting]
business” with the United States military. In specific, DRS allegedly
misappropriated proprietary information about Advantor systems and used that
information to secure a major, consolidated military contract that ultimately
replaced Advantor’s longstanding military business. Advantor maintains that this
competitive “scheme” deprived Advantor of the profit it would have made through
ongoing work with the military.
*
Honorable C. Ashley Royal, United States District Judge for the Middle District of Georgia,
sitting by designation.
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The district court granted summary judgment in DRS’s favor on each of
Advantor’s three substantive claims against DRS. Advantor appeals the court’s
grant of summary judgment and three related orders. Upon careful review of the
record and with the benefit of oral argument, we affirm in part and reverse in part.
BACKGROUND
I. Facts
Advantor is principally engaged in the design and manufacture of so-called
“intrusion detection systems,” but it also provides ongoing support—including on-
site maintenance and training—for the security systems it has installed. DRS does
not manufacture security systems itself; it is primarily involved in operating and
maintaining systems manufactured by others. Over the course of a decade,
Advantor sold several of its proprietary “intrusion detection systems” (“IDS”) to
various United States Air Force bases and provided ongoing maintenance and
support for those systems through individual service contracts. Advantor’s support
of these systems included training government personnel in installation and
maintenance techniques unique to Advantor’s systems. In so doing, Advantor
supplied the Air Force with manuals and training materials that allegedly contained
detailed data relating to Advantor’s technology.
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In mid-2013, the Space and Naval Warfare Systems Command
(“SPAWAR”)—the entity responsible for administering Navy and Air Force
security contracts—decided to consolidate the maintenance of security systems
across military bases through a single, all-encompassing contract rather than
individual contracts. In July 2013, it issued a request for bids from eight
preexisting prime contractors. DRS was eligible to bid for the consolidated
contract; Advantor was not. There was never any question that the consolidated
SPAWAR contract would supplant each of Advantor’s preexisting contracts with
the Air Force. Thus, the only way Advantor could have retained its military
business post-consolidation would have been to subcontract with the entity that
won the consolidated project.
A. Subcontract Negotiations
DRS began preparing a bid for the SPAWAR contract in summer 2013.
DRS was aware that several of the military bases that would be covered by the
consolidated contract used technology and hardware manufactured by Advantor.
Accordingly, DRS began to solicit bids from manufacturers, including Advantor,
to subcontract with DRS to perform maintenance services. In the course of
negotiations, DRS and Advantor entered into a non-disclosure agreement (the
“NDA”) designed to facilitate the exchange of proprietary information.
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The NDA contained two sets of provisions relevant to the underlying
dispute. The first provision states that information designated as “Proprietary
Information” “shall be used solely for the purpose of discussing the [SPAWAR
bid].” The second provision is a “no direct hire” clause, which provides that,
“during the term of this Agreement and for a one (1) year period thereafter, neither
Party shall knowingly or actively seek to hire any employee of the other Party”
except through indirect or general solicitation.
The proposal Advantor finally submitted comprised three pieces of
information at issue in this case: (1) a lump-sum quote of approximately $4.5M,
the amount Advantor would charge DRS to continue providing technical support to
the Air Force bases that used Advantor equipment; (2) a document identifying the
Air Force bases that already housed Advantor equipment; and (3) a single-page
document entitled “Past Performance,” which included six high-level bullet points
stating basic information regarding Advantor’s business.
After receiving Advantor’s quote, DRS concluded that it could price its bid
for the consolidated contract more competitively if it resolved not to use Advantor
as a subcontractor. Thus, DRS decided internally to eliminate Advantor’s
involvement in the project. Despite this change in its own plans, DRS continued to
identify Advantor as a strategic partner in the text of its bid to SPAWAR. DRS
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ultimately won the SPAWAR contract at the end of September 2013. As expected,
the contract replaced each of Advantor’s individual contracts at the Air Force bases
it had previously served, effectively eliminating a large segment of Advantor’s
existing business. Advantor alleges that DRS “us[ed] Advantor’s pricing and past
performance information without Advantor’s consent”—and allegedly in violation
of the NDA—to craft the “low-price bid” that enabled it to win the contract.
B. Hiring of Advantor Employees
DRS began work under the SPAWAR contract in October 2013, taking over
security-system management at each of the Air Force bases Advantor had
previously maintained. At least one month prior to beginning this work, DRS
began to recruit technicians familiar with the systems installed on the relevant
bases. To that end, DRS created an online job posting that went live in mid-
August 2013. The posting elicited 1,357 applications. DRS ultimately hired fifty
applicants, three of whom were existing Advantor employees looking for
alternative employment (the “Advantor Employees”). The record reflects that
these three employees made contact with DRS on their own initiative after
reviewing the job posting or receiving a referral from a friend. The Advantor
Employees, however, were bound by employment agreements with Advantor that
contained confidentiality and non-compete provisions.
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Advantor alleges that DRS knew of these contracts and “intentionally
induced” the Advantor Employees to breach both the confidentiality and non-
compete provisions thereof by sharing their knowledge and expertise on Advantor
system maintenance with DRS. Advantor has already filed separate lawsuits
against each of the Advantor Employees to enforce the employment agreements. It
now asserts a claim of tortious interference with contract against DRS, in addition
to breach of the “no direct hire” clause of the NDA.
C. Use of Advantor Manuals and Drawings
Despite having already hired three former Advantor employees, DRS
allegedly experienced “difficulty performing at Advantor sites due to its lack of
expertise with Advantor’s [ ] equipment” in January through March of 2014. To
assist in troubleshooting this equipment, DRS personnel acquired and referenced
technical manuals Advantor had provided to the Air Force at the time it installed
its proprietary systems. Advantor also alleges that DRS used certain technical
information provided by one of the Advantor Employees after he began to work at
DRS.
Advantor does not dispute that it provided the Air Force with various
manuals describing the operation and technical details of the security systems it
had installed. But it maintains that the Air Force had no right to distribute these
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manuals to other contractors and that each manual bore a restrictive legend
warning against dissemination. It also points to evidence that DRS was aware that
these manuals contained “trade secrets” and sought to procure them from its
government contacts nonetheless. On this basis, Advantor asserts a claim for
violation of Florida’s Uniform Trade Secrets Act (“FUTSA”).
In Advantor’s view, DRS’s breach of the NDA, alleged interference with the
Advantor Employees’ employment agreements, and misappropriation of trade
secrets injured Advantor by precluding it from participating as a subcontractor on
the SPAWAR project and, further, by enabling DRS to win a second contract with
SPAWAR when the initial engagement expired.
II. Procedural History
Advantor sued DRS in April 2014 on three separate claims: breach of the
NDA under Virginia law; tortious interference with contract under Florida law; and
violation of Florida’s Uniform Trade Secrets Act (“FUTSA”), Fla. Stat. § 688.001–
.009. Advantor sought lost-profit, disgorgement, and punitive damages across
these three claims. The suit progressed through discovery, at which point the
district court granted summary judgment in DRS’s favor. Advantor appeals the
summary judgment determination in addition to three separate but related orders.
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A. Financials Order
During discovery, Advantor repeatedly sought DRS’s corporate financial
information, including financials relating to the SPAWAR contract, in order to
support its prayers for lost-profit, disgorgement, and punitive damages on its
tortious interference and trade secrets claims. In January 2015, the magistrate
judge below issued an order denying Advantor’s third motion to compel this
information. The district court upheld the magistrate’s order, stating that
“Advantor’s persistent request for disclosure of Defendant’s proprietary financial
information exceeds the bounds of permissible discovery” because it is irrelevant
to Advantor’s claims. Advantor seeks review of this order (the “Financials
Order”).
B. Expert Order
The district court also issued an order in September 2015 excluding the
expert report and testimony of Advantor’s economic expert following DRS’s
Daubert challenge (the “Expert Order”). The court again noted that the damages
asserted were not relevant to Advantor’s substantive claims. Advantor argues that
this testimony was directly relevant to its claims for lost profits and disgorgement
damages, which it is entitled to seek under each of its causes of action. Advantor
seeks review of this order.
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C. Summary Judgment Order
DRS ultimately moved for summary judgment under Fed. R. Civ. P. 56 on
all counts before the case proceeded to trial. The district court granted the motion
in October 2015 on grounds addressed more fully in our discussion below.
Advantor has appealed from the summary judgment order with respect to each of
its substantive claims.
D. Sanctions Order
In response to the district court’s adverse holdings, Advantor filed an
emergency motion to stay enforcement of the summary judgment order pending
appeal under Fed. R. Civ. P. 62. In that motion, Advantor argued that enforcement
of the summary judgment order was necessary to protect its trade secrets in the
wake of the district court’s finding that “Advantor has failed to demonstrate that
the information [at issue] constituted trade secrets.”
The district court denied the motion as “utterly baseless” and issued an order
to show cause as to why Advantor and its counsel should not be sanctioned for the
motion. After briefing and a hearing, the court affirmed its “belief that the Motion
to Stay was objectively baseless and without merit,” stated that Advantor and its
counsel are “hereby SANCTIONED,” and directed Advantor to pay DRS its costs
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for defending the motion (the “Sanctions Order”). Advantor and its counsel now
appeal the Sanctions Order.
STANDARDS OF REVIEW
We review a district court’s grant of summary judgment de novo. Zibtulda,
LLC v. Gwinnett Cty., 411 F.3d 1278, 1281 (11th Cir. 2005). “Summary judgment
is appropriate when ‘there is no genuine issue as to any material fact and . . . the
moving party is entitled to a judgment as a matter of law.” Fed R. Civ. P. 56(c).
“In examining the record, we view the evidence in the light most favorable to the
non-moving party.” Zibtulda, 411 F.3d at 1281.
We review a district court’s orders on motions to compel discovery,
admission of expert evidence, and sanctions for an abuse of discretion. See
Thomas v. George, Hartz, Lundeen, Fulmer, Johnstone, King, & Stevens, P.A., 525
F.3d 1107, 1116 (11th Cir. 2008) (citing Castle v. Sangamo Weston, Inc., 744 F.2d
1464, 1466 (11th Cir. 1984)); Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141 (1997);
Kornhauser v. Comm’r of Soc. Sec., 685 F.3d 1254, 1258 (11th Cir. 2012).
DISCUSSION
The record in this case is voluminous, and each party has vigorously
disputed the other’s characterization of the facts. Our task in this appeal is, first
and foremost, to clarify Advantor’s core theories of liability and to identify
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whether the record contains facts sufficient to support those theories. Because our
findings on the merits of Advantor’s claims impact our analysis of the Financials
Order, the Expert Order, and the Sanctions Order, our discussion begins with our
de novo review of the court’s summary judgment findings.
I. Summary Judgment
The district court granted summary judgment in DRS’s favor on each of
Advantor’s three substantive claims. We discuss each in turn.
A. Breach of Non-Disclosure Agreement
Advantor contends that DRS breached two distinct clauses of the parties’
NDA: the provision limiting disclosure of information deemed “proprietary” (the
“Proprietary Information Provision”), and the clause prohibiting direct hiring of the
other party’s employees (the “No Direct Hire Clause”).
There is no dispute that the NDA is governed by Virginia law. In Virginia,
there are three elements of a breach of contract claim: “(1) a legally enforceable
obligation of a defendant to a plaintiff; (2) the defendant’s violation or breach of
that obligation; and (3) injury or damage to the plaintiff caused by the breach of
obligation.” Filak v. George, 594 S.E.2d 610, 619 (Va. 2004). The parties do not
dispute that the NDA is enforceable; as such, the only question is whether DRS
breached the terms of the agreement and injured Advantor thereby.
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We agree with the district court that, even when viewed in the light most
favorable to Advantor, the undisputed evidence does not demonstrate that DRS
breached either section of the NDA. Adopting the district court’s analysis, we
AFFIRM its grant of summary judgment to DRS on Advantor’s claim that DRS
breached the NDA.
B. Tortious Interference with Employment Agreements
Advantor next contends that DRS tortiously interfered with each of the
Advantor Employees’ employment agreements (the “Employment Agreements”)
under Florida law. Two sets of provisions are at issue: a confidentiality provision
and a non-compete clause. 1 The confidentiality provision provides:
Employee agrees to abstain, both directly and indirectly, from using,
appropriating, or disclosing Advantor’s Confidential Information to any
other person or entity for any reason other than in connection with his/her
position and for the benefit of Advantor. . . . The prohibition against
disclosing or improperly using Confidential Information continues
indefinitely . . . .
(Emphasis added.) “Confidential Information” is defined as “information not
available to the public relating to Advantor’s business including, but not limited to,
1
Note that Advantor asserts three counts of tortious interference relating to three separate
employment agreements, one for each of the “poached” Advantor Employees. The language is
slightly different in each agreement, but the relevant provisions are substantively identical. We
cite only to the agreement of Gregory Larson.
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technical, marketing, sales programs or strategies, products, designs, plans,
concepts, reports, proposals, financial condition, customer information or lists, or
pricing formula.”
The non-compete clause provides:
Employee agrees that he or she will not, within a period of two (2) years
following termination of employment for any reason whatsoever, directly or
indirectly engage in any activity competitive to Advantor (including
temporary or independent contractor, permanent placement or any
combination thereof) for Employee’s benefit or in association in any
capacity, including but not limited to, the capacity of an employee, agent,
servant, independent contractor, partner, proprietor, or stockholder, with any
person, business or firm engaged in a similar business to Advantor’s within
. . . any [ ] markets in which Advantor engages in business.
(Emphasis added.)
There is no dispute that Florida law applies to the tortious interference claim.
Under Florida law, the tort of contractual interference occurs when the defendant
(1) has knowledge of (2) an enforceable contract between the plaintiff and a third
party and (3) intentionally and (4) unjustifiably interferes with the plaintiff’s rights
under that contract, (5) thereby causing the plaintiff injury. See Mariscotti v.
Merco Grp. at Akoya, Inc., 917 So. 2d 890, 892 (Fla. 3d DCA 2005). “Imbedded
within these elements is the requirement that the plaintiff establish that the
defendant’s conduct caused or induced the breach [of contract] that resulted in the
plaintiff’s damages.” Chicago Title Ins. Co. v. Alday-Donalson Title Co. of Fla.,
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Inc., 832 So. 2d 810, 814 (Fla. 2d DCA 2002) (citing St. Johns River Water Mgmt.
Dist. v. Fernberg Geological Servs., Inc., 784 So. 2d 500, 504 (Fla. 5th DCA
2001)). Neither of the first two elements is at issue in this appeal. 2 We consider
the three remaining elements of the claim in turn.
1. Intent to Interfere
A plaintiff alleging tortious interference must show specific intent to
interfere with contract; mere negligence is not enough. See Fla. Power & Light
Co. v. Fleitas, 488 So. 2d 148, 151 (Fla. 3d DCA 1986); Chicago Title Ins., 832
So. 2d at 814.3 Furthermore, mere awareness of a non-compete agreement at the
time of hire is not sufficient to support a tortious interference claim. See
Fiberglass Coatings, Inc. v. Interstate Chem., Inc., 16 So. 3d 836, 838–39 (Fla. 2d
DCA 2009).
The district court found that genuine fact issues precluded summary
judgment as to DRS’s intent. We agree and find that a fact dispute remains as to
2
As to the first element, DRS does not dispute that it had knowledge of the Agreements in place
between Advantor and each of the Advantor Employees at the time DRS hired them. As to the
second element, DRS does not challenge on appeal the enforceability of the agreements, so we
do not consider that issue here.
3
Some of the cases cited in this analysis relate to Florida’s cause of action for tortious
interference with business relationship. Courts have found that the elements and standards of
that cause of action apply with equal force to the cause for tortious interference with contract.
See, e.g., Smith v. Ocean State Bank, 335 So. 2d 641, 642 (Fla. 1st DCA 1975).
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whether DRS intended to interfere with the Agreements by (1) continuing to
recruit the Advantor Employees once it learned of the restrictive covenants;
(2) hiring the Advantor Employees despite its awareness that it stood in a
competitive position with respect to Advantor; and (3) allowing (indeed,
expecting) the Advantor Employees to share with DRS their expertise in working
with Advantor systems, despite the possibility that certain of that information
might be considered confidential under the Agreements.
A few aspects of the record make clear that these questions warrant
examination by a factfinder. First, there is clear evidence that DRS was aware of
the Advantor Employees’ potential liability under the confidentiality and non-
compete provisions. For example, during the recruitment process, a DRS
employee told one of the Advantor Employees not to worry about possible
competitive implications under his Agreement because DRS would “blow
Advantor away.” And at least one internal DRS document shows that DRS viewed
Advantor as an indirect competitor at the time it decided to employ the Advantor
Employees, signaling that it was on notice of and disregarded the possibility that
their hiring might run afoul of the non-compete clause. The record also suggests
that DRS was highly motivated to hire the Advantor Employees precisely because
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they held unique knowledge of Advantor systems that DRS would not be able to
get elsewhere.
As Advantor has shown, DRS viewed the Advantor Employees as critical to
DRS’s performance under the SPAWAR contract, and each of the Advantor
Employees was considered a high-priority hire. This undisputed evidence could
support a rational factfinder’s conclusion that DRS possessed the requisite intent to
interfere with the Agreements once it became aware of them. 4
2. Interference
The next question is whether there is evidence of actual interference with the
Employment Agreements. We can distill this to a simple inquiry: Did the
Advantor Employees breach the confidentiality provision and/or the non-compete
clause when they worked on Advantor equipment for DRS’s benefit? If there was
no underlying breach, there was no interference. Chicago Title Ins., 832 So. 2d at
814 (“Imbedded within these elements is the requirement that the plaintiff establish
4
We have considered and reject DRS’s counterarguments. In its brief on appeal, DRS crafts the
timeline far too narrowly and ignores several of the record facts that suggest specific intent. It
asserts that it did not know of the Agreements until after the Advantor Employees applied for the
job, and that DRS did not actively pursue their recruitment. But Advantor’s allegations relate to
DRS’s decision to hire the Advantor Employees away from Advantor and to make use of their
unique expertise after it learned of the Agreements. DRS’s arguments on this point largely miss
the mark.
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that the defendant’s conduct caused or induced the breach that resulted in the
plaintiff’s damages.”) (citing St. Johns River Water Mgmt. Dist., 784 So. 2d at
504). We consider the terms of each provision separately.
a. Non-Compete Clause
The non-compete clause prohibits employees from engaging “directly or
indirectly [ ] in any activity competitive to Advantor,” including during
employment by any business “engaged in a similar business to Advantor’s within
any [ ] markets in which Advantor engages in business.” There is no dispute as to
the nature of the parties’ work, and the facts make clear that the parties were
“engaged in a similar business” when the alleged poaching occurred. The
remaining question, then, is whether the Advantor Employees engaged directly or
indirectly in activity competitive to Advantor.
Unlike the district court, we conclude that a factual dispute exists as to
whether Advantor and DRS were competitors during the relevant time period.
Advantor identifies four sets of undisputed facts regarding DRS’s competitive
posture vis-à-vis DRS. First, it notes that DRS viewed Advantor internally as its
competitor in the market for military security systems, pointing to an email from
the relevant timeframe in which a DRS program manager stated that Advantor has
“a proprietary system that is installed at some locations [DRS] is currently
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supporting, and they are our competitor.” (Emphasis added.) DRS itself interprets
this email as signaling that “DRS may compete with Advantor in some contexts”
even though they did not directly compete for the primary SPAWAR contract
itself.
Second, Advantor notes that, even after DRS won the SPAWAR contract,
Advantor continued to perform warranty work at the Air Force bases on which its
systems were installed. DRS does not dispute this fact, nor does it deny
Advantor’s assertion that “the three defecting employees would have done [this
work] for Advantor had they not been hired away.”
Third, as Advantor observes, “the district court incorrectly assumed that
DRS had permanently obtained the right to perform IDS maintenance at the 19
Advantor sites at issue.” As the record shows, the original consolidated contract
was designed to last only one year; the contract came up for renewal in September
2014. While DRS did ultimately win renewal of the contract for a second year,
SPAWAR was free at the end of the first year to reopen bidding to other general
contractors that might have chosen to work with Advantor, or even to revert to the
individual-contract model. DRS does not deny that opportunities existed for
Advantor to regain some of its prior work as a subcontractor, or even a prime
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contractor, in later years. Nor does DRS deny Advantor’s assertion that Advantor
stood to win maintenance work at non-SPAWAR sites at all relevant times.
Finally, Advantor argues that the SPAWAR contract contained a
“Certification Requirement” that had the effect of requiring Advantor-certified
personnel to perform technical work on Advantor systems. The parties do not
agree on the proper interpretation of this provision, but DRS’s bid to SPAWAR
clearly stated that “DRS acknowledges the critical requirements for manufacturer
certifications for the . . . Advantor systems.” The bid also represented to the Air
Force that “Advantor is a strategic partner for DRS”—a representation that became
untruthful but that DRS apparently considered important to its chances of being
awarded the contract.
Despite this evidence, the district court concluded: “The flaw in
[Advantor’s] argument” is that, by working on Advantor equipment as DRS
employees, the Advantor Employees “were not ‘directly or indirectly engag[ing] in
any activity competitive to Advantor.’” The court based this finding on its
conclusion that, “[b]y the time DRS hired [the Advantor Employees], SPAWAR
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had already awarded the contract to DRS,” and therefore DRS was not in a
competitive position vis-à-vis Advantor at the time of the alleged breach. 5
But the facts cited here suggest (among other things) that even after
SPAWAR decided to give DRS the consolidated contract, DRS and Advantor were
poised to compete on at least three levels: (1) for the work maintaining Advantor
equipment under the SPAWAR contract; (2) for the ability to perform maintenance
on Advantor systems at non-SPAWAR sites (i.e., United States government sites
not covered by the SPAWAR consolidated contract); and (3) for the right to work
either as a subcontractor or a direct contractor for SPAWAR once DRS’s initial
one-year contract expired and bidding reopened. A factfinder could conclude that
the Advantor Employees were engaged “directly or indirectly” in activity that was
competitive to Advantor when DRS hired them and used them to develop in-house
expertise with Advantor systems. It is also fair to conclude that, in so doing, DRS
gained competitive ground against Advantor, even though Advantor was not
eligible to become SPAWAR’s prime contractor during the initial round of
bidding.
5
DRS embraces this reasoning wholesale and does not squarely address Advantor’s contrary
arguments regarding the parties’ competitive posture.
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Considering the full scope of the competitive picture in this case, we reverse
the district court’s finding because, when viewed in a light favorable to Advantor,
the evidence suggests that the Advantor Employees were engaged in activity
competitive to Advantor.
b. Confidentiality Provision
The district court declined to rule on Advantor’s claim that the Advantor
Employees disseminated confidential Advantor information in violation of the
confidentiality provision. In light of this gap in the lower court’s analysis, we
remand Advantor’s claims regarding the confidentiality provision for review by the
district court in the first instance.
3. Injury and Causation
To establish tortious interference, Advantor must further show that the
breach DRS induced actually “resulted in the plaintiff’s damages.” Chicago Title
Ins., 832 So. 2d at 814 (citing St. Johns River Water Mgmt. Dist., 784 So. 2d at
504). The district court concluded that, even if there was interference, the
Advantor Employees’ breach of the Employment Agreements did not result in any
cognizable damage to Advantor. Our analysis of the parties’ competitive posture
and the record before us compels us to conclude the opposite.
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It is crucial to clarify the precise theory of injury and causation Advantor has
articulated in this litigation. Advantor’s argument for lost profits and/or
disgorgement damages is as follows. But for DRS’s interference with the
Employment Agreements, DRS would not have been able to assemble the in-house
expertise needed to service the Advantor systems that were already installed on
several SPAWAR sites. And if DRS lacked the ability to “self-perform” with
respect to Advantor equipment, it would have had no choice but to subcontract
with Advantor in order to meet its obligations toward SPAWAR. Resolving to
self-perform a role Advantor would otherwise have been hired to do also allowed
DRS to submit a below-average bid quote, which allowed it to win the SPAWAR
contract over other eligible bidders (at least one of which had agreed to partner
with Advantor). Thus, Advantor alleges, it lost the opportunity to perform work
that it would otherwise have been hired to do.
Put differently, Advantor suggests that its employees possessed specialized
and non-public knowledge about its own systems without which no other entity
could properly maintain an Advantor system, and that DRS knowingly undermined
Advantor’s attempts to protect that knowledge. DRS’s conduct thus robbed
Advantor of the benefits that would have flowed from its veritable monopoly in the
realm of Advantor system service. Furthermore, because DRS’s self-performance
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was so successful during the initial year of the SPAWAR contract that DRS won
the work again in subsequent years, DRS continued to rob Advantor of work it
otherwise would have been uniquely positioned to do.
The argument is not that Advantor merely lost an opportunity to compete for
future SPAWAR business. The argument is that SPAWAR or its prime contractor,
DRS, would inevitably have had to hire Advantor if not for DRS’s pilfering of its
proprietary expertise. (Alternatively, if not for DRS’s misconduct, Advantor
would have been able to withhold technical service of Advantor systems and thus
induce the Air Force to reinstate Advantor’s prior contracts or to require DRS to
subcontract with Advantor directly.)
The district court concluded that there is “no logical relationship” between
DRS’s alleged inducement of the Advantor Employees’ breaches, on the one hand,
and the loss of potential business for Advantor, on the other.6 To the contrary, we
find Advantor’s theory of causation logical and conclude that the question whether
Advantor’s loss of business was, in fact, caused by DRS’s conduct should be put to
a factfinder. On the evidence presented, a factfinder could conclude that Advantor
6
DRS’s brief on appeal embraces the district court’s analysis wholesale and does not squarely
confront Advantor’s more nuanced causation theory.
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would have been hired in some capacity on the SPAWAR project if not for DRS’s
aggressive efforts to develop the know-how to perform Advantor service work
itself. At a minimum, the factual ambiguity on these points makes summary
judgment inappropriate.
Several parts of the record support this conclusion. First, Advantor notes
that SPAWAR’s request for quotes for the consolidated contract (the “RFQ”)
contained a “Certification Requirement,” which stated that
[p]ersonnel shall be qualified to make repairs on the IDS equipment to be
serviced, inspected, and maintained. In addition, personnel performing
annunciator maintenance shall have current A7S AEL approved annunciator
certification for IDS components, including annunciator software used at the
identified bases.7
The record establishes that only Advantor personnel, military customers, and
chosen subcontractors are eligible to receive training to become certified in
maintaining Advantor IDS systems, and certifications expire as soon as the trained
individual leaves Advantor or upon the termination of the project for which
certification was obtained.
Advantor claims that that because the RFQ required that personnel providing
IDS services on the nineteen Air Force bases “shall have current A7S AEL
7
An “annunciator” is a technical component of an IDS. Advantor manufactured many of the
annunciators located on the relevant Air Force bases.
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approved annunciator certification,” only Advantor or one of its certified
subcontractors could maintain Advantor systems under the original plan for the
consolidated contract. DRS disputes this interpretation, and the record evidence
conflicts as to whether the RFQ intended to require that the prime contractor hire
technicians with active Advantor certifications. Notably, however, the language of
DRS’s bid suggests that DRS was operating under the assumption that the military
expected Advantor to play a continued role in the project: “DRS acknowledges the
critical requirements for manufacturer certifications for the Vindicator and
Advantor systems which are common as the USAF fielded IBDSS system.” The
bid also represented to the Air Force that “Advantor is a strategic partner for
DRS,” confirming that both DRS and the Air Force viewed Advantor’s continued
involvement at the subcontract level as a component of the consolidation plan.
Furthermore, there is evidence to suggest that other subcontractors could not
have performed this work in Advantor’s stead, and that DRS would have been
unable to acquire enough technical information regarding Advantor systems to
“self-perform” without committing the misconduct at issue. Discussion about
Advantor employees found in several internal DRS emails—the content and
meaning of which are not in dispute—demonstrates how valuable Advantor
expertise was to DRS:
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• “All, It is extremely important that we treat Greg like GOLD and make
sure his transition to DRS is as smooth as possible. I know we strive to
do this with everyone, as we should, but please pay special attention to
Greg and make sure we get him on board quickly. He is key to our
ability to support Advantor systems.” (Emphasis added.)
• “I need to adjust Axel Alvarez’s offer to a $28.85/ hour rate. I apologize
for any inconvenience this has caused, but this is a critical candidate for
our USAF IBDSS maintenance program supporting Edwards AFB. I got
some hesitation from this critical candidate even though we have already
been through the salary discussion.” (Emphasis added.)
• “I got a call from Axel about the B-2 Hangar installation at Edwards. He
has run into some technical issues and doesn’t know how to design the
system to accommodate them. He was asking me how to solve the
problem, but I obviously don’t have any experience with this system.
. . . [E]ssentially he doesn’t know how to make an Advantor system work
in this environment. . . . [W]e don’t have anyone on staff that has
Advantor design experience or any ability to go to Advantor directly for
support. I’m concerned that we may be in over our heads with this
design task . . . .” (Emphasis added.)
Testimony from one DRS witness confirmed that DRS viewed the Advantor
Employees as high-priority, “A plus” recruits who were needed to ensure there was
“no lapse in coverage” at the relevant military bases.
Another set of emails exchanged shortly after DRS won the SPAWAR
contract shows that, in order to meet its obligations under the contract, it had to
either hire Advantor as a subcontractor or hire Advantor-trained techs who would
bring Advantor expertise to DRS’s sites. In one message, SPAWAR officials
noted that “DRS has a teaming agreement with Advantor for them to do the
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support” but there are “down-side[s] to this” agreement, including the fact that “[i]t
will impact schedules . . . because [Advantor technicians] are the only ones
certified there is no repercussions for them for missing response times.” It
continues:
DRS has technicians that are trained on Advantor . . . . However Advantor
does not certify any techs but their own. Our recommendation is that you
allow us to staff positions with Advantor-experienced techs that are DRS
employees so that they can meet the critical response times, and when a
problem is something that requires a specific certified tech (as in, it would
void a warrantee or is something so intrinsic that only a current Advantor
employee would know about) then DRS would call Advantor and bring in
one of their techs through their sub-contract agreement.
The author of the email later reiterates: “I recommend that we be allowed to staff
the primary support with DRS techs that are experienced in supporting Advantor
(some are current Advantor techs looking for a change), and then pull in Advantor
as a sub when necessary.” Viewed in the light most favorable to Advantor, these
emails—the content and meaning of which are undisputed—suggest that, if DRS
had not been able to hire technicians with meaningful Advantor expertise, they
would have had no choice but to hire Advantor itself.
We reiterate that Advantor’s arguments regarding injury and causation may
not succeed at trial. But given our analysis, we conclude that a reasonable
factfinder could interpret the relevant internal emails, coupled with the Air Force’s
RFQ requirement and DRS’s bid language, as compelling evidence that DRS
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might have been required—by the Air Force or out of practical necessity—to hire
Advantor if not for its poaching of the Advantor Employees. This would logically
support an argument that DRS’s interference resulted in loss of business for
Advantor, justifying Advantor’s prayers for lost-profit or disgorgement damages.
We conclude that the district court erred in finding that Advantor does not
have a “logical” theory of causation for lost profits. The theory is logical. At a
minimum, fact questions remain regarding whether Advantor would have been
hired in some capacity if not for the poaching of the Advantor Employees.
Because genuine disputes of material fact exist as to the critical elements of
the tortious interference claim, we find that summary judgment on this claim was
improper. As such, we REVERSE the district court’s grant of summary judgment
for DRS on the tortious interference claim.
C. Misappropriation of Trade Secrets
Advantor’s final claim is that DRS violated Florida’s Uniform Trade Secrets
Act (“FUTSA”), Fla. Stat. § 688.001–009. Advantor characterizes three sets of
information as misappropriated “trade secrets”: (a) the information contained in
Advantor’s subcontract proposal, which DRS allegedly used to exclude Advantor
from the SPAWAR project (the “Subcontract Information”); (b) technical manuals
and drawings that the Air Force handed over to DRS when it won the contract,
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which DRS distributed to its technicians and used to service Advantor equipment
(the “Manuals”); and (c) technical information sent via email by Greg Larson, one
of the Advantor Employees, to DRS once he began working there (the “Larson
Information”). DRS allegedly used the latter two sets of information to
successfully maintain Advantor equipment without having to subcontract with
Advantor.
To prevail on a FUTSA claim, a plaintiff must demonstrate that (1) it
possessed a “trade secret” and (2) the secret was misappropriated. Fla. Stat.
§ 688.002; see Am. Red Cross v. Palm Beach Blood Bank, Inc., 143 F.3d 1407,
1410 (11th Cir. 1998) (applying Florida law). “Trade secret” means any
information (including methods, techniques, or processes) that (a) derives
independent economic value from not being generally known or readily
ascertainable and (b) is the subject of reasonable efforts to maintain its secrecy.
Fla. Stat. § 688.002(4); see Premier Lab Supply, Inc. v. Chemplex Indus., Inc.,
10 So. 3d 202, 205 (Fla. 4th DCA 2009). “Misappropriation” generally means that
the secret was acquired by someone who knows or has reason to know that the
secret was improperly obtained or who used improper means to obtain it. See
Fla. Stat. § 688.002(2).
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Damages for a FUTSA violation “can include both the actual loss caused by
misappropriation and the unjust enrichment caused by misappropriation.” 8
Fla. Stat. § 688.004(1). In pursuing such damages, “[a] plaintiff’s burden of proof
. . . is ‘liberal’ and is satisfied by showing the misappropriation, the subsequent
commercial use, and . . . evidence by which the jury can value the rights the
defendant has obtained.” Premier Lab Supply, Inc. v. Chemplex Indus., Inc.,
94 So. 3d 640, 644 (Fla. 4th DCA 2012) (citing Perdue Farms Inc. v. Hook, 777
So. 2d 1047, 1051 (Fla. 2d DCA 2001)). The statute also permits punitive
damages “[i]f willful and malicious misappropriation exists.” Fla. Stat.
§ 688.004(2). There are three sets of alleged trade secrets; we consider them
separately.
1. Subcontract Information
Advantor alleges a FUTSA violation with respect to three pieces of
information contained in its subcontract proposal: a price quote, a list of Air Force
bases on which Advantor systems were installed, and a “Past Performance”
document containing a few high-level details about Advantor’s business. The
8
The statute also provides that, “in lieu of damages measured by any other methods, the
damages caused by misappropriation may be measured by imposition of liability for a reasonable
royalty for a misappropriator’s unauthorized disclosure or use of a trade secret.” Fla. Stat.
§ 688.004(1). Advantor has not requested royalty damages.
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district court’s finding that DRS did not violate FUTSA with respect to this
information was without error, as it is clear on the current record that none of the
Subcontract Information “derives independent economic value from not being
generally known or readily ascertainable.” Fla. Stat. § 688.002(4)(a).
Price quote. The lump-sum price quote was offered voluntarily for the
purpose of negotiating a possible deal with DRS. It was non-specific and was not
broken down into component pricing parts; it revealed little, if anything, about
Advantor’s internal pricing or marketing strategies. More importantly, it does not
have “independent economic value” by virtue of its secrecy: A price quote
generates potential economic value only when it is shared with prospective
business partner. This quote qua quote simply had no independent value except
when disclosed in the context of bilateral negotiation.
List of Advantor sites. The document listing Advantor’s Air Force sites
originated from DRS, and Advantor makes no assertions to the contrary. Thus, it
cannot possibly have been valuable to Advantor by virtue of the fact that DRS did
not possess it.
“Past Performance” document. Finally, the record suggests that the “Past
Performance” information included in Advantor’s subcontract proposal was
publicly available, and Advantor does not offer evidence to the contrary.
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Definitionally, then, it is not a “trade secret.” Fla. Stat. § 688.002(4)(a). See
also, e.g., Templeton v. Creative Loafing Tampa, Inc., 552 So. 2d 288, 289–90
(Fla. 2d DCA 1989) (customer list was not a trade secret because it could be
derived from public publications); Health Care Mgmt. Consulting, Inc. v.
McCombes, 661 So. 2d 1223, 1226 (Fla. 1st DCA 1995) (summaries of Medicare
regulations were not trade secrets because content could be ascertained by
researching the relevant law, even though summaries involved some
interpretation).
Because the Subcontract Information did not include “trade secrets,” DRS
could not have violated FUTSA by “using” it, even if Advantor had protected its
confidentiality and DRS had misappropriated it. The district court did not err in
granting summary judgment on Advantor’s FUTSA claim with respect to the
Subcontract Information, and we AFFIRM accordingly.
2. Manuals
Advantor next argues that DRS violated FUTSA when it received from the
Air Force certain technical manuals and drawings (the “Manuals”) regarding
Advantor systems, broadly disseminated them to its technicians, and used them to
service Advantor equipment under the SPAWAR contract. It is important at the
outset to identify the documents at the heart of this claim. There is no dispute that
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this subset of documents contains operational manuals supplied to the Air Force
upon installation of Advantor systems, including “quick reference guides” and
drawings. An Advantor corporate president testified that the “manuals associated
with our IDS equipment are detailed and lengthy technical documents, containing
multiple chapters and intricate details to these protected products and contain
proprietary, restrictive disclosure markings.” DRS does not provide an alternative
or conflicting characterization of the Manuals.
The record is voluminous, and we are unable to determine which specific
Manuals were received by and disseminated within DRS or when such
dissemination occurred. But it is clear that DRS received a number of Manuals
from at least one military employee shortly after undertaking the SPAWAR
contract; that DRS personnel found certain of the Manuals useful; and that DRS
managers discussed a plan for disseminating the Manuals broadly across Advantor
sites without incurring liability. 9 With this background in mind, we consider the
elements of the FUTSA claim.
9
For example, one DRS manager directly involved in the SPAWAR project admitted in his
testimony that technicians employed at at least one Air Force base received Advantor operating
materials from a military sergeant in order to help DRS service their equipment. This testimony
also makes clear that the Manuals were relevant to operations at all the former Advantor bases.
Internal DRS emails further show that DRS managers discussed the fact that they had received
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a. “Trade Secret”
With no explanation as to how it reached its conclusion, the district court
found that Advantor “failed to demonstrate that . . . the manuals constituted trade
secrets.” On a technical question such as this, the absence of analysis makes our
task difficult. To constitute a trade secret, the information must “[d]erive
independent economic value . . . from not being generally known to, and not being
readily ascertainable by proper means by,” parties that might benefit from their
use, Fla. Stat. § 688.002(4)(a), and Advantor must have taken sufficient steps to
protect the secrecy of the information. Fla. Stat. § 688.002(4)(b).
We first note that, as soon as it began experiencing technical problems with
Advantor systems, DRS made several efforts to acquire the Manuals despite
express concerns about their proprietary nature. Only after some internal debate,
and the apparent involvement of the SPAWAR legal department, did Air Force
personnel forward the Manuals to DRS employees, who made plans to disseminate
them widely to their technicians. DRS does not deny having taken these steps to
acquire the technical information it needed to properly service Advantor
equipment, and it provides no evidence that the technical data was available
the Manuals and strategized regarding the most efficient way to disseminate them across their
Air Force sites in light of their confidentiality markings.
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elsewhere during the relevant time period. If DRS could readily have acquired the
information through an alternative, open source, it likely would not have
knowingly assumed the legal risk of accessing, copying, and disseminating the
Manuals in the first place.
DRS further attempts to persuade us that Advantor is in the habit of
“recklessly distribut[ing]” its technical materials and, as a result, failed to protect
the secrecy of the Manuals at issue. The material facts on this point do not
conflict. Advantor provides operations manuals to each of its customers at the
time it installs its systems, and it did so in this case. Manuals are also provided to
Advantor employees and any other individuals, including military personnel and
subcontractors, who receive training from Advantor on its systems. But this
dissemination is not haphazard. The Manuals themselves bear confidentiality
legends; in fact, the existence of these legends was one of the reasons DRS
hesitated to disseminate the Manuals to its technicians.10 In fact, emails among
10
For example, a Manual entitled “Operator Quick Reference Guide” that was allegedly
disseminated to DRS technicians states on its second page:
This information is intended solely for the individual or entity to which it is addressed
and may contain confidential and/or privileged material. Any review, transmission,
dissemination or other use of or taking action in reliance upon this information by
persons or entities other than the intended recipient is prohibited. This document may be
submitted to the Government under the provisions of the Limited Rights set forth in FAR
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DRS personnel concluded that dissemination of certain Manuals across various
SPAWAR sites would likely be a “[n]o go . . . because they have copyright or
trademark statements on them” and resolved to discuss the dilemma with
SPAWAR’s legal department. The record also shows that, whenever Advantor
conducts training seminars, it requires attendees to sign a sheet acknowledging that
[t]he information provided in this training class . . . is considered Proprietary
and Confidential to Advantor. These instructional materials also contain
trade secret information of Advantor. This information may be used only for
its intended purpose and may not be disclosed without . . . consent.
One of the Air Force officers who provided DRS with the Manuals had received
and signed this notice. Under Florida law, a factfinder could conclude that this set
of precautions (which DRS does not dispute) likely constitutes “reasonable efforts
to maintain secrecy.” Fla. Stat. § 688.002(4)(b). See, e.g., Premier Lab, 10 So. 3d
at 206 (holding that “the lack of a confidentiality agreement does not necessarily
defeat [an] argument that [information] is a trade secret” because “[w]here an
employee acquires, during the course of his employment, a special technique or
process developed by his employer,” he is under a duty not to use it to the
52.227-14, and must have appropriate Limited Rights Notice attached for any such
submittal.
This Manual was forwarded to Axel Alvarez, one of the Advantor Employees, by Air Force
personnel three months after DRS began work under the SPAWAR contract.
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detriment of his employer). Cf. 55 Fla. Jur. 2d Trademarks & Unfair Competition
§ 44 (“A trade secret owner who, upon delivering information to a state agency,
fails to . . . specify in writing what information it contends is confidential . . . has
not taken measures . . . to maintain the information’s secrecy.”).
b. Misappropriation
The next question, then, is whether the Air Force “owed a duty” to Advantor
“to maintain [the Manuals’] secrecy or limit [their] use,” and whether DRS “knew
or had reason to know” of the Air Force’s duty. See Fla. Stat. § 688.002. The
parties argue that the answer to this question depends on whether the Air Force
held legal rights in the Manuals, so we focus our analysis on that inquiry. If the
Air Force’s rights in the Manuals were unlimited, as DRS contends, then it owed
no duty to Advantor to limit the Manuals’ distribution to non-Advantor service
contractors. DRS specifically argues that Advantor lost its right to control the Air
Force’s use of the Manuals when it sold its equipment to the Air Force and
supplied it with operational manuals for its products. If, however, the Air Force’s
rights were limited and DRS had reason to know of that limitation, as Advantor
argues, then DRS’s use may have constituted misappropriation.
The parties do not dispute that the applicable contracts do not incorporate
any specific data rights clauses. In the absence of clear contractual language, the
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parties agree that the Air Force’s rights in the Manuals are governed by the
Defense Federal Acquisition Regulations System (the “Defense Regulations”).
These provisions clarify the default data rights the government holds in
commercial data provided by private contractors. The Defense Regulations
framework requires us to look at three interconnecting provisions of Title 48 of the
Code of Federal Regulations: § 252.227-7015 (outlining the government’s rights
in various types of contractor data) and § 227.7102-1, -2 (further clarifying
government rights in distinct types of data).
In relevant part, these provisions establish that “[t]he Government shall have
the unrestricted right to use, [ ] reproduce, release, . . . or disclose technical data,
and to permit others to do so, that . . . (ii) Are form, fit, and function data” (“FFF
Data”) or that “(iv) Are necessary for operation, maintenance, installation, or
training” (“OMIT Data”). 48 C.F.R. § 252.227-7015(b)(1) (emphasis added).
“Form, fit, and function data” is “data that describes the required overall physical,
functional, and performance characteristics . . . of an item, component, or process
to the extent necessary to permit identification of physically and functionally
interchangeable items.” 48 C.F.R. § 252.227-7015(a)(3).
If the Advantor data held by the Air Force does not qualify as FFF or OMIT
Data, then the Air Force is authorized to “use . . . or disclose technical data within
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the Government only.” 48 C.F.R. § 252.227-7015(b)(2) (emphasis added). The
Government is also precluded from releasing, disclosing, or authorizing use of
such technical data “outside the Government without the Contractor’s written
permission unless a release, disclosure, or permitted use is necessary . . . for
performance of work by covered Government support contractors.” 48 C.F.R.
§ 252.227-7015(b)(2)(ii).
In short, if the Manuals contain exclusively FFF or OMIT Data, then the Air
Force had, by default, unrestricted rights to disclose the Manuals to DRS for the
purpose of helping the Air Force maintain its security systems. See § 252.227-
7015(b)(1)(ii), (iv). DRS argues that the Manuals fit squarely within the
definitions of FFF and/or OMIT Data, making the Air Force’s dissemination
entirely proper under the Defense Regulations. Advantor contends that the
Manuals contain detailed technical data beyond the FFF or OMIT Data categories,
which means that the Air Force may have overstepped the bounds of its data rights
by disseminating the Manuals to DRS personnel. See § 252.227-7015(b)(2),
(b)(2)(ii).
Given this regulatory framework, we conclude that whether the Air Force
could have properly disseminated the Manuals is intensely factual, technical, and
legal in nature. Because the district court resolved the FUTSA claim solely on its
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determination that the Manuals cannot be viewed as trade secrets (as discussed
supra), it did not grapple with these central questions. On remand, the district
court should address the question whether the Air Force could properly
disseminate the documents at issue to DRS. If it concludes that the Air Force
could so act, then summary judgment for DRS would likely be appropriate as to
this claim.
c. Injury and Causation
The only remaining question is whether the alleged use of the Manuals
caused Advantor any injury for which lost-profit or disgorgement damages may be
appropriate under Fla. Stat. § 688.004(1). Here, we echo our analysis of injury
causation in the context of Advantor’s tortious interference claim: The record
contains sufficient evidence to enable a factfinder to conclude that, but for DRS’s
efforts to “self-perform” under the SPAWAR consolidated contract, Advantor
would have been hired in a subcontract capacity to serve the Air Force bases
running Advantor systems. We also note that, under Florida law, “[a] plaintiff’s
burden of proof” on a FUTSA claim “is ‘liberal’ and is satisfied by showing the
misappropriation, the subsequent commercial use, and . . . evidence by which the
jury can value the rights the defendant has obtained.” Premier Lab, 94 So. 3d at
644 (citing Perdue Farms, 777 So. 2d at 1051).
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In light of the above, we REVERSE the district court’s grant of summary
judgment on Advantor’s FUTSA claim with respect to the Manuals.
3. Larson Information
Finally, Advantor alleges that DRS violated FUTSA by receiving and using
Advantor-specific information that was sent to DRS voluntarily by Greg Larson,
one of the Advantor Employees. We concluded supra that only one subset of the
Larson Information—a series of emails Larson sent to DRS managers describing
“Advantor Concepts” and other information (the “Larson Emails”)—may be
viewed as containing confidential, Advantor-specific information on the current
record. That analysis holds true in the FUTSA context. Thus, we consider only
whether the Larson Emails can form the basis of a FUTSA claim.
a. “Trade Secret”
The district court granted summary judgment on this claim, but explained
that ruling only by stating that there was “considerable doubt” that the materials
constituted trade secrets. The district court’s conclusion may ultimately be correct,
but we require more analysis than provided to determine if that is so. Specifically,
the record suggests that at least some of the content of the Larson Emails applies
uniquely to Advantor equipment and is not publicly known. For example,
Larson’s email entitled “Advantor Concepts” notes that the processes he describes
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are likely to “confuse new techs and techs unfamiliar with Advantor products,”
signaling that he viewed the information as unique to Advantor. By contrast, DRS
asserts—without definitive evidence—that these concepts are “known by any
experienced technician.”
Further, the confidentiality provision of Larson’s employment agreement
supports an argument that Advantor maintained the secrecy of the Larson
Information. The provision prohibited use of any information deemed
“confidential” “for any reason other than . . . for the benefit of Advantor.” This
prohibition extended “indefinitely” after Larson quit his job at Advantor. Under
Florida law, the Provision was sufficient to demonstrate that Advantor took
“reasonable” efforts to maintain the secrecy (if any) of the Larson Information.
See, e.g., Premier Lab, 10 So. 3d at 206 (holding that “the lack of a confidentiality
agreement does not necessarily defeat [an] argument that [information] is a trade
secret” because “[w]here an employee acquires, during the course of his
employment, a special technique or process developed by his employer,” he is
under a duty to keep it confidential).
But we are unclear whether any information disclosed by Larson in these
emails—whether intended to be confidential or not—possessed the necessary
“independent economic value from not being generally known or readily
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ascertainable” by parties that might benefit from its use. Fla. Stat. § 688.002(4)(a).
Thus, we remand for the district court to make a determination whether, as a matter
of law, the information at issue constituted a trade secret under the applicable
standard.
b. Misappropriation
If the Larson Emails do contain trade secrets, then FUTSA’s definition of
misappropriation contemplates several different scenarios of improper disclosure
and use of those trade secrets. See Fla. Stat. § 688.002(2). There is no evidence
that DRS disclosed the information contained in the Larson Emails to anyone
outside the company; the only question is whether DRS’s use of the information
constituted misappropriation. Thus, in relevant part, “misappropriation” means
“use of a trade secret of another without . . . consent by a person who . . . knew or
had reason to know that [his] knowledge of the trade secret was . . . [d]erived from
or through a person who owed a duty to the person seeking relief to maintain its
secrecy or limit its use.” Fla. Stat. § 688.002(2)(b).
There is no direct evidence showing how DRS put the information to use, if
at all—but it is undisputed that DRS managers saw value in it and sought to
disseminate it internally. In reply to Larson’s “Advantor Concepts” email,
Larson’s manager stated:
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I did like the FYI on the Advantor equipment. It is good information to
share with our Advantor sites. Go ahead and share the info directly with
Benny Deleon, Lewis Campbell, Dave Arsenault, Axel Alvarez, and John
Ellfeldt. They each support an Advantor site.
The undisputed evidence shows that Larson sent the Advantor Concepts email to at
least one of these individuals, David Arsenault, the next day. Construing these
facts in Advantor’s favor, we infer that DRS did “use” at least some of the
information in a manner that may have violated Advantor’s proprietary interest in
it.
The record further shows that DRS “knew or had reason to know” that
Larson, as a recent employee of Advantor, owed a duty to Advantor not to disclose
proprietary information. Indeed, Larson was terminated when DRS found out he
had been disseminating what DRS believed could be confidential information.
Thus, there is no doubt that it was on notice of the existence of the confidentiality
provision and possibility of liability thereunder.
c. Injury and Causation
On the remaining question—whether Advantor was harmed by any
misappropriation of the Larson Emails—we again echo our analysis of injury
causation in the context of Advantor’s tortious interference claim: The record
contains sufficient evidence to enable a factfinder to conclude that, but for DRS’s
efforts to “self-perform” under the SPAWAR consolidated contract, Advantor
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would have been hired in a subcontract capacity to serve the Air Force bases
running Advantor systems.
Because Advantor has created a jury question on two of the elements of a
FUTSA claim, and because the district court did not reach a definitive conclusion
on the third element—whether the Emails contained trade secrets—we REVERSE
the district court’s grant of summary judgment against Advantor as to the Larson
Emails and remand for the district court to resolve this matter.
II. Denial of Motion to Compel Financial Discovery
Advantor further appeals the district court’s order precluding discovery of
DRS’s financial information, which Advantor sought to support its prayers for lost-
profit, disgorgement, and punitive damages (the “Financials Order”). The court
found that the financial information Advantor had repeatedly requested—including
audited financial statements for DRS for the two years at issue in this dispute—
were “not relevant to the claims asserted by [Advantor] or any lawful damages
flowing therefrom.” The court also stated that the magistrate judge “did not abuse
his discretion in concluding that [Advantor] has not made a showing of punitive
damages entitlement sufficient to warrant discovery of [DRS’s] financial
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condition.”11 The court’s holding seems to have been prompted by its view that
Advantor had not alleged a viable theory of injury. Because we disagree with that
view, we VACATE the Financials Order and remand for the district court to
reconsider the question whether DRS has shown, as a matter of law, that its
conduct did not meet the standard for punitive damages,12 in addition to any other
considerations relevant to a determination whether this discovery should proceed.
III. Exclusion of Expert Testimony
Advantor further appeals the district court’s order excluding the report and
testimony of Advantor’s economic expert (the “Expert Order”). If the Expert
Order were to stand, Advantor would be precluded from presenting expert
evidence calculating lost profits or disgorgement damages with respect to both its
11
In fact, the magistrate judge ordered that “DRS is not obligated to produce the requested
[financial] discovery until such time as the Court rules that punitive damages are appropriately
part of this case and that the requested information is pertinent evidence with respect to that
claim.”
12
Advantor sought punitive damages on both its tortious interference and FUTSA claims. In
both contexts, Advantor faces a heightened evidentiary standard. To win punitive damages on a
tortious interference claim under Florida law, a plaintiff must show evidence of “outrageous”
conduct or “fraud, malice, wontonnesss or oppression.” Imperial Majesty Cruise Line, LLC v.
Weitnauer Duty Free, Inc., 987 So. 2d 706, 708 (Fla. 4th DCA 2008) (finding that defendant
cruise company’s efforts to stifle a competing retailer by physically blocking passengers’ access
to the store were calculated and predatory but not “sufficiently egregious” to warrant punitive
damages). Similarly, under FUTSA, punitive damages are permissible only where “willful and
malicious misappropriation exists.” Fla. Stat. § 688.004(2). The parties have not briefed the
question of punitive damages.
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tortious interference and FUTSA claims. In denying this testimony, the district
court stated that “lost profits is not the proper measure of damages” because
“[n]one of the wrongs allegedly committed by DRS rendered Advantor ineligible
to bid on the SPAWAR contract, and nothing DRS did caused Advantor to lose its
contracts with the Air Force.” The court excluded Advantor’s expert testimony
because it found that the testimony would “not help the jury to determine a fact in
issue; i.e. damages.”
As discussed in our analysis of the tortious interference and FUTSA claims
above, we do not agree with the district court’s assessment of Advantor’s theories
of injury and causation. Because the district court’s ruling on the expert-testimony
issue was premised on a ground that we have rejected, we VACATE for the district
court to revisit whether the expert testimony should be excluded on other
grounds.13
13
The Expert Order also excluded expert testimony quantifying the expenses Advantor incurred
in suing the Advantor Employees for breach of their employment agreements. This testimony
was designed to support Advantor’s prayer for compensation of litigation expenses incurred in
its separate actions against the Advantor Employees.
The district court held in the Expert Opinion that the testimony “would not be helpful to a jury”
because it merely performed “simple arithmetic of the numbers provided by Advantor regarding
the state court lawsuits,” which was “within the understanding” of a jury. See Fed. R. Evid. 702
(establishing that expert testimony is appropriate based on “scientific, technical, or other
specialized knowledge”). We agree and AFFIRM this portion of the Expert Order.
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IV. Sanctions
Finally, we consider Advantor’s challenge to a sanctions order issued by the
district court following its grant of summary judgment. Immediately after its
summaryjudgment loss, Advantor filed an emergency motion to stay enforcement
of the order. In that motion, Advantor argued that a stay was necessary to protect
its trade secrets in light of the district court’s finding that Advantor failed to
demonstrate that any of the information at issue constituted trade secrets. This
statement, Advantor argued, paved the way for DRS to further disseminate
Advantor’s proprietary information to its competitive advantage (and may have
invited other competitors to do the same).
The court denied the motion in a one-page order, finding the motion “utterly
baseless.” However, the Sanctions Order was founded on the court’s belief that
Advantor’s theory of injury was illogical, making its claims plainly frivolous. As
discussed in our analysis of Advantor’s summary-judgment claims, we disagree
with the district court on this crucial point. As such, we REVERSE the Sanctions
Order.
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CONCLUSION
In summary, we affirm in part and reverse in part the district court’s grant of
summary judgment to DRS. We affirm the grant of summary judgment as to
Advantor’s first claim: that DRS breached the Non-Disclosure Agreement.
As to Advantor’s second claim—that DRS tortiously interfered with the
Employment Agreements—we reverse the district court’s grant of summary
judgment as to that part of the claim alleging DRS’s interference with the non-
compete clause, finding disputed issues of material fact. As to that part of the
tortious interference claim alleging the dissemination of confidential information
by former Advantor’s employees, the district court did not analyze the claim other
than to conclude that because Advantor had failed to show injury and causation,
the claim could not proceed. Because we disagree with the district court’s
conclusion on the above point, we reverse its grant of summary judgment on this
sub-claim and remand for the court to determine, consistent with the other rulings
in this opinion, whether summary judgment on this sub-claim is warranted on any
other ground.
As to Advantor’s third claim—misappropriation of trade secrets under
Florida’s Uniform Trade Secrets Act (“FUTSA”)—we affirm the district court’s
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grant of summary judgment on that part of the claim alleging a violation of the
statute as a result of DRS’s alleged breach of the Non-Disclosure Agreement.
We reverse the district court’s grant of summary judgment as to that part of
the claim alleging misappropriation of trade secrets, as represented (i) by technical
manuals and drawings handed over by the Air Force to DRS and (ii) by emails sent
by former Advantor employee Greg Larson to DRS. The district court should
revisit its ruling on this claim, consistent with the direction provided in the
pertinent discussion. On any renewed motion for summary judgment, the district
court should address more thoroughly the question whether, as a matter of law,
these communications revealed trade secrets.
As to the district court’s rulings disallowing financial discovery for the
purpose of proving punitive damages and excluding expert testimony, those rulings
were likewise premised on the court’s conclusion that Advantor had failed, as a
matter of law, to show injury and causation. Because we have rejected that
conclusion, we likewise vacate the above rulings so that the district court may
reconsider them independent of any conclusion that Advantor has failed to create a
jury question regarding injury and causation.
Finally, the district court issued an order sanctioning Advantor based on the
latter’s filing of an emergency motion to stay enforcement of the court’s order
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granting summary judgment. As we have vacated the relevant portions of that
order, we likewise vacate the order sanctioning the filing of this motion.
AFFIRMED in part; REVERSED in part; and REMANDED.
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