A.Article 277 of the Code of Civil Procedure stipulates that “A party bears the burden of proof with regard to the facts which he/she alleges in his/her favor, except either where the law provides otherwise or where the circumstances render it manifestly unfair. ” Article 10-1 of the Intellectual Property Case Adjudication Act (amended on June 4, 2014) stipulates that “In trade secret infringement cases, if a party has made a preliminary showing that his/her trade secret has been or is likely to be infringed, and the other party denies such allegation, the Court shall order the other party to raise a specific defense as to the reasons for the denial. The Court may, subject to the circumstances, find the preliminary showing of the infringed party true if the other party mentioned in the preceding paragraph fails without good cause to raise a defense within the prescribed time limit or to raise a specific defense. The parties shall be accorded an opportunity to present their arguments before the judgment is rendered, under the circumstances mentioned in the preceding paragraph.” In the trade secret infringement case, the injured party should present evidences to make a preliminary showing that his/her trade secret has been or is likely to be infringed. The Court should obtain approximately justifiable conviction from the evidence. If the other party denies such allegation, the Court shall order the other party to raise a specific defense as to the reasons for the denial. The provision according to the article mentioned previously is not applicable if the injured party’s evidences is not sufficient enough for a preliminary showing.

B.The plaintiff had specified that the defendant had infringed his/her trade secret. The trade secrets in the case is about the customer information belonging to the plaintiff company that include the names, contact information of the people who are responsible for the maintenance of the machine for E company, and the information, the quotation of the machine. The plaintiff also asserted other trade secrets, but those are less connected to the secrets mentioned previously. Through the investigation, the plaintiff company had worked on the inspection, maintenance and providing parts of the detection machine of wafer defects for E company. The market share of the original equipment manufacturer (OEM) semiconductor measuring equipment of E company is the first place in the world. The plaintiff company is not an OEM and not a commercial agent. Besides the plaintiff company, the OEM of E Company and F Company are also working on the same business in Taiwan. It is reasonable that there are competitors in the same market and provide the same or similar services. The customers will compare the quality of the services and technical level of every manufacturer and also take their needs into consideration when choosing the suitable manufacturer. This Court determined that the information regarding the names, contact information of the people who are responsible for the maintenance of the machine of E company and the information of the machine did not meet the “secretive nature” because it is available in the market or in the professional field through certain ways and was not special information that has been organized and analyzed. Furthermore, in addition to the fact that the maintenance scheme and the quotation of the machine of E company may be available in the market or in the professional field through certain ways, the information also involves the professional judgment regarding machine failure. Anyone who has the ability to maintain the machine of E company may propose the same maintenance scheme. In addition, the maintenance fee is not constant, but it adjusts according to the profit, the cost and the business plan, et al. The defendant denied that they had quoted the price 20% lower than the quotation of the plaintiff company. So the plaintiff’s assertion that the information of the client list, the kind of machines and modules owned by clients and the quotation should have secretive nature because they are closed, inaccessible, and generally unknown by others in the same business is not admissible.

C.In American case law, the “inevitable disclosure doctrine” means that the former employee had access to its trade secrets and has such similar responsibilities with the new employer as to make it inevitable that he will use or disclose those trade secrets in the performance of his job duties for the new employer and make the new employer get improper profit.” The doctrine is built for allowing the American Courts to deal with the case which the employer petition the Court for granting a preliminary or permanent injunction against that employee from working for the competitor and disclosing those trade secrets belonging to the employer. But this doctrine is not generally adopted in every State in the United States. In order to avoid infringing employee’s right of work, freedom of changing jobs and reasonable market competition, when the former employer assert the “inevitable disclosure doctrine”, the burden of prove is on the employer, not the employee. The plaintiff and defendant didn’t assign a non-compete agreement. The defendant A could have freedom of working on the same business with the plaintiff company after resigning from the plaintiff company. The defendant A incorporated the defendant company B after his resignation, and visited the customers of the plaintiff company to find opportunities for cooperation. Even though the defendant company B had obtained the maintenance work of company C by asking for lower price, it was part of normal free competition on market. It can not be determined that the defendant company B had infringed the trade secret of plaintiff company or had breach the business ethics or market competition rules. The plaintiff could not prove that the defendant A and the defendant company B had infringed the trade secret of plaintiff company or had high probability or clear danger to use or disclose the plaintiff company’s trade secret. The plaintiff’s application to the court that the defendant A and the defendant company B can not compete on the market according to “inevitable disclosure doctrine” is not admissible.

Maturity of a Preliminary Showing, Trade Secret, Burden of Prove