[DO NOT PUBLISH]
In the
United States Court of Appeals
For the Eleventh Circuit
____________________
No. 21-12985
____________________
SUBSCRIBER HOLDINGS, LLC,
Plaintiff-Appellant,
versus
BRIGHTSTAR CORP.,
BRIGHTSTAR DEVICE PROTECTION, LLC,
f.k.a. Esecuritel Holdings LLC,
BRIGHTSTAR RE LTD,
f.k.a.Esecuritel Re Ltd.,
BRIGHTSTAR US, INC.,
MOBILE LEASING SOLUTIONS, LLC,
Defendants-Appellees,
2 Opinion of the Court 21-12985
BRIGHTSTAR LOGISTICS PTY LIMITED, et al.,
Defendants.
____________________
Appeal from the United States District Court
for the Northern District of Georgia
D.C. Docket No. 1:19-cv-01991-TWT
____________________
Before JORDAN, ROSENBAUM, Circuit Judges, and STEELE, District
Judge.*
PER CURIAM:
Subscriber Holdings sued Brightstar Corporation, asserting
claims under the Georgia Trade Secrets Act, O.C.G.A. § 10-1-760 et
seq., and the Defend Trade Secrets Act, 18 U.S.C. § 1836(b)(1). It
also sued Brightstar Device Protection (a subsidiary of Brightstar
Corporation) for breach of a non-disclosure agreement. The dis-
trict court granted summary judgment in favor of the Brightstar
defendants, and Subscriber Holdings now appeals. With the
* The Honorable John Steele, U.S. District Judge for the Middle District of
Florida, sitting by designation.
21-12985 Opinion of the Court 3
benefit of oral argument and following a review of the record, we
vacate and remand.1
I
The district court concluded that Subscriber Holdings’ “Sub-
scriber Assistance Program” (the SAP) for mobile phone companies
was not a protectable trade secret for two reasons. First, the SAP
was not defined with sufficient concreteness so as to be ascertaina-
ble by proper means. See D.E. 155 at 9–10 (citing Purchasing
Power, LLC v. Bluestem Brands, Inc., 22 F. Supp. 3d 1305, 1314
(N.D. Ga. 2014)). Second, the SAP had been publicly disclosed (1)
in a 2012 phone call by Sean Woodward, Subscriber Holdings’ sole
owner and employee, to Clayton Bodnarek, an employee of
Brightstar, prior to execution of the non-disclosure agreement; and
(2) in a 2010 patent application. See id. at 10–14.
We review the district court’s grant of summary judgment
de novo. See Edmondson v. Velvet Lifestyles, Inc., 43 F.4th 1153,
1159 (11th Cir. 2022). We view the facts in the light most favorable
to the non-moving party, and even where the underlying facts are
undisputed, summary judgment is inappropriate if reasonable per-
sons could differ on the inferences to be drawn from those facts.
1 As we write for the parties, we assume their familiarity with the record and
set out only what is necessary to explain our decision. We generally refer to
the defendants collectively as Brightstar.
4 Opinion of the Court 21-12985
See Warrior Tombigbee Transp. Co., Inc. v. M/V Nan Fung, 695
F.2d 1294, 1296–97 (11th Cir. 1983).
A
To address Subscriber Holdings’ challenge to the summary
judgment order, we first examine the parameters of the SAP. In
the district court, Subscriber Holdings agreed that the SAP (and
hence its trade secret) was contained in documents entitled the
First Program Guide and the Second Program Guide. See D.E. 144
at 11.
The First Program Guide summarized the SAP as follows:
Subscriber Assurance
Subscriber Assurance covers subscriber attrition (or
default) due to involuntary separation from employ-
ment, divorce, disability, military deployment, or
death.
- Indemnifies the wireless Carrier (beneficiary)
- Purchased by the Subscriber (policyholder)
Benefit
- Enables carriers to more effectively manage attri-
tion risk
- Ensures carrier/manufacturer reimbursement for
devices and early termination fee
- Reduces upfront subscription cost(s): deposit al-
ternative and lower device cost
21-12985 Opinion of the Court 5
- Expedites migration to smart phones by subscrib-
ers; drives data consumption revenues
- Allows existing Subscribers one (1) out of cycle
upgrade
Cost Components
- Nonrefundable enrollment fee paid at inception
of agreement
- Monthly recurring premium charge
- Deductible due at time of claim
D.E. 130-4 at 3. The “Product Matrix” on the next page included—
alongside a Premium and Deductible—a Device Upgrade, de-
scribed as “Limit one (1) upgrade per enrolled subscriber per two
(2) consecutive years of coverage.” Id. at 4.
The Second Program Guide described the SAP as a “sub-
scriber default (or attrition) protection product. When Subscriber
default occurs, Subscriber Assurance pays the wireless carrier full
reimbursement for subsidized device costs provided to the Sub-
scriber at the inception or beginning of the wireless contract and all
early termination fees required within the terms and conditions of
the wireless contract.” D.E. 130-7 at 3. The page with that descrip-
tion contained a photo of a mobile phone next to the words “Un-
foreseen occurrences sometimes happen. Reassure your wireless
stakeholders with Subscriber Assurance.” Id. (emphasis omitted).
6 Opinion of the Court 21-12985
In a later page entitled “Why Buy? – Device Upgrade,” the
Second Program Guide provided the following question and an-
swer:
Why would a Subscriber who wants to upgrade
his/her wireless device purchase Subscriber Assur-
anceTM?
A Subscriber who wishes to upgrade his/her wireless
device prior to the end of the initial contract term pur-
chases Subscriber Assurance because the product en-
ables the Subscriber to upgrade his/her device prem-
aturely or out-of-cycle; prior to the end of the stand-
ard two (2) year wireless contract.
Id. at 8. Another two pages in the Second Program Guide ex-
plained when a device upgrade was “available” and “not available.”
See id. at 9-10. And in a page entitled “Subscriber Impact,” the Sec-
ond Program Guide again stated that “one out-of-cycle upgrade”
was permitted in a two-year period. See id. at 11.
The Second Program Guide listed examples of how the SAP
might work. It described Option 1 (High Cost) as a migration from
a cell phone to an iPhone 4 for $549 with a month-to-month pro-
gram; Option 2 (Mid Cost) as a migration from a cell phone to an
iPhone 4 for $199 with a two-year contract; and Option 3 (Low
Cost) as a migration from a cell phone to an iPhone 4 for $49 with
SAP enrollment for $75 and a two-year contract which “allows out-
of-cycle upgrades in conjunction with extension of contract term.”
Id. at 12.
21-12985 Opinion of the Court 7
A Pricing Guide accompanied the First and Second Program
Guides. The Pricing Guide was a document created by Mr. Wood-
ward using a spreadsheet (created for another entity) containing
routine actuarial information. He conducted online research and
found information regarding the correlation between phone sub-
scriber FICO scores and defaults on wireless contracts at an indus-
try level. See D.E. 133-1 at 186–92. By inserting this data into the
spreadsheet, he created a method of pricing a subscriber default in-
surance program. See id. at 184–87.
B
The Georgia Trade Secrets Act and the federal Defend
Trade Secrets Act define a trade secret similarly. In Georgia, a trade
secret is “information . . . including . . . a program . . . which is not
commonly known by or available to the public” and which “(A)
[d]erives economic value, actual or potential, from not being gen-
erally known to, and not being readily ascertainable by proper
means by, other persons who can obtain economic value from its
disclosure or use,” and is “(B) the subject of efforts that are reason-
able under the circumstances to maintain its secrecy.” O.C.G.A.
§ 10-1-761(4). Under federal law, a trade secret means “all forms
and types of . . . information, including . . . programs” if “(A) the
owner . . . has taken reasonable measures to keep such information
secret” and “(B) the information derives independent economic
value, actual or potential, from not being generally known to, and
not being readily ascertainable through proper means by, another
person who can obtain economic value from the disclosure or use
8 Opinion of the Court 21-12985
of the information.” 18 U.S.C. § 1839(3). The parties address the
state and federal claims together, and we will do the same.
1
We first conclude that the district court erred in ruling that,
as a matter of law, the SAP was not described concretely enough
to constitute a trade secret. Whether information constitutes a
trade secret is generally an issue of fact under both Georgia law and
federal law. See Capital Asset Research Corp. v. Finnegan, 160 F.3d
683, 686 n.2 (11th Cir. 1998) (Georgia law); Life Spine, Inc. v. Aegis
Spine, Inc., 8 F.4th 531, 540 (7th Cir. 2021) (federal law). Viewing
the evidence and inferences in the light most favorable to Sub-
scriber Holdings, a jury could reasonably find that (1) the SAP in-
cluded as components a one-time/out-of-cycle phone upgrade dur-
ing the two-year term of the contract and a corresponding pricing
model and that (2) the entire SAP was a protectable trade secret.
The district court incorrectly characterized the phone up-
grade component of the SAP as merely a “benefit,” and the
Brightstar defendants are likewise mistaken in claiming—at the
summary judgment stage—that there are only “passing references”
to the phone upgrade component in the SAP and that the docu-
ments which set out the SAP “cannot reasonably be argued to dis-
close an early upgrade program[.]” Br. for Appellees at 33. The
phone upgrade component is listed on the matrixes for the First
Program Guide and the Second Program Guide, and it takes up
21-12985 Opinion of the Court 9
three pages of the Second Program Guide. A jury could reasonably
find that the early upgrade component was part of the trade secret.
The district court also wrongly determined that trade secret
protection was unavailable because the Pricing Guide applied com-
monly-known and commonly-used actuarial formulas to publicly
available information. See D.E. 155 at 12. As we have explained,
“[e]ven if all of the information is publicly available, a unique com-
pilation of that information, which adds value to the information,
. . . may qualify as a trade secret.” Finnegan, 160 F.3d at 686. We
find significant the evidence in the summary judgment record that
the phone upgrade component of the SAP was non-existent in the
industry at the time Subscriber Holdings had its discussions with
Brightstar. See D.E. 133-1 at 144. The inclusion of that component
into the risk management aspect of the program may therefore
have created a trade secret. See D.E. 132-4 at 21; D.E. 133-1 at 34–
35.2
2
We also conclude that the district court erred in ruling, at
summary judgment, that Subscriber Holdings publicly disclosed
the SAP prior to the execution of the non-disclosure agreement
through (1) Mr. Woodward’s 2012 discussions with Mr. Bodnarek
2 In so holding, we do not mean to accept Subscriber Holdings’ characteriza-
tion of the SAP as a phone upgrade program with a subordinate risk manage-
ment feature. See Br. for Appellant at 20. We hold only that a reasonable jury
could find in favor of Subscriber Holdings on the trade secret issue.
10 Opinion of the Court 21-12985
and (2) the filing of a 2010 patent application for “Loss Mitigation
Analysis.” We explain why below.
With respect to the 2012 discussions, Mr. Bodnarek’s email
setting out the components of the SAP did not mention the phone
upgrade component. See D.E. 132-3 at 4–5. And at his deposition,
Mr. Bodnarek could not remember Mr. Woodward mentioning
the phone upgrade component of the SAP. See D.E. 133-2 at 127.
A jury could therefore reasonably find that Mr. Woodward did not
disclose that component of the SAP, and a limited disclosure does
not necessarily mean that trade secret protection is lost. Cf. Pen-
alty Kicks Mgmt. Ltd. v. Coca-Cola Co., 318 F.3d 1284, 1292–93
(11th Cir. 2003) (“The unauthorized use need not extend to every
aspect or feature of the trade secret[.]”).
Turning to the 2010 patent application, the general rule is
that the issuance of a patent destroys trade secret protection. See
Annotation, Disclosure of Trade Secret as Abandonment of Se-
crecy, 92 A.L.R.3d 138, § 3(c) (1979 & 2022 Supp.). See also Atl.
Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1357 (Fed. Cir.
2011) (“That which is disclosed in a patent cannot be a trade se-
cret.”); Scharmer v. Carrollton Mfg. Co., 525 F.2d 95, 99 (6th Cir.
1975) (explaining that, once a “trade secret is patented there is no
further right to secrecy”); Newport Ind. v. Crosby Naval Stores,
139 F.2d 611, 613 (5th Cir. 1944) (“A trade secret . . . cannot possibly
be patented.”). But here, the relevant aspects of the patent applica-
tion did not mention, much less describe, the phone upgrade com-
ponent. See D.E. 130-14 at 43 ¶ [003]. See also id. at 44–45 ¶ [0048].
21-12985 Opinion of the Court 11
If a component of a multi-faceted program is not disclosed, it is dif-
ficult to see how the purported trade secret—comprised of all of its
component parts—is in the public domain as a matter of law. See
Wellogix, Inc. v. Accenture, L.L.P., 716 F.3d 867, 875 (5th Cir. 2013)
(“[A] patent destroys the secrecy necessary to maintain a trade se-
cret only when the patent and the trade secret both cover the same
subject matter.”) (citation and internal quotation marks omitted);
Broker Genius, Inc. v. Zalta, 280 F. Supp. 3d 495, 518 (S.D.N.Y.
2017) (“[A] plaintiff can still have a viable trade secrets claim if ele-
ments of the trade secret go beyond what was disclosed in the pa-
tent application.”) (citation and internal quotation marks omitted);
Giasson Aerospace Science, Inc. v. RCO Eng’g, Inc., 680 F. Supp.
2d 830, 841 (E.D. Mich. 2010) (explaining that patents which “do
not . . . disclose the salient features of the asserted trade secrets” do
not constitute public disclosure as a matter of law). As a result,
“[w]hether [Subscriber Holdings] had a [protectable] trade secret
and whether it was something beyond what was disclosed in the .
. . patent were matters for the jury to decide.” Atl. Research Mktg.
Sys., 659 F.3d at 1357 (internal quotation marks omitted).
C
We likewise conclude that the district court erred in finding
that Subscriber Holdings failed to allege a breach of the non-disclo-
sure agreement. Although Subscriber Holdings argued that
Brightstar Device breached the non-disclosure agreement by using
or disclosing the early upgrade component of the SAP without au-
thorization, see D.E. 30 ¶ 78 & D.E. 143 at 13, the district court
12 Opinion of the Court 21-12985
limited the confidential information at issue to the risk manage-
ment feature of the SAP. See D.E. 155 at 14. It then concluded,
based on its finding that Subscriber Holdings had previously dis-
closed this “concept” of the SAP, that there could be no breach.
See id. That is because, the district court reasoned, the non-disclo-
sure agreement “imposes no obligation where the confidential in-
formation is or becomes a matter of public knowledge through no
fault of Brightstar Device[.]” Id. (internal quotation marks omit-
ted).
We believe that this ruling as to the viability of Subscriber
Holdings’ breach claim was misguided because the district court
defined the trade secret too narrowly. A finding that Subscriber
Holdings disclosed the risk management aspect of the SAP prior to
the execution of the non-disclosure agreement does not resolve
whether Brightstar Device breached the non-disclosure agreement
by improperly using or disclosing the phone upgrade component
of the SAP. See Celeritas Techs., Ltd. v. Rockwell Intern. Corp.,
150 F.3d 1354, 1358 (Fed. Cir. 1998) (affirming a jury’s verdict for
breach of a non-disclosure agreement where the defendant dis-
closed “implementation details and techniques that went beyond
the information [the plaintiff had previously] disclosed in [a] pa-
tent”). As we have explained above, a jury could reasonably deter-
mine that Subscriber Holdings did not disclose that component of
the SAP before entering into the non-disclosure agreement.
The proper inquiry is whether a jury could reasonably find
that Brightstar Device breached the non-disclosure agreement by
21-12985 Opinion of the Court 13
unauthorizedly using or disclosing the phone upgrade component
of the SAP. We hold that it could.
The non-disclosure agreement restricted the use of confi-
dential information exchanged between the parties for the purpose
of their business relationship and to certain persons within the par-
ties’ organizations “having a need to know such information in or-
der to evaluate the business relationship.” D.E. 130-3 ¶¶ 2–3. We
conclude that the record contains evidence from which a jury could
reasonably find that Brightstar Device used or disclosed the phone
upgrade component of the SAP beyond the purpose of the parties’
business relationship.
Specifically, the record includes evidence (1) that the phone
upgrade component of the SAP did not yet exist in the industry at
the time the parties entered into the non-disclosure agreement; (2)
that the phone upgrade component of the SAP was contained in
the Program Guides disclosed to Brightstar Device via the non-dis-
closure agreement; (3) that Subscriber Holdings did not disclose
the phone upgrade component of the SAP to any other party, be-
fore or after entering into the non-disclosure agreement; (4) that
Brightstar manages trade-in and buy-back programs as a central
part of its business; (5) that early upgrade programs drive trade-in
and buy-back programs; (6) that Marcelo Claure, Brightstar’s for-
mer CEO, revealed that it took between 9 and 11 months to “im-
plement a buyback and trade-in program;” (7) that approximately
nine months after Brightstar received the Program Guides, Apple
began an iPhone trade-in program with Brightstar; (8) that one
14 Opinion of the Court 21-12985
month after that, TMobile launched its JUMP! Program with the
Apple iPhone 5, making it the first early upgrade program in the
market; (9) that Brightstar has handled iPhone trade-ins for Apple
across carriers since the launch of the first early upgrade program;
(10) that Brightstar was considered to be at the center of the “big
shift” away from device subsidies, which was driven by early up-
grade programs; (11) that Brightstar financially benefited from this
shift; and (12) that in 2014, a former Brightstar employee, Mr. Bod-
narek, was considered “a subject matter expert on early upgrade
programs.” See D.E. 130-4 at 2–3; D.E. 133-1 at 34–35, 94–95, 143–
45, 281–84, 290–95, 299–303.
Based on the summary judgment record, and viewing the
evidence in the light most favorable to Subscriber Holdings, a jury
could reasonably find that the concept of an early upgrade program
only became known to others and was implemented in the market
as a result of Brightstar Device using or disclosing the concept be-
yond the limitations prescribed by the nondisclosure agreement.
Summary judgment was inappropriate.
II
Subscriber Holdings also challenges the district court’s de-
nial of both its motions to compel. In its motions, Subscriber Hold-
ings argued that Brightstar’s discovery was deficient, asserting in
part that Brightstar had only produced 77 documents and was im-
properly withholding documents based on its unilateral definition
of the alleged trade secret. See D.E. 81-1 at 3, 6, 23; D.E. 81-2 at 3;
21-12985 Opinion of the Court 15
D.E. 113-1 at 3. The district court disagreed and denied the mo-
tions, finding that Brightstar had “substantially responded” to the
interrogatories and production requests that were “relevant.” D.E.
139. It further ruled that Subscriber Holdings’ additional discovery
requests were “not proportional to the needs of the case consider-
ing the importance of the discovery in resolving the issues” and
thus, “the burden of the discovery outweigh[ed] its likely benefit.”
Id. The district court later granted Brightstar’s summary judgment
motion, which was already pending at the time it denied the mo-
tions to compel. See D.E. 155.
On appeal, Subscriber Holdings contends that the district
court committed reversible error because it did not allow for
proper discovery before granting Brightstar’s motion for summary
judgment. For the most part, we agree.
We review the district court’s management of discovery for
abuse of discretion. See Akridge v. Alfa Mut. Ins. Co., 1 F.4th 1271,
1276 (11th Cir. 2021). “A district court abuses its discretion when
it applies an incorrect legal standard, employs improper proce-
dures, makes findings of fact that are clearly erroneous, or commits
a clear error of judgment.” Callahan v. United Network for Organ
Sharing, 17 F.4th 1356, 1360 (11th Cir. 2021) (citation and internal
quotation marks omitted).
“Before entering summary judgment the district court must
ensure that the parties have an adequate opportunity for discov-
ery.” Fla. Power & Light Co. v. Allis Chalmers Corp., 893 F.2d
1313, 1316 (11th Cir. 1990) (citing Celotex Corp. v. Catrett, 477 U.S.
16 Opinion of the Court 21-12985
317, 322 (1986)). A district court properly denies a motion to com-
pel or other requests for additional discovery “[w]here a significant
amount of discovery has been obtained, and it appears that further
discovery would not be helpful in resolving the issues.” Avirgan v.
Hull, 932 F.2d 1572, 1580 (11th Cir. 1991). But if the requested dis-
covery “would be relevant to the issues presented by the motion
for summary judgment, the opposing party should be allowed the
opportunity to utilize the discovery process to gain access to the
requested materials.” Snook v. Tr. Co. of Georgia Bank of Savan-
nah, 859 F.2d 865, 870 (11th Cir. 1988).
After a review of the record and based on our conclusions in
Part I of this opinion, we believe that at least some of the disputed
discovery requests were relevant to the scope of the alleged misap-
propriation and to whether Brightstar Device breached the non-
disclosure agreement. Our belief is instructed by several factors.
First, some of the disputed discovery requests relate to
Brightstar’s involvement with early upgrade programs. See gener-
ally D.E. 81-2 at 10–11, 19–25. Brightstar objected to these requests
on the ground that they were overly broad and sought information
that extended beyond the scope of the alleged trade secret, which
it maintained was limited to a subscriber default insurance pro-
gram. See D.E. 85-1 at 11–14. Yet this narrow characterization of
the trade secret ignores the early upgrade component of the SAP.
As set out in Part I, a jury could reasonably find that this aspect of
the SAP is part of a protectable trade secret. Related discovery re-
quests may therefore fall within the scope of permissible discovery.
21-12985 Opinion of the Court 17
See DeRubeis v. Witten Techs., Inc., 244 F.R.D. 676, 681 (N.D. Ga.
2007) (holding that the scope of discovery is properly determined
by the identified trade secret).
Second, Brightstar admitted to withholding responsive dis-
covery regarding requests for information as to its buy-back and
trade-in programs, device protection programs, and device sales
and lease business. See, e.g., D.E. 81-2 at 32–34, 44–55, 60–64, 69–
81. See also D.E. 85-1 at 69–105. Brightstar argued that the requests
encompassed virtually all aspects of its business and bore no rela-
tionship to whether it improperly used or disclosed the trade se-
cret. See D.E. 119 at 17. See also D.E. 85-1 at 17–18. 3
Subscriber Holdings responded in part that Brightstar dis-
closed the alleged trade secret, inclusive of the early upgrade pro-
gram, to wireless carriers which later implemented early upgrade
programs of their own, driving trade-in and buy-back programs
and resulting in a direct financial benefit on Brightstar’s core busi-
ness. See D.E. 112 at 6. The summary judgment record, viewed
in Subscriber Holdings’ favor, supports the existence of an interre-
lationship between the implementation of early upgrade programs
3 Brightstar also objected to the disputed requests on the basis that some of
the requests extend beyond the proper time period or are unduly burdensome.
See D.E. 119 at 18–24. We do not opine on whether the time period covered
by the disputed requests is appropriate or whether the requests create an un-
due burden on Brightstar. The district court should consider these issues on
remand, in light of our holdings above.
18 Opinion of the Court 21-12985
and Brightstar’s business, further evidencing the relevancy of the
related requests. See D.E. 133-1 at 291, 300.
Third, the timing of the district court’s entry of its schedul-
ing order also gives us pause. The district court entered a schedul-
ing order on January 6, 2021, setting a retroactive cut-off for dis-
covery on November 30, 2020, and denied the motions to compel
the same day. See D.E. 137 at 2; D.E. 139. Though the parties had
proposed November 30 as a discovery cut-off date months earlier,
the district court never acted on that proposed scheduling order.
Subscriber Holdings therefore never had the chance to refine its
requests based on the district court’s rulings on the motions to
compel. We think the district court here abused its discretion in
entering a retroactive scheduling order because the order deprived
the parties of discovery opportunities they otherwise would have
had.
We conclude, therefore, that at the time the district court
denied Subscriber Holdings’ motions to compel, Brightstar had not
“substantially responded” to the discovery requests that were “rel-
evant.” Nor was it the case that Subscriber Holdings had already
obtained “a significant amount of discovery” from Brightstar so as
to render the district court’s denial of the motions proper. See Avir-
gan, 932 F.2d at 1580. At the crux of the issues on summary judg-
ment was the scope of the alleged trade secret, and Brightstar im-
properly limited the scope of its discovery obligations by narrowly
defining the trade secret. Thus, because it “appears that further
discovery [c]ould [have] be[en] helpful in resolving the issues”
21-12985 Opinion of the Court 19
presented by Brightstar’s summary judgment motion, we conclude
that the district court abused its discretion in denying Subscriber
Holdings’ motions to compel in toto. See id.
In view of our holdings today, the district court should re-
visit the discovery issues on remand and reopen discovery for a lim-
ited period to allow for appropriate discovery to proceed as neces-
sary.
III
We vacate the district court’s grant of summary judgment
in favor of the Brightstar defendants and denial of Subscriber Hold-
ings’ motions to compel, and remand for further proceedings con-
sistent with our opinion.
VACATED AND REMANDED.