THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

iROBOT CORPORATION,

Plaintiff,

v. CIVIL ACTION NO. 1:07 CV 11611 - NG

JAMEEL AHED, ROBOTIC FX, INC.,

Defendants.

DEFENDANTS’ MEMORANDUM OF LAW PURSUANT TO

THE COURT’S OCTOBER 3, 2007 ORDER

The Court requested Defendants Jameel Ahed and Robotic FX, Inc. (collectively

“Robotic FX”) to provide additional briefing regarding the relationship between the bid protest

and the instant action. (See Hearing Tr., Day IV, 569:24-574:8). Robotic FX’s counsel has

obtained and reviewed the bid protest, and it appears that the bid protest addresses issues not at

issue in the present action. The Court also asked whether it even needs to address an injunction

so long as there is a stay deriving from the bid protest. Id. Robotic FX asserts that any need for

an injunction is moot in light of the stay, but Plaintiff iRobot Corporation (“iRobot”) has argued

that an injunction is still appropriate. In addition to iRobot’s failure to meet its burden to obtain

a preliminary injunction, the scope of iRobot’s proposed injunction is overly broad and

improper.

An injunction is inappropriate here. Indeed, iRobot’s proposed preliminary injunction

seeks, in part, to enjoin Robotic FX “from selling or offering for sale Robotic FX, Inc.’s

Negotiator tactical robot, or any other Robotic FX product that embodies iRobot Corporation’s

trade secrets or confidential information.” (D.I. 5). Yet, the evidence presented during the four

hearing days fails to warrant an injunction against Robotic FX, and its Negotiator tactical robot.

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 If this Court, however, were to grant a preliminary injunction, it should not adopt

iRobot’s overly broad proposed injunction.1 The practical effect of iRobot’s proposed injunction

is an injunction against Robotic FX’s entire Negotiator product line and, ultimately, its

performance on the xBot Contract. An injunction against the entire Negotiator product is overly

broad and improper. An injunction, at most, should only enjoin the use of iRobot’s trade secrets

and confidential information. See, Solutions, Inc. v. Eastman Kodak Co., 345 F.Supp. 2d 23 (D.

Mass., 2004).

In this regard, iRobot should be required to identify with specificity the trade secrets and

confidential information it alleges has been misappropriated, and which it seeks to enjoin.

Typically, before any discovery relating to trade secrets is permitted, the trade secret plaintiff

should provide to the Court and the Defendants a designation:

in affidavit form and under oath, that sets forth with rigorous and focused
particularity what, and only what, the plaintiffs claim to constitute the trade
secrets allegedly misappropriated by either of the defendants that form the basis
for this law suit.

The designation must, with clarity that can be understood by a lay person, make
clear and distinguish what is protectable from that which is not.

See, e.g., Staffbridge, Inc. v. Gary D. Nelson Assocs., 2004 Mass. Super. LEXIS 215, 10-11

(Mass. Super. Ct. 2004); See also L-3 Communications Corp. v. Reveal Imaging Technologies,

Inc. et al., 18 Mass. L. Rep. 512, 2004 Mass. Supr. LEXIS 519, *33-5 (Mass. Sup. Ct. 2004).

Here, iRobot has been able to conduct discovery and has yet to identify with any specificity the

trade secrets and confidential information it alleges have been misappropriated. Indeed, hearing

1
Just prior to Robotic FX’s filing the instant brief, iRobot filed an October 10, 2007 letter to the Court
and accompanying revised proposed preliminary injunction. (D.I. 52) iRobot’s revisions to its
proposed preliminary injunction do not remedy the defects of its prior proposal. Robotic FX
reserves the right to fully respond to iRobot’s letter and revised proposed preliminary injunction.

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testimony of iRobot’s Tim Ohm was fashioned around the Declaration of Jameel Ahed, Mr.

Ahed’s deposition testimony and documents produced by the Defendants.2

To prevail on its misappropriation of trade secrets claim, iRobot must first show the

existence of trade secrets. Echomail, Inc. v. American exp. Co., 378 F.Supp. 2d 1, 2-3 (D.Mass.

2005). Defendants have repeatedly argued, and the Court has suggested, that iRobot should

identify with specificity the trade secrets and confidential information it alleges has been

misappropriated. Once iRobot has submitted its designation, Defendants should be entitled to

respond with the same specificity.

Without a specific identification of iRobot’s alleged trade secrets, iRobot’s proposed

injunction should be denied as overly broad. In order to meet the specificity requirements set

forth in Federal Rule 65(d), a preliminary injunction must identify the trade secrets that it bars

the defendant from misappropriating. Fed.R.Civ.P. 65(d); Corning, Inc. v. PicVue Electronics,

Ltd., 365 F.3d 156, 159 (2nd Cir. 2004) (holding preliminary injunction impermissibly vague

where it failed to identify the trade secrets and copyrighted works that it barred plaintiff from

misappropriating and infringing); See also Schmidt v. Lessard, 414 U.S. 473, 476 (1974)

(Federal Rule 65(d) “was designed to prevent uncertainty and confusion on the part of those

faced with injunctive orders, and to avoid the possible founding of a contempt citation on a

decree too vague to be understood.”) and See Burke v. Guiney, 700 F.2d 767, 769 (1st Cir., 1983)

(“To be enforceable in contempt an injunctive decree must satisfy the specificity requirements of

2
This situation is compounded by the fact that iRobot now seeks to substantially review all documents
and things seized under the temporary restraining order previously entered in the Alabama patent
case. While there is no pressing reason for iRobot to immediately view this information for purposes
of the Alabama patent case, iRobot’s motives clearly lie in reviewing this information for use in the
instant action. This is improper, as discussed above, under the prevailing Massachusetts trade secret
case law. See also L-3 Communications Corp., 18 Mass. L. Rep. 512 (denying a preliminary
injunction and granting a protective order requiring a statement from plaintiffs “specifically
identifying those trade secrets that form basis of their misappropriation claims before any discovery
may be had on those claims.”).

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Fed.R.Civ.P. 65(d)). It is possible that a sufficiently narrow injunction may not enjoin the

Negotiator product altogether, thereby permitting performance under the xBot Contract. Such an

injunction would avoid the concerns previously raised including, for example, (i) the harm to the

public that would occur by enjoining the entire contract; and (ii) the question of the Court’s

authority to enjoin a government procurement contract.

For the foregoing reasons, iRobot’s motion for preliminary injunction should be denied.

Dated: October 10, 2007 Respectfully submitted,

JAMEEL AHED, ROBOTIC FX, INC.

By: /s/ Patricia Kane Schmidt

One of their Attorneys

David J. Brody (BBO No. 058200)

John L. DuPre (BBO No. 0549659)
Hamilton, Brook, Smith & Reynolds, P.C.
530 Virginia Road
P.O. Box 9133
Concord, Massachusetts 01742-9133
Telephone: (978) 341-0036
Facsimile: (978) 341-0136

Alan L. Barry (pro hac vice)

Patricia Kane Schmidt (pro hac vice)
Jason A. Engel (pro hac vice)
BELL, BOYD & LLOYD LLP
70 West Madison Street, Suite 3100
Chicago, Illinois 60602
(312) 372-1121

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 CERTIFICATE OF SERVICE

I HEREBY CERTIFY that true and correct copies of the foregoing Defendants’

Memorandum of Law Pursuant to the Court’s October 3, 2007 Order were served in the manner

indicated below:

Via ECF:

Michael H. Bunis
Michael S. Forman
Fish & Richardson, PC
225 Franklin Street
Boston, MA 02110-2804
617-521-7852
Fax: 617-542-8906
Email: bunis@fr.com
Email: forman@fr.com

on this 10th day of October, 2007.

/s/ Patricia Kane Schmidt
One of the Attorneys for
JAMEEL AHED, ROBOTIC FX,
INC.

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