Proofpoint, Inc. v. Vade Secure, Incorporated

Background

Proofpoint and Cloudmark sued Vade Secure, Incorporated, Vade Secure SASU, and Olivier Lemarié. They alleged that Lemarié, a former Cloudmark employee who later worked for Vade Secure, misappropriated confidential information and trade secrets and infringed copyrights. They also asserted four breach-of-contract claims against Lemarié based on his employment agreement, called the Employee Proprietary Information and Inventions Agreement.

Lemarié filed a motion for partial summary judgment. Summary judgment is a decision before trial when the moving party shows there is no genuine dispute about a fact that matters to the claim and that the law requires judgment in that party’s favor.

Count II: Confidentiality and disclosure

Count II alleged that Lemarié violated the agreement by using and disclosing Cloudmark proprietary information in connection with Vade Secure’s products. Lemarié argued that the agreement’s confidentiality provisions were invalid under California Business and Professions Code section 16600 because they restrained his future work.

The court rejected that argument on the existing record. Lemarié offered no evidence showing that enforcing the provisions would substantially restrain his ability to work, and the alleged restraint was not self-evident. The court therefore found that Lemarié had not shown the provisions were void.

The court separately granted summary judgment on one requested remedy. Proofpoint and Cloudmark sought to recover all compensation Cloudmark had paid Lemarié. The court held that disgorgement—the surrender of a benefit obtained through a breach—was not supported on these facts because Lemarié received his salary and other compensation from Cloudmark before the alleged breach, not because of it. The motion was granted to that extent, while the court denied it in all other respects as to Count II.

Count III: Failure to disclose inventions

Count III alleged that Lemarié failed to disclose inventions covered by the agreement. The agreement required disclosure of inventions made during employment or within six months after employment ended.

The court granted summary judgment to Lemarié. The evidence cited by the plaintiffs concerned research that Lemarié said began no earlier than 2018, more than six months after his Cloudmark employment ended on November 11, 2016. The plaintiffs also did not identify evidence showing that destroyed files would establish that the invention was conceived during the six-month period.

Count IV: Maintaining and making records available

Count IV concerned information Lemarié had stored in an Evernote account. The plaintiffs alleged that he restricted their access to the account in 2019 and later deleted its contents. Lemarié argued that the agreement’s duty to maintain and make records available ended when his employment ended.

The court agreed and granted summary judgment to Lemarié on Count IV. It interpreted the provision as covering information developed during employment and as requiring Lemarié to keep that information for his work obligations. The court found no basis in the provision for requiring him to continue acting as a custodian of Cloudmark’s property after his employment ended. The agreement’s separate requirement that departing employees return company property addressed Cloudmark’s interest in obtaining that property.

Count V: Failure to deliver materials

Count V alleged that Lemarié failed to deliver and return materials containing Cloudmark inventions or proprietary information when his employment ended. The court denied summary judgment on liability. Although Lemarié argued that other employees had access to the information and that he believed the project had been abandoned, he offered no evidence supporting his assertion that those employees had all the files they needed. Because the relevant Evernote notebook had been deleted, whether its contents had effectively been delivered remained a disputed issue.

The court nevertheless granted summary judgment on the same compensation-based remedy discussed under Count II. It granted the motion to the extent the plaintiffs sought recovery of all compensation Cloudmark had paid Lemarié, and denied it in all other respects as to Count V.

Disposition

The court granted in part and denied in part Lemarié’s motion for partial summary judgment. It granted the motion as to Counts III and IV. It granted the motion as to the plaintiffs’ claim for disgorgement of compensation paid by Cloudmark to Lemarié under Counts II and V. In all other respects, the motion was denied.