## Facts

- Bayer and Roche competed in the market for HIV “viral-load assays,” with Roche holding a dominant global share and Bayer a smaller share.
- A Bayer HIV marketing manager resigned and accepted a similar HIV marketing position at Roche, creating substantial overlap in responsibilities.
- At Bayer, the employee had access to confidential marketing information (including plans and competitive assessments) and had signed a confidentiality agreement.
- Bayer sued and sought a preliminary injunction to prevent the employee from working for Roche (or to restrict his role), arguing that his new job would “inevitably” lead to use or disclosure of Bayer’s trade secrets.
- Roche opposed the injunction and filed cross-motions to strike an expert declaration offered by Bayer and to dismiss the action.

## Issues

1. Whether California trade secret law permits preliminary injunctive relief preventing competitive employment based primarily on an “inevitable disclosure” theory, absent evidence of actual or threatened misappropriation.
2. Whether the court should grant Roche’s cross-motion to strike Bayer’s expert declaration.
3. Whether the court should grant Roche’s cross-motion to dismiss.

## Decision

- The court denied Bayer’s motion for a preliminary injunction because the record did not show actual use, disclosure, or an actual threat of misappropriation.
- The court held that “inevitable disclosure” is not California law and does not, by itself, establish likelihood of success or serious questions warranting an injunction.
- Despite denying injunctive relief, the court ordered periodic discovery obligations for Roche and the employee to monitor potential misuse, allowing Bayer to renew its injunction request if discovery revealed misuse.
- The court denied Roche’s cross-motion to strike Bayer’s expert declaration.
- The court denied Roche’s cross-motion to dismiss.

## Legal Principles

- California policy strongly favors employee mobility and disfavors restraints that function as de facto noncompete agreements.
- Under California trade secret law, injunctive relief requires evidence of actual misappropriation or a concrete, actual threat of misappropriation; similarity of jobs and access to confidential information are insufficient without more.
- The “inevitable disclosure” theory alone does not supply the proof required for a preliminary injunction in California.
- Courts may use tailored procedural measures (such as monitored discovery) to address identified risk of trade-secret misuse without broadly restraining lawful employment.

## Conclusion

The court refused to enjoin a former employee’s competitive employment based solely on asserted “inevitable disclosure,” reaffirming that California requires evidence of actual or genuinely threatened trade-secret misappropriation while permitting limited monitoring to detect misuse and support later injunctive relief if warranted.


Bayer Corp. v. Roche Molecular Sys., Inc., 72 F. Supp. 2d 1111 (N.D. Cal. 1999)