## Facts

- General Electric Company (GE) developed proprietary technology for manufacturing saw-grade synthetic industrial diamond and protected it as trade secrets.
- Chien-Min Sung, a GE Superabrasives employee for about seven years, left GE in 1984 and took numerous documents, including drawings and process instructions tied to GE’s diamond production.
- In 1988, Sung entered agreements with Iljin entities and an Iljin principal to transfer industrial-diamond production technology.
- Before working with Sung, Iljin had no industrial-diamond program; shortly thereafter it developed production capability and competed with GE.
- GE sued in 1989 alleging trade-secret misappropriation; a jury found that Sung and Iljin misappropriated GE’s trade secrets related to industrial-diamond manufacturing.
- After the verdict, GE waived monetary damages and sought equitable relief: an injunction prohibiting Iljin from producing industrial synthetic diamond for a period intended to remove any unfair competitive advantage.

## Issues

1. Whether equity warranted a “production injunction” barring Iljin from producing industrial synthetic diamond, rather than a narrower injunction limited to specified secrets or processes.
2. If a production injunction was warranted, what duration would reasonably eliminate Iljin’s head start from misappropriation without overrestricting lawful competition.

## Decision

- The court granted injunctive relief in part and imposed a time-limited production injunction against Iljin.
- The court rejected GE’s requested 10-year bar and instead selected a shorter, lead-time-based duration supported by the trial record indicating a shorter independent development period.
- The court reasoned that a production injunction was appropriate because Iljin’s diamond-production capability had been built using misappropriated information in a way that made a narrowly itemized injunction difficult to administer and potentially ineffective.
- The court found the principal hardship to Iljin flowed from its wrongful conduct and concluded the public interest favored protecting trade secrets while allowing eventual lawful competition through a finite injunction term.

## Legal Principles

- Equitable relief for trade-secret misappropriation may be structured to neutralize the defendant’s “head start” by prohibiting exploitation of the misappropriated technology for the period it would have taken to develop the technology independently.
- A production injunction may be appropriate when misappropriation permeates a defendant’s operational capability such that restricting only discrete items of information would be underinclusive or impractical.
- The duration of injunctive relief should be remedial rather than punitive: long enough to remove the unfair advantage, but not so long as to confer a de facto monopoly beyond the justified lead-time period.
- In weighing hardships and public interest, courts may treat business disruption caused by a properly tailored injunction as a consequence of the defendant’s misconduct, while also considering the public interest in both innovation incentives and future lawful competition.

## Conclusion

The court, acting after a jury finding of trade-secret misappropriation, awarded equitable relief by enjoining Iljin’s production of industrial synthetic diamond for a limited lead-time period designed to remove the competitive advantage gained from misuse of GE’s trade secrets without extending protection beyond the time needed to offset the head start.


Gen. Elec. Co. v. Sung, 843 F. Supp. 776 (D. Mass. 1994)