## Facts

- Sylmark developed a silicone oven mitt product, the “Hot Holder,” designed as distinct left- and right-handed gloves and marketed as heat resistant.
- Sylmark licensed rights in the product to Great Products, which sublicensed Ideal Products to manufacture and sell through retail channels.
- Silicone Zone International (a Hong Kong company) agreed to design and manufacture molds for the Hot Holder under written agreements containing confidentiality and intellectual property ownership provisions.
- The agreements treated specified “company materials” (including designs, specifications, drawings, models, research and development materials, molds, sample molds, samples, and products) as proprietary, limited Silicone Zone’s use, and required prompt return of all such materials upon termination without retaining copies or samples.
- Plaintiffs alleged that Silicone Zone used access to proprietary information and molds to manufacture and market competing “Two Hands” silicone gloves similar to the Hot Holder.
- A Hong Kong court issued an order restraining Silicone Zone from dealing with or selling items made or to be made from the molds.
- Plaintiffs sued in New York alleging, among other claims, misappropriation of trade secrets/confidential information and breach of contract, and moved for a preliminary injunction and attachment.

## Issues

1. Whether plaintiffs satisfied New York’s requirements for a preliminary injunction based on alleged misuse of trade secrets/confidential information and molds, notwithstanding that some information appeared in patent filings.
2. Whether and to what extent the court should give effect to the Hong Kong order restraining dealings in items made from the molds.
3. Whether plaintiffs met the statutory requirements for attachment, including a showing that judgment would be rendered ineffectual without the remedy.

## Decision

- The court granted the preliminary injunction in part and denied it in part, tailoring relief rather than adopting plaintiffs’ full proposed restraints.
- The court found a sufficient showing of likely success that defendants received nonpublic technical information and “company materials” under confidentiality and ownership provisions and allegedly used them to produce competing products.
- The court concluded that patent disclosure of some aspects of a product did not bar protection for additional, non-disclosed specifications and manufacturing know-how shared under confidentiality restrictions.
- The court found irreparable harm adequately shown from alleged trade secret/confidential-information misuse and ongoing exploitation of disputed molds and materials.
- The court weighed equities by limiting restraints to conduct tied to proprietary molds/materials and nonpublic information, rather than broadly barring competition based on publicly available information.
- The court addressed attachment cautiously and required a clear statutory and factual basis before granting any such provisional relief.

## Legal Principles

- A preliminary injunction in New York requires: (1) likelihood of success on the merits, (2) irreparable harm absent injunctive relief, and (3) a balance of equities favoring the movant.
- Patent-related public disclosure does not necessarily eliminate trade secret or confidential-information protection for non-disclosed technical details, tolerances, and manufacturing know-how.
- Confidentiality and IP-ownership provisions, including return-and-no-retention obligations for molds and related materials, support claims for interim relief when the receiving party allegedly uses those materials to compete.
- Misappropriation of trade secrets and confidential business information may constitute irreparable harm because loss of secrecy and competitive advantage is difficult to quantify in money damages.
- Injunctive relief should be narrowly tailored to restrain misuse of protected information and proprietary materials while avoiding restraints on lawful competition grounded solely in public-domain information.
- Attachment is an exceptional remedy requiring satisfaction of statutory prerequisites and a factual showing that judgment may be ineffectual without it.

## Conclusion

The court issued limited preliminary injunctive relief to prevent alleged misuse of plaintiffs’ proprietary molds and nonpublic technical information in a cross-border manufacturing dispute, holding that partial patent disclosure did not defeat trade secret protection for additional confidential know-how, and it closely scrutinized the request for attachment under New York’s statutory standards.


Sylmark Holdings Ltd. v. Silicone Zone Int’l Ltd., 5 Misc. 3d 285, 783 N.Y.S.2d 758 (Sup. Ct. N.Y. Cnty. 2004)