United States v. Walter Liew , 856 F.3d 585 ( 2017 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
UNITED STATES OF AMERICA, No. 14-10367
Plaintiff-Appellee,
D.C. No.
v. 4:11-cr-00573-JSW-1
WALTER LIEW,
Defendant-Appellant.
UNITED STATES OF AMERICA, Nos. 14-10384
Plaintiff-Appellee,
D.C. No.
v. 4:11-cr-00573-JSW-4
USA PERFORMANCE
TECHNOLOGY, INC., OPINION
Defendant-Appellant.
Appeals from the United States District Court
for the Northern District of California
Jeffrey S. White, District Judge, Presiding
Argued and Submitted November 16, 2016
San Francisco, California
Filed May 5, 2017
2 UNITED STATES V. LIEW
Before: Mary M. Schroeder, Kim McLane Wardlaw,
and John B. Owens, Circuit Judges.
Opinion by Judge Owens
SUMMARY*
Criminal Law
The panel affirmed in part, reversed in part, vacated in
part, and remanded, in a case in which Walter Liew and his
company USA Performance Technology, Inc. were convicted
of multiple offenses including conspiracy and attempt to
commit economic espionage and theft of trade secrets,
possession of misappropriated trade secrets, and conveying
trade secrets related to E.I. du Pont de Nemours and
Company chloride-route technology for producing titanium
dioxide (TiO2).
The panel held that the district court did not commit
reversible error in giving a jury instruction regarding
compilations; or in rejecting a public-disclosure instruction,
an instruction regarding disclosure to a single recipient, and
reverse-engineering/general-knowledge instructions.
The panel held that the defendants waived their right to
obtain review of their arguments that the district court’s
conspiracy and attempt instructions constructively amended
the indictment and erroneously allowed the jury to convict
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
UNITED STATES V. LIEW 3
without finding that the trade secrets involved were in fact
trade secrets. The panel held that even if the issue were
reviewable, United States v. Nosal, 844 F.3d 1024 (9th Cir.
2016), establishes that the conspiracy and attempt instructions
were legally correct and did not constructively amend the
indictment; and that any error was harmless.
The panel rejected the defendants’ sufficiency-of-the-
evidence challenges relating to substantive trade secret
counts. The panel explained that the government was not
required to prove that no disclosures of DuPont’s TiO2
technology occurred; instead, it needed to establish that
DuPont took reasonable measures to guard that technology.
The panel held that the defendants failed to show that the sale
of an Ashtabula, Ohio factory was unreasonable, particularly
under the Economic Espionage Act’s then-requirement that
trade secrets not be generally known to “the public.” The
panel concluded that a rational juror could have found that the
high-grade ore technology used at the Antioch, California and
Ashtabula plants was not part of the trade secrets covered by
Counts 6–9, which involved low-grade ore technology; that
DuPont took reasonable measures to protect its technology;
and that such technology was not readily ascertainable by or
generally known to the public.
The panel reversed the defendants’ convictions for
conspiracy to obstruct justice by agreeing to file a false
answer in civil litigation with DuPont. The panel wrote that
the statement in the defendants’ answer – that they “never
misappropriated any information from DuPont or any of its
locations” – tacked too close to a general denial to constitute
obstruction of justice.
4 UNITED STATES V. LIEW
The panel reversed Liew’s conviction for witness
tampering. The panel wrote that standing alone, evidence
that Liew told a witness not to mention anything about former
DuPont employees who worked for USA Performance
Technology because doing so would not be good for the
witness or his family was insufficient to prove beyond a
reasonable doubt that Liew intimidated, threatened, or
corruptly persuaded the witness to prevent the use of his
testimony in the DuPont lawsuit.
The panel held that the district court erred by not
requiring the prosecution to disclose the FBI’s interviews
with a deceased co-conspirator, where the defendants
produced a declaration by the co-conspirator’s attorney that
supported an inference that the rough notes contained
favorable material. The panel remanded for in camera review
of the material to determine whether disclosure might have
affected the outcome of the trial.
COUNSEL
Dennis P. Riordan (argued), Donald M. Horgan, Gary K.
Dubkoff, and Matthew C. Dirkes, Riordan & Horgan, San
Francisco, California, for Defendants-Appellants.
Merry Jean Chan (argued), Assistant United States Attorney;
Barbara J. Valliere, Chief, Appellate Division; Brian Stretch,
United States Attorney; United States Attorney’s Office, San
Francisco, California; for Plaintiff-Appellee.
UNITED STATES V. LIEW 5
OPINION
OWENS, Circuit Judge:
Defendants Walter Liew and his company USA
Performance Technology, Inc. (“USAPTI”) appeal from their
eight counts of conviction under the Economic Espionage Act
of 1996 (“EEA”) for conspiracy and attempt to commit
economic espionage and theft of trade secrets, possession of
misappropriated trade secrets, and conveying trade secrets
related to E.I. du Pont de Nemours and Company (“DuPont”)
chloride-route technology for producing titanium dioxide
(“TiO2”). Defendants also appeal from their convictions for
conspiracy to tamper with witnesses and evidence, and Liew
appeals from his conviction for witness tampering, which
arose out of Liew’s conduct in a civil lawsuit filed by
DuPont. We affirm in part, reverse and vacate in part, and
remand for resentencing and in camera review of potential
Brady material.
FACTUAL BACKGROUND
A. DuPont and Titanium Dioxide Production
If you wanted to learn about the secretive and lucrative
world of titanium dioxide production, then this was the trial
for you. TiO2 is a white pigment extracted from ore and used
in a wide variety of products, from paint to the filling in Oreo
cookies. In the 1940s, scientists developed a chloride process
to manufacture TiO2, which was less labor intensive and
costly, produced less waste, and resulted in a better product
than the sulfate process originally used to produce TiO2.
Production plants in the United States now exclusively use
the chloride process, while plants in Europe and Asia
6 UNITED STATES V. LIEW
(including China) continue to use the less efficient sulfate
process.
Since the 1940s, DuPont has been a leader in the TiO2
industry and the chloride process. It opened its first chloride
plant in Edgemoor, Delaware (“Edgemoor”) in 1948, and its
second in New Johnsonville, Tennessee (“Johnsonville”) in
1958. It opened its Antioch, California plant in 1962. While
the Edgemoor and Johnsonville plants were designed to use
“a wide range of ores,” the Antioch plant used only high-
grade ore (ore with high levels of titanium), so it lacked some
of the features of the Edgemoor and Johnsonville plants.
In 1967, DuPont agreed to build a plant for Sherwin-
Williams in Ashtabula, Ohio, modeled after the Antioch high-
grade ore plant. Sherwin-Williams agreed that it and any
successor would maintain the confidentiality of DuPont’s
chloride-route technology for fifteen years. Sherwin-
Williams sold the Ashtabula plant in the 1970s.
During the following decades, DuPont expanded existing
facilities and built new ones, including the Kuan Yin plant in
Taiwan. Kuan Yin, an entirely new “greenfield” facility, was
designed to process ore at lower grades than those used at the
Antioch or Ashtabula plants.
Starting in 2000, DuPont took steps to build a TiO2 plant
in Dongying, China. By 2007, DuPont had obtained a
number of governmental approvals required for the project,
but by 2008, the project had stalled because DuPont could no
longer get in touch with government officials and “couldn’t
get any information” about the status of the project. During
this time, DuPont met with the Pangang Group (“Pangang”),
a Chinese company, to discuss purchasing ore, but DuPont
UNITED STATES V. LIEW 7
later determined that Pangang’s ore was “totally unsuitable”
for the planned facility.
DuPont remains the world’s largest TiO2 producer, and
has the most competitive chloride process, in part due to its
ability to use lower-grade ore. Its TiO2 chloride-route
technology is both “unique” and “very valuable” to DuPont.
B. Liew and His China Campaign
Liew is a U.S. citizen with a master’s degree in electrical
engineering. In the early 1990s, Liew started his company
LH Performance (“Performance Group”). During this period,
Liew designed an acrylic resin plant in China.
In the early 1990s, the Chinese government attempted to
buy TiO2 technology from DuPont so it could build its own
plant. But because DuPont was charging $75 million to
license its technology, the Chinese government instead
decided to go with a molten-salt chlorination process
developed in the former Soviet Union. In 1991, Liew
attended a banquet hosted by high-ranking Chinese officials
who thanked Liew “for being a patriotic overseas Chinese
who [had] . . . provided key technologies” to China. At the
banquet, the Secretary General of China’s State Council gave
Liew “directives” regarding what he could continue
contributing to China, and Liew later received a list of “key
task[s]” that highlighted chloride TiO2 production as “one of
the more important projects.”
In the years that followed, Liew tried to obtain the
resources necessary to design a TiO2 facility. In 1997, he
met Robert Maegerle and Tim Spitler, two former DuPont
employees with experience at TiO2 facilities: Maegerle as a
8 UNITED STATES V. LIEW
project engineer and Spitler as a chemical engineer. Upon
their retirement from DuPont, both Maegerle and Spitler
certified that they had returned all “secret or confidential”
materials to DuPont and agreed “not to use or divulge . . . any
secret or confidential information” without DuPont’s
permission. Liew hired them both as consultants. While their
initial work for Liew was limited, their involvement increased
in the 2000s.
In 2004, Liew wrote a letter to the chairman of Pangang
explaining that after learning of China’s need for “titanium
white by chlorination technology,” his company had
performed “many years of follow-up research and
application” and now had “mastery of the complete DuPont
way of titanium white by chlorination.” He boasted that his
company employed “experts” who had worked “for
companies like Dow Chemical, DuPont . . . et cetera,” and
that his company possessed “its own proprietary technologies
which are transferable.” And while Dupont had “the most
advanced [TiO2 chloride process] technology,” its
“technology has always been highly monopolized, and
absolutely not transferable,” whereas his company now
possessed chloride-route technology that was “transferable
without involving intellectual property rights issues.”
In November 2005, Pangang and Performance Group
signed a $6.18 million contract. Performance Group would
upgrade the Chinese molten-salt plant into a chloride process
facility. While Liew hired seven to ten employees to work on
this project, none had any experience with TiO2 technology.
Maegerle, the former DuPont employee, served as the “in-
house expert,” despite referring to himself as “an oxidizer
man, not a chlorinator man” and stating that the TiO2
chloride process “was not his process.”
UNITED STATES V. LIEW 9
In January 2009, Liew filed for bankruptcy on behalf of
Performance Group, but did not disclose the molten-salt
upgrade project, or any patents or trade secrets.1 In February
2009, Liew formed USAPTI and operated it out of the same
building as Performance Group, with many of the same
employees.
In May 2009, USAPTI signed a $17.8 million contract
with Pangang to build a TiO2 chloride facility in Chongqing,
China. Pangang retained two third-party consulting firms to
review the project, and their 2009 report concluded “that
DuPont is the source of the [project] technology” and “that
the technology has come from the Edgemoor plant at DuPont
headquarters.” The consultants recommended that Pangang
seek “legal counsel to avoid any possible delays.”
Despite these concerns, Liew’s company continued to
work on both projects and rely on Maegerle and Spitler as
consultants. Liew paid Maegerle $370,000 between 2004 and
2011 for his consulting work. And Liew took notes of his
conversations with Spitler, where they discussed how a TiO2
plant would fail “without . . . startup people and maintenance
experienced people,” “[e]ven with the best technology with
stolen prints.” Liew also obtained documents from Spitler,
including a “reference sheet” against which Liew checked
numbers. According to Liew, Spitler told him that there was
“a very small problem to use your knowledge [of TiO2
processes] within 5 years after you left DuPont. After
1
Liew’s conduct in these bankruptcy proceedings formed the basis for
his two convictions for making false statements in bankruptcy proceedings
and his additional conviction for making a false oath in bankruptcy
proceedings. He does not challenge these convictions on appeal.
10 UNITED STATES V. LIEW
5 years, you are a free man as far as DuPont [is]
concern[ed.]”
C. The DuPont Investigation and Civil Suit Against
Liew and USAPTI
In 2009, DuPont learned that USAPTI might be using
DuPont information, and in August 2010, DuPont received an
anonymous letter about USAPTI employee John Liu, who
also worked for Chevron. The letter stated that Liew and Liu
had “embezzled DuPont technology and sold it to China.”
DuPont began investigating and contacted Chevron, which
interviewed Liu and searched his work computer.
On March 30, 2011, a DuPont investigator went to Liu’s
house to interview him. Coincidentally, Liew and his wife
Christina Liew (“Christina”) were having dinner at Liu’s
house that same night. Liew hid in the basement, and during
the interview, Christina told Liu in Mandarin that he
“shouldn’t let people come into [his] house.” After the
investigator left, the Liews told Liu that he “should not really
tell other people’s name[s]” to the investigator. The next day,
the Liews returned to Liu’s home and helped him draft a
letter to Chevron complaining that Chevron gave DuPont his
home address. Liu never sent the letter. Liew also told Liu
that he should not allow “strange people” to enter his house,
and that he should never speak with anyone without
consulting a lawyer. The Liews continued to visit Liu and
speak with him about the investigation, and they discussed
forming a new company with Liu.
In April 2011, DuPont sued Liew, USAPTI, and Liu for
trade secret misappropriation. Shortly after the lawsuit was
filed, Christina Liew drove Liu to meet with a lawyer, and
UNITED STATES V. LIEW 11
several days later Liew met with Liu to discuss the case.
During that meeting, Liew told Liu not to reveal the names of
Maegerle and Spitler (who were not named in the lawsuit),
and that it would not be “good for anybody, not even good for
[Liu’s] family” if Liu revealed their names. And while the
civil action was pending, Liew asked other USAPTI
employees to erase DuPont-related files from company
servers and compile lists of patents related to TiO2. During
an interview with a DuPont investigator, Liew said that had
he wanted to use DuPont technology, he “would have hired
former DuPont employees,” and not Chevron employees. He
failed to mention his possession of DuPont materials or his
work with former DuPont employees Maegerle and Spitler.
In May 2011, Liew and USAPTI filed their answer to the
trade secret complaint. The answer stated that they never
“wrongfully obtained or possess[ed] any” DuPont trade
secrets related to its TiO2 chloride process or
“misappropriated any information from DuPont or any of its
locations.” A few weeks later, DuPont again interviewed Liu.
Although DuPont had agreed to dismiss the lawsuit against
Liu if Liu cooperated, Liu told the DuPont investigator that
he had not seen any stolen DuPont materials and again did
not mention Maegerle or Spitler. He later explained that he
did this to “honor [his] promise” to Liew.
D. The Criminal Investigation and Indictment
The FBI began investigating whether USAPTI and Liew
stole DuPont’s trade secrets and sold them to China. Through
search warrants, agents located materials relevant to DuPont’s
trade secrets and USAPTI’s dealings with Pangang (1) in a
safe deposit box, (2) at Liew and Maegerle’s residences, and
(3) at the USAPTI offices. Found at Liew’s home was a
12 UNITED STATES V. LIEW
binder labeled “Tim” that contained handwritten notes of
Liew’s conversations with Spitler. A typed document called
“Notes from Tim Spitler” was discovered on a hard drive in
the safe deposit box. Both documents contained Liew’s note
that “[e]ven with [the] best technology with stolen prints,”
experienced personnel were needed for a successful facility.
After two initial indictments, a grand jury returned a
second superseding indictment (“indictment”) in March 2013.
It charged Liew, his wife Christina, Maegerle, and USAPTI2
in Counts 1–3 and 5–9 with various espionage charges, and
alleged five different trade secrets that Liew and his co-
defendants had stolen.3 Count 10 charged a conspiracy by
2
The indictment also named several other defendants, including
Pangang and its subsidiaries. These defendants are not parties to this
appeal.
3
Count 1: conspiracy to commit economic espionage in violation of
18 U.S.C. § 1831(a)(5); Count 2: conspiracy to commit theft of trade
secrets in violation of 18 U.S.C. § 1832(a)(5); Count 3: attempted
economic espionage in violation of 18 U.S.C. § 1831(a)(2) and (4); Count
5: attempted theft of trade secrets in violation of 18 U.S.C. § 1832(a)(2)
and (4); Counts 6, 7, and 9: possession of trade secrets in violation of
18 U.S.C. § 1832(a)(3); and Count 8: conveying of trade secrets in
violation of 18 U.S.C. § 1832(a)(2).
The five trade secrets were described as: (1) Trade Secret 1, “[t]he
DuPont chloride-route process to manufacture TiO2,” which included
Trade Secrets 2 through 5; (2) Trade Secret 2, DuPont Drawing No.
W1245258, titled Edge Moor Plant Oxidation W/RPS System Drawing;
(3) Trade Secret 3, DuPont Accession Report No. 18135, titled “Improved
Mixing Correlation for the TiC14 Oxidation Reaction Computer Model;”
(4) Trade Secret 4, DuPont Flow Sheet No. EK2411, titled “Edge Moor
Pigments Plant Flow Sheet – Reaction Area; and (5) Trade Secret 5,
Dupont Document EM-C-8510-0148, titled “60,000 Metric Tons Per Year
Scope/Basic Data” (“Basic Data Document”).
UNITED STATES V. LIEW 13
Maegerle, Liew, and USAPTI to violate 18 U.S.C. § 1512(c)
by obstructing an official proceeding in violation of 18 U.S.C.
§ 1512(k), as they agreed to file an answer to DuPont’s civil
complaint that contained false statements—specifically, the
assertion that defendants “never misappropriated any
information from DuPont or any of its locations.” Count 11
charged Liew with witness tampering in violation of
18 U.S.C. § 1512(b)(1) for advising Liu that he should not
discuss the former DuPont employees at USAPTI because “it
would not be good” for Liu or his family.4
E. The Trial
Liew, USAPTI, and Maegerle went to trial. Spitler, who
was not originally indicted with defendants, was scheduled to
enter a guilty plea to similar charges but committed suicide
the week that he was scheduled to sign the plea agreement.
Spitler met several times with the prosecution team, and an
FBI report summarizing those interviews (“302 report”) was
produced to the defense in discovery. The agents’ rough
notes of these interviews were not produced.
At trial, the parties sharply disagreed over the appropriate
jury instructions. Relevant to this appeal, defendants
proposed three instructions: (1) a public disclosure instruction
stating that “[i]nformation is ‘known to the public’ when it is
published in [a] patent, textbook, periodical, or other publicly
available source” and is “‘readily ascertainable’ if the
4
Counts 12–22 of the indictment are not at issue in this appeal.
Those counts charged Liew and Christina with additional acts of witness
and evidence tampering, with making false statements, and with filing
false tax returns, in addition to the bankruptcy-related charges discussed
supra n.1.
14 UNITED STATES V. LIEW
information could be easily calculated or derived”; (2) a
reverse engineering instruction providing that it does not
constitute trade secret misappropriation to develop a process
independently or “by working backwards from publicly
available materials”; and (3) a general knowledge instruction
providing that employees may “change employers or start
their own companies relying on the general knowledge, skills,
and experience obtained” through previous employment. The
district court rejected these proposed instructions, finding that
some of them were “not appropriate[ly] . . . phrased” and that
“all of the aspects of the defenses” raised were adequately
“captured by the overall instructions.”
Defendants also objected to the inclusion of “a special
instruction on compilations and combinations,” arguing that
it would allow “individuals to vouch for the DuPont process’
uniqueness without presenting any evidence of what actually
constitutes each and every part of that process.” Defendants
requested that any instruction on compilations be given as
part of the general trade secrets definition instruction. The
district court overruled defendants’ objection, but did include
the compilation instruction within the general trade secret
instruction rather than separately. The given instruction
incorporated the trade secret definition used by the EEA at
the time the offenses were committed and at the time of trial,
18 U.S.C. § 1839(3) (2008), and further provided that trade
secrets “can include compilations . . . of public information
. . . when combined or compiled in a novel way,” even if a
portion or “every individual portion” of that compilation “is
generally known.” Additionally, the given instruction
informed the jury that an employee’s “personal skills, talents
or abilities . . . are not trade secrets” and that “facts and
information acquired” during employment can only be trade
secrets if they meet the given definition.
UNITED STATES V. LIEW 15
Defendants did not, however, object to the district court’s
instructions regarding the conspiracy and attempt charges.
The district court instructed the jury that with respect to
Counts 1 and 2, it was “not necessary for the government to
prove that the information . . . that the alleged conspirators
intended to convert was, in fact, a trade secret”; instead, the
government was required to prove only that the conspirators
“knowingly converted information that they reasonably
believed was a trade secret[,] . . . because a defendant’s guilt
or innocence on this charge depends on what he believed the
circumstances to be, not what they actually were.” With
respect to Counts 3 and 5, the district court instructed the jury
that the government was “not required to prove that Trade
Secret 1 was, in fact, a trade secret” but was “required to
prove the defendant reasonably believed that the information
the defendant intended to convert was a trade secret.”
Defendants objected to these instructions only to the extent
that they did not also require defendants’ reasonable belief to
be “firm.”
During closing arguments, both parties focused on the
issue of whether the DuPont technology qualified as trade
secret material. The government argued that the trade secrets
were compilations of “information put together in a unique
way” and therefore constituted trade secrets, even though
some parts of them were “in the public domain.” The
government also argued that the trade secrets remained
protected despite DuPont’s sale of the Ashtabula plant
because disclosure to a single competitor did not make
information generally known to “the public,” and because
DuPont’s other facilities involved more advanced low-grade
ore technology than was used at Ashtabula. In contrast,
defendants argued that DuPont had not taken reasonable
measures to protect its technology, particularly because
16 UNITED STATES V. LIEW
DuPont had sold the Ashtabula plant, and that the technology
was generally known or readily ascertainable, as Liew had
developed USAPTI’s technology through “years of research
of patents and textbooks and articles.”
In addition to arguing that the government had failed to
prove that DuPont’s technology remained protected as trade
secret material, defendants argued that the evidence did not
support convictions on Counts 10 and 11. Defendants argued
that Liew was “an ordinary man . . . not used to search
warrants or his world getting turned upside-down,” and that
although he had “probably use[d] the wrong words” when
speaking to Liu or answering the civil complaint, it is “not a
crime to assert defenses or constitutional rights.” For Count
10 in particular, defendants argued that the charge was
“outrageous,” because “[i]t’s not obstruction of justice to
oppose the government” or “to oppose DuPont” and the civil
answer simply reflected “the gist of [defendants’ and
Maegerle’s] defense.”
The jury convicted defendants on all counts. After the
verdict was returned and before sentencing, defendants
requested an evidentiary hearing on loss and also that the
government produce the rough notes from the FBI’s
interviews of Spitler. Defendants submitted a declaration
from Spitler’s former attorney, David Houston, in which he
averred that Spitler made statements during the interviews
that were not reflected in the 302 report. In particular,
Houston claimed that Spitler consistently denied “knowing
involvement in a criminal conspiracy” and told the agents that
when he retired, DuPont shipped him the boxes of documents
that he later sold to Liew, so Spitler considered them to be
valueless. Accordingly, defendants argued that the rough
notes potentially contained Brady/Giglio material and could
UNITED STATES V. LIEW 17
“reflect favorably on Mr. Liew’s culpability.” The district
court summarily denied defendants’ request for production of
the rough notes. Defendants made the request again in
response to the government’s sentencing memorandum, but
the district court did not directly address this renewed request
and instead proceeded to sentence defendants without
conducting an evidentiary hearing.
At the sentencing hearing, the parties disputed the amount
of loss attributable to defendants. DuPont informed the court
that it could not determine lost profits because the stolen
technology had not yet been used and that it also could not
calculate the exact cost of developing its trade secrets without
immense effort, but that the cost of the stolen secrets likely
totaled “hundreds of millions of dollars.” Defendants argued
that the loss to DuPont “was zero or negligible.” The district
court adopted the Probation Office’s calculations of gain as
an alternative measure, finding that “the only reasonable way
to calculate loss [was] to use the defendants’ gain” of either
$22.5 million with expenses deducted or $28 million with
expenses. Because either amount would result in the same
enhancement, the court applied a 22-level enhancement for
DuPont’s loss.
Based on these enhancements and others that are not
disputed on appeal, Liew’s guideline sentencing range was
210 to 262 months. The district court imposed a sentence of
180 months’ imprisonment and sentenced USAPTI to five
years’ probation.5
5
Maegerle was sentenced to 30 months’ imprisonment. Christina
pled guilty to conspiracy to tamper with evidence in violation of 18 U.S.C.
§ 1512(k), and was sentenced to three years’ probation.
18 UNITED STATES V. LIEW
STANDARD OF REVIEW
We review the formulation of jury instructions for abuse
of discretion, but review de novo whether those instructions
correctly state the elements of the offense and adequately
cover the defendant’s theory of the case. Peralta v. Dillard,
744 F.3d 1076, 1082 (9th Cir. 2014) (en banc); see also
United States v. Whittemore, 776 F.3d 1074, 1077–78 (9th
Cir. 2015). “The ‘relevant inquiry is whether the instructions
as a whole are misleading or inadequate to guide the jury’s
deliberation.’” United States v. Hofus, 598 F.3d 1171, 1174
(9th Cir. 2010) (quoting United States v. Frega, 179 F.3d
793, 806 n.16 (9th Cir. 1999)).
We review de novo whether sufficient evidence supports
a conviction and must determine “whether, ‘viewing the
evidence in the light most favorable to the prosecution, any
rational trier of fact could have found the essential elements
of the crime beyond a reasonable doubt.’” United States v.
Chung, 659 F.3d 815, 823 (9th Cir. 2011) (quoting Jackson
v. Virginia, 443 U.S. 307, 319 (1979)). “Under a sufficiency
of the evidence inquiry, circumstantial evidence and
inferences drawn from it may be sufficient to sustain a
conviction, but mere suspicion or speculation cannot be the
basis for creation of logical inferences.” United States v.
Lindsey, 634 F.3d 541, 552 (9th Cir. 2011) (quoting United
States v. Bennett, 621 F.3d 1131, 1139 (9th Cir. 2010))
(internal quotation marks and alterations omitted).
We review de novo both a district court’s ruling on a
prosecutor’s duty to produce evidence under Brady v.
Maryland, 373 U.S. 83 (1963), United States v. Si, 343 F.3d
1116, 1122 (9th Cir. 2003), and a denial of a motion for a
new trial based on alleged Brady violations, United States v.
UNITED STATES V. LIEW 19
Antonakeas, 255 F.3d 714, 725 (9th Cir. 2001).6 Challenges
to convictions based on alleged Brady violations are also
reviewed de novo. United States v. Ross, 372 F.3d 1097,
1107 (9th Cir. 2004).
When an issue is raised for the first time on appeal, we
review for plain error, under which the court may reverse
only if the appellant shows that there was (1) an error that
(2) was clear or obvious and not subject to reasonable dispute
that (3) affected the appellant’s substantial rights by affecting
the outcome of the proceedings and (4) seriously affected the
fairness, integrity, or public reputation of judicial
proceedings. United States v. Walls, 784 F.3d 543, 546 (9th
Cir. 2015).
DISCUSSION
A. EEA Background
“The EEA became law in October 1996 against a
backdrop of increasing threats to corporate security and a
rising tide of international and domestic economic
espionage.” United States v. Hsu, 155 F.3d 189, 194 (3d Cir.
6
The government cites United States v. Alvarez, 358 F.3d 1194, 1210
(9th Cir. 2004), for the proposition that the Ninth Circuit “reviews
discovery questions, including alleged rulings about Brady, . . . for abuse
of discretion.” The district court’s ruling here, however, was not a
discovery ruling like the ones discussed in Alvarez. Instead, it was made
post-trial and was ostensibly related to a request (albeit not a formal
motion) for a new trial. Accordingly, the correct standard of review for
the Brady issues raised here is de novo. See United States v. Doe,
705 F.3d 1134, 1149–53 (9th Cir. 2013) (evaluating discovery rulings for
abuse of discretion and then separately evaluating the material covered in
those rulings de novo for alleged Brady violations).
20 UNITED STATES V. LIEW
1998). In “the absence of any comprehensive federal
remedy” directed at trade secret theft, businesses were losing
billions in stolen intellectual property, and prosecutors were
forced to find creative ways of prosecuting these crimes. Id.The EEA was therefore intended to provide a “systematic
approach” to combatting economic espionage. Id. at 194–95
(internal quotation marks omitted).
Relevant to this appeal, the EEA punishes both
(1) “[e]conomic espionage,” which involves trade secret
misappropriation intended to or done with the knowledge that
it will “benefit any foreign government, foreign
instrumentality, or foreign agent,” 18 U.S.C. § 1831; and
(2) “[t]heft of trade secrets,” where the trade secret “is related
to a product or service used in or intended for use in interstate
or foreign commerce” and is knowingly converted “to the
economic benefit of anyone other than the owner” with the
intent or knowledge that the conversion “will[] injure any
owner of that trade secret,” 18 U.S.C. § 1832. Although these
provisions are very similar, § 1832 “is a general criminal
trade secrets provision” requiring that the benefit be
“economic,” while § 1831 “is designed to apply only when
there is evidence of foreign government sponsored or
coordinated intelligence activity” and may involve “any
manner” of benefit. Hsu, 155 F.3d at 195–96 (internal
quotation marks omitted).
At the time of the indictment and criminal trial at issue,
the EEA defined trade secrets as “all forms and types of
financial, business, scientific, technical, economic, or
engineering information” where: “(A) the owner thereof has
taken reasonable measures to keep such information secret;
and (B) the information derives independent economic value,
actual or potential, from not being generally known to, and
UNITED STATES V. LIEW 21
not being readily ascertainable through proper means by, the
public.” 18 U.S.C. § 1839(3) (2015).
In 2016, the latter part of this definition was amended.
The EEA now provides that to qualify as a trade secret, the
information must “derive[] independent economic value,
actual or potential, from not being generally known to, and
not being readily ascertainable through proper means by,
another person who can obtain economic value from the
disclosure or use of the information.” 18 U.S.C. § 1839(3)
(2016); Defend Trade Secrets Act of 2016, Pub. L. No. 114-
153, § 2(b)(1)(A), 130 Stat. 376, 380 (2016). This amended
definition more closely tracks the Uniform Trade Secrets
Act’s (“UTSA”) definition. See UTSA § 1(4).
This amended definition was not in effect at the time of
defendants’ indictments, trial, and convictions. Therefore,
this opinion only applies to the version of the EEA then in
effect. We do not address any impact the 2016 amendments
may have on subsequent EEA prosecutions.
B. Jury Instructions
Defendants challenge (1) the district court’s given
instruction regarding compilations, and (2) its rejection of
defendants’ proposed instructions. For the first time on
appeal, defendants argue that the compilation instruction was
erroneous because it omitted reference to a “limiting
principle” they take from a statement in UniRAM Tech., Inc.
v. Taiwan Semiconductor Mfg. Co., 617 F. Supp. 2d 938,
942–44 (N.D. Cal. 2007), that a compilation cannot constitute
a trade secret if “one skilled in the art could view the
nonsecret elements and replicate the combination without
undue difficulty.” This argument was never made to the
22 UNITED STATES V. LIEW
district court; however, it essentially mirrors defendants’
argument that the court improperly excluded their proposed
instructions, as does defendants’ contention that the error in
giving the compilation instruction was compounded by the
omission of the other instructions. Those contentions will be
addressed below.
With respect to the given compilation instruction,
defendants fail to show that the instruction was incorrect,
misleading, or inadequate. Defendants’ argument that the
instruction would allow the jury to think “that nearly anything
can be a trade secret,” is defeated by the plain language of the
instruction, which requires that any compilation meet the
requirements of the trade secret definition to be deemed a
trade secret. Defendants do not dispute this statement of law,
and in fact suggested language that was used verbatim by the
district court in this instruction. Accordingly, the district
court did not err in giving the compilation instruction.
The real dispute is whether the district court erred in
excluding defendants’ proposed instructions, particularly the
combination of the reverse engineering and general
knowledge instructions. “A defendant is entitled to have the
judge instruct the jury on his theory of defense, provided that
it is supported by law and has some foundation in the
evidence,” but a defendant is “not entitled to the instructions
of his choice.” Whittemore, 776 F.3d at 1078, 1080. On
appeal, the defendant must show: “(1) that his theory has
some foundation in evidence; (2) that it is supported by law;
and (3) that the given instructions did not adequately
encompass his theory.” Id. at 1078. Defendants challenge
the rejection of three proposed instructions but treat them as
two issues.
UNITED STATES V. LIEW 23
The first issue is the public disclosure instruction, the
omission of which defendants argue could have led the jury
to believe that information published in a patent or “obscure
trade publication” would not qualify as being “generally
known to the public.” As the government argues, although
defendants’ proposed instruction was legally correct, it was
superfluous, as the given instructions adequately covered this
issue by informing the jury that generally known or readily
ascertainable information could not qualify as trade secret
material.
Moreover, it was undisputed at trial that disclosure in
patents and textbooks would destroy trade secret protection,
with the government acknowledging during closing
arguments that both patents and textbooks are “publicly
available.” Instead, the dispute at trial was whether the
material available in TiO2-related patents and textbooks was
the same material DuPont claimed as its trade secrets and
whether the information in those patents and textbooks would
enable an individual to design a TiO2 chloride-route plant.
For example, the government argued that “[t]he [necessary]
information is not in textbooks” and that “textbooks and
patents . . . don’t help you design a titanium dioxide plant.”
Accordingly, the issue of whether patents and textbooks are
generally known to the public was not contested and was
adequately covered by the given instruction.
Defendants further argue, without citing any authority,
that it was error not to instruct the jury that disclosure “to
even a single recipient who is not legally bound to maintain
[a trade secret’s] secrecy” destroys trade secret protection
because, absent such instruction, the government was able to
argue that the Antioch/Ashtabula technology remained a trade
secret. To the extent that defendants now argue that the
24 UNITED STATES V. LIEW
district court should have given an additional disclosure
instruction stating that disclosure to a single competitor
destroys trade secret protection, this claim is subject to plain
error review. Walls, 784 F.3d at 546. This omission did not
constitute plain error, because under the EEA’s then-current
definition of trade secrets, it was not “clear” or “obvious” that
disclosure to a single competitor made information “generally
known to” or “readily ascertainable” by “the public.” Chung,
659 F.3d at 824–25 (quoting 18 U.S.C. § 1839(3) (2011))
(stating that “[t]here is some conflict between circuits as to
whether [the EEA’s definition] alters the ‘readily
ascertainable’ analysis” as compared to the UTSA and
declining to resolve the issue); see also Walls, 784 F.3d at
546 (under plain error standard of review, the error must be
“clear or obvious, rather than subject to reasonable dispute”).
Defendants’ reliance on Ruckelshaus v. Monsanto Co.,
467 U.S. 986 (1984), does not change this result. Defendants
contend that under Monsanto, DuPont’s sale of the Ashtabula
plant destroyed the trade secret status of its chloride-route
technology, and the jury should have been instructed
accordingly. Monsanto does not speak to when a trade secret
becomes “generally known to” or “readily ascertainable” by
“the public” according to the EEA. Instead, Monsanto
establishes that trade secrets are property for the purposes of
the Takings Clause of the Fifth Amendment but that a taking
does not occur when a party discloses its trade secrets to the
Environmental Protection Agency (“EPA”) knowing that the
EPA can use that information without permission after ten
years, because such use does not interfere with the party’s
“reasonable investment-backed expectations.” Id. at
1004–07. Monsanto therefore does not speak to the specific
issue of whether disclosure to one competitor makes
information generally known under the EEA, and defendants
UNITED STATES V. LIEW 25
cite no authority suggesting otherwise. Without any clear or
controlling authority addressing this question, the district
court’s omission of an additional disclosure instruction did
not constitute plain error.
The second issue is the district court’s rejection of the
reverse engineering and general knowledge instructions,
which defendants argue would have permitted the jury to find
that Maegerle permissibly “work[ed] back” from non-secret
Ashtabula technology and could have made fair use of the
“general knowledge” he gained through his employment at
DuPont to replicate the TiO2 technology, including “all the
information and experience involved in building the Kuan
Yin plant.” The parties’ arguments on this point are primarily
ones regarding the sufficiency of the evidence supporting
defendants’ trade secret convictions and therefore overlook
the only relevant question: whether the given instructions
adequately covered the defense theory. They did. The
instructions told the jury that individuals can independently
develop technology through proper means and that someone
like Maegerle is free to leave an employer and use non-trade
secret information and skills gained through that
employment. The given instructions as a whole were neither
“misleading [n]or inadequate to guide the jury’s
deliberation.” Hofus, 598 F.3d at 1174 (quoting Frega,
179 F.3d at 806 n.16).
Accordingly, the district court’s rulings on these jury
instructions are affirmed.7
7
Defendants argue for the first time in their reply brief that
“principles of law critical to the defense . . . were not addressed at all” by
the jury instructions, including the principle that “carelessness” can
destroy trade secret protection. This argument is waived. See United
26 UNITED STATES V. LIEW
C. Conspiracy and Attempt Instructions
Defendants contend that the district court’s given
instructions regarding the conspiracy and attempt
charges—Counts 1, 2, 3, and 5—constructively amended the
indictment and erroneously allowed the jury to convict on
those charges without finding that the trade secrets involved
were in fact trade secrets. Defendants waived their right to
have this argument reviewed, as they were aware of the case
law they now seek to distinguish or rely on, but they
nonetheless agreed to the given instructions. Because
defendants were “aware of the omitted element” in the
instructions (the purported requirement that the trade secret
status be proven), they “relinquished [their] right to have it
submitted to the jury.” United States v. Perez, 116 F.3d 840,
845–46 (9th Cir. 1997) (en banc) (“If the defendant has both
invited the error, and relinquished a known right, then the
error is waived and therefore unreviewable.”).
Even if this issue were reviewable, an intervening Ninth
Circuit decision resolved it. While this appeal was being
briefed, we issued our decision in United States v. Nosal,
844 F.3d 1024 (9th Cir. 2016).8 Defendants essentially
concede that Nosal establishes that the attempt and
States v. Bentson, 947 F.2d 1353, 1356 (9th Cir. 1991) (“Legal issues
raised for the first time in reply briefs are waived.”). Moreover, this issue
was adequately covered by the given instruction that trade secret owners
must take “reasonable measures” to protect trade secrets.
8
The original opinion was filed in July 2016, see United States v.
Nosal, 828 F.3d 865 (9th Cir. 2016), and was then amended and
superseded by the opinion filed in December 2016. Nosal, 844 F.3d at
1028. The portions relevant to the EEA and to this appeal were not
changed in the amended opinion.
UNITED STATES V. LIEW 27
conspiracy instructions were correct, and rightly so, because
the decision speaks directly to the question raised here. In
Nosal, the jury was instructed that for an EEA conspiracy
charge “the government need not prove the existence of
actual trade secrets and that Defendant knew that the
information in question was a trade secret,” but instead “must
prove that Defendant firmly believed that certain information
constituted trade secrets.” Id. at 1044 (internal quotation
marks omitted). The defendant argued that this instruction
“constructively amended the indictment because the
indictment allege[d] theft of actual trade secrets while the
jury instruction did not require proof of actual trade secrets.”
Id. We rejected this argument, finding that the instruction
“reflects our circuit’s precedent on conspiracy charges,”
under which “a conviction may be upheld even where the
object of the crime was not a legal possibility.” Id. at 1045.
We therefore “agree[d] with the other circuits that have
applied this same principle to trade secrets,” citing the circuit
court decisions on which the district court and the
government relied in the instant litigation. Id. (citing United
States v. Yang, 281 F.3d 534, 544 (6th Cir. 2002); United
States v. Martin, 228 F.3d 1, 13 (1st Cir. 2000); Hsu,
155 F.3d at 204). Finally, Nosal held that because the jury
had found theft of actual trade secrets, any error was
harmless. Id.
Nosal establishes that the conspiracy and attempt
instructions given here were legally correct and did not
constructively amend the indictment. Moreover, Trade Secret
1, the main trade secret referenced in the conspiracy and
attempt charges, included Trade Secrets 2 through 5, all of
which the jury found to be actual trade secrets. Because we
find the jury’s convictions on the substantive trade secret
28 UNITED STATES V. LIEW
charges to be supported by sufficient evidence, see infra, any
error in the conspiracy and attempt instructions was harmless.
D. Sufficiency of Trade Secret Evidence
Defendants argue that there was insufficient evidence to
support their convictions on the substantive trade secret
counts because the government failed to prove that Trade
Secrets 1 through 5 were in fact trade secrets. Although
defendants’ arguments sweep broadly, they relate only to
Trade Secrets 2 through 5 and to Counts 6, 7, 8, and 9, not to
Trade Secret 1 or the conspiracy and attempt convictions,
because those convictions can survive without proof that
Trade Secret 1 was in fact a trade secret.
Defendants repeatedly refer to what they call “the
Monsanto rule” in arguing that the government was required
to “prove a negative” that DuPont’s trade secrets were not
disclosed. There is no “Monsanto rule” requiring the
government to prove nondisclosure. As discussed above,
Monsanto does not stand for the principle that disclosure of
trade secret information to a competitor who is not required
to protect it destroys trade secret protection, nor has any court
read Monsanto as establishing this principle. See Monsanto,
467 U.S. at 1006–07. Defendants mischaracterize the holding
in Monsanto by quoting its statement that “[i]f an individual
discloses his trade secret to others who are under no
obligation to protect the confidentiality of the information, or
otherwise publicly discloses the secret, his property right is
extinguished.” Id. at 1002 (citing Harrington v. Nat’l
Outdoor Advert. Co., 196 S.W.2d 786, 791 (Mo. 1946) and 1
R. Milgrim, Trade Secrets § 1.01[2] (1983)). This language
was part of the decision’s discussion of whether a trade secret
should be considered property for the purposes of the Takings
UNITED STATES V. LIEW 29
Clause—it was not its holding and does not control the issue
at hand. Defendants’ reliance on United States v. Wise,
550 F.2d 1180 (9th Cir. 1977), is similarly misplaced, as that
decision dealt with the “first sale doctrine” for the purposes
of criminal copyright infringement but did not establish an
analogous doctrine for EEA prosecutions. Id. at 1188–90.
Contrary to defendants’ assertions, the government was
not required to prove that no disclosures of DuPont’s TiO2
technology occurred. Instead, it needed to establish that
DuPont took reasonable measures to guard that technology.
Defendants fail to show that the sale of the Ashtabula factory
was unreasonable, particularly under the EEA’s then-
requirement that trade secrets not be generally known to “the
public.”
Furthermore, defendants’ focus on the purported
“Monsanto rule” ignores the government’s primary theory of
prosecution, which focused on distinguishing DuPont’s low-
grade ore trade secrets from the TiO2 high-grade ore
technology used at Antioch/Ashtabula to persuade the jury
that the Ashtabula sale had no impact on whether those trade
secrets remained protected. In particular, the government
distinguished the TiO2 technology used at DuPont plants like
Edgemoor, Johnsonville, and Kuan Yin from the technology
involved at Antioch/Ashtabula. The government argued that
the case was “all about Kuan Yin,” the greenfield plant
designed more than two decades after Antioch/Ashtabula, and
“really [did not] have anything to do [with] Ashtabula,” and
it highlighted differences in the types of ores processed by
Antioch/Ashtabula as opposed to those used at DuPont’s
other facilities. Pursuant to the government’s theory, the low-
grade ore chloride-route technology used at these other plants
was the relevant trade secret material, and it was different
30 UNITED STATES V. LIEW
from and more advanced than the high-grade ore technology
used at Antioch/Ashtabula, meaning the Ashtabula sale had
no bearing on whether that material remained protected.
Sufficient evidence supported this theory. In particular,
the government presented evidence that (1) Antioch was
designed to run on high-grade ore and therefore lacked many
of the features used at Edgemoor or Johnsonville, (2) the
other DuPont facilities are designed to use “many ores,”
(3) Antioch was closed due to the high cost of high-grade ore
and it became more cost effective to use the plants designed
for lower-grade ores, (4) Sherwin-Williams and not DuPont
designed the chlorinator at Ashtabula, (5) Kuan Yin was
designed to use lower grade ore than used at
Antioch/Ashtabula, (6) the Kuan Yin design was not based on
the Antioch/Ashtabula design, and (7) the “other [DuPont]
plants have technology beyond the Antioch process.”
The government also presented evidence demonstrating
that Trade Secrets 2, 3, and 4 did not relate to Ashtabula
technology and instead concerned the Edgemoor facility and
technology developed after Ashtabula was sold. With respect
to Trade Secret 5, the 407-page document referenced the
Antioch/Ashtabula technology but also referred to DuPont’s
other facilities. Because the primary purpose of Trade Secret
5 was to make all of DuPont’s years of experience available
in one document that would enable DuPont to build the best
new plants possible without undergoing the “same learning
curve” every time, its scope extends far beyond one facility’s
technology.
In contrast to the arguments defendants present for the
first time on appeal, the evidence at trial demonstrated that
defendants and Maegerle understood this distinction. In fact,
UNITED STATES V. LIEW 31
they attempted to defend against the civil lawsuit by arguing
that they used only purportedly public Ashtabula technology
and did not misappropriate any Kuan Yin technology. Based
on the evidence demonstrating the differences between the
DuPont trade secrets and the Antioch/Ashtabula technology,
as well as defendants’ awareness of those differences, a
rational trier of fact could have found beyond a reasonable
doubt that the Ashtabula technology, whether disclosed or
not, was not the trade secret protected in Trade Secrets
2 through 5.
Ample evidence also rebutted defendants’ arguments that
non-Ashtabula technology was disclosed or generally known
through use of contractors and patents. With respect to
patents, witness testimony established that Trade Secrets
2 through 5 contained information that was not publicly
available and that the drawings and documents themselves are
not patentable and are better protected as trade secrets. The
evidence showed that Liew searched for TiO2 patents after
the civil suit was filed, rather than using them from the start,
and defendants’ expert witness conceded that he had not
found the specific documents that made up the trade secrets
or specific information within those documents in the public
domain.
With respect to DuPont’s use of contractors, the evidence
established that DuPont’s “secure eyes contractors” were
(1) carefully selected based on long-term working
relationships that demonstrated they were “trustworthy,”
(2) required to sign confidentiality agreements, (3) given
information on a “need to know only basis,” and (4) not given
flow sheets like Trade Secrets 2 and 4 or otherwise allowed
to keep materials related to DuPont’s TiO2 technology.
Defendants emphasize one witness’s testimony regarding
32 UNITED STATES V. LIEW
increased use of contractors and the length of confidentiality
agreements; however, that testimony demonstrated that the
time periods for confidentiality agreements varied according
to the contractor’s work and “the purpose of the agreement.”
Without more, this testimony did not require the jury to
conclude that DuPont failed to take reasonable measures to
guard its trade secrets.
Furthermore, the evidence supported the jury’s conclusion
that the specific details of DuPont’s chloride-route
technology were not generally known to the public. Although
“the basic concept of chlorination, oxidation, and finishing is
the same” at Ashtabula as at other chloride-route TiO2
facilities, it was the minute details and data involved in
DuPont’s technology that merited trade secret status, not the
“basic concept” of the chloride process. Based on the
evidence presented at trial, a rational juror could have found
that the Antioch/Ashtabula technology was not part of Trade
Secrets 2 through 5, that DuPont took reasonable measures to
protect its technology, and that such technology was not
readily ascertainable by or generally known to the public.
Defendants’ convictions on Counts 6, 7, 8, and 9 are therefore
affirmed.
E. Counts 10 and 11
Defendants challenge their Count 10 convictions for
conspiracy to obstruct justice in violation of 18 U.S.C.
§ 1512(c)(2), namely by agreeing to file a false answer in the
civil litigation with DuPont.9 This issue turns on whether the
9
18 U.S.C. § 1512(c) provides that anyone who “(1) alters, destroys,
mutilates, or conceals a record, document, or other object . . . with the
intent to impair the object’s integrity or availability for use in an official
UNITED STATES V. LIEW 33
aim of the conspiracy was to file a factual falsehood or
simply to make a general, legal denial of guilt. Defendants
argue that the filing of an answer in a civil case can never
constitute obstruction of justice or conspiring to do so. This
argument may go too far. It is possible, for instance, that a
misrepresentation of a material fact in a civil answer might
violate section 1512(c). “A civil judicial proceeding is
designed, in part, to determine the truth of what occurred
between the parties in a dispute. If witnesses were free to lie
whenever they believed a plaintiff’s allegations were false, it
would totally undermine the crucial mediating role of the
courts.” United States v. Burge, 711 F.3d 803, 812 (7th Cir.
2013) (false interrogatory answers made during civil
discovery process constitute obstruction of justice under
18 U.S.C. § 1512(c)(2)).
The better argument is that the statement in defendants’
answer—that they “never misappropriated any information
from DuPont or any of its locations”—is tantamount to a
general denial of legal liability. While drawing the line
between a factual false statement in an answer and such a
general denial can be difficult at times, we believe that the
statements at issue here tacked too close to a general denial
to constitute obstruction of justice. The answer could still be
relevant to other charges (such as evidence of the ongoing
proceeding; or (2) otherwise obstructs, influences, or impedes any official
proceeding, or attempts to do so” shall be subject to criminal penalties.
18 U.S.C. § 1512(k) provides that the same penalties shall apply to anyone
who “conspires to commit any offense” under § 1512.
34 UNITED STATES V. LIEW
conspiracy to hide the theft of trade secrets). But it cannot
alone support an obstruction conviction.10
Count 11, which charged Liew with witness tampering in
violation of 18 U.S.C. § 1512(b)(1), suffers from a similar
problem. The statute proscribes “knowingly us[ing]
intimidation, threaten[ing], or corruptly persuad[ing] another
person, or attempt[ing] to do so, . . . with intent to—
(1) influence, delay, or prevent the testimony of any person
in an official proceeding.” 18 U.S.C. § 1512(b). The
indictment alleged that Liew sought to influence, delay, or
prevent Liu’s testimony in the DuPont civil lawsuit when he
told Liu not to mention anything about any former DuPont
employees who worked for USAPTI because doing so would
not be good for Liu or Liu’s family. The government
introduced evidence that Liew made such a statement.
This evidence was admissible to support the trade secret
charges, as “[a]n attempt by a criminal defendant to suppress
evidence is probative of consciousness of guilt and admissible
on that basis.” United States v. Wagner, 834 F.2d 1474, 1484
(9th Cir. 1987) (alteration in original) (citation omitted)
(internal quotation marks omitted). However, this evidence,
standing alone, was insufficient to prove beyond a reasonable
doubt that Liew intimidated, threatened, or corruptly
persuaded Liu to prevent the use of his testimony in the
DuPont civil lawsuit as charged in Count 11. Viewed in its
10
The government argues that the focus on the civil answer is a “red
herring” because the answer was only one “result of the agreement, not
. . . its sole object.” In light of the indictment’s focus on Maegerle’s
emails and the filing of the answer, as well as the district court’s
instruction highlighting the filing of the answer as the crux of the charge,
this argument is unpersuasive.
UNITED STATES V. LIEW 35
most damning light under Jackson, 443 U.S. at 319, the
evidence shows that Liew provided the same advice that
many criminal attorneys would in that situation—to not
discuss the matter with anyone, and to risk otherwise could
have bad effects on one’s family. Sometimes the best advice
for a potential criminal defendant is not to talk to anyone
about anything, and Liew’s words appear little more than
that. Accordingly, we reverse defendants’ convictions on
Count 10 and Liew’s conviction on Count 11.
F. Spitler Notes Issue
Finally, Liew argues that the district court erred by not
requiring the prosecution to disclose the rough notes of the
FBI’s interviews with deceased co-conspirator Tim Spitler.
While “mere speculation about materials in the government’s
files” does not require a court to make the materials available
for defense inspection, United States v. Mincoff, 574 F.3d
1186, 1200 (9th Cir. 2009) (citation omitted) (internal
quotation marks omitted), Liew had more than mere
speculation—he had the declaration of Spitler’s attorney,
David Houston. In light of this declaration, defendants
carried their “initial burden of producing some evidence to
support an inference that the government possessed or knew
about material favorable to the defense and failed to disclose
it.” United States v. Price, 566 F.3d 900, 910 (9th Cir. 2009).
Although the errors and inconsistencies in the declaration
provided by Houston cast some doubt on the declaration’s
reliability, defendants’ burden was a low one, and the
declaration sufficed to “support an inference” that the rough
notes contained favorable material. Id. Because the
prosecution did not disclose the rough notes, it did not meet
its burden of demonstrating that it “satisfied [its] duty to
36 UNITED STATES V. LIEW
disclose all favorable evidence known to [it].” Id.Furthermore, if the rough notes referenced the statements that
Houston averred Spitler made during the interviews, that
material could be “sufficient to ‘undermine confidence’ in the
verdict.” Wearry v. Cain, 136 S. Ct. 1002, 1006 (2016) (per
curiam).
Therefore, we vacate the district court’s order denying
defendants’ request for production of the rough notes and
remand to the district court for in camera review of the
material “to determine whether disclosure of the notes might
have affected the outcome of the trial.” United States v.
Dupuy, 760 F.2d 1492, 1503 (9th Cir. 1985) (remanding for
in camera review of prosecutor’s notes that she believed to be
Brady material). We express no view on whether the notes,
in fact, contain any exculpatory, impeaching, or even
admissible or relevant material—we leave that to the district
court to decide in the first instance.11
AFFIRMED IN PART, REVERSED IN PART, and
VACATED AND REMANDED IN PART
11
Because this matter must be remanded for resentencing in light of
the reversed convictions, we do not reach the issue of whether the district
court erred in calculating loss for the purposes of sentencing. Instead, we
vacate the sentence imposed and remand for resentencing.