Trade Secrets

Mallet v. Lacayo: Why a Trade-Secret Injunction Collapsed for Lack of Specificity

The Third Circuit vacated a baking-supply injunction because the district court never said precisely what the protected trade secrets were — a cautionary tale about identifying the secret before enjoining anyone.

July 7, 2025
Industrial bakery production line with bread moving along a conveyor
A fight over industrial baking release agents turned on whether the secrets were ever actually identified. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Mallet & Co. Inc. v. Lacayo, 16 F.4th 364, Nos. 20-3584, 21-1028 & 21-1029 (3d Cir. Oct. 15, 2021), the Third Circuit vacated a preliminary injunction in a Defend Trade Secrets Act case for a reason that should give every plaintiff pause: after a multi-day hearing, the district court still had not identified, with the necessary specificity, what the trade secrets actually were. The opinion is the doctrinal companion to the same court’s pleading-stage decision in Oakwood Laboratories v. Thanoo, but it pulls in the opposite procedural direction — showing that the latitude a plaintiff enjoys at the motion-to-dismiss stage hardens into a real burden of precision once it seeks the extraordinary remedy of an injunction.

The dispute arises from what the court called a “ferociously competitive” corner of the food industry: release agents, the specialized lubricants applied to pans and equipment so that industrial baked goods separate cleanly. Mallet & Co. is a longtime supplier of those agents. Two of its senior people — Russell Lacayo and Michael Galletti — left to help a competitor, Bundy Baking Solutions, stand up a rival release-agent business, and Mallet alleged they carried away hundreds of documents containing formulas, technical data, customer information, and the like. Mallet sued under the DTSA and state law and won a preliminary injunction from the Western District of Pennsylvania. The Third Circuit vacated it and sent the case back.

At a glance

  • Case: Mallet & Co. Inc. v. Lacayo, 16 F.4th 364, Nos. 20-3584, 21-1028 & 21-1029 (3d Cir. Oct. 15, 2021), vacating a preliminary injunction from the Western District of Pennsylvania.
  • Industry: Industrial baking “release agents” — pan lubricants used in commercial baking.
  • Defendants: former Mallet employees Russell Lacayo and Michael Galletti, and the competing Bundy release-agent venture.
  • Statute: Defend Trade Secrets Act, 18 U.S.C. § 1836 et seq., alongside parallel state trade-secret law.
  • Core holding: A court cannot evaluate likelihood of success — or craft an injunction — until the plaintiff has identified its trade secrets with sufficient specificity; thirteen broad categories of “protected” material did not suffice.

The specificity requirement as a gating question

The Third Circuit’s central move is to treat trade-secret identification as a threshold the plaintiff must clear before any of the familiar injunction analysis can even begin. As the court put it, “we cannot evaluate whether a plaintiff is likely to succeed on any element of a trade secret misappropriation claim until the plaintiff has sufficiently described those trade secrets.” Identification is not one factor among many; it is the predicate for assessing the merits, the scope of relief, and whether the information is genuinely secret at all.

The district court had found thirteen broad categories of protected information — among them formulas, manuals, ingredient lists, customer purchase orders, pricing data, supply sources, and internal discussions of customer preferences. The Third Circuit held that these category labels were too coarse to do the work. Many of the categories could sweep in material that is publicly available, generally known in the trade, or part of an employee’s general skill and experience. Without knowing which specific formulas, which particular technical parameters, or which non-public compilations were claimed, neither the court nor the defendants could tell what was actually being protected — and an injunction built on that foundation necessarily risked enjoining the use of lawful knowledge.

Why categories are not enough

The opinion offers practical guideposts that have since become standard citations. Identifying broad categories of business and technical information will not suffice. An identification is likely inadequate if it is so sweeping that it necessarily includes publicly available information or general industry knowledge. And for technical secrets such as chemical formulas, a plaintiff should point to the particular characteristics — the specific combinations, ratios, or process conditions — that give the information independent economic value and are not readily ascertainable.

The reasoning reflects a deeper concern about remedy. A preliminary injunction in a trade-secret case typically restrains a former employee’s ability to work and a competitor’s ability to operate. If the protected subject matter is defined only by category, the injunction’s reach is undefined too, and a defendant cannot know what conduct is forbidden. The court tied the specificity requirement to the fairness and enforceability of the resulting order, not merely to the abstract elements of the claim. An overbroad identification produces an overbroad injunction, which in this competitive market threatens to convert legitimate competition and ordinary employee mobility into contempt exposure.

The interaction with employee mobility

Mallet sits at the intersection of trade-secret protection and the right of skilled employees to change jobs. The defendants were experienced release-agent professionals; much of what they knew was their own accumulated expertise. The Third Circuit’s insistence on specificity is, in part, a mechanism for separating genuinely proprietary compilations and formulas from the general knowledge employees are entitled to take with them. By demanding that Mallet pinpoint its secrets, the court forced the litigation to confront whether the alleged secrets were truly non-public — rather than allowing a broad injunction to chill lawful competition by default. On remand, the burden fell back on the plaintiff to articulate, secret by secret, what it was protecting and why each item qualified.

Open questions

The opinion sets a standard but leaves its edges to be worked out case by case. How granular must identification be — does a plaintiff have to disclose the formula itself, or is a sufficiently detailed description enough to satisfy specificity without forfeiting secrecy? How should courts handle compilations, where the claimed secret is the particular selection and arrangement of individually public data points? And procedurally, at what stage must identification crystallize — the complaint, the preliminary-injunction hearing, or a court-ordered identification statement before discovery? Mallet makes clear that vague categories fail at the injunction stage, but it does not fix a single moment or format for the required precision, and district courts continue to vary in how and when they demand it.

Implications

  • Identify before you enjoin. Specific identification of each claimed trade secret is a precondition to evaluating likelihood of success and to issuing an injunction.
  • Categories will not carry the day. “Formulas,” “customer information,” and similar labels are too broad; they risk sweeping in public or general knowledge.
  • Pinpoint the value-conferring details. For technical secrets, identify the specific characteristics that make the information valuable and not readily ascertainable.
  • Overbroad identification yields unenforceable orders. An injunction can only be as definite as the secrets it protects, so vagueness is fatal to relief.
  • Respect the mobility line. Specificity is the tool courts use to separate protectable secrets from the general skill departing employees may lawfully use.

Frequently asked questions

What did the plaintiff do wrong in Mallet? It defined its trade secrets only by broad category — formulas, manuals, customer data, and the like — rather than identifying the specific information claimed. The Third Circuit held that the district court could not assess the merits or fashion an injunction without a more precise identification.

Does a plaintiff have to reveal the secret formula to satisfy this standard? Not necessarily. The court required specificity sufficient to identify what is protected and to show it is not publicly available; a detailed description of the value-conferring characteristics can satisfy that without publicly disclosing the secret itself.

Is Mallet limited to preliminary injunctions? The decision arose at the injunction stage, where the specificity demand is acute because relief restrains conduct. Its logic — that you must identify the secret before evaluating the claim — also informs how courts approach identification later in a case.

Authorities and sources