After Broadcom brought the case to the feds in 2003, a Santa Clara County judge stayed the company's civil suit against Shiah while the criminal prosecution -- brought under the feds' relatively new economic espionage law -- unfolded over the years, thus depriving the company of a chance at a speedy injunction or settlement. Deciding whether to notify federal law enforcement about suspected trade secret theft -- or to keep the matter in civil court -- is tough for tech companies, lawyers say. Calling the FBI means giving up control -- and could eventually lead to sensitive information entering the public sphere, said Baker & McKenzie's Scott Frewing, a former federal prosecutor who advises companies. Yet for all the risk, sparking a criminal probe can have some advantages, said James Pooley, a commercial litigator at Morrison & Foerster who has represented Broadcom on matters other than Shiah. 'If you serve someone with a lawsuit, that doesn't have the same impact as when people with guns come into their business and serve a search warrant,' Pooley said. 'I mean, it gets their attention.' Shiah made copies of all his Broad-com computer files when he left for Marvell, but the government could not prove he ever used any trade secret material to benefit his new employer. The engineer's file copying could very well translate into civil liability, Carter ruled, but was not economic espionage beyond a reasonable doubt. While portions of the 1996 espionage law criminalize contact with foreign entities, other sections deal with more straightforward trade secret theft between domestic companies. 'If the court found Shiah guilty without more evidence to support his intent, employees might avoid movement between companies due to the risk of prosecution arising from information carried with them, either in their minds or in physical form,' Carter wrote. It is this point that especially animates Shiah's attorney, Thomas Nolan, of Nolan, Armstrong & Barton in Palo Alto. 'What I see this as is a large company not taking on their responsibility to appreciate an individual's right to move from one employer to another in California,' Nolan said. Marvell fired Shiah after Broadcom leveled its accusations, Nolan said. San Francisco-based O'Melveny & Myers partner Darin Snyder, who represented Broadcom, declined to comment. According to Carter, Broadcom 'barely' met the standard for reasonableness in terms of the steps it took to protect its trade secrets. And the company could have taken other actions which may have stopped events well short of a federal prosecution, Carter wrote. Broadcom managers merely needed to inspect Shiah's company-issued laptop before he left to discover he copied thousands of files. Then they could have confronted him. 'If Shiah's supervisor had been present at his exit interview, he could have asked Shiah specific questions about specific documents,' Carter wrote. 'If Shiah had lied, this court would have all the evidence it needs to convict.' According to Pooley, in civil proceedings, a company has many options to keep a lid on sensitive information: Unlike in criminal court, the company can opt for mediation, or try to seal documents. Pooley thinks companies underreport trade secret theft to law enforcement, partly because they are embarrassed and don't want the world to know theft has occurred. 'A lot of laundry gets washed in public in that process,' he said. Carter also highlighted the 'dangers' inherent when the government decides to swallow information from a private corporation without enough investigation of its own. 'In a highly competitive market,' Carter wrote, 'there is strong incentive for a private entity to present evidence to the government in the light most favorable to that entity, rather than viewing the evidence objectively.' Prosecutors may face significant pressure from the company to move on a case, he wrote. 'If such an approach is condoned, then criminal investigations may fall substantially in the hands of civil organizations, and the prosecutorial role may become tainted.'