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Trade Secrets

  • Patents are from Mars, Trade Secrets are From Venus
    Back in ancient times, in this case 1990, John Gray, an obscure “relationship counselor” with a correspondence degree in psychology, was perplexed. The communication problems of the heterosexual couples he worked with were so serious that he couldn’t explain them by individual circumstances. His clients seemed to be talking past ... Read More
    Source: IP Watch DogPublished on 2020-07-26By James Pooley
  • This Trade Secret Suit Doesn’t Infringe on Free Speech
    Can defendants use anti-SLAPP statutes to dismiss meritorious trade secrets misappropriation lawsuits?  A recent decision by the Fifth District Court of Appeals in Dallas suggests not. Numerous states have passed some form of anti-SLAPP legislation to prevent parties from using litigation as a tool to silence individuals from exercising their ... Read More
    Source: OrrickPublished on 2020-07-25By D. Julie Lee
  • ‘Improper Means’: The Eleventh Circuit’s Very Dubious Trade Secrets Decision in Compulife Software v. Newman (Part II)
    Part 1of this article addressed the Eleventh Circuit’s decision in Compulife Software, Inc. v. Newman, __ F.3d __, 2020 WL 2549505, (11th Cir. May 20, 2020) and the court’s dubious conclusion that information “scraped” from a public website could be a trade secret. In particular, on this issue, the court ... Read More
    Source: IP Watch DogPublished on 2020-07-14By Peter J. Toren
  • Artificial Intelligence Can’t Patent Inventions: So What?
    The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical ... Read More
    Source: IP Watch DogPublished on 2020-07-13By Stephanie Skaff
  • A Dubious Decision: Eleventh Circuit Finds Scraping of Data from a Public Website Can Constitute Theft of Trade Secrets (Part I)
    Much has already been written in a relatively short period of time since the Eleventh Circuit decided Compulife Software, Inc. v. Newman, __ F.3d __, 2020 WL 2549505, (11th Cir. May 20, 2020). However, such commentaries have not addressed whether this decision is legally supportable and whether other circuits should ... Read More
    Source: IP Watch DogPublished on 2020-07-03By Peter J. Toren
  • The $740 Million Jury Question: Massive Trade Secrets Award Overturned Because of Erroneous “Improper Means” Instruction
    The right to a jury trial is one of the most important features of modern trade secrets law.  But as a recently issued Order from the Texas Fourth Court of Appeals (“Court of Appeals”) illustrates, the jury trial right is only as good as the jury instructions that execute that ... Read More
    Source: OrrickPublished on 2020-06-25By Shawn N. Butte
  • Has China Finally Embraced Robust Trade Secret Protection?
    It happened to Japan in the 1950s. Then it happened to Taiwan, and then Korea. Rapidly-developing countries started out relying on copying foreign technologies to drive their economies. But as growth increased and investments in education led the way to domestic innovation, each country found that a framework of strong ... Read More
    Source: IP Watch DogPublished on 2020-06-14By James Pooley
  • Commentary Sheds Light on Appropriate Level of Detail for Plaintiffs in Misappropriation Cases
    This May was the fourth anniversary of the Defend Trade Secrets Act (DTSA), signed into law by President Obama on May 11, 2016. The DTSA does not preempt state laws and plaintiffs can still bring cases under their state’s trade secrets law, but the DTSA has played a big role ... Read More
    Source: OrrickPublished on 2020-06-11By Jason K. Yu
  • WIPO Revises and Expands AI Policy Issues
    The World Intellectual Property Organization (WIPO) has published a Revised Issue Paper on Artificial Intelligence and IP Policy. The Revised Issues Paper updates the Draft Issues Paper published in December 2019 with the addition of a glossary and sections on trademarks and trade secrets, and an expansion of the sections ... Read More
    Source: IP Watch DogPublished on 2020-06-02By James Nurton
  • To Disclose Or Not to Disclose: Responding to Trade Secrets Misappropriation By an Employee
    An employee comes to you with a recipe for your competitor’s “secret sauce.” You know she worked for your competitor before coming to work for you. How do you respond? It’s an important question, because it may go to the core integrity of your organization and because exploring this trade ... Read More
    Source: IP Watch DogPublished on 2020-06-01By Rebecca Edelson
  • If trade secrets misappropriation claims can be brought by non-owners, what should companies do to manage risk?
    Last week, we examined the recent Third Circuit decision in Advanced Fluid Systems, which held that a trade secrets plaintiff did not need to be an owner or a licensee of the alleged trade secrets to bring a state law misappropriation claim under Pennsylvania’s UTSA—all that was required was that ... Read More
    Source: OrrickPublished on 2020-05-21By Caroline Simons
  • Trade Secret Litigation Reports: Four Years After the Enactment of the Defend Trade Secrets Act
    On May 11, 2016, President Obama signed into the law the Defend Trade Secrets Act (DTSA) which extended the Economic Espionage Act of 1996 (EEA), which provides a broad basis for civil federal jurisdiction for the theft of trade secret thefts. Thus, trade secret owners can sue in federal court ... Read More
    Source: IP Watch DogPublished on 2020-05-18By Peter J. Toren
  • Spoliation by Self-Driving Startup Leads to Terminating Sanctions
    During the course of a trade secrets litigation, neglecting to preserve electronically stored information (“ESI”) may result in a finding of spoliation. In a recent Order issued by Judge Edward Davila (United States District Court, Northern District of California), two startups in the autonomous vehicle industry, WeRide and AllRide, learned ... Read More
    Source: OrrickPublished on 2020-05-15By Shawn Butte
  • Trade Secret Ownership: Possession is Nine-Tenths of the Law
    When a plaintiff asserts claims of trade secret misappropriation, it must own the underlying trade secrets, right? Wrong. According to the Third Circuit’s April 30, 2020 decision in Advanced Fluid Systems, Inc. v. Huber, under state law, the plaintiff only needs to prove lawful possession. In 2009, Advanced Fluid Systems, ... Read More
    Source: OrrickPublished on 2020-05-11By Howard Ullman
  • USTR Special 301 Report and Review of Notorious Markets Highlight Continued Concerns with China
    On April 29, the Office of the U.S. Trade Representative (USTR) released its 2020 Special 301 Report on Intellectual Property Protection and its 2019 Review of Notorious Markets for Counterfeiting and Piracy. The Report identifies countries and IP-related market access barriers and steps necessary to address those barriers. Section I of the ... Read More
    Source: IP Watch DogPublished on 2020-05-04By Rebecca Tapscott
  • Ajaxo v. E*Trade: How (Not) to Prove a Reasonable Royalty for Trade Secret Misappropriation
    The latest appellate decision in the nearly 20-year legal battle between Ajaxo and E*Trade highlights the importance of expert discovery and a well-developed trial court record for a plaintiff attempting to claim reasonable royalties for trade secret misappropriation. The saga between Ajaxo and E*Trade began back in the late 1990s, ... Read More
    Source: OrrickPublished on 2020-05-01By Glenn Dassoff
  • The Transmissibility of Information: How Your Trade Secrets Are Like a Virus
    If you run a business that depends on data to drive success — and what business doesn’t these days? — this tendency of information assets to escape is a major, perhaps existential, risk. Given that those assets are handled by human beings, the management challenge can feel a lot like ... Read More
    Source: IP Watch DogPublished on 2020-04-29By James Pooley
  • Joint Ventures & COVID-19: How to Protect Trade Secrets when Partnering with Competitors to Meet PPE and Ventilator Demand
    COVID-19 has presented countless challenges, among them, the extraordinary need—and conversely, extreme shortages—of basic protective gear, ventilators, and personal protective equipment (“PPEs”) for healthcare professionals and essential businesses.  With these challenges come a myriad of opportunities for companies to develop, engineer, and deploy novel ways to address the shortage.  Possible ... Read More
    Source: OrrickPublished on 2020-04-14By Jacob M. Heath
  • Does the Inevitable Disclosure Doctrine Apply Under the DTSA? It Depends on the State.
    The Defend Trade Secrets Act (“DTSA”) went into effect in May 2016. Since then, federal courts have largely adhered to existing law in their respective states to determine whether the inevitable disclosure doctrine applies to DTSA claims. This article provides a sampling of existing opinions that have either permitted or ... Read More
    Source: OrrickPublished on 2020-04-02By Alex Fields
  • Protecting IP in a COVID-19 Remote-Work-World
    Even before the COVID-19 pandemic, many employers offered remote work options. Now employers all over the world are encouraging or requiring their employees to work remote from home. This means employees are accessing, maintaining, and sharing proprietary information outside of the office more frequently than ever before, thereby increasing the ... Read More
    Source: OrrickPublished on 2020-03-27By Michael Weil
  • Do Your Homework: Keeping Trade Secrets Safe While Working Remotely
    An essential element of trade secret protection is that the owner has made “reasonable” efforts to keep the information a secret. But as the Uniform Trade Secrets Act tells us, those efforts must be reasonable “under the circumstances.” When circumstances change, as they have recently, we need to recalibrate. In ... Read More
    Source: IP Watch DogPublished on 2020-03-26By James Pooley
  • In Pursuit of Chinese Trade Secret Theft: Fresh Allegations Against Huawei and Chinese Military Grabs 145 Million SSNs
    Loyal readers are familiar with the DOJ’s “China Initiative,” launched in November 2018 to prosecute the theft of U.S. trade secrets by or for Chinese interests. Attorney General Barr reaffirmed the DOJ’s commitment “to combat the threat posed by theft directed and encouraged by the PRC” in an address at ... Read More
    Source: OrrickPublished on 2020-03-10By Catherine Y. Lui
  • The Fragile Nature of Trade Secrets: Clues from the Courts on How to Keep Them
    Trade secrets have become an increasingly valuable asset to many companies, but compared to other types of intellectual property, including patents, copyrights and trademarks, they are extremely “fragile,” and require that an owner undertake as many steps as possible to protect their information and be vigilant about the need to ... Read More
    Source: IP Watch DogPublished on 2020-03-01By Peter J. Toren
  • You Own It, Now What Are You Going to Do with It? – Why Trade Secrets Are Treated Like Property: Part 2
    In last month’s post, Part 1 of this series, we considered the view of European academics that trade secrets are not “intellectual property” because they don’t give the power to exclude others, like patents, copyrights and trademarks do. But considering that trade secrets are treated throughout the world like a ... Read More
    Source: IP Watch DogPublished on 2020-02-26By James Pooley
  • The China Initiative: Combating Economic Espionage and Trade Secret Exfiltration
    Open innovation is a key ingredient to the development of valuable intellectual property. Research institutions, universities, and private businesses work in close collaboration with one another, sharing confidential business information, processes, and trade secrets in order to create content. But while open innovation is a boon to creativity it is ... Read More
    Source: IP Watch DogPublished on 2020-02-09By Luke Cass
  • Review of Key 2019 Trade Secret Decisions and Trends (Part II)
    Part I of this series covered (1) Food Marketing Institute v. Argus Leader Media, 139  S.Ct. 2356 (2020) in which the Supreme Court held that commercial or financial information that is customarily and actually treated as private by its owner and provided to the government under an assurance of privacy ... Read More
    Source: IP Watch DogPublished on 2020-01-26By Peter J. Toren
  • Seven Steps to Address Trade Secret Misappropriation by Whistleblowers
    The primary purpose of the Defend Trade Secrets Act (DTSA) is to provide federal remedies to individuals and companies that have had their trade secrets misappropriated. That is not, however, its sole purpose. One of the DTSA’s more controversial provisions actually protects certain alleged misappropriators by precluding DTSA liability when ... Read More
    Source: IP Watch DogPublished on 2020-01-22By Callan Stein
  • It’s About Control, Not Exclusion: Why Trade Secrets Are Treated Like Property, Part 1
    Sometimes it seems that trade secrets are always fighting for respect. I recently ran into a friend who teaches at a European university. He somehow found a way to squeeze into the conversation a pronouncement: “You know, trade secrets are not property.” Stay with me; this gets interesting. I sighed, ... Read More
    Source: IP Watch DogPublished on 2020-01-22By James Pooley
  • Trade Secrets Review: Key 2019 Decisions and Trends (Part I)
    In general, a trade secret is any information used in business if the owner has taken reasonable measures to keep such information secret, and the information derives independent economic value, from not being generally known to, and not being readily ascertainable through proper means by the public. Almost every state ... Read More
    Source: IP Watch DogPublished on 2020-01-21By Peter J. Toren
  • FTC Holds Workshop Examining Potential for Regulation of Non-Compete Agreements
    After a busy year for non-compete regulation at the state level, the Federal Trade Commission (FTC) held a public workshop last Thursday in Washington D.C. to examine the legal basis and economic support for a contemplated FTC rule restricting the use of non-compete clauses in employment agreements. A link to the ... Read More
    Source: OrrickPublished on 2020-01-15By Shawn Butte