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Trade Secrets

  • To Patent or Not to Patent? Preserving Trade Secret Status During Prosecution
    Amid a growing body of unsettled law regarding the patentability of software and business methods patents, companies are increasingly choosing to maintain their valuable innovations as trade secrets rather than risk a rejected patent application. There are pros and cons to both forms of intellectual property protection. However, the decision ... Read More
    Source: OrrickPublished on 2018-12-11By Amy Van Zant
  • Titanic Texas Trade Secrets Verdict Contested as Colossal Collusion
    A $700 million jury award for trade secrets misappropriation and fraud is the product of a collusive scheme to deceive the jury, claims title insurance and valuations provider Amrock, formerly known as Title Source, in its recent bid for a new trial. The blockbuster award to technology start-up HouseCanary arose ... Read More
    Source: OrrickPublished on 2018-12-05By Harry Moren
  • The Role of Stupidity in Trade Secrets
    Although every case had its own special facts reflecting unique personalities, technologies and business models, one necessary element was present in every single case. Somebody had done something stupid. And they still do. Sometimes it’s about what people do when getting ready to leave their job and go into competition. ... Read More
    Source: IP Watch DogPublished on 2018-12-02By James Pooley
  • Proprietary Techniques vs. Employee Rights: The struggle to balance competing interests
    It’s football season, so of course we should be talking about beer. Specifically, beer secrets. For fourteen years James Clark had an enviable job at Anheuser-Busch, where he had access to the brewer’s confidential recipes. For unexplained reasons he resigned. Instead of joining a competitor, he went to see a ... Read More
    Source: IP Watch DogPublished on 2018-11-25By James Pooley
  • One Step Away from Uniform: Taking a Closer Look at Massachusetts’ New Trade Secrets Law
    As we reported in August, Massachusetts became the penultimate state to enact the Uniform Trade Secrets Act (UTSA), leaving New York as the sole remaining holdout. Massachusetts’ new law, which took effect October 1, 2018, significantly expanded the state’s existing trade secrets law by broadening protections for trade secret owners ... Read More
    Source: OrrickPublished on 2018-11-21By Yekaterina Reyzis
  • Secrets of Social Media: Who owns social media accounts?
    Andy Bitter, a former sports journalist covering the travails and triumphs of the Virginia Tech football team, was sued last month by his former employer, a local newspaper, for trade secret theft. According to the plaintiff Roanoke Times he was obligated by the company’s employee handbook to turn over all ... Read More
    Source: IP Watch DogPublished on 2018-11-12By James Pooley
  • Intent to Use is Sticking “Pointe” In Denial of Preliminary Injunction
    On October 25, the U.S. District Court for the District of Massachusetts denied motions for injunctive relief in a case involving trade secrets allegedly stolen by a departing consultant using his personal computer to sync with the company’s Dropbox.  This case established (1) Massachusetts’ newly enacted Uniform Trade Secrets Act ... Read More
    Source: OrrickPublished on 2018-11-06By Johanna Jacob
  • Trade Secrets: Intellectual Property Considerations and Guidance for Start-Ups
    Trade secret holders must take reasonable precautions to maintain the secrecy of their secrets, such as keeping such information on a “need-to-know” basis. Companies should have clear IP, confidentiality, and employment agreements describing which types of information are considered trade secrets. These agreements should also describe an employee’s responsibility for ... Read More
    Source: IP Watch DogPublished on 2018-11-03By Chris Kokoska
  • T-R-NO: Nevada District Court Denies Motion for TRO Despite Evidence of Mass Download of Company Files and Steps Taken to Cover Tracks
    Our readers have seen enough of our blog posts to be familiar with the classic ex-employee trade secrets theft scenario:  employee downloads confidential files to his personal computer; employee attempts to cover his tracks with deletions of those files; employee resigns from the company to work for a competitor. When ... Read More
    Source: OrrickPublished on 2018-10-26By Michael Weil
  • Fishing for ESI
    When National Fish and Seafood’s (NFS) head of research left for a new opportunity at Tampa Bay Fisheries, she may not have taken just her talents to the competition.  According to NFS’ lawsuit, the former employee transferred thousands of files containing confidential and proprietary information prior to her departure from ... Read More
    Source: OrrickPublished on 2018-10-20By Glenn Dassoff
  • Don’t Rock the Boat: Eleventh Circuit Sinks Boatmaker’s Trade Secrets Claims Against Rival
    On August 7, 2018, the Eleventh Circuit affirmed summary judgment in favor of defendant in Yellowfin Yachts v. Barker Boatworks, LLC. Sending the rival high-end boatmakers back to shore after a two-year dispute, the Eleventh Circuit concluded, among other things, that plaintiff had not done enough to maintain the secrecy ... Read More
    Source: OrrickPublished on 2018-10-11By Roland Chang
  • In Hawaii, “Aloha” May Mean Both Hello and Goodbye, But When Employees Leave, Who Owns the Customer Relationships?
    As we’ve observed over the years, when addressing trade secrets claims based on customer lists, courts have landed all over the place. These cases involve difficult questions such as when an employee develops relationships on behalf of Company A but then leaves for Company B, who “owns” those relationships? A ... Read More
    Source: OrrickPublished on 2018-09-29By Howard Ullman
  • Trade Secret Sparks Beer Brawl in the Ninth Circuit: When is Your Word Enough?
    On September 13, the Ninth Circuit heard oral arguments on an issue of first impression in Anheuser-Busch Cos. v. James Clark, No. 17-15591 (9th Cir. 2015). Anheuser-Busch filed a complaint in the Eastern District of California against former employee James Clark, alleging that he violated California’s Uniform Trade Secrets Act ... Read More
    Source: OrrickPublished on 2018-09-22By Toni K. Lambert
  • #SecretTweets: Protecting Social Media as a Trade Secret?
    Social media today connects people more than ever. It can be a means to bring together long-lost friends, new acquaintances, and love interests, or the public with celebrities, sports teams, new products, and companies—to name just a few. It can be an effective way to market images and products, as ... Read More
    Source: OrrickPublished on 2018-09-08By Michael Weil
  • Massachusetts Enacts New Reforms on Noncompetes, Becomes 49th State to Enact UTSA
    Just two days after TSW’s inaugural post, we brought you news of Texas becoming the 48th state to enact some form of the Uniform Trade Secrets Act (UTSA). Now, roughly five years and one federal trade secrets statute later, Massachusetts has become the 49th state, leaving New York as the ... Read More
    Source: OrrickPublished on 2018-08-28By James McQuade
  • Banking on Standard Operating Protocols as Trade Secrets
    In a testament to the wide breadth of potential trade secret protection to any number of industries, a court in the Western District of Washington denied a 12(b)(6) motion to dismiss Seattle Sperm Bank’s (SSB) DTSA and Washington Uniform Trade Secrets Act claims against its prior employees who set up a ... Read More
    Source: OrrickPublished on 2018-08-21By Denise M. Mingrone
  • OPEN SECRETS: Can Business Methods Based on Blockchain Technology Constitute Trade Secrets?
    Several months ago, we reported on the potential to protect trade secrets by encrypting information using blockchain technology.  Then, earlier this month, we reported on an order out of the Southern District of California involving “CryptoKitties,” a decentralized application (or “DApp”) built on the Ethereum blockchain (using the ERC721 protocol) ... Read More
    Source: OrrickPublished on 2018-08-13By Alex Fields
  • Trade Secret Thief Hid Files In Digital Photo Of Sunset
    An alleged thief caught stealing trade secrets from General Electric in New York hid the electronic files inside an innocent-looking digital picture of a sunset, according to the United States Department of Justice. ... Read More
    Source: IP WatchPublished on 2018-08-02By William New
  • Kittens, Stephen Curry, and Cryptocurrency: This Trade Secrets Case Has It All.
    What do kittens, three-time NBA Finals champion Stephen Curry, and cryptocurrency have in common? On May 7, 2018, a subsidiary of Launch Labs, a Canadian corporation doing business as Axiom Zen, released cryptocollectibles called “CurryKittens.”  Cryptocollectibles are unique, digital tokens created using blockchain technology.  The CurryKittens, a type of Cryptocollectible, ... Read More
    Source: OrrickPublished on 2018-08-01By Mark Mermelstein
  • How Intellectual Property Informs the Investment in a Private Equity Transaction
    Technology and intellectual property (IP) have become vital components to virtually every business in all industries as they often drive the value and efficiencies of a business and enable companies to monetize their products and services. In order to capitalize on this trend, private equity (PE) investors are making significant ... Read More
    Source: IP Watch DogPublished on 2018-07-31By Shelley Thomas
  • The Blades Just Keep Spinning
    Sinovel encouraged him to leave AMSC, promising to pay him a million dollars over five years (along with an apartment, and, reportedly, a prostitute). His advance was only 15,000 euros, but it did the trick. Karabasevic resigned, but his supervisor asked him to stay on for a while, with full ... Read More
    Source: IP Watch DogPublished on 2018-07-30By James Pooley
  • Failing to Prepare Is Preparing to Fail
    A recent case from the Federal Circuit upholding a jury’s finding in favor of defendant offers lessons to both defendants and plaintiffs on preparing for trade secrets misappropriation actions. Both plaintiff, Raytheon, and defendant, Indigo, are companies in the infrared imaging equipment business. Of the four Indigo founders, three of ... Read More
    Source: OrrickPublished on 2018-07-28By Mona Amer
  • Reports Shows Significant Increase in Trade Secret Litigation Since Passage of DTSA
    The Lex Machina report supports the notion that trade secret litigation has ramped up in U.S. district courts in the time since the passage of the DTSA. Between 2009 and 2016, trade secret suit filings generally remained within a range of 860 cases per year and 930 cases per year. ... Read More
    Source: IP Watch DogPublished on 2018-07-27By Steve Brachmann
  • UPDATE: Home Remedies Remain Best Medicine for Politically Charged IP Theft
    In July 2018, a federal judge in Wisconsin imposed a $1.5 million penalty—the maximum statutory fine—against Chinese wind turbine manufacturer, Sinovel Wind Group Co. Ltd., for stealing trade secrets from Massachusetts-based technology company, AMSC Inc. In addition to the fine, Sinovel was sentenced to 1 year probation and ordered to ... Read More
    Source: OrrickPublished on 2018-07-21By James McQuade
  • Trade Secrets: Contempt proceedings put miscreant in jail for failure to provide information about misappropriation
    The Court also made an order that Mr Xu must surrender his passport until the disclosure order had been complied with. Mr Xu failed to comply with the disclosure order and was subsequently found to be in contempt of court. The post Trade Secrets: Contempt proceedings put miscreant in jail ... Read More
    Source: IP Watch DogPublished on 2018-07-20By Robert Williams
  • When Friend Turns Foe: The Risks of Sharing Trade Secrets during M&A Negotiations
    In the world of election politics, arms-length dealing with political adversaries is a delicate dance.  Recently, TargetSmart, a Democratic data firm learned how risky even negotiating with those on the same side of the aisle can be.  On June 28, 2018, TargetSmart filed a complaint in the District Court of ... Read More
    Source: OrrickPublished on 2018-07-13By Mike Delikat
  • Engineering a DTSA Claim: District Court Allows Broad Allegations to Survive Motion to Dismiss
    The strange contraption in this photo is at the heart of a recent decision regarding the pleading standard for DTSA claims.  On June 15, Eastern District of Pennsylvania Judge Juan Sanchez denied a motion to dismiss counts of trade secret misappropriation against Joshua Andrew Adams, a former project engineer for ... Read More
    Source: OrrickPublished on 2018-07-03By Glenn Dassoff
  • A New Month, a New Compliance Deadline in the European Union: What Businesses Need to Know About the EU Trade Secrets Directive
    Just days after the European Union’s widely-discussed new data privacy regulations, the General Data Protection Regulation (“GDPR”), took effect on May 25, 2018, another EU-wide legal change quietly occurred.  (And if you’re still puzzling through GDPR compliance, fear not:  We have plenty of resources for you here.) But on to ... Read More
    Source: OrrickPublished on 2018-06-20By Christian Schröder
  • Revised Trade Secrets Disclosures May Be Costly
    In some cases, there may be a severe cost – even a monetary cost – for plaintiffs who seek to materially amend their trade secrets disclosure following discovery.  This is what happened to the plaintiff, Swarmify, in its lawsuit against Cloudflare, now pending in the U.S. District Court for the ... Read More
    Source: OrrickPublished on 2018-06-14By Michael Weil
  • Federal Circuit Illuminates Right to Disgorgement as Remedy for Trade Secret Misappropriation
    The Federal Circuit recently issued an opinion, Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., that addressed several interesting issues impacting the calculation of damages in trade secret actions.  Perhaps the Court of Appeals’ ruling of greatest consequence involved its determination that there is no Seventh Amendment right ... Read More
    Source: OrrickPublished on 2018-06-06By Monte Cooper