Intellectual Property Owners Association

Serving the Global Intellectual Property Community

ReadMore

IP Chat Channel – Trade Secrets/Employment

Webinars are listed in chronological order with the most recent at the top of the page.
In order to view past webinars click on the register button below.  Then click on “View Event Recordings” in the upper right hand corner.  All recordings are in chronological order, and can be searched by title using the find feature in your browser.

Please contact meetings@ipo.org if you have difficulty finding a recording.

register_small

 

 



WAYMO v. UBER: DTSA Test Tube

Webinar Date: 03/15/2018

The recently-settled trade secret action Waymo v. Uber has received plenty of attention over the past year. This IP Chat Channel webinar won’t focus on the one-off oddities in this case, although there were plenty of them. Instead, the program will examine the dispute as a test case for the new federal trade secret law, the DTSA.

The conclusion reached? Despite the touted advantages, there are serious new perils that should be considered by plaintiffs who are contemplating going to federal court instead of filing in the traditional venue of state court. Our panel, two top trade secret litigators and a mediator who was previously in-house, will analyze this Northern District of California litigation, as well as other recent cases in other federal courts, illustrating how the risks of using the DTSA to bring suit compares to the benefits. They will discuss how:

  • Federal judges have been making rigorous demands for specificity of TS description, both at the pleading stage and at the gateway to discovery. For instance, in Space Data v. X, 16-cv-03260-BLF (N.D. Cal. 2017), the defendant’s motion to dismiss was granted because of the failure to specify. The defendant also prevailed on summary judgment in Kuryakyn Holdings, LLC v. Ciro (W.D. Wis. 2017).
  • Federal courts are more likely than state courts to challenge experts and theories of harm. In Telesocial v. Orange (N.D. Cal., 2017), plaintiff’s expert report was thrown out and a federal jury largely cleared the defendant. In Waymo v. Uber, the court excluded a damages expert under FRE 702 and 403, for insufficient qualification and for failure to separate benefits derived from the trade secrets from those derived from other, legitimate advantages.

The advantages and disadvantages must be analyzed carefully by trade secret plaintiffs thinking of seeking redress under the DTSA. The panel will also discuss the legal twists and turns that led to the unexpected settlement in Waymo v. Uber.

Speakers:

  • Diane Danoff, Dechert LLP
  • James Pooley, James Pooley, PLC
  • Barbara Reeves, JAMS



Settling Trade Secret Disputes

Webinar Date: 01/30/2018

Like most IP litigation, most trade secret disputes end in settlement. But trade secrets involve distinctive settlement concerns and strategies that effective lawyers would do well to master. For instance, consider the complex negotiations that ensued after Move, which operates Realtor.com for the National Association of Realtors, lost its chief strategy officer to rival Zillow in 2014. Move filed a trade secret suit claiming that Zillow owed the company $2 billion in damages. The dispute ended in settlement in 2016 with Zillow agreeing to pay Move $130 million.

Our experienced panel, which includes a mediator who was formerly an in-house counsel, a trade secret litigator, and an experienced damages expert, will discuss the special nuances of trade secret settlement negotiations, including:

  • Settlement can actually provide better protection for sensitive information than a court victory. The plaintiff can’t dictate to a judge the terms of a court order. But a settlement can set down in great detail what happens to the information and what a defecting employee is permitted to do at the new employer. Settlement can also protect from discovery the defendant’s trade secrets, for example, when it has been quietly working on a similar product for years.
  • What are the key points in litigation that make settlement most likely?
  • Differing theories for trade secret damages (e.g., disgorgement of profits vs. a reasonable royalty) result in numbers that are universes apart. Is there a disciplined way to bridge the gap?

Panelists will also give tips on how to help clients master the unruly emotions that can make a mutually beneficial settlement difficult to achieve.

Speakers:

  • Alan Cox, NERA Economic Consulting
  • Victoria Cundiff, Paul Hastings LLP
  • Barbara Reeves, JAMS



Inevitable Disclosure, the DTSA, and Avoiding Contamination

Webinar Date: 07/27/2017

The year-old federal Defend Trade Secrets Act (DTSA) expressly disavows the doctrine of “inevitable disclosure” in the context of injunctive relief. But trade secrets litigators now have an indication how that doctrine — under which a former employer can prove that a defendant’s new employment will inevitably lead him or her to rely on the former employer’s secret — will play out more generally under the DTSA.

In May, in Molon v. Nidec in the Northern District of Illinois, a federal district court for the first time considered inevitable disclosure under the DTSA, letting it survive a motion to dismiss in the context of pleading. Our panelists, two experienced trade secret litigators and an in-house counsel, will discuss the future of inevitable disclosure and the related notion of “threatened misappropriation” under the DTSA, and how that will relate to the long-standing patchwork of state laws on the issue.

They also will consider more generally the risks involved in hiring an employee from a competitor and how to mitigate them. Recent highly-publicized trade secrets cases in competitive industries illustrate the dangers of situations in which the best new employee, the one with the most relevant experience, worked for a competitor. The new employer can take steps, starting with job advertising and recruitment, that show sensitivity to the danger of leaning on the new employee’s “relevant experience” — if that means projects and products — from the former employer.

Speakers:

  • Bret Cohen, Nelson Mullins Riley & Scarborough LLP
  • Kenneth Corsello, IBM Corp.
  • James Pooley, Orrick, Herrington & Sutcliffe



DTSA: One Year In

Webinar Date: 05/02/2017

The federal law protecting trade secrets is celebrating its first birthday, and this webinar will give an update on how the Defend Trade Secrets Act has evolved in practice. Our panel — an in-house IP counsel at a technology company, a trade secrets litigator, and an employment law litigator — will disclose and analyze the record so far, give advice, and make predictions. Among the topics to be discussed are:

  • Pleading requirements under the DTSA;
  • Definition of trade secret and misappropriation;
  • Sealing of complaints;
  • Preliminary injunctions and TROs;
  • Seizure;
  • How are the parallel systems of state and federal law working out in practice?
  • Is the DTSA the best tool against international trade secret theft?
  • Are employers implementing the mandatory disclosure of employee rights in confidentiality agreements?
  • Have whistleblowers used the immunity provisions?

Speakers:

  • Ken Corsello, IBM Corp.
  • Randy Kay, Jones Day
  • Bradford Newman, Paul Hastings LLP



New EU Trade Secrets Directive: What Does It Mean for IP Owners?

Webinar Date: 06/09/2016

Europe has historically had a patchwork of differing trade secret laws, with some countries having no remedies for the theft of proprietary trade secrets, and many others providing only criminal— but not civil—remedies. So it’s big news that on May 27 the EU Council unanimously adopted the EU Trade Secrets Directive that provides minimum standards for trade secret protection. The 28 Member States have until 2018 to implement the provisions.

This European move comes a mere month after passage of the U.S. Defend Trade Secrets Act, which for the first time provides a federal civil remedy for the misappropriation of trade secrets. Our panelists will discuss and compare the two regimes and give advice on what their implementation means for U.S. companies. Topics to be discussed include “long-arm” provisions, which make it unlawful for a person who was aware or should have been aware of a trade secret theft to offer for sale infringing goods, and could offer a way to ban imports; protections for whistleblowers; and procedures to keep trade secrets private during enforcement and litigation.

Speakers:

Audra Dial, Kilpatrick Townsend & Stockton LLP
James Pooley, James Pooley PLC
Mark Ridgway, Allen & Overy LLP




Federal Trade Secret Law: Getting It Right Early

Webinar Date: 05/05/2016

In a few days President Obama is expected to sign into law the Defend Trade Secrets Act of 2016, which for the first time provides a federal civil remedy for the misappropriation of trade secrets. The passage of this legislation by a usually-divided Congress underlines the importance of this IP protection to U.S. business and puts trade secrets on an equal federal footing with patents, trademarks, and copyrights.

This webinar will focus on how attorneys can get off to a good start and avoid mistakes under the new law when representing both aggrieved secret holders and clients who are accused of stealing secrets. Among the issues discussed:

  • When might a claim under state law still be the best option?
  • What jurisdictional questions will arise if there are state and federal cases over the same issues?
  • What will be best practices after the DTSA’s rejection of the “inevitable disclosure” doctrine?
  • How will damages under the law be proved?
  • What changes are employers now required to make to written employment policies and nondisclosure agreements?

Our panelists include trade secret litigators — one who also leads patent litigation and the other with an employment law background – and an in-house counsel at a technology multinational who has experience in trade secret matters.
Speakers:

Ken Corsello, IBM
Bradford Newman, Paul Hastings
Randy Kay, Jones Day




Insider Threat: Employee Mobility and Trade Secrets

Webinar Date: 01/20/2016

Litigation against former insiders accounts for a significant amount of all trade secret cases. However, these disputes are difficult to win. Our panel will discuss best practices for safeguarding trade secret and other confidential corporate information from appropriation by employees, as well as contractors, and consultants.

A litigator will highlight how not meeting this high bar will cause a plaintiff’s case to fail. An employment law specialist will discuss emerging issues in non-compete agreements, such as the need to give current employees a bonus or profit-sharing consideration in exchange for signing a tougher non-compete. And an in-house counsel of a global technology company that will discuss survival in a world without non-competes. Our panel will also consider the flip side of the issue: best practices for avoiding a lawsuit when hiring an employee from a competitor.

Speakers:

Clifford Atlas, Jackson Lewis
Buckmaster De Wolf, General Electric Co.
Randall Kay, Jones Day