IP Chat Channel – Trade Secrets/Employment
Webinars are listed in chronological order with the most recent at the top of the page.
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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.
Audra Dial, Kilpatrick Townsend & Stockton LLP
James Pooley, James Pooley PLC
Mark Ridgway, Allen & Overy LLP
Federal Trade Secret Law: Getting It Right EarlyWebinar 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.
Ken Corsello, IBM
Bradford Newman, Paul Hastings
Randy Kay, Jones Day
Insider Threat: Employee Mobility and Trade SecretsWebinar 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.
Clifford Atlas, Jackson Lewis
Buckmaster De Wolf, General Electric Co.
Randall Kay, Jones Day
Trade Secrets: New Clout After AltavionWebinar Date: 06/12/2014
It’s a striking juxtaposition: As patents may become harder to get and easier to challenge (Myriad, Nautilus), a recent decision from the California Court of Appeals moves trade secrets law in the other direction, strengthening trade secret protection for ideas and compilations. Understanding the implications of this case, Altavion v. Konica Minolta, should be useful both for in-house counsel who face the question of what kind of IP protection they should seek for new inventions, and for litigators, who may discern new possible causes of action and remedies.
The defendant in the case argued that Altavion’s concept for digital stamping technology was not protectable by trade secret, leaning on a 2010 decision from the court that stated “trade secret law does not protect ideas as such.” In Altavion, the court rejected that interpretation of its precedent, explaining that “a trade secret in the broad sense consists of any unpatented idea which may be used for industrial and commercial purposes.” The decision also reiterated the protected status of so-called “compilation” trade secrets, which can consist of information in the public domain. The Altavion case is also notable because it allowed recovery for misappropriation of trade secrets that were more general than what the plaintiff had identified prior to discovery or trial.
Our panel includes an IP litigator from a major law firm, the top in-house IP counsel of a multinational car company, and the small-firm litigator who prevailed in Altavion.
- Kurt Calia, Covington & Burling LLP
- William Coughlin, Ford Global Technologies, LLC
- Glenn Peterson, Millstone, Peterson & Watts, LLP
Export Controls on IP: Understanding and Managing the RiskWebinar Date: 04/09/2014
A U.S.-based inventor puts drawings or test results in an envelope and mails it to Germany. The same inventor walks across his lab and hands the data to a visiting scientist from China. Each of these is a technology export. So is allowing a foreign national or person in a non-U.S. jurisdiction to retrieve the information from a company or third-party server.
Most U.S. patent lawyers know about the USPTO’s Licensing and Review Office, which administers the Patent Secrecy Act and grants applicants a license to file patents abroad. But if that is all a patent lawyer knows about export controls, it exposes his or her clients to significant risk. Technology exports are also ruled by two other sets of export control regulations: the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR). Penalties that the Commerce Department administers under EAR (which cover “dual use” items), tend to be lower than those assessed by the State Department which administers ITAR (which cover defense/military items). But even EAR penalty exposure can be stiff, with statutory maximum civil penalties “the greater of $250,000 or twice the value of the transaction, per violation.” Then there’s the reputational damage associated with having a corporate name tied to violations of national security-related laws; the disruption and cost of dealing with an investigation; and the possibility of Commerce imposing a “denial of export privileges” and cutting off foreign sales.
Our panel includes the chief IP counsel of a major multinational technology company, and two law firm experts on export controls. They will;
- give an overview of the export-control challenge facing corporate owners of IP
- describe the regulatory regimes and the line between controlled and not-controlled information
- focus on corporate environments (in addition to R&D) where export rules could come into play, such as mergers & acquisitions, cloud computing, and patent searching
- outline key components of creating and monitoring a corporate compliance effort
- discuss what it means to clean up past transgressions through a “voluntary disclosure” to federal authorities.
- Daniel Staudt, Siemens Corp.
- Scott Flicker, Paul Hastings LLP
- Robert Torresen, Sidley Austin LLP
Protecting Trade Secrets in ChinaWebinar Date: 11/07/2013
This summer, the Shanghai No. 1 Intermediate People’s Court issued an injunction restraining a former employee of Eli Lilly (China) R&D from using or disclosing trade secrets belonging to the company until final judgment in the matter. This is the first injunction of its kind to be granted under China’s revised civil procedure law which became effective at the start of this year. China has had an established system for the grant of interim injunctions in relation to patent, trademark and copyright infringement, but, prior to the new law, there was no counterpart for stopping the disclosure of trade secrets.
This narrow injunction is just one step on the long road toward better enforcement of IP rights in China, but some experts see it as paving the way for further progress. Our panelists will:
- discuss this and other recent trade secret cases in China
- review important differences between U.S. and Chinese trade secret law
- discuss trade secret litigation at the International Trade Commission since the 2011 Tian Rui ruling, which barred the importation into the U.S. of a product made in China by a Chinese company because the product was based on trade secrets misappropriated in China
- discuss best practices for protecting trade secrets in China, including specifics on security measures and the use of confidentiality and non-compete agreements
- Benjamin Bai, Allen & Overy LLP
- Christopher Chalsen, Milbank, Tweed, Hadley & McCloy, LLP
- Kevin Luo, Microsoft Corp.
Material Transfer Agreements: Best Practices & PitfallsWebinar Date: 11/29/2012
A Material Transfer Agreement (MTA) governs the transfer of tangible research materials between two organizations, and defines the rights of the provider and the recipient. The woes that can result from an ineffective MTA are highlighted by the recent petition for certiorari to the U.S. Supreme Court in Bard v. Gore, a long-running infringement dispute that started when Gore provided Bard with a material to see if it could become a blood graft. In her dissent to the Federal Circuit opinion, Judge Pauline Newman describes what can happen without a good MTA: “…A person who performs the requested test of a material that is provided to him for testing for a specified use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested.”
Our panel will focus both on best practices in MTAs and avoiding pitfalls. Their discussion will include contract negotiations and provisions regarding:
- Confidential information to make sure the recipient does not suffer contamination of its own IP
- The permitted uses of the materials in experiments
- IP issues, including who will own the IP created by experiments, and agreements regarding research publication and patent applications
- Liability protection for the provider
- Termination, including the return or destruction of the material
- Issues unique to agreements with universities and other institutions receiving federal funding
Our panel includes a university technology transfer specialist, a biotech transaction lawyer, and an in-house counsel for an energy company.
- David Giannantonio, Emory University Office of Technology Transfer
- Charles Hoyng, Latham & Watkins LLP
- Michael Kolman, BP America, Inc.
Licensing Trade SecretsWebinar Date: 05/17/2012
Licensing of patents continues to grow as a major source of income for many patent owners, both practicing and non-practicing.
The time may be ripe for more companies to consider monetizing their trade secrets. It is well known that trade secret protection lasts as long as the information remains secret, and royalties from the license of a trade secret can also last a very long time, with some historic trade secret licenses yielding income to the licensor for over a hundred years.
This webinar will explore fine points of licensing trade secrets in manufacturing, technology, data, and software. Topics covered include:
- Drafting confidentiality, non-disclosure, non-use, and residual knowledge provisions;
- Structuring a license to include patent rights and know-how;
- Licensing trade secrets in the life sciences, including issues involving biological materials; and
- Valuing and pricing trade secret licenses.
Our panel includes the head of IP for a major multinational automotive company, a transaction specialist in the life sciences, and an expert in the financial valuation of intangible assets.
- William Coughlin, Ford Global Technologies LLC
- Matt Moyers, Ocean Tomo
- Amy Toro, Covington & Burling LLP
The New "Prior Commercial Use" DefenseWebinar Date: 02/01/2012
Just how widespread will the new “prior commercial use” defense created by the AIA become? What will defendants need to mount it, and how will plaintiffs try to counter it? This webinar will address Section 282(b), considering its impact on both IP protection strategy and litigation strategy.
Our panelists will:
• Review the details of the law and highlight critical provisions;
• Discuss how and to what degree the new law impacts the trade-off between patents and trade secret protection;
• Consider how defendants accused of patent infringement should decide whether or not to use the defense, and what internal records would be necessary to mount it; and
• Consider specific litigation concerns in mounting and countering such a defense, such as the interrelationship between prior use and invalidity. The assertion of the prior use defense may require the parties to take on novel roles: for instance, the plaintiff may wind up insisting that the defendant protected the relevant technology as a trade secret in order to avoid becoming vulnerable to an obviousness or prior art defense.
Our panel includes an in-house IP counsel at a leading financial institution, and two patent litigators.
•Cedric DeLaCruz, The Hartford
•David Donoghue, Holland & Knight
•Gary Hoffman, Dickstein Shapiro LLP
Broadening the Reach of the ITC Big Time: The Federal Circuit Decision in TianRui v. ITCWebinar Date: 11/16/2011
In October the Federal Circuit, in a 2-1 decision in TianRui Group v. ITC, widened the scope of possible rulings by the U.S. International Trade Commission. The court’s opinion, penned by Judge Bryson, affirmed a decision of the ITC barring the importation into the U.S. of a product made in China by a Chinese company because the product was based on trade secrets misappropriated by Chinese employees in China.
The opinion addressed several legal and policy issues relating to whether and to what extent U.S. IP law should reach extraterritorial conduct. The opinion talks in terms of a broad Congressional intent in §337 to prohibit importation of goods made by unfair competition — regardless of whether that unfair competition occurs completely in another country. Some experts can’t see why this unfair competition would be limited to trade secret misappropriation. Judge Moore in her strongly worded dissent claimed that §337 reaches only “unfair acts in the importation of articles” into the U.S. and thus does not create a remedy for “the importation of goods resulting from unfair methods of competition.” She also pointed out that the claimant at the ITC could have obtained a U.S. process patent and thus enjoyed the protection of the U.S. patent law to exclude imports.
Our panel includes an experienced ITC litigator, an appellate specialist, and an in-house counsel for a U.S. company based in China who will report on the reaction of the Chinese government and business community. The panel will discuss the immediate impact of the decision and also the likelihood of a request for a hearing on en banc or at the U.S. Supreme Court.
- Gregory Castanias, Jones Day
- Kevin Luo, Microsoft Corp.
- Jamie Underwood, Alston & Bird LLP
The Computer Fraud and Abuse Act: Does It Cover Employee Theft?Webinar Date: 10/27/2011
For the last several years, courts across the country have reached differing conclusions as to whether the federal Computer Fraud and Abuse Act can be used against employees who access their employers’ computer networks to steal confidential files. Many district courts have decided that the statute can be used only against outside hackers.
But a decision this spring by the Ninth Circuit (involving executive recruiter Korn/Ferry suing a former employee) clarified that Court’s position that the law also applies to employees who exceed the “authorized access” set forth in the employer’s computer usage policy. The Court distinguished its finding in that case, U.S. v. Nosal, from its own oft-cited 2009 decision in LVRC v. Brekka (which sided with the employee). The First, Fifth and Eleventh Circuit Courts have also recently held that the CFAA applies to dishonest-employee behavior.
This webinar will look at the recent trend, and also explain what kind of computer usage policies will allow companies to use the CFAA against employees. The Ninth Circuit’s opinion relied heavily on Korn/Ferry’s rigorous, clearly articulated, and widely disseminated policy.
The webinar will also consider the policy concerns that argue against the expansion of the scope of the CFAA, and how those concerns may play out in future litigation.
- Nick Akerman, Dorsey & Whitney
- Thomas Hurka, Morgan Lewis
- Prof. Phil Malone, Berkman Center at Harvard
Patents vs. Trade Secrets: Not “Could You Patent?”, But “Should You?”Webinar Date: 08/11/2011
Many recent developments in patent law, including the KSR and Bilski decisions, and possible threats to patent eligibility such as the Myriad case, highlight the need to hedge against a patent application being rejected by the USPTO or a patent being invalidated in litigation. This webinar will focus on how to decide between trade secret protection vs. patent protection both at the very beginning of the innovation process and throughout product development. The panelists will discuss how to maintain some aspects of an invention as secret while complying with the enablement and best mode requirements of patent law. They will also consider the option of filing a patent application that will not be published 18 months after filing with the USPTO and discuss how companies can “build in” inherent trade secrecy protection as they engineer their products.
Panelists include the head of IP at an international automaker, an IP counsel at a publicly-traded biotech company, and a trade secrets litigator who counsels clients on strategic IP planning.
• William J. Coughlin, Ford Global Technologies LLC
• Thomas Gillespie, Emergent BioSolutions
• Stuart Meyer, Fenwick & West LLP
Conflicts of Interest in Patent Prosecution and LitigationWebinar Date: 02/17/2011
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The unpleasant consequences of conflicts of interest in patent prosecution and litigation are a constant fact of life in the IP community. At present, at least two IP law firms are being sued for conflicts of interest regarding patent prosecution, where potential subject matter conflicts may be slow to become visible. On the litigation front, in the bitter conflict regarding the rights to Bratz dolls, an entire sideshow has centered on the disqualification of MGA’s lead counsel by Mattel.
Our panel of experts includes a law professor, the founder of a law firm, and an in-house counsel. They will discuss obvious conflicts, analyze many more ambiguous situations, and will lay out best practices on how to avoid trouble.
• Professor Lisa Dolak, Syracuse University
• Frank Nuzzi, Siemens Corp.
• Howard Skaist, Berkeley Law & Technology Group
Winning Trade Secrets Litigation: The Defendant’s ToolkitWebinar Date: 05/20/2010
You have been accused of stealing another’s trade secrets and a litigation cloud now threatens. How to make sure that you are doing everything possible to protect your company’s good name, avoid unfair and improper legal liability, and preserve the value of your company’s legitimately developed business interests and technology? Issues to be addressed will include:
• Requiring identification of allegedly misappropriated trade secrets
• Opposing injunctive relief
• Effective summary judgment strategies
• Effective defense themes and strategies
• James W. Morando, Farella Braun & Martel, LLP
• Randy Kay, Jones Day
• Monica Winghart, The Clorox Company
Winning Trade Secrets Litigation: The Plaintiff’s ToolkitWebinar Date: 05/13/2010
Your trade secrets have fallen into the hands of another and are at risk of being used to steal your market share or unfairly enrich another. When litigation looms, how do you quickly and effectively best position your company or client to win? This panel will give you the tools to do everything possible to protect valuable information and your company or client’s competitive position. Issues to be addressed will include:
• Preliminary injunction strategies, including bonds
• Protecting trade secrets from disclosure during litigation and effective use of protective orders
• Effective case and trial themes
• Greg Ansems, Honeywell International Inc.
• Randall E. Kahnke, Faegre & Benson, LLP
• Christopher J. Gaspar, Milbank, Tweed, Hadley & McCloy, LLP
Trade Secret RemediesWebinar Date: 04/01/2010
What are the critical aspects of a crafting and proving trade secret damages? How do trade secret damages differ from patent damages? How do you reconcile the tension between trade secret damages and injunctive relief?
The program will include a review of the creative remedies that courts have granted for trade secrets misappropriation, including remedies resembling reasonable royalties as well as disgorgement, and equitable relief. Topics include calibrating injunction relief to business concerns beyond a simple “non-use/non-disclosure” injunction; determining the appropriate length of “lead time” injunctions; monitoring, verifying, and reporting on the “misappropriator’s” activity going forward; and transferring intellectual property rights gained through misappropriation.
- Victoria Cundiff, Paul, Hastings, Janofsky & Walker LLP
- R. Mark Halligan, Nixon Peabody LLP
- Alan Cox, NERA Economic Consulting