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Category Archives: Practice & Procedure

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Court, Applying Pennsylvania And California Law, Declines To Enjoin Alleged Violation Of Worldwide Non-Compete

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

A non-competition covenant prohibited employees of Adhesives Research (AR), a company based in Pennsylvania, from performing services for a competitor of AR anywhere in the world for two years after termination. Newsom, AR’s western U.S. manager of medical products, worked out of her home in California. When she quit and joined another adhesives manufacturer, AR sued and moved for entry … Continue Reading

Aggressive SEC Enforcement Efforts Regarding Confidentiality Agreements Will Continue

Posted in Practice & Procedure, Restrictive Covenants

By Ada W. Dolph

In a post-script to the SEC’s April 1 cease and desist order penalizing KBR, Inc. for a confidentiality statement that failed to carve out protected federal whistleblower complaints (our alert on it here), SEC Office of the Whistleblower Chief Sean McKessy today made additional comments that suggest public companies as well as private companies that … Continue Reading

Forum Selection Clause in Non-Compete Agreement Unenforceable

Posted in Non-Compete Enforceability, Practice & Procedure

A contractual provision designating the exclusive venue for filing a breach of contract lawsuit was held to be trumped by a 100-year old statute requiring trial of such cases in the county of residence of at least one party. A&D Environmental Services, Inc. v. Miller, Case No. COA14-913 (N.C. App., Apr. 7, 2015).

Summary of the case. A North … Continue Reading

Ninth Circuit Jeopardizes Broad “No Re-Hire” Clauses in California

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

In Golden v. California Emergency Physicians Medical Group, a divided Ninth Circuit panel held that a “no re-hire” provision in a settlement agreement could, under certain circumstances, constitute an unlawful restraint of trade under California law.

The Facts

Dr. Golden, a physician, agreed to settle his discrimination claim against his employer, California Emergency Physicians Medical Group (“CEP”). Their oral settlement … Continue Reading

Webinar Recap! Protecting Confidential Information and Client Relationships in the Financial Services Industry

Posted in Practice & Procedure, Trade Secrets

We are pleased to announce the webinar “Protecting Confidential Information and Client Relationships in the Financial Services Industry” is now available as a podcast and webinar recording.

In Seyfarth’s second installment of its 2015 Trade Secrets Webinar series, Seyfarth attorneys will focus on trade secret and client relationship considerations in the banking and finance industry, with a particular focus … Continue Reading

Many Courts Are Reluctant To Permit Parties To Redact Filed Documents, Or To File Them Under Seal, Even When They Contain Trade Secrets

Posted in Practice & Procedure, Trade Secrets

In a patent infringement case pending in a California federal court, the defendant moved for summary judgment. The parties jointly requested leave to submit to the court under seal, or with redactions, documents containing trade secrets and other confidential information. The court granted the request only in part. Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844 (N.D. … Continue Reading

Beware of the Delaware Choice of Law in Non-Compete Agreements

Posted in Non-Compete Enforceability, Practice & Procedure, Restrictive Covenants

By Justin K. Beyer and Matthew I. Hafter

Delaware has long been one of the jurisdictions most friendly to the interests of corporations and is the state of incorporation for a significant majority of corporations. While that trend does not seem likely to change, a new Delaware Chancery Court decision should give pause to choice of law decisions of Delaware … Continue Reading

Geographically Overbroad Non-Competes Held To Be Unenforceable

Posted in Non-Compete Enforceability, Practice & Procedure

In unrelated decisions, two federal courts recently refused to enforce non-compete covenants in employment agreements that lack reasonable geographic limits.

Status of the cases. In one of the two lawsuits, the employment agreement included a Tennessee choice of law provision. Louisiana courts are more protective of employees than courts in Tennessee. Since the parties had contacts with both states, naturally … Continue Reading

Non-Solicitation Covenant That Is Silent As To Its Scope May Be Unenforceable

Posted in Practice & Procedure, Restrictive Covenants

An employment agreement covenant prohibiting solicitation of co-employees, but not indicating what solicitations were prohibited, has been held to be invalid.

Status of the case.  A multi-count complaint filed in the D.C. District Court charged two former employees of the plaintiff with breaches of contract and tort violations.  The defendants moved to dismiss.   The court held that some of the … Continue Reading

Appellate Court Re-Affirms Key Aspects of Georgia Non-Compete Law

Posted in Practice & Procedure, Restrictive Covenants, Trade Secrets

A recent decision by the Georgia Court of Appeals, Holland Ins. Group, LLC v. Senior Life Ins. Co., 766 S.E.2d 187 (Nov. 20, 2014), includes several excellent reminders regarding the enforceability (and unenforceability) of restrictive covenants in Georgia.

Relevant Facts and Holding

William Holland and Senior Life Insurance Company entered into an agreement (“Agreement”) authorizing Holland to sell Senior Life’s … Continue Reading

Appellate Court Holds That Non-Compete Agreement Assigned Pursuant to Bankruptcy Court Order is Enforceable by Assignee

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

Courts are divided on the enforceability by an assignee of a non-compete covenant relating to personal services where the covenant does not state whether it is assignable and the employee does not consent to the assignment.

Status of the case.  A non-compete agreement signed by an employee of TSG, Inc., purported to be effective for two years after his termination … Continue Reading

Federal Circuit Reverses Lower Court’s Ruling That Plaintiff’s Trade Secret Misappropriation And Conspiracy Claims Were Untimely And Unprovable

Posted in Practice & Procedure, Trade Secrets

The Federal Circuit recently held that the dismissal of a trade secrets complaint for failure to state a justiciable claim was not warranted merely because the misconduct allegedly involved a number of wrongdoers and began many years before the complaint was filed.

Overview of the case. ABB alleged that, during a several decade period, some of its former employees engaged … Continue Reading

Court Refuses To Enforce Settlement Agreement Containing Non-Compete Covenant Citing Lack of Assent

Posted in Non-Compete Enforceability, Practice & Procedure

Plaintiff’s motion to enforce a settlement agreement in principle was denied because some material terms of that agreement were not included in the version the plaintiff sought to enforce.  GeoLogic Computer Sys., Inc. v. MacLean, Case No. 10-13569 (D. Mich., Dec. 10, 2014).

Status of the case.  Counsel for the parties to a software copyright infringement lawsuit purportedly reached … Continue Reading

California Court Extends Protections To “Silent Whistleblowers”

Posted in Practice & Procedure, Trade Secrets

Employers, although contractually free to terminate the employment of at-will employees for any reason, at any time, cannot dismiss an employee in violation of public policy. A prime California public policy is that employers cannot retaliate against whistleblowers—individuals who have reported suspected unlawful employer conduct. In January 2014, the Legislature expanded the general whistleblowing statute, Labor Code section 1102.5, to … Continue Reading

Seyfarth Attorneys to Present Paper on Trade Secrets and Lawyer Mobility at AIPLA Trade Secret Summit

Posted in Non-Compete Enforceability, Practice & Procedure, Trade Secrets

At some point in his or her legal education, every law student discovers one of the more strikingly unique rules about the profession that he or she aspires to enter.  Unlike laws governing physicians, accountants, engineers, and virtually all other professions, rules governing the practice of law impose a nearly absolute prohibition on lawyer non-compete agreements.  At the same time, … Continue Reading

Upcoming Webinar: Protecting Trade Secrets and Intellectual Property in Business Transactions

Posted in Practice & Procedure, Trade Secrets

On Tuesday, December 2, 2014 at 12:00 p.m. Central, in the final installment of our 2014 Trade Secrets Webinar Series, Seyfarth attorneys Michael Baniak, Joseph Lanser and Randy Bruchmiller will focus on considerations involving protecting trade secrets and intellectual property in business transactions, including, mergers and acquisitions, joint ventures and other collaborative arrangements.

Summary of topics:

How to properly address… Continue Reading

Seyfarth Attorneys Facilitate Discussion On Cybersecurity and Protecting Valuable Trade Secrets at the 39th Annual Intellectual Property Institute Conference

Posted in Cybersecurity, Practice & Procedure, Privacy, Trade Secrets

Seyfarth Intellectual Property, Trade Secret and Privacy attorneys are participating in the 39th Annual Intellectual Property Institute Conference in Garden Grove, California this week.

The IP Institute brings together preeminent speakers from leading companies and law firms to share tips “from the trenches.” The Institute covers a great array of topics affecting our clients, such as trademarks, copyrights, licensing, litigation, … Continue Reading

Customer Non-Solicitation Covenant Runs From Date Employment With Asset Seller Terminated, Not From Later Date Employment With Asset Purchaser Ended

Posted in Non-Compete Enforceability, Practice & Procedure, Restrictive Covenants, Trade Secrets

An employee executed an employment agreement which included a two-year covenant not to solicit the employer’s customers.  When the employer sold the company’s assets, the sale included that agreement.  The employee then went to work for the assets purchaser but subsequently resigned.  The Texas Appellate Court held that the two-year period began to run on the date the assets seller … Continue Reading

“Bridgegate” Triggers Proposed Expansion of New Jersey Whistleblower Protections

Posted in Practice & Procedure, Restrictive Covenants, Trade Secrets

By Ada W. Dolph, Robert T. Syzba and Jade Wallace

In an effort to preempt another “Bridgegate” scandal, New Jersey State Senator Loretta Weinberg has sponsored a bill to extend whistleblower protection to employees who disclose incidents of wasted public funds, governmental abuse, or gross mismanagement. On October 9, 2014, the New Jersey Senate’s Labor Committee approved Bill S-768, which, … Continue Reading

Pythagoras and the Geometry of Intellectual Property: Where Do Trade Secrets Fit In?

Posted in Practice & Procedure, Trade Secrets

Most people stop taking math in high school.  Geometry was often the culprit that either made someone enjoy solving problems involving Greek letters or become completely disinterested.  All those arcs and triangles…how does any of that apply to life as an attorney?

Well, here comes another geometry lesson: the Venn Diagram of intellectual property (IP), once thought to have only … Continue Reading

When “The End” Is Not “The End”: Asserting Trade Secret Claims After The Execution of a Mutual Release

Posted in Non-Compete Enforceability, Practice & Procedure, Restrictive Covenants, Trade Secrets

In many cases, the execution of a mutual release is often the last step in resolving a trade secret or non-compete case.  Typically included in the release is an affirmation that all confidential information has been returned and the once former adversaries promise not to sue one another.  Once the release is executed, the fight is usually over.  Usually, but … Continue Reading

Non-Compete and Forum Selection Clauses in Franchise Agreement Binding on Franchisee Who Signed It and on His Wife Who Didn’t

Posted in Non-Compete Enforceability, Practice & Procedure

A Florida franchisee executed a franchise agreement (FA) containing a non-compete provision and a Pennsylvania forum selection clause.  Following termination of the FA, the former franchisee’s wife opened a similar business in another part of Florida.  The franchisor filed suit in Pennsylvania against the former franchisee and his wife, and they moved to dismiss or, alternatively, to transfer the case … Continue Reading

Webinar Recap! Ins and Outs of Prosecuting and Defending Trade Secret Injunction Cases

Posted in Data Theft, Practice & Procedure, Trade Secrets

We are pleased to let you know that the webinar “Ins and Outs of Prosecuting and Defending Trade Secret Injunction Cases” is now available as a podcast and webinar recording.

In Seyfarth’s seventh installment of its 2014 Trade Secrets Webinar series, Seyfarth attorneys, Justin K. Beyer, Dawn Mertineit, and James Yu discussed practical steps employers can take to protect … Continue Reading

Ten-Day Interruption In Employment Necessitates New Non-Compete

Posted in Non-Compete Enforceability, Practice & Procedure

An employee who had executed a two-year non-compete was let go.  He returned to work 10 days later but was not asked to sign a new agreement.  More than two years after his return, he was terminated and became an employee of a competitor.  A lawsuit seeking to enforce the non-compete was dismissed on the ground that it had expired.… Continue Reading