Seyfarth is a sponsor of the 2021 Sedona Conference on Developing Guidelines for Trade Secret Issues, taking place on June 21-22, 2021, and is taking place virtually. The conference will present for public dialogue for the first time the consensus, non-partisan publications from the Sedona Working Group 12 on Trade Secrets, including:

  • WG12 Commentary on the Proper Identification of Asserted Trade Secrets in Misappropriation Lawsuits
  • WG12 Commentary on The Employee Life Cycle Relating to Trade Secrets
  • WG12 Commentary on Equitable Remedies in Trade Secret Litigation
  • WG12 Commentary on Monetary Remedies in Trade Secret Litigation
  • WG12 Commentary on Protecting Trade Secrets in Litigation About Them
  • WG12 Commentary on Governance and Management of Information Security and Trade Secrets
  • WG12 Commentary on Trade Secret Issues Across International Borders: Extraterritorial Reach
  • WG10/12 Joint Commentary on Cross-Border Discovery in Patent Litigation and Trade Secret Litigation

The conference will also include a panel discussing additional current/future trends in trade secret law and litigation and a Judicial Roundtable.

Robert Milligan, Seyfarth partner and co-chair of the Trade Secrets, Computer Fraud & Non-Competes group, is speaking on a panel about the employee life cycle. Erik Weibust, Seyfarth partner, is speaking on the “Tailoring Remedies to the Misappropriation: Equitable Relief, Damages, or Both” panel. Robert Milligan is also on the Steering Committee for the conference.

Find more information and register on The Sedona Conference website at https://thesedonaconference.org/tsc2021tradesecrets

In Seyfarth’s second installment in its 2021 Trade Secrets Webinar Series, Seyfarth attorneys Richard Lutkus, Bob Stevens, and Matthew Simmons outlined best practices and steps companies can take to continue to protect intellectual capital, including policies, protections, security concerns, and agreements needed to protect information in a remote environment.

As a conclusion to this webinar, we compiled a summary of takeaways:

Technical takeaways to avoid your trade secrets and IP ending up leaked on the dark web:

  • Train your employees to be suspicious of emails and test them against phishing attacks
  • Get proper malware detection software for servers and endpoints.
  • Turn logging on and retain logs as long as practical so you can have something to investigate if an issue occurs.
  • Keep ANY critical IP/trade secrets encrypted at rest on your file servers!

Pre-termination checklist:

  • Update employee policies and procedures regarding confidential information, BYOD policy, obligation of employee to update location, notice of resignation period, non-use of personal and cloud accounts, return of company property and compliance with return obligation, company asset/hard copy tracking, and training on new policies.
  • Update restrictive covenants and provide sufficient consideration for the updated covenants at the time the employee executes the new restrictive covenant.
  • Complete a company versus personal property assessment.
  • Complete pre-termination forensic searches.

Remote employee resignation checklist:

  • Notify IT and ensure system access is disabled as soon as possible.
  • Ensure all devices (phones, computers, drives, etc.) are returned and postpone reissuance for as long as fiscally able.
  • Conduct exit interview and remind resigning employee of restrictive covenant obligations.
  • Preserve and monitor email account and phone.

Visit our Trade Secrets Webinar Series page to view recordings of all our webinars.

The Illinois Trade Secrets Act (“ITSA”), which is consistent with both other states that have adopted the Uniform Trade Secrets Act and the federal Defend Trade Secrets Act, allows the recovery of attorneys’ fees for a party who has been forced to defend against a trade secret claim made in bad faith. See 765 ILCS 1065/5. This fee shifting provision provides an important mechanism to obtain relief for defendants who are forced to incur significant legal fees fighting baseless claims. Continue Reading Failure to Tune in to Requirements to Meet Trade Secret Status Under Illinois Trade Secrets Act Results in Award of Attorneys’ Fees Against Radio Advertising Time Business

After a months-long delay due to an outbreak of COVID-19 during the first trial, a federal jury in Texas awarded a $152 million verdict—including $120 million in punitive damages—in a trade secret misappropriation case between rival software development companies.

Case Summary

In 2019, software company ResMan LLC (“Resman”) sued its former customer Karya Property Management LLC (“Karya”), alleging that Karya provided its third party software consultant, co-defendant Expedien, with unauthorized access to Resman’s trade secrets in order to help it develop a competing product. Resman’s proprietary software is used to manage apartment buildings throughout the United States. In the breach-of-contract lawsuit, Resman alleged Karya gave Expedien access to its trade secrets so that it could develop its own rival property management software. Continue Reading Texas Federal Jury Awards $152 Million in Trade Secret Misappropriation Case Interrupted by COVID-19

We want to share some exciting news with our blog followers. Dawn Mertineit, Seyfarth partner and member of the firm’s Trade Secrets, Computer Fraud & Non-Competes group, is co-editor of our Trading Secrets blog. She joins Robert Milligan, Trading Secrets editor, Seyfarth partner, and co-chair of the Trade Secrets, Computer Fraud & Non-Compete group. We’re thrilled to have Dawn’s help in continuing to ensure our blog provides timely information on the latest legal trends and cases across the country.

The California Court of Appeal recently upheld the dismissal of claims against Mattel, which alleged that Mattel stole the idea for its flying Barbie doll from Technology from Heaven Unlimited (“TFHU”). Applying New York law, the Court found that Mattel did not misappropriate TFHU’s idea to create a flying Barbie using drone technology, as this idea did not have general novelty, even if the idea was novel to the buyer. Moving forward, companies should ensure that they have clear policies and procedures in place before accepting ideas and before entering into contracts for the disclosure of ideas, because whether an idea may be novel may depend on the timing of the contract. Continue Reading Hoverboard Barbie: A Novelty Toy Without a Novel Concept

Thursday, April 1, 2021
1:00 p.m. to 2:00 p.m. Eastern
12:00 p.m. to 1:00 p.m. Central
11:00 a.m. to 12:00 p.m. Mountain
10:00 a.m. to 11:00 a.m. Pacific

Establishing a process, checklist, or set of best practices for employee termination and data repatriation is essential, especially in a remote work environment. Depending on the remote work policy, including whether there is a bring your own device (BYOD) policy, different steps should be followed upon termination and data repatriation. In this second installment of our 2021 Trade Secrets Webinar Series, our team outlines best practices and steps companies can take to continue to protect intellectual capital, including policies, protections, security concerns, and agreements needed to protect information in a remote environment. A lot of these best practices are also relevant for non-remote work, as well.

REGISTER HERE

Speakers

Richard D. Lutkus, Partner, Seyfarth Shaw LLP
Robert C. Stevens, Partner, Seyfarth Shaw LLP
Matthew L. Simmons, Senior Counsel, Seyfarth Shaw LLP

If you have any questions, please contact Colleen Vest at cvest@seyfarth.com and reference this event.

*CLE Credit for these webinars is approved in the following states: CA, IL, NJ and NY. CLE Credit is pending for GA, TX and VA. Credit will be applied for, but cannot be guaranteed, in all other eligible jurisdictions. Please note that in order to receive full credit for attending each webinar, the registrant must be present for the entire session.

Seyfarth Synopsis: In a case of first impression, the Ninth Circuit held that the continued use doctrine is available under the DTSA, and the court permitted a plaintiff to raise a DTSA claim for misappropriation of trade secrets even though the initial misappropriation allegedly occurred before the DTSA was passed. The Ninth Circuit also held that a patent application may preclude a DTSA claim when the plaintiff does not claim that any trade secret information was misappropriated beyond what was included in the patent application. Continue Reading Ninth Circuit Recognizes Continued Use Doctrine under the DTSA, but Confirms that Patent Publication Precludes Claim

A decade ago, the Georgia legislature enacted a new restrictive covenant statute, O.C.G.A. § 13-8-51 et al. (the “Georgia RCA”). Among other things, the Georgia RCA permitted Georgia courts to blue-pencil or “modify a covenant that is otherwise void and unenforceable so long as the modification does not render the covenant more restrictive with regard to the employee than as originally drafted by the parties.” O.C.G.A. § 13-8-53(d). Continue Reading Georgia Business Court Utilizes Georgia’s Restrictive Covenants Act to Modify the Applicable Time Period of a Customer Non-Solicit Provision

Please join the Trade Secret Committee of the American Intellectual Property Law Association, which is chaired by Seyfarth partner Erik Weibust, for Part I of its Trade Secret Master Series: How to Settle Trade Secret Disputes with Jim Pooley. The event will be held virtually on March 9, 2021 from 12:30-1:30 p.m. Eastern.

Trade secret disputes are the messy divorces of the IP world. Strong emotions abound on both sides. Helping our clients get the best result is not just about winning at trial, but about digging in to know what’s going on and leading the parties to a business solution. This session will address the dynamics of settling trade secret fights, whether company to company or departing employees.

Additional information and registration here.