Trade Secrets

Steptoe assists clients to understand the value of their confidential information, and to protect that information so that their businesses can thrive.  Trade secrets, which can range from formulas, to manufacturing or business processes, or methods of operation, and compilations of information, are not patented or copyrighted, but they are nevertheless protectable.  We assist clients to protect these secrets, as well as to defend against misappropriation claims, whether in a courtroom, before the International Trade Commission, or in an Alternative Dispute Resolution arena.  Given the breadth of  trade secret information (e.g., customer information vs. scientific formulas) and of the contexts in which it is implicated (e.g., a departing employee vs. a joint venture), Steptoe draws from an interdisciplinary group of lawyers within  its intellectual property, labor and employment, and litigation practices  to assist clients in these substantively varied trade secret matters.

With increasing employee mobility, and the proliferation of start-up companies in the internet and technology sectors, misappropriation and misappropriation claims are on the rise.  We advise clients on how to protect their trade secrets and to recover them or be compensated for their loss if they are misappropriated.  We also counsel our clients on how to avoid misappropriation claims by others and on defending such claims if they are made.

To that end, we advise clients about establishing trade secret programs, which can include employee education, security measures, and nondisclosure agreements among other protection measures.  We also assist clients in responding to threats to their trade secrets and to claims of misappropriations by others, whether it be inside or outside of the litigation.   

Our team has vast experience in litigating claims for misappropriation of trade secrets and confidential information, litigating claims to enforce or invalidate confidentiality agreements, covenants not to compete, and licenses, and litigating related claims under federal statutes such as the Computer Fraud and Abuse Act and the Electronic Communications Privacy Act.  Often, trade secret disputes are won or lost through the outcome of interim injunction proceedings.  It is routine for our trade secret litigators to quickly mobilize to prepare injunction requests and respond to them on very short notice, including to ensure that our client’s position is effectively presented.  The lawyers that make up our team  can and do try cases and, thus, a preliminary injunction hearing with live witnesses is something we handle with ease. We also know how to protect confidential information during litigation, which is becoming an increasingly critical issue these days.  

Our team also has vast experience outside of the litigation arena, including:

  • Developing trade secret and confidential know-how protection programs
  • Creating employee handbooks, non-competition agreements, confidentiality agreements, non-solicitation agreements, e-mail and privacy policies, and incentive compensation agreements for corporate employees
  • Counseling employers on steps to take to avoid receiving trade secrets or confidential information when hiring key employees from competitors
  • Conducting trade secret and confidential information audits, either as stand-alone audits or as part of a broader IP audit
  • Preparing non-disclosure agreements, confidentiality agreements, and non-compete agreements for prospective merger and acquisition partners, joint venture partners, contractors, vendors, consultants, and professionals
  • Licensing trade secret information
  • Negotiating with government agencies to prevent them from releasing clients' trade secret information in response to a request made by a member of the public for access
  • Drafting outsourcing agreements and technology commercialization agreements with appropriate protections for trade secrets, confidential know-how, and other intellectual property
  • Identifying appropriate steps to maintain confidentiality and protect trade secrets and confidential know-how in a digital, networked, or Internet environment

Representative Matters

Trade Secrets and Unfair Competition Cases

  • Steptoe completed a research project for the Chinese Ministry of Commerce (MOFCOM) that culminated in a handbook on trade secret investigations at the International Trade Commission. The handbook provides a business oriented guide for MOFCOM to use in teaching Chinese companies about trade secrets litigation and trade secrets misappropriation.  It may also be used by MOFCOM to assist Chinese companies in responding to Section 337 investigations and US federal and state court litigation involving alleged trade secret misappropriation. (2014)
  • Netlist Inc v. Diablo Technologies Inc (N.D. Cal. 2013) – Represented Diablo Technologies in a patent infringement suit and trade secret case involving Diablo's ULLtraDIMM product.
  • Huawei Technologies Co., Ltd. v. Motorola, Inc. et al. (N.D. Ill., 2011) - Represented Nokia Siemens Networks B.V. and Nokia Siemens US (collectively "NSN") in a trade secret action seeking to prevent the $1.2 billion sale of Motorola's wireless networks business to NSN.
  • Newport Controls v. Balboa Instruments (C.D. Cal., 2010) – Represented Balboa Instruments in an antitrust action involving  the commercialization of spa controllers. The case settled on favorable terms.
  • Thomas and Betts Power Solutions, LLC dba JT Packard v. S.R. Bray, LLC dba Power Plus! et al. (W.D. Wis., 2010) - Defeated an attempt by Thomas and Betts Power Solutions, LLC dba JT Packard to obtain a preliminary injunction against its competitor, S.R. Bray, LLC dba Power Plus!, in a trade secret misappropriation case involving the power services industry.
  • StarTrak Sys. Inc. v. Satamatics, et al. (D. N.J., 2007) – Defeated motion for preliminary injunction, against Satamatics, following evidentiary hearing in a trade secrets matter involving satellite and software technology.
  • SundRy v. Xwave (E.D. Va., 2007) – Defended Xwave in trade secrets case relating to software.  Case settled.
  • Kirchman Corporation v. Regions Financial Corporation (M.D. Fla., 2006)– Defended Regions in a contract action concerning bank data processing software in which the plaintiff was seeking in excess of $60 million.  The action was concluded with a settlement favorable to Regions. 
  • Phoenix Newspapers, Inc. v. Keegan, 201 Ariz. 344, 35 P.3d 105 (Ct. App., 2001) – Represented a major newspaper, Phoenix Newspapers, Inc., in an action against a developer of a high school graduation aptitude examination that was prohibiting access to or disclosure of the test on the grounds that it contained trade secrets. 
  •  McDonnell Douglas v. NASA, 180 F.3d 303 (D.C. Cir., 1999) – Served as lead counsel for McDonnell Douglas in ground-breaking reverse-FOIA litigation, establishing that line item prices in government contracts can be protected from public disclosure under Exemption 4 and the Trade Secrets Act.
  • REM v. Risk Assessment Solutions, et al. – Represented defendants in a case involving trade secrets, contracts, and ownership of intellectual property assets.  Plaintiff dismissed actions. 

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