Trade Secrets

For most companies, their intangible assets—trade secrets and corporate know-how—are what gives them their edge over their business competitors. Yet the risk of having confidential information stolen or leaked is growing, as both workforces and information become more mobile. Information is increasingly digital in form and easily published or purloined: sent by e-mail; revealed on a blog; removed on a CD, DVD, or USB drive; or photographed with a digital camera or cellphone.

Since every business is vulnerable to having trade secrets and know-how stolen by departing employees, contractors, vendors, consultants, and licensees,  how can companies protect their trade secrets and corporate know-how? How can they exploit their confidential know-how while still maintaining trade secret status?

Steptoe & Johnson LLP's Trade Secrets team is ready to protect clients' trade secrets, whether in a courtroom or an ADR/mediation arena. Due to this practice’s multi-faceted nature, Steptoe relies on an interdisciplinary group of intellectual property, labor and employment, and litigation attorneys that stand ready to assist clients in these matters. Steptoe’s team has vast experience in these matters and thus has the bench strength available whenever and wherever needed throughout the nation to handle the following issues appropriately and efficiently for its clients:

• 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;
• Litigating claims for misappropriation of trade secrets and confidential information, unfair competition, breach of fiduciary duty, interference with prospective advantage or contractual relations, employee raiding, and related business torts;
• Litigating claims to enforce or invalidate confidentiality agreements and covenants not to compete;
• 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;
• 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;
• Litigating related claims under the Computer Fraud and Abuse Act, Digital Millennium Copyright Act, or Electronic Communications Privacy Act; and
• Protecting confidential information during litigation.

Representative Matters

Current Trade Secrets and Unfair Competition Matters 

• SundRy v. Xwave (E.D. Va.) – Defending Xwave in trade secrets case relating to software.
• StarTrak Sys. Inc. v. Satamatics, et al. (D. N.J.) – Defeated motion for preliminary injunction following evidentiary hearing in a trade secrets matter involving satellite and software technology.

Completed Trade Secrets and Unfair Competition Matters

• Kirchman Corporation v. Regions Financial Corporation - Defended Regions in a contract action concerning bank data processing software in which the plaintiff was seeking in excess of 60 million dollars.  The action was concluded with a settlement favorable to Regions. 
• Laboratoires Fournier S.A. - Represented Laboratories Fournier S.A., an innovator pharmaceutical company, in multiple Hatch-Waxman patent infringement actions against several generic drug manufacturers. 
• Phoenix Newspapers, Inc. v. Keegan, 201 Ariz. 344, 35 P.3d 105 (Ct. App. 2001) - Represented a major newspaper 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. 

Select News & Events

• Firm's IP Practice Gains Four in Century City
• Teleconference: Key Employees in Transition: Trends & Tactics for Protecting IP, Trade Secrets in the Workplace

Publications

• Trade Secrets & Employee Raiding Update
  April 2006