This is first in multi-part discussion of measuring the accounting period for trade secret damages. First up: untethering the liability requirement of secrecy from the damages goal of awarding as much as necessary (but no more than) to eliminate unfair competition. Trade secrets qualify for protection only so long as they are not generally known or ascertainable through “proper means” such as independent invention, reverse-engineering, observing them in public use or obtaining them from public…

There is a lack of consensus among Federal Circuit judges whether a jury should determine the amount of restitution or unjust enrichment damages. The three judges that decided TAOS v. Renesas (Fed. Cir. 2018) did not believe a jury should decide restitution for trade secret misappropriation. A different three-judge panel in TCL v. Ericsson (Fed. Cir. 2019) took a contrary position, holding that a jury should decide restitution for defendant’s past unlicensed sales of products infringing plaintiff’s patents.…

The Defend Trade Secrets Act (DTSA) provides a private right of action under federal law for trade secret misappropriation. It extends to reach a foreign corporation’s conduct occurring outside the United States “if . . . an act in furtherance of the offense was committed in the United States.” 18 U.S.C. § 1837(2). However, the DTSA does not define “an act in furtherance” and until recently there was no case law addressing the question; absent…

Judge Davila’s treatment of trade secrets in his exemplary damages award in BladeRoom v. Emerson echoes substantially similar if not the same themes as Professor Lemley in his “IP Rights” theory of trade secrets In addition to $30 million in compensatory damages, Judge Davila has awarded $30 million in exemplary damages to BladeRoom and against Emerson for willful and malicious misappropriation of BladeRoom trade secrets. The misconduct that compelled the court to award exemplary damages…

“No,” says the court in BladeRoom v Facebook et al.  “Yes,” says the court in O2 Micro v. Monolithic Power. Can these different results be reconciled and can a rule for apportioning damages between trade secrets be derived from the inquiry? Yes and yes. BladeRoom v. Facebook et al. BladeRoom is ND of California case in which plaintiff BladeRoom asserted misappropriation of trade secrets under California’s version of the Uniform Trade Secret Act (CUTSA). The…

Yesterday evening, the district court in the trade secret litigation Waymo v. Uber et al [3:17-cv-939-WHA] issued revised jury instructions on trade secret misappropriation and proposed special verdict form (Dkt. #2499). The revised instructions retain the requirement in earlier drafts of the instructions that Waymo must show Uber actually used the improperly acquired trade secrets in order to recover unjust enrichment damages. With due respect to the very hard work of the court and the…

The Defend Trade Secrets Act (“DTSA”), on its face, creates a private action in district court for misappropriation occurring abroad.  Filing a DTSA claim in district court may in certain circumstances provide the best remedy for foreign trade secret theft over other alternatives such as filing a complaint with the International Trade Commission.  But over a year-and-a- half after the enactment of the DTSA, are there any decisions applying the DTSA to foreign trade secret…