Greenfield Draa & Harrington

Ending Damages for Trade Secret Misappropriation before the Loss of Secrecy

By Dave Bohrer

May 19, 2020

Head Start vs Secrecy — Can damages end before trade secrets lose secrecy?

This is the next in a multi-part discussion of measuring the accounting period for trade secret damages. The common theme across these discussions is the need to untether the liability requirement of secrecy from the damages goal of awarding as much as necessary (but no more than) to eliminate unfair competition. Similar versions of the first and second parts of this series can also be found on the LinkedIn. Our previous article posed the question…

Flat Fee IP

Extending Damages for Trade Secret Misappropriation beyond the Loss of Secrecy

By Dave Bohrer

April 22, 2020

Disclosure of Trade Secret Image resized 744_418 — What happens to damages when trade secrets revealed (=destroyed)?

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…

Flat Fee IP

Is There a Right to Jury Trial on Unjust Enrichment Damages for Trade Secret Theft

By Dave Bohrer

January 8, 2020

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.…

Flat Fee IP

Extending Defend Trade Secrets Act to Reach Overseas Theft of Trade Secrets

By Dave Bohrer

August 29, 2019

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…

Flat Fee IP

Judge Davila Channels Prof. Lemley

By Dave Bohrer

April 19, 2019

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…

Flat Fee IP

Must Damages Be Apportioned on a Trade Secret-by-Trade Secret Basis?

By Dave Bohrer

June 4, 2018

“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…

Flat Fee IP

Waymo Jury Instructions Require “Use” Without Sufficiently Explaining “Use”

By Dave Bohrer

January 4, 2018

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…

Flat Fee IP

Why Aren’t There More Cases Applying the Defend Trade Secrets Act to Foreign Theft?

By Dave Bohrer

November 28, 2017

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…

Flat Fee IP

Court Denies Motion to Transfer Venue Based on TC Heartland in Currently Pending Patent Case

By Dave Bohrer

June 12, 2017

The U.S. Supreme Court’s May 22, 2017 decision in TC Heartland effectively shifts a significant number of patent litigations out of courts previously deemed acceptable to courts in other venues in which the defendant corporation is incorporated. In reaching this decision, the Supreme Court relied upon its 1957 decision in Fourco Glass interpreting the patent venue statute. Defendant corporations in Cobalt Boats v. Sea Ray Boats and Brunswick, a patent case scheduled to start trial in…

Flat Fee IP

Extending US Trade Secret Law to Reach IP Theft in China: An ITC Lawyer’s Reply

By Jonathan Engler

May 2, 2017

Dave Bohrer’s recent post Extending US Trade Secret Law to Reach IP Theft in China discusses what to do when your company’s Chinese joint venture makes off with your trade secrets in China. The post suggests it may be possible to bring an action in US court extending either federal or state trade secret law extraterritorially to reach the misconduct in China. In response to Dave’s post, I suggest that there is another, complementary alternative…

Greenfield Draa & Harrington

Greenfield Draa & Harrington Blogs

Blog Authors

Ending Damages for Trade Secret Misappropriation before the Loss of Secrecy

Extending Damages for Trade Secret Misappropriation beyond the Loss of Secrecy

Is There a Right to Jury Trial on Unjust Enrichment Damages for Trade Secret Theft

Extending Defend Trade Secrets Act to Reach Overseas Theft of Trade Secrets

Judge Davila Channels Prof. Lemley

Must Damages Be Apportioned on a Trade Secret-by-Trade Secret Basis?

Waymo Jury Instructions Require “Use” Without Sufficiently Explaining “Use”

Why Aren’t There More Cases Applying the Defend Trade Secrets Act to Foreign Theft?

Court Denies Motion to Transfer Venue Based on TC Heartland in Currently Pending Patent Case

Extending US Trade Secret Law to Reach IP Theft in China: An ITC Lawyer’s Reply

Stay Connected

Company

Support

New to the Network

Greenfield Draa & Harrington Blogs

Blog Authors

Latest from Greenfield Draa & Harrington