Identifying the Trade Secrets During Litigation (RECORDING)
A central part of any litigation alleging trade secret misuse is identification of the trade secrets claimed to be at issue. Unlike other areas of intellectual property law where rights are defined by a single document prior to a dispute, trade secrets are often not defined until litigation. Defining the trade secrets is a challenging issue for the parties and for the courts, who may need to guide discovery into trade secret claims and fashion or approve appropriate relief if misappropriation is shown. How and when the trade secrets are identified can have a dramatic impact on the progress and outcome of the case.
A plaintiff may face competing tensions. Often the plaintiff may not have full information at the outset of litigation about what trade secrets the defendant appears to have misappropriated or is misappropriating. The plaintiff may not want to be too specific in defining its trade secrets for fear of overlooking information it is unaware defendant has placed at risk. However, plaintiffs may also fear that if they are over-expansive in defining their trade secrets, they may reveal information that defendant does not yet know, in which case the litigation itself could expand defendant’s knowledge of the plaintiff’s trade secrets. Many plaintiffs would rather delay the identification to the later stages of the litigation after learning more about the defendant’s acts. By contrast, most defendants would like an early definition of the trade secrets with as much specificity as possible so they know how to defend themselves. The information claimed to be at issue may not qualify to be a trade secret at all, the defendant may never have seen it, or the defendant may have its own trade secrets to protect from intrusive discovery.
In this IPO Chat Channel session, the panel will discuss considerations underlying trade secret identification for U.S. trade secret litigation. The panel will discuss litigation and legislative trends concerning the timing and scope of the trade secret identification, looking at cases brought under state law as well as under the Defend Trade Secret Act of 2016.
Ken Corsello (IBM)
Victoria Cundiff (Paul Hastings)
Eric Fues (Finnegan)
Ken Corsello is an IP law counsel at IBM. He currently focuses on drafting and negotiating IP licenses and assignment agreements. During his 14 years at IBM, he has worked on patent procurement, litigation, client counseling, product clearance, and IP transactional matters. Before joining IBM, Ken was a law clerk to Chief Judge Glenn Archer at the Federal Circuit; an Associate Solicitor in the USPTO; and in private practice at law firms in Washington, D.C. Ken has been the chair of IPO’s Trade Secrets Committee since 2016. His recent speaking activity on trade secret issues includes testifying in 2018 as a witness on behalf of IPO at a hearing on “Safeguarding Trade Secrets in the United States” held by the U.S. House Committee on the Judiciary, Subcommittee on Courts, Intellectual Property, and the Internet.
Paul Hastings LLP
Victoria Cundiff is a partner at Paul Hastings in New York. She is a leader of the Firm’s nationally ranked global trade secrets litigation practice, which is ranked in “Tier 1” by Legal 500. She has been named a “Leading Lawyer” nationally in the field by Legal 500 and has litigated trade secret and related cases throughout the United States and as a member of cross-border teams. She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside of court and advises on lawful competitive intelligence gathering. Vicki is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law, and at the University of Pennsylvania Law School, where she teaches trade secrets law.
Eric Fues is a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s Washington, D.C. office. He represents clients in domestic and international technology disputes, including patent and trade secret litigation at trial and appellate levels. Eric has been involved in more than 50 district court matters and U.S. International Trade Commission (ITC) investigations. Eric’s practice also includes client counseling. He has been recognized by The Legal 500 U.S. for trade secrets work, and by Intellectual Asset Management as a leading patent litigator in the D.C. area and for his ITC practice. Eric previously served as president of the ITC Trial Lawyers Association, and as leader of Finnegan’s chemical and metallurgical practice group.