Be Careful What You Ask For
The new Defend Trade Secrets Act for the first time lets you file your case in federal court. But just because you can do it doesn't necessarily mean you should. Federal court provides a lot of advantages for certain kinds of disputes.
But there can be a downside.
The Billion-Dollar Trade Secret Verdict
Well, not quite. But $940 million is a lot of money, and that's how much a federal court jury awarded on April 15, 2016 to Epic Systems, a Wisconsin healthcare software company, against the U.S. subsidiary of Tata Consultancy, part of the Tata Group headquartered in India. There may be a lot of lessons to come out of this case - and we don't know if the jury's award will be reduced - but what I want to talk about today is inspired by that verdict: how is it that trade secret damages can be so large? Read More.
Patents or Secrets: Do You Really Have to Choose?
Back in 1974, when a lot of people thought that trade secret law couldn't survive alongside a patent system that encouraged public disclosure, the Supreme Court in the Kewanee case patted us on the head and said, "don't worry," assuring us that anyone with a patentable invention would be crazy to elect secrecy instead. Patents were exclusionary and "strong" while secrets were "weak." And for a number of years after the Federal Circuit was formed it seemed that patents kept getting stronger all the time, while the risks of secrecy (what if my competitor gets a patent on this?) were pretty obvious.
Hardly a week goes by without seeing a post or article by some well-meaning lawyer who insists that the first step in protecting your trade secrets is to know what you have, therefore you need to do an "inventory." That's only half right: knowing what you own is critical, but you don't have to create a detailed list, as if you were ticking off the contents of a hardware store. In fact, you shouldn't do that. Read More.
The Case of The Buried Nondisclosure Agreement
Last month Caterpillar was hit with a $74 million jury verdict for trade secret misappropriation in the Eastern District of Illinois. The case was filed by Miller, a UK vendor that supplied Caterpillar with "couplers," a product that allowed quick changes of tools on excavators. After Caterpillar told Miller that it was switching to use a coupler of its own design, Miller sued, claiming that Caterpillar used Miller's confidential information in the development of the product, in violation of their "Supply Agreement." Read More.