TRADE SECRETS

Trade secrets are more than just an “IP issue” or an “employment matter.” To effectively manage and protect an organization’s trade secrets, all of the pieces must be pulled together in a robust and comprehensive effort. Unlike some other firms, Nixon Peabody takes a complete 360-degree approach to trade secrets. We understand the content that is at risk and we know how to protect it effectively—through proper technology applications, procedures, training, communications, and, if necessary, litigation or other dispute resolution.

Nixon Peabody’s Trade Secrets team is made up of seasoned professionals that have extensive experience dealing with all aspects of trade secret identification and protection. Our team is composed of more than 20 attorneys from across the firm who have significant experience protecting clients’ trade secrets through preventive efforts and litigation. Our lawyers come from our Intellectual Property, Labor & Employment, Business Litigation, Government Investigations/White Collar, and Information Law practices.

Comprehensive trade secret services

• Trade secret protection program reviews and evaluations
• Employee, manager, and executive training
• Investigations into trade secret loss or theft
• Trade secrets litigation, including matters involving the Uniform Trade Secrets Act, the Computer Fraud and Abuse Act, the Economic Espionage Act, and other state and federal statutes
• Employment agreement drafting and enforcement
• Preliminary injunctions and restraining orders
• Trade secret licensing and related antitrust issues
• Expert witness engagements
• Spoliation and electronic evidence discovery issues
• Non-disclosure and confidentiality agreements
• Trade secret protection programs and incident response protocols
• Trade secret policies, procedures, and best practices for trade secret asset management
• Proprietary intellectual asset/portfolio development strategies

Asset protection

A business’ most valuable corporate assets are likely not sitting in a vault or on a balance sheet—but in hard drives, file cabinets, notebooks, and in its employees’ heads. This information is crucial to the success of a business, and in the hands of a competitor can be a devastatingly powerful competitive advantage.

• Customer and supplier lists
• Manufacturing processes and drawings
• Software source codes
• Marketing and business plans
• Designs and creative concepts

Non-disclosure agreements and restrictive covenants

We draw upon our enforcement experience to develop appropriate, enforceable restrictive covenants and contractual provisions that address state-specific issues that can protect employees from trade secret misappropriation and minimize the potential for litigation. In addition, we can train employers on best practices in educating their workforces on their trade secret obligations and protocols for protecting their data and information.

24/7 rapid response

We understand that trade secrets issues often require lightning-fast action. Our Trade Secrets team has a track record of responding to client needs in 24 hours or less. Whenever or wherever we are needed, members of our team can be on the ground and in a courtroom, if necessary, filing or responding to a TRO or other injunctive relief. We have experience protecting our clients’ interests and assets across all 50 U.S. states and in foreign countries. Speed counts in trade secrets—and we deliver a rapid response for our clients.

Life sciences

Our Trade Secrets team actively works with many companies in the life sciences industries. These innovative companies rely upon trade secrets in almost every aspect of their operations. Establishing effective protocols in regard to this confidential information is particularly critical to clients in this field. We have served as counsel for life sciences clients establishing trade secrets policies. We also provide advice on breach issues and litigate related matters for these clients.

Representative engagements

• Trial counsel for a defendant in a trade secret misappropriation lawsuit involving the alleged misappropriation of trade secrets relating to emergency airstrip lighting systems.
• Trial counsel for defendants in a trade secret misappropriation lawsuit involving acoustic echo cancellation technology.
• Trial counsel for a beverage can company in a trade secret misappropriation lawsuit involving ultrasonic technology for sealing beverage cans.
• Trial counsel for the manufacturer of plastic films, nonwovens, and laminates for personal care, packaging, and specialty markets in a trade secret misappropriation case involving proprietary elastic films and laminate technologies.
• Trial counsel for an international company involving proprietary technology relating to zinc extraction technologies.
• Counsel for medical device manufacturer in action to enjoin former employee group’s use of stolen trade secrets, including customer lists and business plans.
• Counsel for medical device manufacturer to prevent the marketing of competing products and to recover damages based on theft of trade secrets, including source code used in key product and based on theft of ideas and research developed for new products, including patentable claims.
• Special counsel for a major company in an economic espionage investigation.
• Counsel for a restaurant chain in a lawsuit involving the alleged misappropriation of recipes and knowhow by former employees.
• Counsel for a precision cutting tools manufacturer in a trade secret misappropriation lawsuit involving proprietary manufacturing equipment and manufacturing processes.
• Counsel for staffing firm on trade secret matter involving the firm’s customer list.
• Counsel for entrepreneurs accused by former employers for basing the new enterprises on trade secrets from their previous firms.
• Advisor for many companies on trade secret asset management programs—trade secret audits, policies, and other protective measures.
• Counsel to an international oil and gas trading firm. We defended a claim for theft of trade secrets and employee raiding.
• Counsel to a technology company as a plaintiff in a major employee raiding case involving a single facility and the use of customer lists by a major competitor.
• Counsel to a major insurance brokerage where a former employee had taken the electronically stored database of customer information.
• Counsel to semiconductor equipment manufacturer in action to prevent former employee’s use of trade secrets, including customer information and business opportunities, to lure business, and to recover for theft of trade secrets, including technical formulae for design and production of products. The case also involved defense of cross-claims by former employee for defamation (arising from alleged publication of facts of employee’s trade secret theft), interference with prospective business advantage, and breach of contract and application of statutory privilege to such claims.