Companies rely on Mayer Brown’s comprehensive and strategically tailored approach to combat trade secret misappropriation by identifying, maintaining, enhancing and protecting their assets on a global basis. Mayer Brown’s global team of trade secret practitioners effectively negotiates agreement terms and develops internal programs and policies to ensure that our clients’ trade secret assets are properly identified and maintained. When there is a misappropriation, our team helps clients act quickly and aggressively to limit any harm and reassert control over their trade secret material. If those agreements are breached, or when allegations of misappropriation arise, we are well-positioned to advocate before arbitral panels and trial and appellate courts around the world.
Trade Secret Counseling
We assist our clients with the protection of trade secrets with the goal of never having to reach the courtroom. Leveraging the highly experienced lawyers in both our IP and Employment practices, we work with clients to address the confidentiality issues that frequently arise in the workplace by implementing effective restrictive covenants, non-competes and confidentiality/non-disclosure agreements. We also help companies create trade secret protection programs and regularly conduct seminars on trade secret protection and misappropriation to educate employees about the importance of ensuring the confidentiality of trade secrets and know-how.
Additionally, applying Mayer Brown’s extensive integration of competition and IP law, we address antitrust aspects of license, non-competition, non-disclosure and confidentiality agreements. As with all our IP counseling, the goal is to ensure the strategic success of our clients’ investment of time and money for IP development.
Trade Secret Litigation
Mayer Brown’s IP lawyers have extensive experience representing clients in the prosecution and defense of trade secret lawsuits and proceedings. We have successfully represented clients in ownership disputes with their joint venture partners; in cases of trade secret theft by former employees; and in response to competitors’ attempts to reverse engineer our clients’ technologies. Using an aggressive litigation strategy, we have obtained favorable results in the form of equitable relief, monetary damages (including multimillion-dollar verdicts) and negotiated settlements before arbitral panels and trial and appellate courts around the world.
In addition to defending our clients from claims of trade secret misappropriation, we have assisted in developing defensible “design-around” or “reverse-engineered” substitutes to avoid any liability for trade secret claims.
Our IP lawyers work closely with Mayer Brown’s nationally recognized Supreme Court & Appellate practice to get the best results for our clients on appeal. Our appellate lawyers have argued hundreds of cases in federal and state appellate courts and more than 220 cases before the US Supreme Court. Chambers USA noted that “with [Mayer Brown’s] strong Supreme Court track record the firm is the first port of call for many high-profile appeals,” and that our “stellar appellate practice is an outstanding choice for complex, high-stakes cases.”
Also, as Legal 500 has noted, Mayer Brown’s practice “melds ‘outstanding written advocacy, excellent judgment, and legal knowledge.’” In 2020, the IP practice was recognized by the Legal 500 USA for Trade Secret Litigation.
Temporary Restraining Orders
In scenarios where time has been of the essence, Mayer Brown has successfully obtained ex parte temporary restraining orders (TROs) to stop misappropriators in their tracks and maintain the status quo pending resolution of our clients’ claims. On the defense side, Mayer Brown has successfully and expeditiously lifted TROs obtained by adversaries.
Mayer Brown has successfully obtained preliminary injunctions against corporations and individuals and has also defeated adversaries’ attempts to obtain injunctions against our clients.
We have helped to shape the state of the law with respect to establishing irreparable harm sufficient to obtain injunctive relief.
We have obtained permanent injunctions for our clients that indefinitely prohibit the use and dissemination of our clients’ trade secret material by misappropriators, providing clients with long-term protection and security for their IP assets.
Mayer Brown is a leader in the area of electronic discovery, and we understand the particular sensitivity of e-discovery issues in the intellectual property realm, where the vast majority of business information is created and stored electronically in a multitude of formats in a variety of locations. We have substantial experience in trade secret matters involving a wide range of computer-related misappropriation, including the use and misuse of flash drives and other external devices, e-mail privileges and cloud services and drop boxes. We have worked closely with renowned experts in the field of computer forensics to pursue and defend trade secret litigation.
We also ensure that our clients use proper collection and review protocols to avoid spoliation claims that the relevant data was not adequately preserved and produced. In an offensive posture, we are able to detect flaws in the collection and production methodologies employed by our opponents and have a keen eye on any failures to disclose evidence. We have successfully argued spoliation motions against our adversaries seeking adverse inferences and sanctions.
- Faiveley Transport. We achieved a significant trial victory for Faiveley Transport in a trade secret case against a key competitor, Wabtec Corporation. Faiveley claimed that Wabtec had improperly used Faiveley manufacturing drawings containing trade secrets required to make certain train brake parts. Wabtec sought to dismiss the complaint on several grounds, including that the claims were barred by res judicata due to a prior related arbitration. After a week-long jury trial, our client received a verdict of $18.1 million for past and future compensatory damages. On appeal, the Second Circuit issued its decision in favor of the Faiveley Entities, affirming damages of $15 million plus interest (offsetting an amount obtained by Faiveley in a prior arbitration). This award ranks as one of the highest recorded damages awards in New York courts for trade secret misappropriation.
- Avago Technologies Limited, Avago Technologies U.S., Inc. and Avago Wireless IP. We represented Avago Technologies Limited, Avago Technologies U.S., Inc. and Avago Wireless IP (collectively “Avago”) before the US District Court for the District of Arizona in a trade secret, patent infringement and antitrust action related to film bulk acoustic resonators, which are radio frequency electronic components used in mobile devices such as cell phones, smart phones and tablets. TriQuint contended that Avago infringed three patents and that Avago monopolized and/or attempted to monopolize markets for bulk acoustic resonator devices. Avago filed counterclaims that TriQuint infringed ten patents, and that TriQuint misappropriated Avago’s trade secrets and was liable for copyright infringement. We uncovered evidence that TriQuint employees deleted large amounts of information relevant to Avago’s trade secret misappropriation claims. This case settled on very favorable terms before the trial date set in July 2012.
- UAL Corporation and United Airlines. We successfully defended UAL Corporation and United Airlines against claims by Applied Transport Solutions, Inc. (ATS) that United allegedly misappropriated trade secrets and breached a confidentiality agreement in connection with its door-to-door baggage service program. The plaintiff alleged that it presented a model for development of a door-to-door program to United and proposed a joint venture related to its implementation.
- The Big Ten Conference. We successfully defended The Big Ten Conference in federal and state lawsuits in Illinois alleging, among other claims, misappropriation of trade secrets in violation of the Illinois Trade Secrets Act, fraudulent registration of trademarks under the Lanham Act and conversion and misappropriation of trademarks. The plaintiff claimed that in the late 1990s he presented a confidential, written business plan to The Big Ten proposing the development of the Big Ten Network, a satellite television network devoted to Big Ten Conference sports programming, and that The Big Ten rejected his proposal, stole his idea and developed its own Big Ten Network. We secured dismissal of the plaintiff’s federal lawsuit and we persuaded the state court that the plaintiff failed to allege sufficient facts to establish any protected trade secret. We successfully argued the appeal before the Illinois Appellate Court, which unanimously affirmed the lower court’s dismissal with prejudice; we then filed a written opposition with the Illinois Supreme Court to the plaintiff’s leave for appeal. The Supreme Court denied the plaintiff’s petition in November 2011, which ended the proceedings.
- Design Ideas Limited. We successfully settled a case brought against a distributor for trade secret misappropriation, trademark infringement and unfair competition. The case arose out of a long-standing dispute between two joint venture partners who both claimed intellectual property rights in the invention, commercialization and exploitation of decorative gel polymer products. The case involved an analysis of the trade secret, trademark and antitrust laws of a number of jurisdictions around the world.
- Laticrete International, Inc. We are representing Laticrete International, Inc., in a theft of trade secrets case following the departure of two of Laticrete's employees, who went to work for Mapei Corporation, one of Laticrete’s leading competitors. We obtained forensic evidence of the theft by the two employees in a compressed time frame and successfully secured a Temporary Restraining Order, along with an Order to Show Cause why a Preliminary Injunction should not issue. We later convinced the court that a Preliminary Injunction should issue as well. The litigation is ongoing.
- Nestlé USA. We represented Nestlé USA in a hotly contested five-year case against its number-one competitor, Mars, Inc., involving claims and cross-claims of global trade secret misappropriation, unfair competition and tortious interference. The case was resolved via mediation shortly before trial.
- Plant Equipment Inc. and Dialogic Communications Corporation. We represented two EADS companies, Plant Equipment Inc., dba PlantCML (PlantCML), and PlantCML’s wholly owned subsidiary Dialogic Communications Corporation (DCC). PlantCML and DCC engage in the business of mission critical communications and response technologies for public safety, business continuity and homeland defense. PlantCML and DCC filed a lawsuit alleging the theft of trade secrets and confidential and proprietary information, breach of confidentiality agreements and interference with prospective and ongoing business relationships by two former employees, as well as their new employer. Based on computer forensic investigation, we were able to establish the theft of trade secrets relating to communications systems via external drives. The case settled on favorable terms pursuant to a confidential mediation.
- Amgen. We successfully defended Amgen against claims by a company-sponsored health-care provider that Amgen was misappropriating trade secrets related to the manner in which the health provider compiled and analyzed medical data. We defeated an ex parte application for a TRO and the matter settled shortly thereafter on terms favorable to our client, reserving the right for our client to access the information at issue.
- Hudson Clean Energy Partners. We successfully defended Hudson Clean Energy Partners, an international client with UK and US offices, which hired an executive from a UK competitor. The plaintiff alleged that while still in its employ, the executive began performing competitive services for our client. The plaintiff alleged that our client allegedly engaged in unfair competition, induced alleged breaches of fiduciary duty and loyalty, and tortiously interfered with the plaintiff’s contract. We achieved an early settlement on favorable terms for our client, in which the executive continued working for our client.