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Posts Tagged ‘Services’

Trade Secrets Basics for Small Businesses

In Seminars and MCLE on October 12, 2010 at 10:54 am
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Steve Obenski  posted a useful video directed to small business, entitled Trade Secrets for Small Businesses 101.  In the video, he discusses what a trade secret is, ways to protect trade secrets, and limitations of trade secrets compared to patent and other areas of intellectual property law.

By CHARLES JUNG

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Southern District Requires Plaintiffs in CUTSA Case to Post $800,000 Bond for Fees and Costs Pursuant to California Code of Civil Procedure § 1030

In Bond on September 26, 2010 at 12:25 pm
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The United States District Court for the Southern District of California required plaintiffs in a UTSA case to post an $800,000 bond for fees and costs, pursuant to California Code of Civil Procedure section 1030.  Gabriel Technologies Corporation v. Qualcomm Incorporated, No. 08 CV 1992 MMA (POR), Slip Copy, 2010 WL 3718848 (S.D. Cal. Sept. 20, 2010).

The action arose out of events related to technology licenses and related joint ventures between Plaintiffs and their predecessor in interest, and Defendants.  Id *1.  In the Fourth Amended Complaint, Plaintiffs assert claims for: (1) Breach of the Amended and Restated License Agreement; (2) Correction of Inventorship (pursuant to 35 U.S.C. § 256); (3) Declaratory Judgment of Ownership Interest in the Patents (pursuant to 28 U.S.C. § 2201); and (4) Misappropriation (pursuant to Cal. Uniform Trade Secrets Act). Id. *2. Defendants filed a motion for a cost bond under California Code of Civil Procedure section 1030. Id. The Court also has authority under Civil Local Rule 65.1.2(a) to require Plaintiffs to post a bond “where authorized by law and for good cause shown.” Read the rest of this entry »

Northern District Applies Cal. Code Civ. Proc. § 2019.210 Pre-Discovery Disclosure Requirements

In C.C.P. § 2019.210 Pre-Discovery Disclosure, Discovery on September 11, 2010 at 10:12 am
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The Northern District applied California’s trade secret disclosure procedure, and found Plaintiff’s disclosure partially sufficient.  M.A. Mobile Ltd. v. Indian Institute of Technology Kharagpur, No. C08-02658 RMW (HRL), 2010 WL 3490209 (N.D. Cal. Sept. 3, 2010) (slip op.). Read the rest of this entry »

Is Trade Secret Protection Better Than a Patent?

In Patents and Copyrights on August 12, 2010 at 4:55 pm

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R. Mark Halligan has published an excellent article in the American Bar Association’s Landslide.

Since every patent starts out as a trade secret, Mr. Halligan discusses whether, given the trends in patent law, it makes sense for the holder of a trade secret to pursue patent protection.

Patent applications face a Catch-22 in pursuing patents.  By “pursuing patent protection unsuccessfully, the inventor has lost both patent protection and trade secret protection because the business method is now in the public domain. This is the ‘Catch-22’ with any patent application disclosed to the public during the USPTO patent prosecution proceedings in the United States. The moment the patent application is published, any trade secret rights in the patent application are vitiated. Then if the patent does not issue, the inventor has lost all proprietary protection. In hindsight, the inventor would have been better off keeping the commercially valuable information secret if patent protection is uncertain.”

Today patents are harder to get and harder to defend.  Halligan discusses how in light of recent patent law cases, the scale has now tipped in favor of pursuing a trade secrets strategy over pursuing a patent application.  See, e.g., In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d (BNA) 138 (Fed. Cir. 2008); KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007); Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007).

Mr. Halligan concludes that:

it is now time for the intellectual property bar to revisit the decision whether to protect commercially valuable information as a trade secret asset or a patent asset. In recent years, decisions by the U.S. SupremeCourt and other developments in the law have circumscribed the once broad protection afforded to patent holders as well as remedies available to patent holders. Upon consideration of all the issues discussed in this article, the protection of such assets as trade secrets may provide a better choice for your clients in today’s environment.

By CHARLES H. JUNG

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Protecting Trade Secrets in China is Top Priority for Group of In House Intellectual Property Attorneys

In Conferences, Criminal Theft of Trade Secrets, International on August 11, 2010 at 9:03 pm
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Protecting trade secrets when doing business in developing countries has long been a concern of intellectual property attorneys.  Protecting American trade secrets in China was identified as a top priority amount a group of in-house intellectual property attorneys at a the American Bar Association‘s annual conference which was held at the Moscone Center in San Francisco this morning.

Amy Miller of Legal Pad reported on some perspectives shared at the conference:

Gary Loeb, vice president of intellectual property at Genenetech, Inc., said that during litigation he fights aggressively to keep his company’s secret information confidential. “It’s a battle we take very seriously,” he said. “It’s something that makes our cases very expensive.”

Scott Piering, senior IP lawyer at Cargill, Incorporated, said . . . . [that] Cargill has had less success keeping their trade secrets secret when doing business in China. Dealing with corporate espionage is just the price of doing business there, he said. So his company doesn’t take its best trade secrets to China, but Cargill has taken some calculated risks in the country, and said it’s expected that trade secrets will be stolen. “It keeps me up at night constantly,” he said.

Robert Lindefjeld, general counsel and chief IP counsel for Nantero, Inc., said he hasn’t figured out how to deal with corporate spying in China either. His strategy is to just maintain a strong patent portfolio in China. “I used to file every single patent overseas,” he said. “Now I only file key patents because it’s so expensive.”

You can read the article here.

By CHARLES H. JUNG

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Mere Reference to Patent Does Not Confer Federal Jurisdiction Over UTSA Claim

In Federal Jurisdiction on August 2, 2010 at 10:28 am
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In this next case, Judge James Lorenz of the Southern District of California runs through a federal question analysis and concludes that Plaintiff’s mere reference to the fact his intellectual property is patented does not convert a state law UTSA claim into a federal question that can impart original jurisdiction in the federal courts.  Markey v. Verimatrix, Inc., 2010 WL 2976164 (S.D. Cal. July 22, 2010) (slip op.).

A careful review of plaintiff’s misappropriation of trace secret claim as found in the complaint does not suggest a basis for federal jurisdiction. The issue presented for decision is not whether plaintiff’s patents are valid or invalid or are or are not being infringed but whether his intellectual property was misappropriated. Mere reference to the fact that plaintiff’s intellectual property was patented does not turn on a substantial question of federal law. Plaintiff is not seeking to prove his trade secrets are protected under federal patent law and that defendant infringed on the patent. And the Court is not called to determine in any manner the scope and meaning of plaintiff’s patent in order to consider the alleged trade secret misappropriation. The misappropriation of trade secret claim does not ‘turn on substantial questions of federal law,’ and does not ‘really and substantially involv[e] a dispute or controversy respecting the validity, construction or effect of [federal] law.’ “ Williston Basin, 524 F.3d at 1102. Instead, the sole remaining claim in the complaint is based solely on California law. As a result, the Court does not have original jurisdiction over plaintiff’s claim.

By CHARLES H. JUNG

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