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Posts Tagged ‘United States’

Tenth Circuit Denies Prejudgment Interest for Lack of Certainty Even Where Jury Found Lost Profits and Awarded Unjust Enrichment

In Damages, Prejudgment Interest, Sister State Construction of UTSA on August 16, 2011 at 5:15 pm
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In a trade secrets case where the jury awarded plaintiff ClearOne Communications, Inc. damages on lost profits and unjust enrichment, the Tenth Circuit held that prejudgment interest was not appropriate because the damages calculations were based on speculation and assumptions and lacked the mathematical certainty required to justify an award of prejudgment interest.  ClearOne Communications v. Chang, et al., 2011 WL 3468215, No. 09-4128 (10th Cir. Aug. 9, 2011) (slip op.).

Background

ClearOne licensed to Biamp Systems Corporation an acoustic echo cancellation (AEC) algorithm for an average price of $83.49 per channel in 2002. Id. *1. In 2004, WideBand Solutions, Inc. and associated individual defendants agreed to develop AEC software for Biamp and allegedly developed said software based upon ClearOne’s trade secret computer code. Id. Biamp stopped making payments to ClearOne and instead began a licensing agreement with WideBand in 2005. Id. Biamp allegedly used the infringing code to develop its product.  Id. In 2006, Biamp developed its own technology and stopped licensing WideBand’s allegedly illicit code. Id.

Damages Calculations

ClearOne’s damages expert Richard Hoffman calculated lost profits and unjust enrichment. Id. Hoffman calculated lost profits by multiplying the number of channels Biamp licensed from WideBand by $83.49 (the average price per channel from the ClearOne/Biamp contract). Id. The jury found that ClearOne was entitled to $956,000 in lost profits against the WideBand defendants, and $956,000 in lost profits against Biamp. Id. Read the rest of this entry »

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50 State Noncompete Survey Shows That California Is in Rare Company

In Noncompetes on February 5, 2011 at 8:13 am
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A 50 state noncompete survey shows that California is in elite company with respect to its general prohibition against noncompete agreements.  North Dakota and Oklahoma are the only other states to disallow noncompetes.

By CHARLES JUNG

 

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Southern District Holds That Misappropriation of Trade Secrets Claim Properly Pled Even Where Complaint Lacks Allegation of Use to Plaintiff’s Detriment

In Motion to Dismiss on November 17, 2010 at 7:47 am
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The Southern District of California denied a motion to dismiss a claim for misappropriation of trade secrets even where counter-claimant does not allege plaintiff’s use of the trade secret to counter-claimant’s detriment.  Young v. Fluorotronics, Inc., No. 10cv976-WQH-BGS, 2010 WL 4569996 (S.D. Cal. Nov. 3, 2010) (slip op.).

Background

Plaintiff John Young, M.D. filed a complaint against Fluorotronics, Inc. and others relating to his investment in Fluoro-Raman technology, which was purported to be a portable, non-destructive and rapid screening device able to detect problems with food and drugs before they are distributed and detect counterfeit drugs.  Id. *1.  Plainitff alleged that the Private Placement Memorandum and Balance Sheet falsely stated that Fluorotronics was the owner of the “iStar ICCD Intensified CCD Detector Head camera” (“Camera”) and “certain Laser Equipment” (“Laser”). Id. Young for himself and others invested in Fluorotronics, but contrary to the representations of defendants, Fluorotronics allegedly did not own the Camera, but borrowed it from Andor Technology.  Id. **1-2.  When Fluorotronics failed to pay Andor for the camera, Young purchased it from Andor. Id. *2.  Plaintiff brought claims for (1) fraud; (2) negligent misrepresentation; (3) intentional misrepresentation; (4) securities fraud in violation of the Securities and Exchange Act of 1934, Section 10(b) and Rule 10b-5; (5) sale of unregistered securities; (6) breach of fiduciary duty; (7) violation of Section 1507(a) of the California General Corporation Law; and (8) violation of Section 2201 of the California General Corporation Law. Read the rest of this entry »

Defendant Pleads Guilty to Charge of Criminal Theft of Trade Secrets, 18 U.S.C. § 1832, and Faces, Inter Alia, up to 10 Years in Prison and Deportation

In Criminal Theft of Trade Secrets on November 16, 2010 at 9:33 am
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The U.S. Attorney’s office announced that a defendant entered a guilty plea to a charge of theft of trade secrets from Bristol-Myers Squibb, in violation of Title 18, United States Code 1832.  According the U.S. Attorney, the defendant Shalin Jhaveri holds a Ph.D. from Cornell University and was employed at the time of his arrest in February of 2010 as a Technical Operations Associate in Bristol-Myers’ management training program.  The U.S. accused defendant of stealing trade secrets during his employment with Bristol-Myers and devising a plan to convert them to his own use.  At the time of his arrest, Jhaveri was allegedly meeting in a Syracuse hotel room with an individual he believed was an investor willing to finance a business venture Jhaveri planned to start in his native India.  According to the U.S. Attorney, Jhaveri transferred Bristol-Myers trade secrets to this investor, an individual he knew was not employed by or associated with Bristol-Myers in any capacity.

Jhaveri admitted the following as part of his plea: (1) while employed by Bristol-Myers in its management training program at its Syracuse facility, he devised a plan to steal trade secrets of Bristol-Myers and convert them to his own use; (2) he did steal trade secrets from Bristol-Myers, and in doing so used methods to disguise his actions and evade detection by the Company; (3) he communicated, using a specially created email account and password he set up expressly for that purpose, with an individual he knew was not employed by or affiliated with Bristol-Myers, who he believed to be an investor willing to finance a business venture Jhaveri planned to start in his native India; (4) Jhaveri discussed with and transferred to that individual trade secrets he had stolen from Bristol-Myers; and (5) when asked by this investor whether the information he had taken from Bristol-Myers was everything he needed, responded that it was.

Jhaveri also consented to the entry of an order of removal/deportation from the United States by an Immigration Judge, to take place upon completion of any jail term imposed, and to not seek relief or take an appeal from such order.  Jhaveri faces up to 10 years in prison, a $250,000 fine, up to three years of supervised release, and deportation.

Attorneys

Stephen C. Green was the Assistant United States Attorney prosecuting the case.

Defendant Counterclaiming for Trade Secrets Misappropriation Awarded $72,403 in Damages and $372,094 in Attorneys Fees

In Arbitration, Counterclaims, Judgments, Verdicts on November 3, 2010 at 6:34 am
Wachovia Securities
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Plaintiffs in a wrongful termination suit were denied any award after an arbitration, but one plaintiff was ordered to pay $72,403 in compensatory damages to defendant on, inter alia, misappropriation of trade secret counterclaims. Holland v. Wachovia Securities LLC, 2009 WL 7035871, 44 Trials Digest 13th 12 (S.D. Cal. Award May 18, 2009).

Background

According to court records: Plaintiff William Holland filed his Statement of Claim alleging that defendants Wachovia Securities LLC and Eugene P. Ingargiola, who was the manager of the Wachovia office where William was employed, had damaged him when they wrongfully terminated his employment on November 18, 2004.  Id. Among other things, plaintiff claimed that defendants had terminated him on account of his age and in a desire to re-assign his accounts to younger account executives whose percentage share in the revenues generated by those accounts would be less than plaintiff’s share had been. Id.

Holland’s son and co-worker, Michael W. Holland, also filed his own Statement of Claim in a separate proceeding, alleging that defendants had damaged him when his employment with Wachovia terminated very shortly after his father’s.  Id.

Wachovia counterclaimed, alleging, inter alia, that William Holland and Michael W. Holland violated the Computer Fraud and Abuse Act and misappropriated trade secrets. Id. Read the rest of this entry »

Plaintiffs Awarded Over $1 Million After Bench Trial in a Trade Secrets Case

In Judgments, Verdicts on November 2, 2010 at 11:41 am
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After a bench trial in San Francisco Superior Court, plaintiffs in a trade secrets case recovered judgment on the merits against certain defendants in the amount of $921,469, plus pre-judgment interest in the amount of $301,664, and punitive damages of $275,000.  UltraEx Inc. vs. Express It Delivery Services Inc., Case No., CGC-05-447942, 2010 WL 4260535, 44 Trials Digest 13th 5 (Cal. Sup. Ct. Verdict Date: April 1, 2010).

According to court records, on April 29, 1998, plaintiff UltraEx Inc. merged with two other corporations, Express It Courier Services Inc. (“Old Express It”) and 800 Courier Inc.  Id. *1. Plaintiff was the surviving corporation in this merger, but prior to the merger, Old Express It and 800 Courier had each been actively conducting a package delivery business in California.  Id. Defendant Express It Delivery Services Inc. (“New Express It”) was a California corporation formed in November 2004. Id. Read the rest of this entry »

Approaches to Damages in Trade Secret Cases

In Damages, Practice articles, Reasonable Royalty, Unjust enrichment on October 20, 2010 at 7:59 pm
Trade Secrets NL 03-01-2006
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Once a trade secret lawsuit progress beyond the preliminary injunction stage, the key battleground usually shifts to damages.  Assessing damages can be particularly difficult in a trade secret case because of the problematic uncertainty in measuring the value of trade secrets.  Marc Pensabene and Christopher Loh summarized some of the flexible approaches that plaintiffs and defendants might pursue in arguing for and against trade secrets damages calculations.

From the plaintiff’s perspective, the authors offer the following aggressive approaches (not all of which have been accepted by California courts):

  • In calculating lost profits, argue that the amounts should include not only lost sales that were diverted from the plaintiff to the defendant, but also losses attributable to price erosion or to increased costs cause by the misappropriation, such as the costs of an advertising campaign to recoup market share stolen by defendant
  • Argue for provable future profits, overhead costs, general and administrative expenses, lost profits on reorder or spare parts or other natural follow-on items
  • Ask the court to calculate plaintiff’s lost profits by applying the defendant’s profit margins to the plaintiff’s lost sales
  • In seeking unjust enrichment, if the defendant does not incorporate the trade secret into a product but rather uses it to promote its existing products or to develop new and different products, ask for a portion from those products
  • If plaintiff is unable to prove lost profits or unjust enrichment, seek development costs (so-called “head-start” damages), the diminution of the value of the plaintiff’s business or stock, or a reasonable royalty based either on the actual royalties that have been paid to the plaintiff, or a hypothetical royalty that the litigants would have negotiated at the time of the misappropriation Read the rest of this entry »

California Trade Secrets on Holiday This Week

In Blog Status on October 18, 2010 at 4:54 pm

[Interior of Coliseum, Rome, Italy] (LOC)

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I am traveling this week, so California Trade Secrets will be updated less frequently.  I’ll resume daily updates next week, October 26, 2010.
Cheers!
Charles Jung

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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

Study Shows Courts Fail to Rely on Sister-State UTSA Law as Source of Case Law Precedent

In Uncategorized on October 8, 2010 at 10:11 am
Omar, mining town, West Virginia, 1935.
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The University of Pennsylvania Law Review’s PENNumbra published an essay by discussing whether, in the thirty years since the creation of the Uniform Trade Secrets Act (UTSA), courts actually look to sister states in interpreting the law. See Michael Risch, Essay, A Failure of Uniform Laws?, 159 U. PA. L. REV. PENNUMBRA 1(2010).   The author focuses on West Virginia as a test case because of the jurisdiction’s complete absence of state court trade secret case law, both before and after passage of the UTSA.

The author concludes that “the UTSA fails the test of uniformity because it is not being used as a source of case law precedent. Instead, older common law is being used.”  Even West Virginia federal courts have looked to outside precedent based on the Restatement (Second) of Torts, rather than the UTSA:

The West Virginia experience implies that the UTSA fails as a uniform source of precedent for sister states that adopt it. When faced with a lack of home-state-court guidance, West Virginia federal courts look to out-of-state precedent based on the Restatement (Second) of Torts, the primary source of trade secret common law. Indeed, when faced with collateral trade secret questions, such as litigation discovery protective orders, West Virginia’s own Supreme Court also looked to non-UTSA precedent.

By CHARLES JUNG