Trade Secrets

In an ever competitive market place, protecting trade secrets from internal and external threats is increasingly essential to our clients' success. Trade secrets often represent the distinguishing information, technology or competitive edge that drive a company's business opportunities and a market place advantage developed at substantial expense of time and capital. Alston & Bird attorneys are experts at protecting this form of intellectual property from misappropriation and misuse. We counsel and advise clients on the best practices to identify and protect information that may constitute a valuable trade secret, and have substantial experience enforcing trade secret rights in both civil and criminal forums, including state and federal courts, as well as before the International Trade Commission. 

Our intellectual property lawyers have substantial experience in swift actions to enjoin misappropriation through temporary restraining orders and preliminary injunctions and are familiar not only with protection of trade secrets under the Uniform Trade Secrets Act adopted by many states, but also under the Computer Fraud and Abuse Act, which affords a federal forum for matters involving trade secret theft involving unauthorized computer access. 

We also have a depth of knowledge in successfully representing individuals and companies alleged to have misappropriated trade secrets. Our lawyers are skilled in the unique procedural aspects of trade secret litigation, which put our clients in the best position of defending themselves and may provide an opportunity to seek early resolution of the claims. Should the matter proceed, our lawyers rely upon our proven track record of good results in both bench and jury trials.

Representative Trade Secret/Patent Matters

• Responsible for the development and management of a worldwide patent portfolio, including numerous business method patents, for a major transportation services and logistics provider.
• Patent prosecution, technology licensing and assignments, and corporate transactions heavily involving intellectual property matters for one of the most recognized brands in diagnostic imaging.
• Handling of patent and trade secret matters for a well-recognized, branded consumer products company focused in the areas of over-the-counter drug, household cleaning and personal care products.
• Patent portfolio development, utilization strategy and counseling as to the patent rights of others for one of the world’s largest telecommunications companies.

Representative Trade Secret Litigation

• Deborah M. Manchester, Ph.D. v. Sivantos GmbH, Sivantos, Inc., et al. (C.D. Cal.): We defended Sivantos GmbH and Sivantos, Inc. against claims of breach of contract, trade secret, misappropriation, and fraudulent misrepresentation, among others. Following numerous discovery disputes and the plaintiff’s failure to produce certain documents, we obtained the plaintiff’s copyright submissions from the U.S. Copyright Office and presented this to the Court in a summary judgment motion. The Court held that the plaintiff’s copyright deposits constituted a public disclosure of her alleged trade secrets, which rendered the alleged trade secret no longer secret. The Court ruled in favor of Sivantos GmbH and Sivantos, Inc. on all claims and dismissed the case with prejudice.
• Certain Carbon & Alloy Steel Products, Inv. No. 337-TA-1002 (International Trade Commission): We represent respondent Shagang, China’s largest private steel entity, against US Steel over unique claims.  The false designation of origin claims were dismissed on summary determination after the Commission remanded them back to the ALJ after previous dismissal thereof.  The trade secret claims were settled.  The antitrust claims were dismissed by the ALJ and are now on appeal at the Commission, which held a very rare public hearing thereon.  This matter is important for several reasons and likely to be precedential.  First, antitrust claims have not been pled at the ITC for decades.  Second, state trade secret theft alleged by US Steel has never been redressed with Section 337.  Third, US Steel seeks a general exclusion order, requiring additional proof and heightened risk for Respondents.  Fourth, this is part of a larger campaign against Chinese steel, which could affect antidumping outcomes and US trade policy.  
• SCR-Tech, Inc. v. Steag Energy Services GmbH (N.C. Business Court): We currently represent the defendants against claims of trade secret misappropriation, intentional interference, and unfair and deceptive trade practices, relating to methods of regenerating spent catalysts used to remove pollutants from the exhaust of coal-fired power plants. We successfully advocated that the court stay discovery until the plaintiff disclosed their alleged trade secrets with specificity, and then won a partial summary judgment ruling that the majority of the alleged trade secrets are public knowledge.
• Certain DC-DC Controllers, Inv. No. 337-TA-698 (International Trade Commission): We represented complainant Richtek Technology Corp. and Richtek USA, Inc. in a Section 337 investigation based on trade secret misappropriation and patent infringement. Rather than face trial, each of the respondents entered into a Consent Order and/or signed settlement agreements. We currently represent Richtek in an Enforcement proceeding at the ITC to enforce one of the Consent Orders.
• PCI Systems, Inc. v. Fiberweb, Inc. (D.N. Ill.): We represented the defendant against claims of trade secret misappropriation relating to housewrap materials used in construction. The case was settled very favorably to our client providing them complete freedom from the suit relating to the product and technology in question.
• VMI, Inc. v. ATL, Inc. (M.D.N.C.): We represented the plaintiff in this case for unfair and deceptive trade practices and fraud relating to 3D ultrasound imaging machines for cardiology. After a two-week jury trial in January 2003, the court awarded a judgment for our client of $318 million.
• BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC (D.S.C.): We obtained a permanent injunction and a $2.7 million jury verdict in this trade secret and patent case leading to a final judgment, inclusive of enhanced damages and attorneys' fees, of over $4.6 million. On appeal, the Federal Circuit affirmed the district court's judgment in all respects. 303 F.3d 1332 (Fed. Cir. 2002).
• Solarcom, Inc. v. unidentified person (Sup. Ct. Ga.): We obtained preliminary injunction to prevent disclosure of trade secrets through an anonymous email address.