Trade Secrets

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At McDonnell Boehnen Hulbert & Berghoff LLP, we understand that trade secrets and “know how” are among a business's most valuable intellectual property rights. We appreciate that a business’s success can be closely tied to its ability to protect its trade secrets, whatever form they are found in. As a result, we work cooperatively with our clients to find solutions that strike the best balance of protecting them from misappropriation, while promoting internal collaboration and business success.

Our attorneys have extensive experience counseling clients on how to protect against the theft of trade secrets from both external and internal threats. That starts with assisting clients in identifying the many types of confidential information and things that can be protected as trade secrets. Furthermore, since a trade secret’s value depends on keeping it a secret, another critical concern is assisting clients in safeguarding the secrecy of their trade secrets. We collaborate with our clients to develop unique solutions to provide the security they need to thrive. Whether it be drafting or reviewing agreements with employees, consultants, vendors, suppliers, or competitors; designing or reviewing security and secrecy methods and policies; or conducting training sessions for employees, our attorneys work together with clients to customize strategies to protect the clients’ trade secrets from inadvertent or unauthorized disclosure and misappropriation.

If litigation is necessary to enforce our clients’ trade secret rights -- or if a client is forced to defend against a competitor’s allegations -- our attorneys draw on their years of experience to aggressively and effectively litigate trade secret disputes. These cases are often complex and frequently demand swift action. Our team of attorneys has the legal and technical experience necessary to efficiently and effectively handle our clients’ trade secret disputes. We will initiate or respond to litigation as quickly as necessary, including filing or responding to temporary restraining orders or preliminary injunction motions.

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Publications

March 21, 2017 (snippets Alert)
As was widely expected from the Justices’ positions at oral arguments, a nearly unanimous Supreme Court today struck down the patent laches doctrine in SCA Hygiene Prods. Aktiebolag, v. First Quality Baby Prods., LLC, 580 U.S. __ (March 21, 2017). In the opinion by Justice Alito, the Supreme Court applied the rationale of its own prior decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), finding that the existence of a six-year statute of limitations in the Patent Act, 35 U.S.C. §286, precluded the application of laches. As such, “laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.”
Winter 2017 (snippets)
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings to prevent the disclosure of communications between clients and non-attorney patent agents. The second rule would change the duty of disclosure to comport with the standard set forth in the Therasense case. Based on the comments from the public, it appears likely that the Office will adopt the patent-agent privilege rule but go back for another round of changes to the duty of disclosure rule.
Winter 2017 (snippets)
Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due.
Winter 2017 (snippets)
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.
Winter 2017 (snippets)
Although the PTAB has instituted CBM trials for patents that do not facially qualify as business method patents, recent Federal Circuit decisions have required a more strict reading of the AIA statute in instituting CBM trials.
February 22, 2017 (snippets Alert)
MBHB snippets Alert - February 22, 2017

In an opinion by Justice Sotomayor, the Supreme Court today reversed the Federal Circuit's decision in Life Tech. Corp. v. Promega Corp. involving the proper scope of infringement under 35 U.S.C. § 271(f)(1). This provision provides infringement for exporting "all or a substantial portion of the components of a patented invention," and the Court's decision involved whether exporting only one component was enough for infringement liability.
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