Protecting Your Trade Secrets and Corporate Assets

In a heartbeat, the protection of trade secrets is the number-one priority for many companies, particularly in the technology, biotechnology, financial services, and manufacturing industries. Companies in these industries face the daunting task of creating innovative products and services in a world with short product life spans and disappearing employee loyalty. When mission-critical trade secrets are at issue, clients rely on Orrick's years of experience and proven track record to protect themselves. All states allow for protection of trade secrets, even California where employee non-compete contract clauses are subject to statutory restriction.

Orrick Intellectual Property and Employment Law lawyers have successfully represented clients in all stages of trade secret litigation, both as plaintiffs and defendants, from prefiling investigations through jury trials and appeals. Orrick lawyers also counsel clients on effective, enforceable policies that help prevent the loss of trade secrets, and on prophylactic measures to avoid liability for misappropriation. The following is a list of some of Orrick's representative trade secret matters:

• Applied Materials. Orrick represents Applied Materials in several litigation matters including trade secret, copyright, and RICO claims.
  • In Applied Materials v. McDowell & Co., Orrick represented Applied Materials in litigation of trade secret and copyright claims involving semiconductor manufacturing equipment technology, and also coordinated internally a federal criminal investigation into the same conduct. After we obtained a preliminary injunction against the defendants, the case subsequently settled with a permanent injunction and a substantial cash payment to Applied Materials.
• Bayer Corporation. In Platt v. Bayer Corporation, Orrick represented Bayer in a case concerning alleged misappropriation of trade secrets and breach of fiduciary duty regarding Bayer's Aleve Cold & Sinus® product. Through discovery developed early in the case, before any depositions were taken, plaintiff consented to a dismissal of all trade secret related claims. Following deposition of the plaintiffs, the case settled on terms extremely favorable to the client.
• Cadence Design Systems, Inc./Quickturn Design Systems, Inc. Orrick lawyers successfully defended Quickturn and its parent Cadence in a major patent and trade secret jury trial involving hardware logic emulation systems, where, prior to trial, summary judgment had been entered that Quickturn infringed two of the six patents asserted against it. Plaintiffs Mentor Graphics Corporation and Meta Systems were seeking nearly $1 billion in damages. After a five week trial and nine days of deliberation, the jury returned a verdict completely in Quickurn's favor, invalidating the Mentor patents on all grounds put forth by Quickturn and finding no trade secret misappropriation. Orrick was recently acknowledged by the National Law Journal, The Recorder and The Daily Journal for obtaining one of the Top Ten Defense Verdicts of 2003 on behalf of Cadence.
• Cisco Systems. Orrick has represented Cisco in a variety of trade secrets, employment and IP matters.
  • In InterWave v. Cisco Systems, Orrick lawyers served as lead counsel for Cisco in a trade secret and patent infringement case brought by InterWave. The case involved GSM cellular telephone technology and the use of Internet IP/H.323 protocols for the transport of voice data. The Orrick team successfully defeated a preliminary injunction motion brought by InterWave to halt sale of Cisco's billion-dollar ViperCell product and succeeded in dismissing all InterWave patents from the case on summary judgment. The case settled after a recommendation by the Special Master that InterWave had also failed to adequately identify its trade secrets and had instead claimed public domain information as its secrets. The case settled extremely favorably to Cisco.
  • In Cisco Systems v. Huawei Technologies, Ltd., an Orrick team obtained a worldwide preliminary injunction order on behalf of Cisco Systems, Inc. Cisco's preliminary injunction motion alleged that Defendant Huawei Technologies Co., Ltd. ("Huawei"), a multi-billion dollar company headquartered in mainland China, and its U.S. subsidiaries, Huawei America, Inc., and Futurewei Technologies, Inc., infringed Cisco's copyrights in its proprietary IOS source code and misappropriated Cisco's trade secrets.
• Connectix Corporation. Orrick lawyers represented Connectix in a dispute over the creation of a PlayStation emulator that resulted in copyright, trade secret, and patent claims, which were resolved in part by the Ninth Circuit in Sony Computer Entertainment, Inc. et al. v. Connectix Corp.
• eBay, Inc. Orrick represents eBay in a variety of intellectual property matters. In Lenssen v. eBay, a trade secret case, our Orrick team was able to obtain a very favorable settlement for eBay. Orrick defended eBay against trade secrets and related claims in a dispute involving reverse auctions for services.
• Harris Corporation. Orrick represented Harris Corporation in Harris Corporation v. Caly Networks, a trade secret case involving TDD broadband wireless technology. The case settled with a permanent injunction and the imposition of a neutral third-party inspector who periodically would monitor and report on defendants' activities to ensure compliance with the injunction.
• Infineon Technologies AG and Infineon Technologies North America Corp. Orrick represented the Infineon companies in a trade secret, patent, and copyright action in the United States District Court, Central District of California involving the Infineon/DirecTV smart card technology. DirecTV sued NDS Limited (a News Corp. affiliate) for copyright infringement and other claims relating to NDS' alleged acts to facilitate the piracy of the smart card code. NDS countersued the Infineon companies and DirecTV alleging trade secret, copyright, and other IP violations. In addition to the U.S. action, the Orrick team also worked with Infineon's German litigation counsel to defend a parallel action filed against Infineon AG in Munich. The Orrick team also secured the voluntary dismissal of Infineon Technologies North America Corp. from the U.S. action (Infineon Technologies AG was never properly served). The balance of the matter settled , including the proceedings in Germany, after News Corp. purchased a significant portion of Hughes Electronics, the parent of DirecTV.
• Minerva Networks, Inc. Orrick represented Minerva Networks, Inc. in the prosecution of an insurance coverage claim for a patent and trade secret case under a general liability policy. In Myrio v. Minerva Networks, an Orrick team represented Minerva against trade secret, unfair competition, and trade disparagement claims made by Myrio. Minerva manufactures a head-end M-PEG2 compression engine for placing video streams on IP based telephone networks, as well as the head-end management software. The case settled favorable to Minerva after the Court ruled Myrio could not identify its trade secrets adequately.
• Net.com. In Net.com v. Cosine Communications, Orrick represented plaintiff Net.com in a trade secret case involving network technology. We obtained stipulated injunction (a) limiting ex-employees' job duties for defined time periods, (b) precluding use or disclosure of trade secrets and (c) imposing neutral third party evaluator to monitor compliance.
• Seagate Technology, Inc. Orrick lawyers are representing Seagate as the co-defendant in Convolve, Inc, et al v. Compaq Computer Corp, et al, against a trade secrets claim involving computer disk drive technology in the Southern District of New York. The plaintiffs are seeking at least $800 million in damages and a permanent injunction barring Compaq and Seagate from manufacturing or selling disk drives or computers incorporating Seagate's Sound Barrier Technology®.
• SeneGence International, et al. Orrick lawyers represented SeneGence International, a cosmetics distributor, and other co-defendants, against charges of patent infringement, trade secret misappropriation, and other claims. SeneGence asserted several counterclaims, including trademark infringement, cybersquatting, defamation, and others. We sought and obtained a monetary sanction on behalf of SeneGence against the plaintiff for its misconduct during discovery in the case, obtained a monetary settlement of the SeneGence's counterclaims, and settled the remainder of the case on extremely favorable terms to SeneGence and its co-defendants.
• State Farm Mutual Automobile Insurance Co. In a trade secret misappropriation and breach of contract matter, Orrick represented State Farm against counterclaims for wrongful termination and tortious interference. After the jury found that policyholder information taken by defendant agents was a trade secret, in post-trial motions the court ruled as a matter of law that State Farm owned the trade secrets. The court also ruled that State Farm's actions in demanding its trade secret policyholder information back from the competing insurance company (to whom this information was sent by the defendant insurance agents) were entirely proper.
• Verizon Wireless. Orrick represented Verizon Wireless in a trade secrets action against a company that had disclosed or threatened to disclose valuable trade secrets owned by Verizon Wireless and that had been used in a joint venture in which Verizon Wireless had participated. Orrick obtained a temporary restraining order and a preliminary injunction from the court that prevented the defendant from further disclosing Verizon Wireless; trade secrets and that required the defendant to take steps to retrieve any information improperly disclosed.