Trade Secrets Litigation

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. Case law allows protection of trade secrets, even in California where employee non-compete contract clauses are subject to statutory restriction.

Orrick Intellectual Property and Employment Law lawyers have obtained (or defeated) preliminary injunctions and trial court victories, counseled clients on effective, enforceable policies that minimize the loss of trade secrets and provide the groundwork for litigation when our client's trade secrets are stolen. The employment policies that we recommend also provide the groundwork for litigation when our clients' trade secrets are stolen.

Specific examples of prominent trade secret cases include:

• Acta Technology, Inc. . In Acta v. Sagent, Orrick represented Acta, a data mart software developer, in trade secret and copyright litigation brought to declare the rights of Acta with respect to claims made by Sagent that Acta had misappropriated trade secrets and was using Sagent code. Orrick evaluated all claims and brought declaratory action against Sagent. The case settled favorably to Acta without substantial discovery.
• Advanced Fibre Communications. In DSC Communications v. Advanced Fibre Communications, an Orrick lawyer represented Advanced Fibre Communications in a trade secret and breach of contract case regarding next generation Digital Loop C carrier technologies, involving basic telephony, as well as Bellcore and ETSI standards.
• Advanced Micro Devices (AMD). Orrick has represented AMD in a variety of trade secrets, employment and IP matters.
  • Orrick successfully represented AMD in a significant trade secret and employee-raiding case, Advanced Micro Devices v. Hyundai Electronics America. Orrick obtained for the plaintiff, and successfully defended in appellate writ proceedings, a preliminary injunction in a trade secret case involving "flash memory" semiconductor technology. It was the first "inevitable misappropriation" injunction ever issued in California.
  • In MINC Incorporated v. Advanced Micro Devices, Orrick represented the defendant in litigation of trade secret and unfair competition claims involving software for programmable logic devices. Orrick was successful in defeating the plaintiff's motion for preliminary injunction.
• Alstom ESCA Corporation. In ABB Power T&D Company, Inc. v. Alstom ESCA Corporation, Orrick lawyers represented Alstom ESCA Corporation, a subsidiary of French-based Alstom, S.A., in a lawsuit filed by a competitor, ABB Power T&D Company. The four week jury trial in this case included trade secret, copyright, and Lanham Act claims in a dispute involving software projects for the electrical energy industry. The jury returned a verdict in favor of Orrick's client.
• Applied Materials. Orrick represents Applied Materials in several litigation matters including trade secret, copyright, and RICO claims.
  • In Applied Materials v. Semiconductor Spares, Orrick represented Applied Materials in litigation of trade secret, copyright, and RICO claims involving semiconductor manufacturing equipment. Orrick lawyers also coordinated internally a simultaneous federal criminal investigation into the same conduct. Orrick obtained preliminary and permanent injunctions against the defendants, and resolved the case after shutting down the defendants' operations and receiving a substantial payment of damages.
  • In Semitool v. R.W. Berner, Orrick represented the defendant, a CTO hired by Applied Materials, in a trade secrets and inevitable disclosure case involving copper semiconductor manufacturing technology. Orrick defeated the plaintiff's motion for preliminary injunction and later obtained summary judgment on all of the plaintiff's 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.
  • In Peak Systems, Inc. v. Applied Materials, Inc., an Orrick lawyer successfully argued the appeal of this trade secret and contract case involving semiconductor manufacturing technology, in which Applied Materials prevailed on all its claims and defeated Peak's cross-appeal in its entirety.
• 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.
• Cinema Technologies, Inc. In Imax Corp. v. Cinema Technologies, Inc., an Orrick lawyer served as lead counsel, and won this oft-cited trade secret and patent case.
• 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.
• DoubleClick. In DoubleClick. v. Henderson, a seminal New York trade secrets case, we obtained an injunction precluding our client's former officers from creating a competing Internet advertising company - despite the absence of a non-compete agreement.
• 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.
• Extreme Networks. Orrick represented defendant Extreme Networks in litigation of trade secret, inevitable disclosure, and unfair competition claims involving networking software and custom chips. We defeated the plaintiff's application for a temporary restraining order and preliminary injunction. The case settled with no injunction, job restrictions, or cash payments of any kind.
• Harris Corporation. Orrick represented plaintiff Harris Corporation in a trade secret case involving intelligent power management integrated circuits, Harris Corporation v. Semtech Corporation, we settled the case after expedited discovery, obtaining Semtech's agreement not to use or disclose trade secrets or solicit Harris's employees. Orrick also 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.
• Hospital Specialty Co. In James River v. Hospital Specialty Co., an Orrick counsel was trial counsel for defendant HSC (Hospital Specialty Co.) in a trade secret litigation involving equipment for manufacturing paper products. The case was favorably settled for HSC following the close of fact discovery.
• iHello.com. In Onebox.com v. iHello.com, Orrick represented the defendant in litigation of trade secret claims involving Internet voice mail and facsimile technology. We defeated plaintiff's application for a temporary restraining order and a preliminary injunction for alleged threatened and inevitable misappropriation.
• 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.
• MapInfo Corp. Orrick represented MapInfo Corp. in both California and Maryland in MapInfo Corp. v. Strategic Mapping, a trade secret and unfair competition case involving desktop mapping software.
• Matrix Pharmaceutical, Inc. Orrick represented Matrix Pharmaceuticals in a trade secret action brought by Collagen Corp., alleging misappropriation of trade secrets. The matter settled prior to trial.
• 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.
• Quantum Corporation. In Quantum Corporation v. Imation Corporation, Orrick successfully sought and obtained a preliminary injunction against Imation based upon a claim of misappropriation of trade secrets. The injunction was obtained within 23 days of filing the complaint. The case has since settled.
• Rigg Systems. Orrick lawyers successfully represented Rigg Systems and its owner in KLA-Tencor v. Rigg Systems, et al., a trade secret case involving critical dimension scanning electron microscope technology. Orrick defeated plaintiff's request for a TRO fourteen hours after being brought into the case and then, after six months of expedited discovery and three days of evidentiary hearings, also defeated plaintiff's request for a preliminary injunction
• 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.
• Siebel Systems. Orrick lawyers represented defendant Siebel Systems in a multi-state trade secret and inevitable disclosure litigation, SAP Labs v. Siebel Systems, Orrick defeated SAP's motion for preliminary injunction in Pennsylvania and SAP's demurrer in California. The case involved Siebel's B2B and CRM software technology, and the matter settled without an injunction or money damages of any kind.
• 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.