The Legal 500

Kirkland & Ellis LLP is recognized as ‘a fine firm’ by peers practicing in the trade secrets field, with ‘deep and broad trial experience’ among its 550 nationally-spread general litigation attorneys. Some 240 IP lawyers are available to provide support to clients from a wide range of sectors requiring advice on trade secrets matters, from chemical and computer companies to heavy industry and services. Emphasis is placed on training lawyers, many of whom have technology qualifications or background, to quickly assimilate and cogently present issues arising in relation to specialist technology, in addition to having the ability to take sharp action in relation to business-to-business disputes. Washington DC-based Greg LoCascio recently secured an unusual mid-trial dismissal of all counts of misappropriation of trade secrets for Boeing; and a settlement for security solutions specialists Six3 Systems in a matter relating to appropriation of intelligence brought by suppliers of government intelligence systems and IT networks, CACI. The firm also represented IMG Worldwide in an action against former IMG sports agent Mark Baldwin, which turned on the applicable law governing the provisions relating to misappropriation and non-solicitation in Baldwin’s employment contract.

Orrick, Herrington & Sutcliffe LLP’s brand has reached a wider public than many other trade-secret practices after it replaced Skadden, Arps, Slate, Meagher & Flom LLP in the battle for rights to Bratz dolls against Barbie manufacturers Mattel. Shortly after appointment in July 2010 as MGA Entertainment’s lawyers, the team, lead by New York litigation partner Joshua Rosencrantz and IP specialist Annette Hurst in San Francisco, succeeded in overturning the original verdict in favor of Mattel and clearing the way for a retrial of all issues relating to liability and damages. A strong Silicon Valley team, headed by Gary Weiss, recently set two trade secrets law precedents relating to proof of misappropriation and preemption under the Uniform Trade Secrets Act when defending cases brought by Silvaco Data Systems against Intel and Agilent Technologies. Clients nominate Chris Ottenweller, Michael Spillner and Rob Shwarts as ‘particularly good’ and consider that ‘this firm is the best in this area’. 130 globally-based IP, employment and litigation lawyers act for clients such as Hewlett Packard and Oracle.

Clients and peers consider Paul, Hastings, Janofsky & Walker LLP’s team to give ‘advice that is creative, timely and always helpful’. The dedicated trade secrets group is spearheaded by IP litigation specialist Victoria Cundiff – ‘a leading expert in the field’ – focusing on trade secrets and non-compete agreements – and Silicon Valley employment law department chair Bradford Newman. The team advises clients in the high-tech, financial services and green technology sectors such as Microsoft, Yahoo! and UBS on trade secret appropriation cases frequently originating through employee movement. Recent highlights have included settlement of a $150m case brought by Zynga Game Network against Playdom relating to appropriation of a cutting edge social gaming mechanism; and defending Yahoo! against Indian internet company Sify in a $50m case involving novel concepts around cross-border trade secrets and e-discovery. Strategic protection of key business assets is another strength, enabling leading clients in the financial services, heavy industry and technology sectors to avoid loss of vital revenue-generating information such as algorithmic trading strategies. ‘Definitely a level above other firms’, says one client.

Quinn Emanuel Urquhart & Sullivan, LLP’s lawyers ‘are reputable, credible and have a deep trade secrets bench’. They ‘work hard and get good results’, and provide ‘great customer service, deep industry expertise, and a strong team – expensive but good value’. Having secured the rights to Bratz dolls in 2009 for Mattel in litigation over appropriation of the designs by MGA Entertainment, a retrial was ordered on appeal, bringing the team, headed by John Quinn and Michael Zeller, back into the fray this year. Packed with some 450 trial lawyers, 40% of whom are engaged in IP matters, the firm has a fearsome reputation in the courts and has represented General Motors, Shell, Motorola, Disney, and easyJet Airlines. Recent cases have included acting for Invista in relation to the unauthorised use of a chemical processing system; for IBM in relation to the licensing of mainframe system technology; and for Trust Company of the West in a suit for $200m damages and relief against a former employee who had allegedly misappropriated client and proprietary information. The ‘outstanding’ David Quinto is a published trade secrets expert.

The intersection between patent and trade secrets protection is key for Covington & Burling LLP. Clients from the life sciences, computer hardware and software, communications and energy sectors are advised on the most practical means of protection for non-patented trade secrets and assisted with the enforcement of their rights over their trade secrets in the courts and, increasingly, in ITC investigations. The 23 partners and 19 associates in the team are ‘well coordinated, vigorous in their protection of their client’s interest, and highly ethical’, and give ‘practical advice’. Kurt Calia in Silicon Valley is vice chair for the trade secrets committee of the Intellectual Property Owner’s Association. In 2010, ‘creative, practical, quick-minded and knowledgeable’ Johnny Chiu represented UPI in an ITC investigation initiated by Richtek involving allegations of trade secrets misappropriation and patent infringement, while ‘detailed, skilled, and knowledgeable’ Nitin Subhedar was active on behalf of Chinese telecoms player Huawei against Motorola in a case in the northern district of Illinois involving wireless base station technology.

A distinguishing feature of San Francisco specialist litigation firm Keker & Van Nest, L.L.P. is ‘the ability to cut through to the essence of a case and empower juries and judges to decide complex issues’, a skill gained over some 30 years of trade secrets practice during which time the firm has consistently recovered a high total value of claims for plaintiffs. ‘A wealth of experience and demonstrated success’ has been shown in some of the leading cases with international elements in this field, such as that of Taiwan Semiconductor Manufacturing against Chinese SMIC, the largest trade secret misuse case ever brought. More recently, the team, led by experienced Jeff Chanin, has defended complex cases for clients Index Ventures, Palantir Technologies and national law firm Foley & Lardner LLP against trade secret and copyright misappropriation actions from California to Delaware and Virginia. John Keker is currently defending a technology company in trade secret and copyright infringement litigation against a software company – a sensitive case in the field of national security. The firm ‘usually finds a way to overcome whatever obstacles are presented – oftentimes making new law in the process’.

One hundred lawyers across McDermott Will & Emery LLP’s multidisciplinary global team have a day to day, organic relationship with trade secrets law, benefitting from the firm’s 25-plus years of experience handling trade secrets lawsuits and counseling clients from start-ups to Fortune 500 companies. The advice given to clients in industries from technology to life sciences, manufacturing, financial services and entertainment on trade secrets protection and robust representation on contentious matters is supplemented by a white-collar crime group for criminal investigations where necessary. In 2010, Eric Hagen assisted Pacific Shore Holdings with corporate policy for trade secret protection. IP specialist Terrence McMahon continues to defend Seagate in the 10-year $1bn litigation over misappropriation of hard disk technology. Spansion is a notable client for Anthony de Alcuaz.

Morrison & Foerster LLP’s noted capabilities in intellectual property, data security and litigation provide the bedrock for the firm’s focused trade secrets practice which is embedded in its offices across the US. The group consistently provides clients such as Advanced Micro-Fabrication Equipment, Booz Allen Hamilton and Hansen Medical with training and documentation to prevent the loss of technical and proprietary information through employee mobility; and regularly wins trials. Co-chair of the group Daniel Westman is also co-chair of the US IP law association trade secrets committee. The experienced team litigated numerous suits in 2010, setting precedents in the areas of cross-border jurisdictional issues (opinion in Applied Materials v Advanced Micro-Fabrication Equipment) and over the question of whether innocent purchasers of software containing trade secrets could be liable for misappropriation (a victory in the $1bn Silvaco v Cypress Semiconductor Corporation). Bryan Wilson is ‘a very smart, thoughtful attorney’, who is ‘courteous and assertive in trial’.

The interdisciplinary non-compete and trade secrets group at Proskauer Rose LLP focuses on the intersection of trade secret protection and employee movement. The five-partner group provides counseling on the hiring and firing of employees possessing confidential information and material relating to customer relationships; drafting confidentiality and non-compete agreements, and policy manuals on information ownership and protection; and litigation involving claims of employee raiding and theft of trade secrets. In 2010, co-chair of the group John Barry in Newark led the defense of Honeywell in a lawsuit challenging Honeywell’s pre-invention assignment agreements, and commercial litigator Steven Kayman represented McGraw-Hill in enforcing a one year non-compete clause against a former senior executive who joined Bloomberg. The bulk of the 60 trade secrets lawyers operate out of New York under co-chairs and employment specialists Michael Album, who has particular experience advising financial services companies and private hedge funds, and Edward Brill and Steven Kayman. Anthony Oncidi and Allan Weitzman are recommended in Los Angeles and Boca Raton.

Weil, Gotshal & Manges LLP’s trade secrets and restrictive employment expertise is spearheaded by employment litigation partners Jeffrey Klein and Gary Friedman, who have been instrumental in securing significant victories in restrictive covenant cases on behalf of Apple, United Health Group and insurance group March USA. Litigation partners in Boston, Silicon Valley – for IP patent-related issues – and newly-made partner Michelle Hartmann in Dallas have litigated and counseled clients in numerous different business sectors from pharmaceutical and biotechnology to computing, internet, healthcare, insurance and financial services. The group has recently achieved a potentially seminal federal court decision relating to the enforceability of garden leave provisions in financial services sector executive employment contracts. Gary Friedman was recently instructed by the Bank of Montreal to find a remedy for abuses by former employees who misappropriated trade secrets and other confidential data. A successful result was achieved using novel e-discovery strategies and analytics.

As highly experienced general trial lawyers operating nationally on behalf of clients in sectors as diverse as chip design, plant genetics, vacuum cleaner technology and jet engines, Bartlit Beck Herman Palenchar & Scott LLP is capable of taking complex issues and simplifying them into a trial-friendly package as quickly and cost-consciously as possible. Recent cases in the trade secrets forum include successfully representing Creeden in litigation involving misappropriation of trade secrets against Infosoft, and Sensormatic Electronics against The TAG Company for misappropriation of trade secrets. Following a three-week bench trial, the Court entered judgment in favor of Sensormatic on all counts.

Six IP litigation partners at Cravath, Swaine & Moore LLP in New York feature in the complex, high-value trade secret-protection litigation which the firm conducts on behalf of blue-chip clients in the insurance, technology, and financial services sectors. Stuart Gold has particular experience with business model theft in the insurance field, recently achieving a settlement on behalf of client Liberty Mutual Group against Aspen Insurance Holding Group. Roger Brooks continues to provide ongoing support with enforcement of the settlement reached on behalf of client Renaissance Technologies relating to use of proprietary and trade secret statistical algorithms by former employees to create a system of “statistical arbitrage” for a rival hedge fund, and has received instructions from a new client in this sector. Stephen Madsen is currently representing Quantlab in separate actions in New York, relating to the hiring by Tower Research of a Quantlab employee, and in Texas, regarding the appropriation of Quantlab trade secrets by an individual.

With patent and trademark protection as its bread and butter, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. is a natural choice for technology-focused operations from innovative start-ups to Fortune 500 giants in the battle to maintain control over critical know-how. Fifteen partners with trade secrets experience command a network of 400 attorneys, over 90 of whom hold doctorates in disciplines ranging from neurobiology to electrical engineering, and can consequently assimilate technical information quickly and impart this to judge and jury to full effect. Clients include Sinterfire, Force Protection Industries, A10 Networks, Toyota and Intercil. Leading partners Stephen Peterson and John Hornick in Washington DC complement the additional offering in Atlanta, Cambridge, Palo Alto and Reston.

Among a strong cohort of general commercial and IP litigators at Latham & Watkins LLP nationally and globally, Steven Bauer in San Francisco stands out as a key trial asset in the trade secrets arena. In 2010 he lead the team which obtained a complete defense victory for client Marvell Semiconductor in a trade secrets misappropriation case in which a “confessional” telephone conversation featured as a key piece of evidence in support of plaintiff Jasmine Technology’s case. Other recent instructions have lead to victories in trials and favourable settlements for clients including FLIR Systems and Entrepreneur Media (EMI) in cases relating to both theft of technology designs and misappropriation of company databases on departure of employees.

Mayer Brown’s global client base receives protection of trade secrets through the drafting of agreements to prevent disclosure to advice on policies; employee education to ensure retention of business-critical material; and representation in courts and tribunals to retain or defend sensitive information. The support of the firm’s competition and IP departments has been crucial in obtaining favorable outcomes in recent cases such as that relating to misappropriation of interactive video content, in which novel issues of cross-border intellectual property protection, exploitation, and first-mover advantage were examined. John Mancini represented a railway manufacturer in an arbitration against its former licensee arising from the licensee’s use of trade secrets to compete in bidding for contracts. James Ferguson achieved a dismissal of a claim for breach of contract and misappropriation of trade secrets brought against a financial sector client by an IT provider. Dale Giali, who moved from the defunct Howrey LLP, is also recommended.

‘Outstanding trade secrets lawyer’ Mark Halligan has been building a dedicated trade secrets team at Nixon Peabody LLP in Chicago since joining in 2009 from Hogan & Hartson, and can also call on 20 attorneys in the IP, labor and employment, white-collar crime, and commercial litigation groups to take a ‘360 degree’ approach to trade secrets. The group provides trade secret protection through training; drafting of non-compete, non-disclosure and restrictive covenants in employee agreements; and 24/7 rapid response to emergencies including applications and representation. Major corporations including Baxter Healthcare, Texas Instruments and Hollister have instructed the team, whose recent litigation outings have included acting for Motorola against Lemko and Huawei Technologies, Miller UK against Caterpillar Inc and Ion Construction in Secure Energy, Inc v Coal Synthetics on cases relating to misappropriation of trade secrets and breach of contract, and computer fraud. The group is ‘one to watch’.

Clients from the high-tech, medical technology, banking, communications and media sectors consult the 21 IP partners at O’Melveny & Myers LLP for advice on trade secret litigation, encompassing employee movement issues, theft of intellectual property and the defence of white-collar criminal investigations. Strength on the West Coast is complemented by partner support in New York and Washington DC, with many lawyers holding degrees in technical subjects. Recent highlights include representing three defendants against patent infringement and trade secret misappropriation asserted by Taiwanese Richtek Technology, achieving the right to use the products at issue in a settlement. Eric Amdursky in Silicon Valley saw the creation of the largest provider of fingerprint sensor management software after client UPEK sued AuthenTec for patent infringement and defended counterclaims of trade secret appropriation.

Clients seek out Linda Stevens at Schiff Hardin LLP for her 24 years of experience in trade secrets practice, arising from the inception of the Illinois trade secrets statute in 1987 and the firm’s involvement in the seminal Pepsi Co v Redmond case. These days, the trade secrets and restrictive covenant team draws on 20 partners and 20 attorneys to attend to instructions from a wide range of clients to prevent the loss of technology or consumer data-related trade secrets and enforce remedies for breach of restrictive covenants and confidentiality agreements. Among recent matters is the defense of Sonnenschein, Nath & Rosenthal LLP (now SNR Denton) against Huron Consulting’s claim for $30m damages for breach of local trade secrets legislation in relation to the departure of several consultants.

The 30-lawyer practice at Dorsey & Whitney LLP, which operates out of seven offices around the country, has achieved some notable successes in the last five years, including the successful defense of two cases involving claims of $1.3bn and $450m for Cisco Systems; and the defense of Google in a suit brought by Microsoft seeking to prevent the hiring of three prominent former Microsoft executives. Dave Tank defended Lockheed in a case in which damages of $100m were claimed for theft of ‘Section 508’ technology. The case was settled for a nominal amount. Douglas Parry in Salt Lake City assisted Kowabunga! to recapture stolen customer lists and proprietary information from the vendor of an internet marketing business and achieved a favourable settlement. Key clients of the cross-disciplinary group also include KMG America, Adeptyx Consulting and Hormel Foods. Joe Hammell, Roy Ginsburg and Gregory Tamkin are also active in this area.

Following Hogan Lovells US LLP’s merger last year, the Chicago office, from which the Lovells LLP trade secrets practice operated, was closed. Steven Hollman in Washington DC now heads up the trade secrets group, which is formed from experienced IP and commercial litigation experts including Eric Lobenfeld. Areas of focus range from emergency injunctions to restrain the use of confidential information, to trade secret audits, licensing and litigation. Global coverage enables the firm to act in the growing number of cases of international misappropriation such as advice to a manufacturer of aquatic leisure products on the protection of design, know-how and trade secrets against their misuse by manufacturers, retailers and former employees in China and Hong Kong. Serving national clients in a widely varied range of industries, the group has represented a leading biotechnology and chemicals company in a dispute relating to industrial secrets in bacteria used in the production of one of the world’s best-selling antibiotics; and successfully defended a large communications company against damage claims exceeding $400m in which a plaintiff alleged misappropriation of trade secrets in connection with the development of air-to-ground telephone technology.

‘Top drawer’ Chicago-based Jenner & Block LLP provides satisfied clients with counseling on employment-related trade secret issues and drafting of documentation to secure proprietary information. The firm has taken action in relation to theft of trade secrets by third parties and conducted litigation in claims relating to software, source code and proprietary information. The ‘tireless’ Debbie Berman is a key name here, having participated in the seminal case on the doctrine of ‘inevitable disclosure’, Pepsico v Redmond.

As one of the larger firms specializing in general complex litigation, Kasowitz, Benson, Torres & Friedman LLP has entered the ring with its boutique-sized trade secrets team and punched above its weight in one of the most prominent recent trade secret cases – Starwood Hotels v Hilton Hotels. Aaron Marks led Hilton’s representation in the civil case and was joined by Daniel Fetterman in the grand jury investigation of the leading hotel chain over claims of theft of Starwood’s most sensitive trade secrets and proprietary information. Both cases were settled. Marks was also instrumental in obtaining a settlement of $38m for chemical company Purolite in a case against Thermax relating to stolen formulae and processes for water purification resin. The firm also recently defeated Dell’s summary judgment and Daubert motions in a case against Dell for misappropriation of client Modern Creative Services’ product-advisor software tool, leading to a satisfactory settlement.

Seyfarth Shaw is distinguished by its dedicated trade secrets, computer fraud and non-compete group which aligns 45 professionals nationally to focus on advice and representation within this practice area. Head of the practice Michael Wexler demonstrated the firm’s ability to combine specialist expertise in high-profile litigation relating to protection of client Hewlett-Packard’s trade secrets on the move of CEO Mark Hurd to Oracle, with support from employment partner Camille Olson and Los Angeles trade secrets partner Robert Milligan. This case also demonstrates the firm’s niche practice area – representing or defending claims involving the entry or departure of top-level executives, including representing Motorola on a matter relating to the departure of its COO to Nortel Networks; and Baxter in a trade secrets misappropriation matter against a former top Baxter scientist who joined Bayer, having copied files regarding Baxter’s products valued at over $1.5bn. Katherine Perrelli’s 20 years of experience demonstrates a significant focus on high stakes trade secrets and restrictive covenant litigation for clients in the financial services and insurance industries including Arthur J Gallagher & Co and Wells Fargo, recently achieving favorable settlements on behalf of both of these clients in non-compete cases. Michael Levinson is another stalwart of the team.