AIPLA Trade Secret Committee Report

Transcription

1 AIPLA Trade Secret Committee Report DATE: April 9, 2013 COMMITTEE NAME: Trade Secret COMMITTEE LEADERSHIP: Janet Craycroft, Intel Corporation Chair John F. Marsh, Hahn Loeser & Parks LLP Vice Chair SUBCOMMITTEES: Amicus: Best Practices: Cyber Security: International: Legislation: Litigation: Media Relations: Membership: On-Line Programming: Programming Social Media: Trade Secret Summit Inter-Committee Liaison: Chair: David Almeling, O Melveny & Myers Chair: Warrington Parker, Orrick, Herrington & Sutcliffe LLP Chair: Peter J. Toren, Weisbrod Matteis & Copley PLLC Chair: Wil Rao, McAndrews, Held & Malloy, Ltd. Chair: Russell Beck, Beck Reed Riden LLP Vice Chair: Benjamin I. Fink, Berman Fink Van Horn P.C. Chair: Sid Leach, Snell & Wilmer Vice Chair: Mark Klapow, Crowell & Moring Chair: David Almeling, O Melveny & Myers Vice Chair: Vito Costanzo, Holland & Knight Chair: Seth Hudson, Clements Bernard Chair: Joel Bush. Kilpatrick Townsend & Stockton LLP Chair: Seth Hudson, Clements Bernard PLLC Chair: Deirdre Fox Scharf Banks Marmor LLC Co-Chair: Warrington Parker, Orrick Herrington & Sutcliffe LLP Co-Chair: Peter J. Toren, Weisbrod Matteis & Copley PLLC Chair: John Marsh, Hahn Loeser & Parks 1 P age

2 I. DISCUSS THE OVERALL MISSION OF THE COMMITTEE AS IT RELATES TO AIPLA s VISION, MISSION, and VALUES: In February 2013, the White House announced the Administration s Strategy on Mitigating the Theft of U.S. Trade Secrets. In its report, the White House noted that the pace of economic espionage and trade secret theft against U.S. corporations is accelerating. Moreover, there are indications that U.S. companies, law firms, academic, and financial institutions are experiencing cyber intrusion activity against electronic repositories containing trade secret information. The costs of trade secret theft amount to billions of dollars and have the potential to serious damage to U.S. interests. Consistent with the Administration s call to action, the AIPLA Trade Secret Committee is focused on 4 key initiatives: (1) Promoting voluntary best practices by private industry to protect trade secrets, (2) Raising public awareness and stakeholder outreach, and (3) Providing input on domestic as well as foreign legislation, and (4) Serving our members. VISION The AIPLA Trade Secret Committee will be a preeminent resource and visible global leader for trade secret education, outreach, legislative and policy analysis, and member service. MISSION The mission of the AIPLA Trade Secret Committee is to serve its members and the public by (1) promoting voluntary best practices by private industry to protect trade secrets, (2) raising awareness of trade secret issues through education and stakeholder outreach, and (3) providing input on domestic as well as foreign legislation, and (4) serving as a reliable, useful, and important resource for its members. STRATEGIC GOALS 1. Serving Members: The Committee will serve as a resource for its members by offering educational programming (via telephonic meetings, webinars, and AIPLA scheduled meetings) on topics relevant to the membership and providing substantive materials that are accessible and useful for its members through the AIPLA committee web site. 2. Legislation: The Committee will serve as a sounding board for a proposed legislation, identify appropriate opportunities for amicus briefing, monitor international legislation on trade secret protection for appropriate opportunities to provide input or guidance. 3. Education: The Committee will promote voluntary best practices by private industry to protect trade secrets, raise public awareness through education and programming, and publications are intended to educate and benefit the public. 2 P age

3 II. DISCUSS THE COMMITTEE S ACTIVITIES RELATED TO ADVOCACY, PLEASE ALSO INCLUDE COOPERATION WITH OTHER COMMITTEES TO SUPPORT THESE ACTIVITIES, if any: 1. Proposed Legislation The Protecting American Trade Secrets and Innovation Act -- which would amend the Economic Espionage Act to include a civil right of action has been introduced as a bill in Congress. This proposed statute grew out of the law review article by former Trade Secrets Committee Chair R. Mark Halligan proposing such amendments, which was debated at the 2011 Mid-Winter Institute. The Trade Secrets Committee is pleased to have played a role in shaping this potential federal legislation. 2. Preparation of Resolutions for Board Consideration Based on the session at the 2011 Mid-Winter Institute Addressing International Trade Secret Litigation: Should the Federal Economic Espionage Act Be Amended to Include a Civil Cause of Action? the Litigation Subcommittee intends to attempt to develop a resolution for consideration by the AIPLA Board of Directors on that issue. In addition, the Committee is considering whether to present a resolution to the Board regarding the Federal Circuit s recent decision in TianRui Group v. ITC, a case allowing US companies to seek importation bans on products manufactured in China using trade secrets misappropriated in China. III. DISCUSS THE COMMITTEE S ACTIVITIES RELATED TO PUBLIC EDUCATION, PLEASE ALSO At the 2012 Mid-Winter Institute, the Committee co-sponsored (with the Corporate Practice Committee) a two hour Joint CLE session on the topic of Separating Personal and Professional Digital Lives. At the 2012 Spring Meeting, the Committee sponsored a three hour concurrent track on Thursday, May 10, 2012 as follows: The Internationalization of Trade Secret Disputes: Big Cases, Big Verdicts and Big Challenges Managing and Protecting Your Trade Secrets Overseas Best Practices to Minimize Misappropriation Employees Without Borders: Managing personal devices and digital technology in an increasingly mobile world Overcoming the Special Challenges of Litigating against Foreign Parties and Companies Litigating Spoliation of Evidence Disputes: Fallout from the DuPont v. Kolon case and how to use, or avoid, it in your trade secret case Litigating Trade Secret Cases before the ITC The future of TianRui Group v. ITC and the fallout on trade secret protection internationally 3 P age

4 Update on Pending Trade Secret Legislation Status of the Economic Espionage Act, Cybersecurity Bill, New Jersey s recent adoption of UTSA and recent state trade secret and non-compete legislation At the 2012 Annual Meeting, the Committee sponsored r a concurrent track tentatively titled Are You the Weakest Link: Trade Secrets, Cybersecurity, and Best Data Security Practices. Also, the Committee organized its first, inaugural Trade Secrets Summit with programming for new and experienced lawyers. This summit received kudos from everyone who participated and the committee was encouraged to continue providing this program at future Annual Meetings. Accordingly, the Committee is planning a 2 nd Trade Secret Summit for the 2013 Annual Meeting. On March 13, 2013, the Committee sponsored what we hope will be the first in a series of free, educational presentations on a trade secret topic. The 1-hour, telephonic presentation was entitled: It s Not Just Boilerplate! Best practices for drafting collaboration agreements to protect your IP. Michael S. Spillner and Elizabeth A. Howard of Orrick, Herrington, & Sutcliffe, highlighted best practices for exchanging information during a collaboration as well as pitfalls to avoid when it comes to confidentiality, IP ownership, and other clauses. The program drew lessons from the Tekmira Pharmaceuticals Corp. v. Alnylam Pharmaceuticals Inc. The presentation was offered at 8:00 am PT and 4:00 pm PT to accommodate participants from different time zones. Feedback on the program has been very positive and future programs are planned. On April 23, 2013, the Committee in coordination with the AIPLA s Online Programming Committee is co-sponsoring a webinar entitled What Lawyers and Their Clients Need to Know about the Changing Balance of Power Between Trade Secrets and Patents. David Almeling, Counsel at O Melveny & Myers LLP and AIPLA Trade Secret committee member, will explain why trade secret litigation has doubled in each of the past few decades. He will also describe how this increase changes the decision-making process for a company, including whether a company should protect its intellectual property by seeking a patent or by keeping it as trade secret and whether a company should pursue patent or trade secret litigation. He will also discuss trade secret vs. patent decisions in light of the America Invents Act and recent case law. IV. DISCUSS THE COMMITTEE S ACTIVITIES RELATED TO MEMBER SERVICE, PLEASE ALSO The Committee places high importance on providing high quality programming to serve the membership. It has worked closely with the Corporate Practices Committee in presenting programs to the AIPLA membership and has created a subcommittee to facilitate greater interaction with other AIPLA Committees. In addition, the Committee is working with the Online Committee to promote and deliver future trade secret programs. In 2011, the Committee established a LinkedIn group, thanks to the efforts of Mark Klapow, and continues to use this site to facilitate discussion between members of the Committee on matters of mutual interest. 4 P age

5 V. DISCUSS THE COMMITTEE S ACTIVITIES RELATED TO GLOBAL OUTREACH, PLEASE ALSO The Committee will continue to encourage its members to reach out to potential new members of the AIPLA. The Committee believes that the growth of trade secret law and its accessibility to members of the bar present real opportunities to grow and expand the number and scope of AIPLA s membership. 5 P age