Trade Secret Litigation and Counseling

At Agility IP Law, we have many years of experience counseling companies regarding the protection of their trade secrets, as well as how to avoid others' claims of trade secret misappropriation. We also have extensive experience litigating trade secret cases, including temporary restraining order and preliminary injunction proceedings.

Trade secrets are the most ubiquitous form of intellectual property, and trade secret protection is important for almost any business that wants to gain or preserve a competitive advantage. Two great examples of important (and lucrative) trade secrets are the formulas for Coca-Cola® and Kentucky Fried Chicken®.

A trade secret is information that is valuable to its owner because it is not generally known (and not easy to find out) by competitors or others who could profit from the trade secret's use or disclosure. In addition, the trade secret's owner should be able to show that she takes reasonable steps to keep it secret. Examples of "reasonable steps" might include locks on doors, key-card access, computer and network security, etc.

State law (not federal) governs the protection of trade secrets. The Uniform Trade Secrets Act (UTSA) has been adopted by 45 states, including California, as well as the District of Columbia. However, several important jurisdictions – including New York, New Jersey, Texas and Massachusetts – have not adopted the UTSA; these states generally apply common law and their own statutory laws to safeguard trade secrets.

Representative Trade Secret Matters

Borland v. Symantec, et al., Santa Cruz County Superior Court. Jim Otteson represented Borland in a trade secret case that involved the illegal transfer of confidential information by a senior Borland executive who abruptly announced that he was leaving the company to take the same position at Symantec. This was one of the first cases in which e-mail messages were used to demonstrate the misappropriation of trade secrets. Borland was successful in obtaining a temporary restraining order, and then took extensive discovery, which confirmed the misappropriation. Borland then obtained a preliminary injunction, which essentially ended the case.

Mentor Graphics v. Mehta, et al., Santa Clara County Superior Court. Jim Otteson represented Mentor Graphics in a trade secret case involving the theft of EDA software by former employees. After discovery confirmed the misappropriation of source code and other trade secrets, the case settled favorably to Mentor Graphics following a mediation.

Synopsys v. Cadence, et al., Santa Clara County Superior Court. Jim Otteson represented Synopsys in a trade secret case involving the use of source code and confidential algorithms that were embedded in Synopsys's VHDL simulation tool. After extensive discovery and motion practice, the case settled on terms that were favorable to Synopsys.