Terror Response Technology Report/Access Intelligence via COMTEX

Northrop Grumman [NOC] and Cogent Systems [COGT] have reached an agreement to settle a lawsuit filed by Cogent against Northrop Grumman in 2005 alleging that Northrop Grumman misappropriated its technology and trade secrets for use in a British law enforcement fingerprint database program.

A lawyer for a former Coca-Cola secretary who was found guilty of conspiring to steal trade secrets from the company says her client was wrongfully convicted partly because the presiding judge cut off cross-examination of a key witness and gave improper instructions to the jury.

Joya Williams' lawyer, Janice Singer, said in papers filed Oct. 12 in the 11th U.S. Circuit Court of Appeals in Atlanta that Williams' conviction should be reversed, or she should at least be granted a new trial.

Singer also challenged Williams' eight-year prison sentence as unfair, given the way U.S. District Judge J. Owen Forrester arrived at the sentence and the lighter sentences he imposed on the other two defendants.

Kris Pigna

Epic Games' motion to dismiss Silicon Knight's Unreal Engine 3 lawsuit has been denied, confirmed both parties to GameDaily Biz. This means the case, involving Silicon Knights' claims that Epic did not provide a reasonably workable game engine for Too Human and failed to offer acceptable technical support, will now continue to the discovery phase and trial.

"[The Judge] put the discovery process in motion, which will allow the lawsuits to move forward. Epic had asked for the entire case to be dismissed," he said. "Judge Dever denied this request, which is not unusual. Often these requests are denied. It is important to note that this was not a decision on the merits of Silicon Knights' claims. We are confident that the evidence will show Silicon Knights breached its license with Epic Games and violated our copyrights and trade secrets."

The Franklin Pierce Law Center Advisory Council on Intellectual Property meets today in Concord, New Hampshire to discuss matters concerning intellectual property legal education. ACIP is chaired by Ron Myrick, a partner in the law firm of Finnegan Henderson Farabow Garrett and Dunner, LLP. He has served as the Chief Intellectual Property Counsel of General Electric Company and as a Vice President responsible for legal and other functions in Digital Equipment Corporation, Otis Elevator (NAO) and Mostek Corporation.

Several agenda items touch upon the role of trade secrets and other business related topics in the Pierce Law curriculum. Currently Pierce Law covers trade secret law in many IP courses. Pierce Law is the home to global trade secrets expert Professor Karl Jorda.

Available through Amazon.com

The goal of this Video Leadership Seminar is to provide lawyers and executives with essential information about trade secret litigation. The DVD is viewable on any computer or iPod (that supports video) and features 70 minutes of live video with Scott A. Birnbaum of Birnbaum & Godkin LLP sharing his knowledge and experience with protecting trade secrets and litigation. The Video Leadership Seminar provides specific resources such as the most important laws, strategies to succeed and experiences dealing with different situations. Topics covered in the Video Leadership Seminar include: Important distinctions between trade secrets and patents Procedures for protecting trade secrets Common obstacles in cases involving trade secrets Negotiation and settlement strategies Laws that impact trade secrets and trade secret litigations, such as the Uniform Trade Secret Act, Espionage Act of 1996) Hypothetical situation

FRONTRANGE SOLUTIONS USA, INC. v. NEWROAD SOFTWARE, INC., et al.
505 F.Supp.2d 821 (D. Colo 2007)

A developer and marketer of software products brought action against reseller alleging trademark infringement, false designation of origin, and trademark dilution in violation of Lanham Act, common law trademark infringement, breach of software purchase agreement (SPA), breach of SPA's implied covenant of good faith and fair dealing, misappropriation of trade secrets obtained pursuant to SPA, misappropriation of trade secrets obtained by former employee during his employment, breach of consulting services agreement (CSA), breach of CSA's implied covenant of good faith and fair dealing, unfair misappropriation, and intentional interference with contractual relations. Reseller counterclaimed alleging breach of SPA based on plaintiff's failure to pay royalties. Reseller brought motion for summary judgment.

VerdictSearch California Reporter

United States District Court, N.D. California
Kyphon Inc. v. Lenny C. Phan
No. 3:07-cv-04295-JL

Judge James Larson entered a consent judgment, in which Phan stipulated that he infringed Kyphon's patents, breached the proprietary information agreement and committed conversion. Phan was permanently enjoined from infringing the patents. Under the consent judgment, Phang agreed to pay $120,000.

VerdictSearch Texas Reporter
United States District Court, S.D. Texas, Houston Division
No. 4:06-cv-03573

Judge Lynne M. Hughes ruled that CI and Devine used the plaintiffs' confidential data and attempted to sell it for its own gain. Judge Hughes granted the plaintiffs' motion for summary judgment and issued an order forbidding CI and Devine from using the plantiffs' data and confidential information.

Kimberly N. Van Voorhis

On October 31, 2007, Judge James C. Cacheris of the Eastern District of Virginia enjoined the United States Patent and Trademark Office from implementing the revised Final Patent Rules ("Final Rules"), which were set to take effect today.

The Order issued following a complaint and request for temporary restraining order and preliminary injunction filed by GlaxoSmithKline ("GSK") early last month. GSK filed its complaint after the Patent Office released the Final Rules on August 21, 2007. GSK sought to enjoin implementation of the Final Rules pending the outcome of its case.

The GSK case underscores the mixed response received by many of the Patent Office’s most recent reform efforts. Many patent applicants share GSK’s concerns that such reforms inadequately address several key issues including patent portfolio management, innovation, and maintaining the delicate balance between trade secrets and patent protection.

Jerry F. Barbanel and Bruce W. Pixley

Theft of intellectual property results in American corporations losing more than $250 billion annually.1 The perpetrators of such crimes range from hackers and disgruntled employees trying to make some extra money to former employees who take highly guarded intellectual property and trade secrets to their new companies.

With the significant role that computers often play in intellectual property and trade secret thefts, computer forensics has become a critical component in piecing together the facts needed for a successful investigation or potential litigation. When a company suspects that its intellectual property or trade secrets have been stolen, the primary concern should be ensuring proper collection and preservation of evidence. In such situations, companies need to retain a computer forensic specialist familiar with the latest techniques used to analyze digital evidence and experienced in providing expert testimony.

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Click Here to Go to Trade Secrets Experts

BOSTON, Nov. 5, 2007 (Thomson Financial delivered by Newstex)

Shares of iRobot (NASDAQ:IRBT) Corp. rose Monday after the Burlington, Mass.-based robot developer said a U.S. District Court for the District of Massachusetts granted iRobot's request for preliminary injunction in a trade secrets lawsuit against former employee Jameel Ahed and his company, Robotic FX Inc.

This site get my WOW recommendation for a free news source from a premium service. IP Law360 is used by the Pierce Law academic community.

874 N.E.2d 959 (Ill. 2007)

A petroleum industry contractor brought action against project manager formerly employed by contractor and project manager's current employer, alleging breach of a covenant not to compete, violations of Trade Secrets Act and breach of fiduciary duties. The Circuit Court, Winnebago County, Ronald L. Pirrello , J., granted contractor a preliminary injunction to enforce the covenant not to compete but denied other requested injunctive relief. Contractor appealed, and project manager cross-appealed.

The Appellate Court, Callum , J., held that:

(1) covenant not to compete for six months was only enforceable from the date project manager left contractor's employ, not from the date that project manager ceased breaching the covenant, for purposes of a preliminary injunction;
(2) trial court did not abuse its discretion by finding, for purposes of a preliminary injunction, that contractor was unlikely to succeed on its claim that information project manager copied were trade secrets;
(3) trial court did not abuse its discretion by finding, for purposes of a preliminary injunction, that contractor had an adequate legal remedy for the alleged theft of its trade secrets;
(4) contractor waived its breach of fiduciary duty arguments; and
(5) cross-appeal of project manager claiming trial court erred in issuing the preliminary injunction was moot.

67 Cal.Rptr.3d 54 (2007)

A former employer brought action against its former project manager and competitor in the commercial construction industry for misappropriation of trade secrets, intentional interference with prospective economic advantage, unfair competition, and interference with contract. The Superior Court, Santa Clara County, No. CV-017128, William J. Elfving , J., granted summary judgment for defendants, and former employer appealed.

Holdings: The Court of Appeal, Elia , J., held that:

(1) genuine issue of material fact as to whether information in documents taken by former project manager derived independent economic value from not being generally known by competitors precluded summary judgment on claim for misappropriation of trade secrets;
(2) genuine issue of material fact as to whether former employer made reasonable efforts to maintain the secrecy of that information precluded summary judgment on misappropriation of trade secrets claim;
(3) genuine issue of material fact as to the existence of an economic relationship between project owners and former employer precluded summary judgment on claim for intentional interference with prospective economic advantage; and
(4) genuine issues of material fact precluded summary judgment on unfair competition claims.

--- F.Supp.2d ---- (2007)

A Kentucky consulting firm brought action against California radio station owner alleging misappropriation of its trade secrets and intellectual property. After dismissal of complaint for lack of personal jurisdiction, 2007 WL 2258860, firm moved for reconsideration.

Holdings: The District Court, Heyburn , Chief Judge, held that:
(1) owner did not fall within scope of Kentucky's long-arm statute, and
(2) due process precluded exercise of personal jurisdiction over owner.

507 F.Supp.2d 847 (N.D. Ill. 2007)

An employer sued former employee, alleging breach of noncompete agreement. The United States District Court for the Northern District of Illinois, denied employer's motion for preliminary relief. The United States Court of Appeals for the Seventh Circuit, Easterbrook, Circuit Judge, 481 F.3d 528, vacated decision with directions to enter preliminary injunction in favor of employer on remand.

Holding: The District Court, James F. Holderman , Chief Judge, held that any denial of employee's procedural due process rights or substantive rights under Pennsylvania law arising from remand order, which directed entry

Email news string today on a private IP related listserv:

The original thread:

I read the Tafas opinion for the first time today, and while I am still trying to digest it, a question crossed my mind. Tafas, by the way, is the case in which the EDVa enjoined the 5/25 rules last week. At one portion, the court relies on the fact that GSK has a trade secret in its invention which it gives up in exchange for patent protection from USPTO. The court seems to infer from this some sort of due process/retroactivity problem. I am curious why this logic would not apply to the 18-month publication requirement and the limited provisional protection under 154(d). I ask this because it strikes me that the reasoning of the court is broader than need be. With all the problems that the new rules raise, I am not sure that they exceed the USPTO's authority, but I am open to being convinced.

Philadelphia Business Journal

Innovative Solutions & Support Inc., maker of display systems, data equipment and computers for aircraft, said Wednesday a jury has awarded it a little more than $6 million in a trade-secret misappropriation trial.

The Exton, Pa.-based company said the jury unanimously found that each of the defendants had misappropriated IS&S' air data computer technology and that it had suffered damages of slightly more than $4.4 million in lost profits and $1.6 million in net profits earned by the defendants.

Associated Press

WILMINGTON, Delaware: A former DuPont Co. senior scientist who admitted that he stole trade secrets from the company was sentenced Tuesday to 18 months in federal prison. Gary Min, 44, who was born in China and is also known as Yonggang Min, also must pay a fine of $30,000. U.S. District Court Judge Sue Robinson ordered that he report to a federal probation office in his home state of Ohio, where he will serve his time.

KYLE IBOSHI An FBI agent says, Chapin wrote an anonymous letter to the CEO of the Saucony Corporation. The shoe maker is a competitor of Nike. He also suggests similar letters were sent to four other CEO's. Investigators say Chapin claimed to have a copy of Nike's unreleased Fall 2008 catalog. He was willing to leak the information, including designs and prices, to the highest bidder. "This is espionage. This kind of crime, when you are trying to sell trade secrets is considered espionage under federal law," explains Beth Anne Steele of the Portland FBI Office.

FOX6

A man who enlisted his son to help him break into the La Jolla offices of a former employer to find out what it had bid on a federal building project pleaded guilty today to conspiracy to steal trade secrets. John K. Norris faces up to 10 years in federal prison and a $250,000 fine when he is sentenced Jan. 28 by U.S. District Judge M. James Lorenz. On April 8, the hallway camera captured John K. Norris entering the hallway and janitor's closet, but he shielded his face with a piece of cardboard. The Imperial Group's surveillance system, however, captured him rifling their files.

JOE LAMBE
The Kansas City Star

A Missouri wreck that happened seven years ago along Interstate 70 could force an insurance industry giant to do something plaintiff lawyers across the country have sought for years: Release documents that allegedly show how Allstate Insurance Co. set up a claims payment system in the 1990s that shortchanged clients while earning the company huge profits. Earlier in that case, a Jackson County judge fined Allstate $25,000 a day until it produces the documents, which involve about 12,500 pages of slides prepared by consultant McKinsey & Co. The fine now stands at about $1.4 million. Allstate officials say the documents include trade secrets used to create company policies, methods and procedures for handling claims.

by Christopher Burgess and Richard Power Corporations face numerous challenges, but a major threat remains largely unrecognized: the theft of proprietary information. Preventing Corporate Intellectual Property Theft & Economic Espionage offers a fascinating journey into the dark side of the information age, shedding new light on corporate hacking, industrial counterfeiting, piracy, organized crime, and related problems. With practical examples and real-world case studies throughout the text, this book provides a comprehensive guide for addressing such threats, demonstrating how to design, develop, and deploy an effective enterprise-wide response to these rapidly escalating problems.

San Fernando Valley Business Journal Associates
Robert P. Green, CPA.CITP and Rick Mark are practice leaders with insync Information Management, LLC

Suffice to say that any electronic information that a business wants to protect, as its own, can be considered a critical digital asset. Examples include digital versions of intellectual property, confidential or proprietary information, trade secrets, and the often ignored, regulatory protected and risk-prone “private” information about employees or customers.

...

In conjunction with counsel, begin with outlining or augmenting your company’s current operations and policies to comply with State or Federal Privacy laws, and other regulation as related to your specific industry, as applicable. Create an Acceptable Use Policy (“AUP”) that illustrates the regulations and expectations of employees using your systems. Consider, as well, specific handbook policies that govern digital-oriented inventions, trade secrets, and the like.

IBLS Contributor: Mark F. Foley, Partner, Foley & Lardner LLP

Confidentiality means keeping the access, use, and dissemination of information controlled to the extent required by law, contract, or business need (such as the protection of trade secrets or business plans). Integrity means keeping data and systems reliable -- secure against modifications by well-meaning but ill-informed employees, as well as secure against modification by competitors, viruses, hackers, or others who might want to maliciously modify data or take control of your systems to attack other networks. Availability means enabling data access to those who need it to do their jobs efficiently, effectively, and creatively, while preventing or defeating attacks such as denial of service attacks against Websites or Web-accessible data, introduction of viruses, Trojan horses, and other malware, and spam attacks, etc. -- activities that can reduce the efficiency or availability of critical business systems. ... Protecting these assets requires top down policy development and enterprise-wide implementation. Rules and procedures must be established for proper access to, and use of, information assets. These rules must be enforced and managers must be held accountable because failures are likely to cause harm.

ATLANTA--(BUSINESS WIRE)

A leader in the science of converting biomass to energy, Atlanta-based SilvaGas Corporation, then FERCO Enterprises, filed suit in the U.S. District Court for the Northern District of Georgia in 2005 after former employee Mark Paisley left and joined Taylor Recycling/Taylor Biomass LLC.

In the complaint, FERCO alleged not only that the defendants misappropriated its trade secrets, but also that Paisley breached his fiduciary duty to FERCO by surreptitiously working for Taylor while still employed at FERCO.

It is FERCO’s opinion that Paisley took FERCO’s trade secrets with him and used them to create a biomass gasification system similar to FERCO’s within weeks of his resignation from FERCO.

U.S. District Court Judge Orinda Evans recently ruled in favor of FERCO on two of three motions in the case. Due to the defendants’ frivolous discovery conduct, Judge Evans ordered the defendants to pay sanctions to FERCO. In addition, she ruled that the defendants’ counterclaims against FERCO and its primary investor should be dismissed.

Stephen P. Rothman

6. Trade Secrets and University Policies

Some form of intellectual property protection is a very important factor in the investment decision of most investors in early stage enterprises. Someone investing in validating a new technology will want assurance that it will not be easy for others who have not made the same investment to step in and compete once the viability of the enterprise has been demonstrated. For most startup companies, the main IP protection is either through patents or through trade secrets, or possibly through patents for some assets and trade secret protection for others. Each of patent protection and trade secret protection has advantages and disadvantages, and companies will ordinarily choose the most suitable form of IP for a particular technology. Only patent protection, not trade secret protection, will usually be available for inventions growing out of university research. This is because all universities have a strong policy favoring an open flow of information that is antithetical to trade secret protection. The initial IP protection strategy for a university spin-out almost always takes the form of an exclusive license from the university on one or more patents or patent applications. Most investors, and their legal counsel, conclude that patents will adequately protect their investment without the availability of trade secret protection. But for those new to university spin-outs, this requires some education. The IP license will have some different features from what one would see if the licensor was a commercial enterprise. If there is a consulting arrangement between the spin-out and a university faculty member, the consulting agreement will also probably need to be different from those in the form files of the investor's counsel (unless that counsel has previous experience with university spin-outs). Of course, the spin-out company can still obtain trade secret status for inventions that grow out of its own internal research.

From the IP bar...

Pritchard, Erin, Navigating the nuances: trade secrets and covenants not-to-compete, 21 CBA Rec. 14 (2007)

234 S.W.3d 679 (2007)

Technology consultants, two companies and the owner of their common parent company, brought action against client company, an international exploration and production company, and certain of client company's employees, alleging various tort claims relating to alleged misappropriations of consultants' purported oilfield technology trade secrets. Client company and its employees moved to dismiss on the basis of forum-selection clause in consulting agreement between consultants and company's affiliate.

502 F.3d 730 (7th Cir. 2007)

A concrete block manufacturer brought action seeking declaration that covenant not to compete in patent licensing agreement was not enforceable. The United States District Court for the Western District of Wisconsin, John C. Shabaz , J., 431 F.Supp.2d 937, entered summary judgment in patentee's favor, and manufacturer appealed.

The Court of Appeals, Wood , Circuit Judge, held inter alia that appellate jurisdiction over licensee's appeal lay with regional Court of Appeals, rather than with
Federal Circuit and under Minnesota law, legitimate interests that may be protected by covenant not to compete include company's goodwill, trade secrets, and confidential information.

George McGinn - AHN Editor

San Diego, CA (AHN) - A man and his son who broke into his former employer's offices to see what it bid on a government project pleaded guilty in federal court Nov. 6, according to an FBI statement released Monday. John Norris, 63, pleaded guilty to one count of conspiracy to steal trade secrets from The Imperial Group, which he was employed from September 1996 until November 2004. Norris' son, Matthew, 33, also pleaded guilty to one count of conspiracy to steal trade secrets from The Imperial Group.

CARLSBAD, Calif.--(BUSINESS WIRE)

Ra Medical Systems announced today that it has won the lawsuit filed by PhotoMedex (NASDAQ:PHMD) in the U.S. District Court, Southern District of California. PhotoMedex sued Ra Medical and its founder, Dean Irwin, in January 2004 alleging false advertising and unfair business practices. PhotoMedex claimed that Ra Medical Systems misrepresented its FDA status, and misrepresented specifications of its laser system. Ra Medical was victorious in all claims. The court also found that Ra Medical’s founder did not misrepresent himself when stating he invented PhotoMedex’s laser system.

In a related matter, PhotoMedex once again sued Ra Medical for trade secret theft, false advertising, not being properly licensed, and unfair competition and Ra Medical has prevailed on those claims. The Court allowed Ra Medical Systems’ claim that PhotoMedex sold lasers without a valid medical license to stand.

From Internationallawoffice.com
Its a little dated but trade secrets decisions from other countries are not often reported

Contributed by Roschier, Attorneys Ltd

On March 30 2007 the District Court of Helsinki issued an order prohibiting a software company that specialized in tailored software products from (i) exploiting the trade secrets of a fellow software company or any of its affiliates, and (ii) recruiting any employees of the fellow integrated information and communication technology solutions company. The court imposed a conditional fine of €750,000 for use of trade secrets and €100,000 for breach of the recruitment prohibition. The prohibition on using trade secrets extends until February 2011 and the prohibition on recruitment was in force until June 2007, on the condition that the plaintiff took appropriate court action within one month of the date of the court's decision on such precautionary measures.

Your faithful blogger will be on vacation for th next two weeks. I may or may not be monitoring daily sources during this period. Fear not, your hunger for trade secret info wlll be satisfied by "thought of the day" postings based on the book:

Commercial Espionage: 79 Ways Competitors Can Get Any Business Secrets
by Boris Parad

Have a happy Thanksgiving...Jon

by Boris Parad
Read the book for the rest of the story...

#1 - HIRING AWAY key employees to obtain vital information. Read how to address this.

by Boris Parad
Read the book for the rest of the story...

#2 - EVALUATION of trade secrets may be requested to evaluate the purchase of a target product or company. Read how to address this concern.

by Boris Parad
Read the book for the rest of the story...

#3 BIDDING WAR allows competing to pick up trade secrets during the background information gathering process. Read the book to address this concern.