Panel Session I: The best kept (trade)

secret: a real life scenario

Sunday, October 15 201709:00-12:30

meetthe panel

4

• Annsley Ward, Bristows LLP, UK (Moderator)

• Mark Ridgway, Allen & Overy, UK (Moderator)

• Lucas Kenny, NetApp, Melbourne, Australia

• Linda Lecomte, Wuersch & Gering, New York, USA

• Catherine Mateu, Armengaud Guerlain, Paris, France

• Justice David Yates, Federal Court of Australia

• Presiding Judge Dr. Matthias Zigann, Regional Court Munich I

• James Pooley, Pooley PLC, California, USA• Judge James Kleinberg (Ret), California, USA • Mr Justice Richard Arnold, High Court of England & Wales• Mr Justice Henry Carr, High Court of England & Wales• Pamela Passman, CREATe.org, Washington DC, USA

global importanceoftrade secrets

56% v 37%

Waymo v UberPfizer v Amman

Apotex v Teva

patenttrade

secrets

Jim Pooley

California

panel discussion

importance

of trade secrets

11

How are trade secrets protected?

Automatic (eg

equity, unfair

competition)

Specific

criminal

provisions

Contractual

Other criminal

provisions

Mode of protection affects:

(i) Approach / strategy;

(ii) Flexibility of remedies;

(iii) Degree of control.

12

Trade Secrets “definitions”

Protection for information that is:

“…secret in the sense that it is not, as a body or in the precise configuration

and assembly of its components, generally known among or readily

accessible to persons within the circles that normally deal with the kind of

information in question…” (TRIPS Article 39)

– Otherwise no efforts (prior to EUTSD) to harmonise what can be

protected

– NDAs typically attempt to define the information that is to be protected

(eg information relating to a particular product / business / transaction)

– But generally hard to know in advance what really matters, making it

challenging to plan ahead

13

When trade secrets issues arise

Information leakage & loss of competitive edge

Disclosure

through

data leak /

attacks

Disputes with

former

collaborators

(eg post-JV)

Misuse by

employees

(incoming and

outgoing)

14

Litigation challenges

Need to move

quickly

Public policy

considerations /

defences

Specifying the alleged

trade secrets up front

Protecting

confidentiality

in Court

Sceptical

judges?

Proving that the

secrets have been

misused (ie evidence)

15

Remedies to shoot for!

www.aippi.org

‒ Pre-action disclosure

‒ Search / seizure

‒ IT forensics

‒ Private investigators?

‒ Disclosure

‒ Depositions

‒ Testimony

‒ Final injunction

‒ “Spring board” injunction

‒ Damages

Pre-action / evidence

gathering

Interim phase Final remedies

16

Legislative advances…

The EU Trade Secrets Directive

– To be implemented by 9 June 2019

– Minimum harmonisation within EU

– Provides for:

– Uniform “definition” of TSs

– Criteria for unlawful

acquisition, use and disclosure

– Confidentiality of court

proceedings

– Safeguards to protect free

speech, worker mobility and

prevent abusive litigation

– Provisions on “infringing

products”

The Defend Trade Secrets Act

– In force since May 2016

– Federal statute to supplement

Uniform Trade Secrets Act

implementations in State Law

– Provides for:

– Federal civil cause of action

– Ex parte search & seizure

orders

– Easier means of enforcing

trade secrets across state lines

panel discussion

key

issues

Emilia

ZenTech

POLICIES

• Express confidentiality agreements

with employees and third parties

supply chain, specifically identifying

categories of information

• Tailored & enforceable non-compete

(rival business) and non-solicitation

clauses (group moves)

Physical• Building access controls – ID

swipe access

• Clean rooms – no electronic

devices

• Biometric access

• Motion detection

• Weight scanners

• ID security checks

• Security guard monitoring

• Metal detectors/pat downs

• No one person with access

to all highly confidential

areas

• Secure disposal of

equipment

• Electronic monitoring

using AI to flag suspicious

behaviour

• Dedicated VPN networks

• Printing logs

• Biometric access

• Data encryption

• Remote access restrictions

• USB drive restriction

• Breach detection measures

• Monitor and gauge access

patterns/frequency per

role

• Tracking

• Password protection

Digital

paneldiscussion

best practices

Meet Emilia

ZenTech’s Bad Morning

Emilia’s suspicious behaviour

Last 3 months

File access up over 300% (c.f. average over 12 months)Personal webmail use up from 2.5 weekly to 6 visits per day

Had been reported as a yellow/amber risk (for past 6 weeks)

Last night, 11PM

Remotely accessed ZenTech’ssystems for 1.5 hours (never previously logged on after 8PM)

Accessed around 30 files and deleted around 50, then deleted her deleted items

Now reported as amber/red risk

Emilia

1st

vote

Hon.Jim

Kleinberg

California

west

east

time for coffee