The IPLAC Trade Secrets and Unfair Competition Committee presented this CLE webinar. Committee Vice-Chair and business lawyer, Tim Oliver (Grogan, Hesse & Uditsky, P.C.), moderated a panel of two experts in the field, John Bone (Stout) and David Duski (Charles River Associates). The panelists drew from their wealth of experience as expert witnesses to first provide a high-level view of trade secrets laws and remedies, followed by a narrowly focused discussion on monetary damages. Find out more about the panelists’ perspectives here. Consider joining the Trade Secrets and Unfair Competition (“TS&UC”) Committee to participate in developing more content in this practice area. The TS&UC plans to host its annual “Trade Secrets Summit” on May 4, 2023.
The panelists agreed that effective scenario planning is paramount for successful trade secrets litigation strategy. Unlike patents, trade secrets do not provide defined claims that establish the scope of a dispute from the onset. In fact, trade secrets litigation often involves educating one’s own client to identify and weigh each trade secret asset in the portfolio at dispute. The panelists suggested honing in on the strongest trade secret that offers the most “bang for your buck” in terms of damages to strategize for the entire portfolio. The panelists highlighted other important considerations for trade secrets damages, such as determining the appropriate damages period and figuring out the extent of the misappropriation and use. Unbeknownst to those unfamiliar with trade secrets litigation, the panelists discussed the potential for seeking both equitable and monetary relief for trade secrets misappropriation. The panelists posed scenarios where a trade secrets plaintiff could obtain an injunction and still recover damages for previous harm. The session concluded with some cautionary advice from the panelists: do not wait long before identifying your potential trade secrets damages. Missteps early on in a trade secrets misappropriation case may preclude you from later seeking relief that you (and your client) assume will be available.