Trade Secrets, Non-Competes & Employee Mobility

Our Approach

ArentFox Schiff attorneys have notable experience counseling clients on best practices for identifying their valuable trade secrets, and for designing, implementing, and maintaining trade secret policies and protections within the construct of the federal Defend Trade Secrets Act, the Uniform Trade Secrets Act, and related state laws. Our litigators often represent companies seeking to protect and enforce their trade secret rights, as well as defend companies and individuals who are accused of trade secret misuse and misappropriation. We also routinely advise clients on ways to monetize their trade secrets, including through licensing.

ArentFox Schiff stands apart because of our integrated approach. We pair attorneys from our industry-leading practices with our top litigators to create a formidable team. No matter the issue — from obtaining a preliminary injunction to assembling a veteran trial team — we help you marshal the facts, understand the law, and make informed decisions before events take control.

Many of our team members have technical backgrounds and advanced degrees that enable them to fully understand both the underlying technology and the law. They use this knowledge and experience to contribute to teaching efforts by frequently speaking at events and conferences about pressing Trade Secrets laws. Finally, because trade secret misappropriation cases often lead to criminal investigations and potential prosecution by state or federal authorities, we regularly draw upon the experience of our white-collar practice.

How We Help

• Trade Secret Audits
• Trade Secret Policies
• Non-Disclosure Agreements (NDAs)
• Assignment of rights provisions for inventors, employees, and contractors
• Employee Mobility – policies, agreements, negotiation, and enforcement (onboarding and offboarding)
• Restrictive Covenant and Non-Compete Provisions
• Internal Investigations & Audits
• Temporary Restraining Orders and Injunctions
• Disputes & Litigation – including business conspiracy, contract interference claims, and breaches of contract and fiduciary duty obligations
• Criminal Investigations and Prosecutions

Representative Matters

Our attorneys have extensive experience litigating complex misappropriation claims involving computer hardware, software, data security technologies, and proprietary business information to include pricing, customer information, and bid information. Examples of representative trade secret litigation matters include:

• Obtaining jury verdict in client’s favor on claims for misappropriation of trade secrets, breach of contract, and breach of duty of loyalty against a former employee who stole company formulas and scientific research records before quitting and joining a Chinese competitor. The seven-figure judgment includes compensatory damages, costs, and punitive damages. This case was one of the Top 25 breach of contract verdicts in California in 2017.
• Defending a South Korean company in trade secrets litigation in the Eastern District of Virginia, involving the alleged theft of dozens of trade secrets related to the manufacturing process for para-aramid fibers. The case, which also involved claims of civil and statutory conspiracy as well as antitrust counterclaims, was tried by a jury over eight weeks.
• Defending a South Korean company in criminal prosecution under the Economic Espionage Act in the Eastern District of Virginia, involving the alleged theft of trade secrets related to the manufacturing process for para-aramid fibers.
• Representing an individual charged in federal court with theft of trade secrets and economic espionage for allegedly hiring laid-off employees of a competitor in order to obtain confidential and proprietary information.
• Representing a prominent defense government contractor in litigation against a former employee who misappropriated valuable trade secrets related to bidding for contracts, and who attempted to hide the misappropriation through the spoliation of electronically stored information and other evidence. Secured a temporary restraining order (TRO) and preliminary injunction, and obtained an award finding a willful and malicious violation of the Defend Trade Secrets Act (DTSA) and permitting recovery of substantial fees and costs related to the litigation and the extensive spoliation efforts.
• Representing a defense government contractor in litigation against a group of employees who assisted a competitor in its bid competition efforts for the recompete of a government contract for which they were key, in violation of their non-competes and other contract and fiduciary obligations. Secured a temporary restraining order (TRO), and subsequent contempt sanctions against the primary defendant upon discovering and obtaining third-party subpoena evidence of violations of the TRO. The case settled on favorable terms.
• Defending a company in trade secrets litigation alleging the misappropriation of hundreds of trade secrets related to business intelligence software. Secured the exclusion of the plaintiff’s damages expert and theories on pretrial motions, and obtained a defense verdict on all but three of the alleged trade secret claims.
• Defending a company in state court litigation involving the alleged misappropriation of customer lists and other alleged trade secrets related to the casualty insurance business. After a multi-day bench trial, received a defense verdict on plaintiff’s misappropriation claims.
• Defending a start-up company in a month-long jury trial in state court over alleged misappropriation of trade secrets and unfair business practices arising from the expert witness industry. The case settled on favorable terms, below statutory offer, following jury verdict.
• Defending a start-up clean room parts manufacturer against allegations that the company’s competing designs were made using the plaintiffs’ trade secrets. Following extensive discovery, the case was dismissed.
• Defending a computer communications hardware manufacturer in a case involving misappropriation of trade secrets and trespass to the plaintiff’s computer systems. After initial litigation, a confidential business resolution was obtained.
• Defending a company in state court litigation filed by the former CEO of a subsidiary who sought substantial severance under his executive agreement. The company alleged, in defense, that the CEO’s misappropriation of trade secrets barred the executive’s entitlement to the contract severance. The case settled after initial litigation.
• Defending a company in state court litigation filed by a former salesperson who claimed substantial unpaid commissions. The company asserted counterclaims and third-party claims against the former salesperson and his new employer for the misappropriation of its trade secrets, including customer and pricing information related to its financial printing services. The case settled following discovery on the company’s trade secret claims.
• Defending a company in federal court litigation against Defense of Trade Secrets Act (DTSA) and related state claims filed by the former employer of a newly hired sales manager asserting misappropriation of its product and pipeline data. Negotiated a consent order for limited forensic examination in lieu of TRO.
• Defending a senior executive in ICC Arbitration against non-compete and equity clawback claims related to the executive departing one publicly traded government contractor to join the senior leadership of another publicly traded government contractor. The arbitration involved unique issues regarding the employee choice doctrine, equity valuation, the relative assessment of competitor status, and the scope of discovery to the third party new employer. Discovery was successfully limited, and the case settled following submission of the final pre-hearing papers and expiration of the restrictive covenant periods.