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Defend Trade Secrets Act of 2016 Handbook
Defend Trade Secrets Act of 2016 Handbook
Defend Trade Secrets Act of 2016 Handbook is a “must have” resource for anyone who needs to know how this new law will affect trade secrets litigation. In one comprehensive volume it provides all the necessary analysis, primary source material and forms to jumpstart your knowledge of this new statute and its implications.
The Defend Trade Secrets Act of 2016 (DTSA) has been touted as the biggest legal change in intellectual property law since the passage of the Lanham Act in 1948. It creates a new federal cause of action for trade secret misappropriation. Now for the first time, litigants can bring a cause of action in federal court without asserting diversity or concurrent jurisdiction. Written by four leading trade secret practitioners, the publication provides authoritative content so that you can confidently navigate the new legal landscape under the DTSA.
Defend Trade Secrets Act of 2016 Handbook covers every aspect of the new law, and most importantly not only intricately analyzes the DTSA, but puts it within the context of the existing law. It begins with an overview of U.S. trade secrets law so that you get an understanding of how the law evolved and the how this new law relates to the current body of trade secrets law. It then delves deeply into the Economic Espionage Act (EEA) and the most recent amendment to this statute, the DTSA. The analysis continues by covering the Uniform Trade Secrets Act and its nexus to the DTSA and EEA. The book then goes on to provide detailed coverage of every aspect of the DTSA and litigation under the new act – from the definition of a trade secret to the new ex parte seizure order (how to obtain the court order, the court hearing, damages for wrongful and excessive seizure, and more). It also covers remedies under the DTSA, immunity for whistleblowers and litigants, defenses to civil claims under the EEA and other important litigation issues, such as determining where to sue, possible causes of action, discovery issues, criminal remedies and RICO predicate offenses. The appendices contain helpful sample forms and checklists, a table of Section 1832 cases under the EEA dealing with the theft secrets from its enactment in 1996 through 2015. Also included is the text of all of the relevant statutes and legislative history of the DTSA so that legal practitioners have all the necessary resources at their fingertips.
Defend Trade Secrets Act of 2016 Handbook provides you with the following:
- A detailed analysis of the evolution of U.S. trade secret law which will in the understanding of this new law
- What you need to know about protecting trade secrets during litigation pre and post DTSA
- Crucial distinctions in litigating under the UTSA and DTSA
- A section-by-section analysis of the DTSA to provide the essential guidance you need in determining your litigation strategy
- The sixth essential phases in obtaining an ex parte seizure order under the DTSA
- How to obtain injunctive relief under the DTSA
- The types of damages available under the DTSA and how to asses and prove them
- Which activities receive immunity and which activities do not under the DTSA
- The impact of the DTSA on employers and what essential steps they need to take in light of this new law
- How to mount a swift and effective defense in a civil EEA case
- Strategic considerations regarding the inclusion of other claims in a litigation brought under the DTSA
- Sample forms and checklists to aid the practitioner in preparing attorney work product
Chapter 1. Overview of U.S. Trade Secrets Law - R. Mark Halligan
- § 1.01 Historical Development of Trade Secrets
- § 1.02 Restatement of the Law of Torts: Section 757 (1939)
- § 1.03 The Uniform Trade Secrets Act (1979)
- § 1.04 U.S. Supreme Court Decisions
- [A] Kewanee Oil Co. v. Bicron Corp. (1974)
- [B] Aronson v. Quick Point Pencil (1979)
- [C] Ruckelshaus v. Monsanto (1984)
- [D] Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989)
- § 1.05 Restatement (Third) of Unfair Competition (1995)
- § 1.06 The Economic Espionage Act of 1996
- [A] Section 1831: Economic Espionage
- [B] Section 1832: Theft of Trade Secrets
- [C] Section 1839: Four Definitions in the EEA
- [D] The Definition of a Trade Secret in the EEA is derived from the UTSA
- [E] No Federal Civil Cause of Action in EEA
- [F] Section 1833: Exceptions to Prohibitions
- [G] Section 1834: Criminal Forfeiture
- [H] Section 1835: Orders to Preserve Confidentiality
- [I] Section 1836: Civil Proceedings to Enjoin Violations
- [J] Section 1837: Applicability to Conduct Outside the United States
- [K] Section 1838: No Preemption
- §1.07 The Theft of Trade Secrets Clarification Act
- [A] United States v. Aleynikov
- [B] Amendment of Interstate Commerce Requirement
- §1.08 The Foreign and Economic Espionage Penalty Enhancement Act of 2012
- §1.09 The Defend Trade Secrets Act
- [A] The Genesis of the New Federal Trade Secrets Statute
- [B] 114th Congress: Two Proposed Amendments to the EEA
- [C] Senate Judiciary Committee: Defend Trade Secrets Act of 2016
- [D] The Senate/House Judiciary Committees: 2016
- [E] The DTSA Becomes Law on May 11, 2016
Chapter 2. Economic Espionage Act of 1996 - Mark L. Krotoski, Peter J. Toren
- § 2.01 Economic Espionage Act of 1996
- [A] Introduction
- [B] History
- § 2.02 Analysis of the EEA
- [A] Elements Overview
- [B] Elements Common to 18 U.S.C. §§ 1831 and 1832
- [C] Additional § 1831 Element – Intent to Benefit a Foreign Government
- [D] Additional § 1832 Elements
- [E] Defenses
- [F] Other Provisions
- § 2.03 Protecting Trade Secrets During Litigation
- [A] Pre-DTSA
- [B] DTSA Amendment to Section 1835
- § 2.04 Criminal Penalties
- [A] Maximum Statutory Penalties
- [B] U.S. Sentencing Guidelines
- [C] Forfeiture
- [D] Restitution
- § 2.05 Government Prosecutions Under the EEA
Chapter 3. Uniform Trade Secrets Act - R. Mark Halligan
- § 3.01 Introduction
- § 3.02 UTSA
- [A] Section 1. Definitions.
- [B] “Trade Secret” and “Misappropriation”
- [C] Section 2. Injunctive Relief.
- [D] Section 3. Damages.
- [E] Section 4. Attorney’s Fees.
- [F] Section 5. Preservation of Secrecy.
- [G] Section 6. Statute of Limitations.
- [H] Section 7. Effect on Other State Law.
- [I] Section 8. Uniformity of Application and Construction
Chapter 4 Analysis of The Defend Trade Secrets Act (“DTSA”) - Peter J. Toren, R. Mark Halligan
- § 4.01 Introduction
- § 4.02 Need for Legislative Reform
- § 4.03 Section-by-Section Analysis
- [A] Federal Jurisdiction for Theft of Trade Secrets
- [B] Definition of a Trade Secret
- [C] Ownership
- [D] Elements
- [E] Presenting Lay and/or Expert Testimony
- [F] Identifying the Trade Secret
- [G] Defenses
- [H] Whistleblower Immunity
- [I] Rights of Trade Secret Owners
- [J] Preemption
- [K] Misappropriation
- [L] Remedies
- [M] Extra-Territorial Application
Chapter 5. New Ex Parte Seizure Order - Mark L. Krotoski
- § 5.01 Overview
- § 5.02 Comparable Statutory Civil Seizure Orders for Other Intellectual Property Rights
- § 5.03 Other Avenues for Obtaining or Enjoining Trade Secrets
- § 5.04 Overview of Process to Obtain an Ex Parte Civil Seizure Order
- [A] First Phase: Ex Parte Application
- [B] Second Phase: Civil Seizure Order Elements
- [C] Third Phase: Execution of the Civil Seizure Order
- [D] Fourth Phase: Safeguarding the Seized Trade Secret Materials
- [E] Fifth Phase: Post-Seizure Hearing
- [F] Sixth Phase: Proceedings for an Unwarranted or Excessive Seizure Order
- § 5.05 Report on Best Practices on the Seizure and Securing of Seized Information and Media
- [A] Two Areas of Focus
- [B] Federal Judicial Center
Chapter 6. Remedies - R. Mark Halligan
- § 6.01 Introduction
- § 6.02 Injunctions
- [A] Threatened Misappropriation
- [B] Actual Misappropriation
- [C] Improper Means
- [D] Affirmative Actions to Protect Trade Secret
- [E] In Exceptional Circumstances: Reasonable Royalty
- § 6.03 Damages
- [A] Actual Loss and Unjust Enrichment
- [B] Reasonable Royalty
- § 6.04 Exemplary Damages
- § 6.05 Attorney’s Fees
Chapter 7. Immunity for Whistleblowers and Litigants - Linda K. Stevens
- § 7.01 A Balancing Act: Trade Secret Protection vs. The Need to Protect Whistleblowers
- § 7.02 The DTSA’s Immunity Provisions
- [A] What Activities Receive “Immunity”
- [B] What Activities Do Not Receive “Immunity”
- [C] The Limits of “Immunity”
- § 7.03 Trade Secrets May be Used and Disclosed in Anti-Retaliation Lawsuits
- § 7.04 Impact on Employers
- [A] The Need to Update All Non-Disclosure Agreements
- [B] The Risk Posed by Filings Under Seal
Chapter 8. Defenses to Civil Claims under the EEA - Linda K. Stevens
- § 8.01 Strategic Defense of a Trade Secrets Case
- § 8.02 Legal Defenses to Trade Secret Misappropriation
- [A] Proper Acquisition
- [B] “Readily Ascertainable”
- [C] Lack of “Reasonable Measures”
- [D] A General Listing of Possible Affirmative Defenses
Chapter 9. Other Litigation Issues - Linda K. Stevens
- § 9.01 Where to Sue: State v. Federal Court?
- § 9.02 Which Federal Forum?
- § 9.03 Who Can Bring Suit & Who Can Be Sued?
- [A] Possible Plaintiffs
- [B] Possible Defendants
- § 9.04 Whom to Represent?
- § 9.05 When to Sue?
- § 9.06 Other Possible Causes of Action
- [A] Other Possible Federal Claims
- [B] Possible State Law Claims
- [C] Strategic Considerations Regarding Inclusion of Other Claims
- § 9.07 Identification of the Alleged Trade Secret
- § 9.08 Protection of the Alleged Trade Secret During the Litigation Process
- [A] DTSA Provisions Protecting Alleged Secrets
- [B] Protective Orders
- § 9.09 Protection from Publicity
- § 9.10 What State’s Law Applies?
- § 9.11 Will Irreparable Harm Be Presumed?
Sample Practice Forms and Finding Aids
- Appendix A - Pre-filing Investigation Checklists
- A-1 Potential Trade Secrets
- A-2 Trade Secret Security Measures
- A-3 FBI Warning Signs and Best Practices
- Appendix B - Sample Nondisclosure Agreement
- Appendix C - Draft Motion for Temporary Restraining Order/Preliminary Injunction
- Appendix D - Ex Parte Seizure Checklist
- Appendix E - Emergency Application for Ex Parte Seizure Order Pursuant to Section 18.U.S.C. Section 1836(b)(2) and Memorandum in Support
- Appendix F - Court Order Granting an Ex Parte Seizure Application
- Appendix G - Model Protective Order
- Appendix H - Sample Jury Instructions
- Appendix I - Table of Section 1832 Cases (1996-2015)
Statutes and Congressional Reports
- Appendix J - Uniform Trade Secrets Act with 1985 Amendments
- Appendix K - Economic Espionage Act of 1996
- Appendix L - Defend Trade Secrets Act of 2016
- Appendix M - Defend Trade Secrets Act of 2016 House Report 114-529 (with Amendments to the EEA of 1996)
- Appendix N - Defend Trade Secrets Act of 2016 Senate Report 114-220
- Appendix O - Economic Espionage Act of 1996 House Report 104-788
- Appendix P - The Industrial Espionage Act of 1996 Senate Report 104-359
R. Mark Halligan is recognized as a one of the leading lawyers in trade secrets litigation in the United States by Legal 500 and he is recognized by Chambers USA: America’s Leading Lawyers for Business for his exceptional standing in intellectual property law. He is a partner at FisherBroyles LLP, and is an accomplished trial lawyer who focuses his practice on intellectual property litigation and complex commercial litigation, including antitrust and licensing issues.
Mr. Halligan has successfully represented both individuals and corporations as plaintiffs and defendants in federal and state courts throughout the United States. In recent years, Mr. Halligan has been at the forefront of international developments in intellectual property law and he is a recognized thought leader in the ever-growing area of trade secrets law having spoken worldwide to numerous organizations and corporations on the topic -- most recently Practicing Law Institute (PLI), the Intellectual Property Law Association of Chicago (IPLAC); the 26th Annual Trade Secrets Seminar at the John Marshall Law School; the American Intellectual Property Law Association (AIPLA) 2015 Trade Secret Summit; the American Bar Association (ABA) Section of Litigation, 60th Annual Conference on Developments in Trade Secrets Law; the Symposium on Trade Secret Protection, United States Patent and Trademark Office—Global Intellectual Property Academy (GIPA) and several state bar associations. He has also written extensively on trade secrets law. Managing Intellectual Property has recognized Mr. Halligan as an “IP Star.”
Mr. Halligan has taught Advanced Trade Secrets Law at John Marshall Law School for 21 years. Mr. Halligan was a key resource for the Defend Trade Secrets Act of 1996 being the first to advocate a federal civil cause of action (without preemption) together with ex parte seizure provisions in 2008. See R. Mark Halligan, Protection of U.S. Trade Secret Assets: Critical Amendments to the Economic Espionage Act 0f 1996, 7 J. Marshall Rev. Intell. Prop. L. 656 (2008).
Mark L. Krotoski is a partner at Morgan Lewis and represents and advises clients on cybersecurity and privacy matters; trade secret, economic espionage, fraud, and foreign corrupt practices cases; antitrust cartel investigations; and government investigations. With nearly 20 years of experience as a federal prosecutor and a leader in the US Department of Justice (DOJ), Mr. Krotoski provides clients with a unique blend of litigation and investigative experience. He has tried 20 cases to verdict and successfully argued appeals before the US Court of Appeals for the Ninth and Sixth Circuits. During nearly 20 years as a federal prosecutor, Mark handled a variety of complex and novel investigations and high-profile cases. Mr. Krotoski served as the national coordinator for the Computer Hacking and Intellectual Property (CHIP) Program in the DOJ’s Criminal Division, which involved approximately 250 federal prosecutors specially trained to prosecute cybercrime and intellectual property enforcement cases. He successfully prosecuted and investigated virtually every type of computer intrusion, cybercrime, and criminal intellectual property violation.
Mr. Krotoski also served as a DOJ leader on economic espionage cases involving the theft of trade secrets with the intent to benefit a foreign government. He and his team successfully prosecuted two foreign economic espionage cases. Mr. Krotoski advises clients on developing effective Trade Secret Protection and Cybersecurity Plans and assists them when their trade secrets are misappropriated or they suffer a data breach incident. He has written extensively on these issues. In December 2015, he submitted a statement to the Senate Judiciary Committee on trade secret reform legislation. Mark frequently speaks at national and international conferences on topics involving criminal antitrust enforcement, cybersecurity, cybercrime, and trade secret issues, as well as the use of electronic evidence in investigations and at trial.
Linda K. Stevens is an intellectual property litigator and counselor with Schiff Hardin LLP in Chicago. As Co-Chair of Schiff Hardin’s Trade Secrets and Restrictive Covenants Client Service Team, she understands that such sensitive situations require quick response and effective action. An impassioned advocate, Ms. Stevens is dedicated to helping her clients protect and defend their invaluable intellectual property assets, including trade secrets, trademarks, trade dress, and copyrights. Ms. Stevens has handled intellectual property matters in both state and federal courts, as well in domestic and international arbitrations. Ms. Stevens’ litigation and counseling experience spans numerous industries, including consumer products manufacturing and distribution, medical device and equipment manufacture, food service and distribution, and software development.
In addition to her courtroom work, Ms. Stevens has acted as general outside counsel to several intellectual property-focused clients, assisting them with all legal aspects of their businesses, including helping them avoid risks that could lead to litigation. She serves as Co-Chair of the Trade Secrets Subcommittee for the Intellectual Property Litigation Committee of the American Bar Association. Ms. Stevens writes and speaks extensively regarding various litigation and intellectual property-related topics. Much of her work addresses the substantive legal, procedural, and practical issues arising in cases regarding trade secrets and non-competes.
Peter J. Toren is an intellectual property litigator and a partner with Weisbrod, Matteis & Copley in Washington, D.C. where he helps individuals and companies protect their IP rights. He was named in 2014 to the National Law Journal’s Top 50 Intellectual Property Trailblazers and Pioneers. While in private practice he has first-chaired, patent and trademark trials and dozens of Markman, preliminary injunction and summary judgment motions. He also has represented clients in both civil and criminal theft of trade secret matters, including as co-lead attorney for Hilton in Starwood v. Hilton, Int’l. He has argued before the Second, Fifth, Ninth and Federal Circuits involving patent, copyright, and trademark law.
Prior to entering private practice, he served for eight years as trial counsel and acting Deputy Chief of the Computer Crime and Intellectual Property Section, where he tried criminal cases for theft of trade secrets, computer crime and copyright infringement and trafficking in counterfeit goods, including the first case involving the Economic Espionage Act that went to trial. He is the author of the leading treatise on criminal violations of intellectual property rights and computer crime, Intellectual Property & Computer Crime (Law Journal Press, 2003, updated 25 times since first published) that contains an in-depth analysis of the EEA. He is also the author of over 100 articles on a variety of legal subjects. He is frequently quoted in the press, including in The New York Times, Wall Street Journal Washington Post, Forbes, Fortune, CNNMoney, Al Jezeera, Hollywood Reporter, Christian Science Monitor, Bloomberg News, Thomson Reuters, Law360, Variety and the Guardian. Has also appeared on CNN, Bloomberg TV, ABC, BBC and CCTV.