To continue our series on trade secret employee contract clauses, we’ve surveyed the First Circuit for updates to the law relating to restrictive covenants. Such covenants remain predominantly governed by statutes in Maine, Massachusetts, New Hampshire, and Rhode Island, while Puerto Rico continues to govern them by common law. And with no significant updates since 2020, restrictive covenants remain disfavored and under increased scrutiny in the First Circuit. Generally, these courts will only enforce noncompete agreements that are reasonable, no broader than necessary to protect an employer’s legitimate business interests, properly noticed, and in line with public policy. The applicable law for each state is set forth below. Continue Reading Restrictive Covenants in the First Circuit

A recent decision by the Second Circuit reminds litigants that a party asserting a trade secret misappropriation claim under the federal Defend Trade Secrets Act (DTSA), or New York law, must detail in a pleading “the “reasonable measures” employed to maintain the secrecy of the alleged trade secret. In Turret Labs USA, Inc. v. CargoSprint, LLC, No. 21-952, Dkt. No 106-1 (2nd Cir. Mar. 9, 2022), the Second Circuit affirmed the District Court’s grant of a motion to dismiss, concluding that plaintiff Turret Labs failed to adequately allege that reasonable measures were taken because, although there was an agreement giving the plaintiff’s customer exclusive access to the alleged trade secret, this agreement (as well as all surrounding security policy documents) failed to contractually obligate the customer to maintain confidentiality of the alleged secret.

Continue Reading Second Circuit Reminds Practitioners That A Plausible Claim for Trade Secret Misappropriation Must Detail the Reasonable Measures Used to Protect the Alleged Secret

Restrictive covenants not to compete, or non-compete agreements, are one of a variety of tools companies use to protect their trade secrets and competitive advantage. However, whether a court will enforce a restrictive covenant varies widely across jurisdictions, including across states within the Fifth Circuit. For example, the Louisiana statute governing restrictive covenants applies a two-year durational limit, while Mississippi common law applies a more general ‘reasonable and specific’ standard to the duration and geographic scope of a restrictive covenant. In addition, Mississippi courts must balance the rights of the employer, the employee, and the public when enforcing restrictive covenants. Bus. Commc’ns, Inc. v. Banks, 91 So. 3d 1, 11 (Miss. Ct. App. 2011), aff’d, 90 So. 3d 1221 (Miss. 2012). 

Continue Reading Restrictive Covenants in the Fifth Circuit

The California Office of the Attorney General issued its first opinion interpreting the California Consumer Privacy Act (CCPA) on March 10, 2022, addressing the issue of whether a consumer has a right to know the inferences that a business holds about the consumer. The AG concluded that, unless a statutory exception applies, internally generated inferences that a business holds about the consumer are personal information within the meaning of the CCPA and must be disclosed to the consumer, upon request. The consumer has the right to know about the inferences, regardless of whether the inferences were generated internally by the business or obtained by the business from another source. Further, while the CCPA does not require a business to disclose its trade secrets in response to consumers’ requests for information, the business cannot withhold inferences about the consumer by merely asserting that they constitute a “trade secret.”

Continue Reading California AG Interprets “Inferences” Under CCPA

New Jersey joins a growing list of states seeking to limit employers’ use of non-compete and non-solicitation agreements, adding to the patchwork of legislation in this area.

The New Jersey State Legislature proposed a bill on May 2, 2022 that would regulate and severely limit an employer’s use of non-compete agreements. Specifically, under A3715, all no-poach agreements would be void and non-compete agreements never enforceable against certain types of workers, including interns, apprentices, independent contractors, minors, low-wage employees, or employees who will be employed for less than one year. Outside of this population, restrictive covenants would only be enforced if the employer first discloses the terms of the agreement in writing 30 days before a prospective employee’s offer or, for current employees, 30 days before the agreement would be effective. Post-employment restrictions could only last for 12-months and employees must provide 10 days’ notice of their intent to enforce a post-employment agreement.

Continue Reading Non-Compete Agreements a Non-Starter? New Jersey Proposes Sweeping Non-Compete Legislation

For companies that rely heavily on R&D, such as those in the biotechnology, pharmaceutical, and associated manufacturing industries, IP forms some of their core assets. Protecting these assets is critical, and choosing between patents and trade secrets is not always straightforward.

This decision involves flexibility, understanding, and factoring in the ever-changing case law interpretations, which can take place years or even decades after the initial decision has been made. When weighing these factors, IP practitioners may decide that shifting from patent to trade secret protection is more favorable. But, with information so easily accessible and shareable, it is increasingly difficult to maintain trade secrets in confidence. While there is no one-size- fits-all answer, there are guidelines available for IP practitioners in these specialized fields where R&D is a key company asset and of paramount importance to protect.

This article originally appeared in Life Science Leader magazine. Read the full article below:

Article Link: https://www.lifescienceleader.com/doc/patents-or-trade-secrets-how-to-choose-the-best-ip-safeguard-for-r-d-assets-0001

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Earlier this week, a Virginia jury awarded software company Appian Corp. more than $2 billion in damages after finding that competitor software company Pegasystems Inc. had misappropriated its trade secrets. The complaint alleged that Pegasystems engaged in corporate espionage and trade secrets theft in an effort to better compete with Appian. Pegasystems hired Youyong Zou, an employee of a government contractor and former developer for Appian. In exchange for payment, Zou provided Pegasystems with copies of Appian’s confidential software and documentation in violation of confidentiality restrictions that barred him from sharing Appian’s trade secrets. In 2020, Appian filed suit against both Pegasystems and Zou. Continue Reading $2B Jury Verdict in Trade Secrets Suit

As a part of our series on trade secret employee contract clauses, we have surveyed the Seventh Circuit for updates on  the law pertaining to Restrictive Covenants. Each state’s laws are set forth below. But generally in the Seventh Circuit, states focus on reasonableness, geographic, and income restraints in restrictive covenant agreements. Indiana applies a reasonableness-standard common law approach to enforcing covenants, strictly construed against the employer. Wisconsin’s restrictive covenant statute also focuses on reasonableness restraints, and will void all parts of the covenant even if remaining portions are reasonable. Illinois recently passed a restrictive covenant statute in 2021, the Illinois Freedom to Work Act, which codifies the state’s longstanding common law, adding provisions restricting covenants against certain incomes and professions. Continue Reading Restrictive Covenants in the Seventh Circuit

Within the Tenth Circuit, states vary in their enforcement of restrictive covenants. Wyoming, Kansas, and New Mexico govern the use of restrictive covenants through common law while Utah, Colorado, and Oklahoma govern through statute. Oklahoma is unique in that it prohibits restrictive covenants through statute. In the other five states, despite the variations in governing authority, many of the factors used are similar given the widely accepted “reasonableness” standard many jurisdictions have adopted as a metric for adjudicating the propriety of such agreements. Continue Reading Restrictive Covenants in the Tenth Circuit

Use of an algorithm disclosed in a textbook in a different field may warrant trade secret protection according to a recent Federal Circuit decision in Masimo Corp. v. True Wearables, Inc., No. 2021-2146, 2022 WL 205485 (Fed. Cir. Jan. 24, 2022). In this case, the Federal Circuit upheld a preliminary injunction to prevent an optimization algorithm from being released even though the defendants presented that the equivalent of the algorithm had been published in a conference paper cited more than 1,200 times and in statistic textbooks since 1960s.

Masimo and Cercacor filed a suit against True Wearables and Dr. Lamego and requested for a preliminary injunction to prevent the plaintiff’s trade secret from being released to the public. The purported trade secret is an optimization algorithm used by the plaintiff on medical devices for measuring blood characteristics. Dr. Lamego is a former employee of Cercacor, who developed the purported trade secret for Cercacor and left Cercacor to found True Wearables (TW). Masimo’s preliminary injunction requested to bar TW’s patent application, which bears Masimo’s trade secret of the optimization algorithm as alleged by Masimo, from issuing. Continue Reading Trade Secrets Not So Secret: Conventional Technique, New Application