June 26, 2022

Volume XII, Number 177

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June 24, 2022

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Rules for Complainant Success in ITC Trade Secret Litigation

Successful ITC trade secret complainants follow these rules before filing the complaint in Section 337 investigations:

  • Identify and prepare “packages” for each of the trade secrets you plan to assert before you file the Complaint.  Each trade secret package should:

    • Define the technical metes and bounds of the trade secret information – delimiting the border between the secret and what is known in the public domain

    • Calculate the value of the trade secret (to the complainant and competitors)

    • Demonstrate that reasonable measures were taken to protect the trade secret information (confidentiality agreements, etc.)

    • Demonstrate that the trade secret belongs to the Complainant (development documentation, etc.)

    • Show the time and expense incurred in developing the trade secret.

  • Prepare a detailed fact discovery game plan before the case is filed.  The ITC is too fast for major course corrections.

  • Prepare the domestic industry and injury proofs.  Under no circumstances leave the development of these proofs until the case is under way.

    • The ITC is looking for detailed, supported contextual information to allow an assessment of the relative “significance” of the domestic industry activities and expenditures.  The facts and circumstances will vary for each case – it is important to get the story straight early and make sure supportive, specific information is produced in fact discovery.     

    • The substantial injury story similarly requires substantiation and extrinsic evidence.   This proof has many nuances and cannot be left to the last minute either.

©1994-2022 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume XII, Number 136
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About this Author

Jonathan J. Engler Intellectual Property Attorney Mintz Washington DC
Member

Jonathan is a seasoned intellectual property attorney who focuses his practice on representing clients in patent, trade secret, copyright and trademark litigation before the US International Trade Commission (ITC), and in appeals of those disputes at the Court of Appeals for the Federal Circuit. Drawing on his extensive experience as an ITC attorney in private practice and his tenure as an attorney with the ITC and in the US Department of Commerce, he successfully represents parties on both sides of ITC disputes, including representing them in relation to the enforcement...

202-434-7446
Michael Renaud IP Litgation Attorney Mintz Levin
Member / Chair, Intellectual Property Division

Michael is a highly regarded intellectual property litigator and patent strategist who helps clients protect and generate revenue from their patent holdings. Intellectual Asset Magazine has repeatedly recognized him in its select IAM Patent 1000 and IAM Patent Strategy 300 publications. Clients rely on his counsel regarding sensitive licensing agreement negotiations, acquisitions, and other technology transactions. He leads a team known for its ability to translate complex technology and its value to non-technical professionals — in court and business negotiations.

Michael is...

617-348-1870
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