IP UPDATE
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IP UPDATE
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Results for "Trade secret protection"
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From confidential to careless: The case of the unprotected customer list

by | Aug 14, 2025 |

The US Court of Appeals for the Tenth Circuit affirmed a summary judgment dismissal of a trade secret misappropriation complaint, finding that the plaintiff failed to take reasonable measures to maintain the secrecy of a customer list. The Court also reversed the district court’s Daubert ruling, finding that it improperly exceeded the scope of Fed. R. of Evid. 702. John Snyder v. Beam Technologies Inc., Case No. 24-1136 (10th Cir. Aug. 5, 2025) (Matheson, Bacharach, Federico, C.J.)

John Snyder downloaded a national customer list containing more than 40,000 names from his former employer’s client-relationship management system. According to metadata analysis, Snyder last modified the file only three minutes after its creation, strongly suggesting that no meaningful changes or additions were made after the download. Snyder’s employment with the company ended in 2016. Following a two-year period of unemployment, he accepted a position with Beam in 2018.

Synder claimed that Beam induced him to join the company by promising compensation in exchange for customer information he obtained from his former employer. After beginning his employment at Beam, Synder created derivative documents containing subsets of the customer list. However, he inadvertently included the entire customer list as a separate tab in each of the documents he emailed to Beam employees. The documents were sent without any confidentiality markings or indications that they contained trade secrets. Snyder did not restrict access to the documents, apply password protection, or notify Beam that any of the content was proprietary or confidential.

After realizing he had distributed the full list to multiple Beam employees, Snyder took no action to object to Beam’s use of the data or attempt to retrieve the documents. He also failed to inform Beam that he considered any of the materials to be trade secrets. Instead, Snyder appeared to ratify the disclosure, telling Beam’s chief executive officer that he had intentionally shared the customer list with the recipients. A few months later, Beam terminated Snyder for unexplained reasons.

Synder sued Beam for trade secret misappropriation and several state law claims. Beam moved for summary judgment on the trade secret claims, which the district court granted, finding that Synder failed to show that he owned the customer list. The district court denied Beam’s motion on Synder’s other claims.

Both parties filed motions to exclude expert witness testimony at trial. The district court granted Beam’s motion to exclude Snyder’s damages expert under Fed. R. of Evid. 702, ruling that the expert could not support Snyder’s claimed damages for the remaining causes of action.

The district court found that Synder failed to show that he could obtain lost wages damages on any of the surviving claims. Expanding the scope of its ruling, the district court excluded not only the expert testimony, but also all evidence and fact witnesses related to lost wages damages at trial. Following the court’s ruling, Snyder and Beam settled one of the claims and jointly moved to dismiss the remaining claims. Snyder then appealed.

Synder argued that the district court erredin [...]

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Calling All US IP Owners: Submit Your Comments on IP-Lax States

by | Jan 5, 2023 |

The Office of the US Trade Representative (USTR) seeks public commentary regarding countries that deny adequate and effective protection of intellectual property rights, or deny fair and equitable market access to US persons that rely on intellectual property protections. Comments are due by January 30, 2023.

Each year the USTR requests that intellectual property owners, stakeholders and other interested parties submit commentary regarding countries that weaken protections and benefits associated with intellectual property ownership and registration in the United States. The USTR interprets the feedback and compiles an annual report.

The USTR’s authority for such action arises out of Sections 301-305 of the Trade Act (19 U.S.C. §§ 2411-2415). These “Special 301 Provisions” require the USTR to determine which, if any, of the countries submitted by commenters should be identified as Priority Foreign Countries. In furtherance of this goal, the USTR maintains a Priority Watch List and a Watch List. The Special 301 listings and actions announced in the annual report are the result of intensive deliberations among all relevant agencies within the US government, which in turn are informed by extensive consultations with participating stakeholders, foreign governments, the US Congress and other interested parties.

The 2022 report identified a wide range of concerns, including the following:

  • Challenges with border and criminal enforcement against counterfeits, including in the online environment
  • High levels of online and broadcast piracy, including through illicit streaming devices
  • Inadequacies in trade secret protection and enforcement in China, Russia and other countries
  • Troubling “indigenous innovation” and forced technology transfer policies that may unfairly disadvantage US right holders in markets abroad
  • Other ongoing, systemic issues regarding intellectual property protection and enforcement, as well as market access, with many trading partners around the world.

The 2022 report listed the following countries on the Priority Watch List: Argentina, Chile, China, India, Indonesia, Russia and Venezuela. The report listed the following countries on the Watch List: Algeria, Barbados, Bolivia, Brazil, Canada, Colombia, Dominican Republic, Ecuador, Egypt, Guatemala, Mexico, Pakistan, Paraguay, Peru, Thailand, Trinidad and Tobago, Turkey, Turkmenistan, Uzbekistan and Vietnam.

The USTR is soliciting comments for this year’s report via the online Federal eRulemaking Portal in lieu of an in-person hearing.  Commenters are encouraged to include detailed information, including the following:

  • Specific references to laws, regulations and policy statements, including innovation policies; executive, presidential or other orders; and administrative, court or other determinations that should factor into the review
  • Particular regions, provinces, states or other subdivisions of a country in which an act, policy or practice is believed to warrant special attention
  • Data, loss estimates and other information regarding the economic impact on the United States, US industry and US workforce caused by the denial of adequate and effective intellectual property protection.

Commentators should act now, as the window to submit public commentary ends on January 30, 2023. Keep an eye out for the 2023 report, which is scheduled for release on or around April 18, 2023.



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And the Band Played On: Reviewing Rule 54(b) Partial Summary Judgment Based on Who Did What to Whom and When

by | Oct 6, 2022 |

In a case where the cast of characters on both sides of the v. evolved during the lead-up to the litigation as the litigants negotiated third-party deals and formed new entities, the US Court of Appeals for the First Circuit (characterizing the matter as the “entrepreneurial equivalent of musical chairs”) affirmed a dismissal of a trade secret claim against a foreign defendant but not against the related US entity, and found that the case qualified under Rule 54(b) for the “narrow exception” to the finality rule. Amyndas Pharmaceutical, SA v. Zealand Pharma A/S, Case No. 21-1781 (1st Cir. Sept. 2, 2022) (Barron, Selya, Kayatta, JJ.)

Amyndas is a Greek company with a US affiliate. It is a biotechnology firm that researches and develops therapeutics targeting a part of the immune system known as the complement system. One area of Amyndas’s research deals with “complement inhibitors.”

Amyndas’s research yielded compstatin, a peptide that selectively inhibits the C3 protein (which plays a role in activating the complement system). Amyndas also developed a related peptide (AMY-101) that targets that protein. Amyndas owns trade secrets and confidential information related to this work.

Zealand Pharma, a Danish biotechnology firm, contacted Amyndas about a potential partnership for the development of complement-related therapeutics. The firms entered into a confidential disclosure agreement (CDA) regarding information-sharing “for the purposes of evaluating a possible business/services relationship between the parties and their respective Affiliates.” Amyndas started giving Zealand Pharma access to confidential information (including confidential information about AMY-101). The firms also entered into a second CDA—with added protections—for “the evaluation or formation of a possible business and/or services and/or collaborative relationship.”

Both CDAs included an identical “Governing Law” provision stipulating that the CDAs would “be interpreted and governed by the laws of the country (applicable state) in which the defendant resides” and a forum-selection clause stipulating that “any dispute arising out of th[e CDA] shall be settled in the first instance by the venue of the defendant.”

Zealand Pharma also began its own research program focused on complement therapeutics. It did not inform Amyndas of this initiative. Although negotiations continued, the firms ultimately decided not to collaborate. Amyndas later terminated its information-sharing relationship with Zealand Pharma.

Zealand Pharma later formed Zealand US, a Delaware corporation. Without Amyndas’s knowledge or consent, Zealand Pharma also filed two European patent applications for compstatin analogues and later an international patent application designating the United States and claiming priority to the earlier  EU applications.

After the international applications were published, Amyndas learned that they described “compstatin analogues that are capable of binding to C3 protein and inhibiting complement activation,” which had been the focus of Amyndas’s research and a subject of Amyndas’s confidential information-sharing with Zealand Pharma.

The other defendant, Alexion, is an established player in the complement therapeutics field and a proprietor of Soliris, a complement inhibitor that targets a protein in the complement system. Soliris is approved by the US Food and Drug Administration (FDA) and previously was the only FDA-approved and clinically available [...]

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US-China Agreement Supports International Injunction Against Alleged Chinese Counterfeiter Under State Law

by | Feb 4, 2021 |

Addressing for the first time whether state law has extraterritorial scope, the US Court of Appeals for the Sixth Circuit upheld a worldwide preliminary injunction against an alleged Chinese counterfeiter’s use of alleged trade secrets, citing a new US-China trade agreement. AtriCure, Inc. v. Meng, Case No. 20-3264 (6th Cir. Jan. 21, 2021) (McKeague, J.)

AtriCure is an Ohio company that sells surgical tools for the treatment of atrial fibrillation. AtriCure needed a Chinese agent to register and sell its product in China. Dr. Meng became AtriCure’s distributor in China from 2005 to 2017. After Meng signed multiple distribution agreements with AtriCure, including non-compete clauses and confidentiality agreements, he was given access to confidential technical documents describing AtriCure’s products. Unbeknownst to AtriCure, Meng was the president of AtriCure’s Chinese competitor, Med-Zenith. When Med-Zenith released a line of products that were strikingly similar to AtriCure’s in both form and operation, AtriCure sued for trade secret misappropriation under the Ohio Uniform Trade Secrets Act and sought a worldwide preliminary injunction to prevent Meng from continuing to manufacture and sell counterfeit versions of AtriCure’s medical devices. After the district court granted the preliminary injunction, Meng appealed.

Addressing Meng’s arguments on likelihood of success, the Sixth Circuit found that:

  • The district court defined the alleged trade secrets with sufficient specificity because AtriCure had given Meng detailed drawings and manufacturing specifications.
  • The district court had not clearly erred in relying on evidence that AtriCure provided the trade secret information to Meng or that Meng used the information where Med-Zenith had copied its entire product line from AtriCure.
  • The district court had not clearly erred in holding that the production of an adapter that did not copy but still took advantage of AtriCure’s proprietary algorithm (i.e., by allowing Med-Zenith accessories to be used with AtriCure’s system) was likely a misappropriation of trade secrets.

Addressing the extraterritorial aspect of a worldwide injunction, the Sixth Circuit held that the district court did not abuse its discretion in issuing a worldwide injunction because the international reach of the injunction comports with the equities of the case and does not offend international comity. As to the equities, the Court noted that worldwide injunctions are common in trade secret misappropriation cases. As to comity, the Court found that Meng had failed to articulate any conflict and cited a recently signed agreement between the United States and China that “emphasizes trade secret protection” (Economic and Trade Agreement Between the Government of the United States of America and the Government of the People’s Republic of China, Jan. 15, 2020).

Finally, the Court addressed whether the Ohio Uniform Trade Secrets Act itself was entitled to extraterritorial scope. Because Ohio courts had not yet addressed the question, the Court conducted its own statutory interpretation and found that the intent of the statute (“the lodestar of statutory interpretation in Ohio”) favored extraterritorial application “at least in this case.”



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Key Takeaways from MWE International Seminar Intellectual Property Session – January 2020

by | Feb 13, 2020 |

On January 21 and 22, 2020, the 8th annual McDermott International Seminars took place in Osaka and Tokyo. These seminars focused on cross-border M&A, GDPR, intellectual property, global enforcement and other key topics. Lawyers from McDermott’s US and European offices, including Washington, DC; Chicago; New York; Paris; London; Brussels; and Munich, discussed these topics with Japanese companies operating globally. During the International Seminars, the Intellectual Property team discussed insights around emerging technologies and intellectual property.

What follows are key takeaways from the IP session of the seminar. (See highlights from the full Seminar.)

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Senate passes bill to improve CBP mechanisms to block importation of counterfeit goods

by | Aug 20, 2026 | ,

Blocking the importation of counterfeit goods could soon become easier. On August 7, 2026, the US Senate unanimously passed S 2677, a bill that would allow greater coordination between US Customs & Border Protection (CBP) and relevant stakeholders in determining whether imported goods violate trademark or copyright law.

Sponsored by Senator Chuck Grassley and co-sponsored by Senator Margaret Wood Hassan, S 2677 would amend 19 U.S.C. § 1628a to authorize CBP to share nonpublic information to rightsholders for examination when assessing potential copyright or trademark violations. The bill would also expand the parties with which CBP may share information. While current law permits disclosure only to certain rightsholders, S 2677 would allow CBP to share information with “any other party with an interest in the merchandise, as determined appropriate by the Commissioner.” The bill would also permit such information sharing when CBP has a “reasonable suspicion” of a violation, rather than requiring officials to “suspect” one.

The US House of Representatives passed a very similar bill, HR 4930, on April 27, 2026, and the two versions will need to be reconciled. During House Ways and Means Committee proceedings, Chief Trade Counsel Joshua Snead and Representatives Blake Moore and Bradley Schneider explained that the legislation responds to concerns raised by CBP about constraints under existing law. According to Snead, CBP requested the changes and expressed concerns under both the Biden and Trump administrations that the Defend Trade Secrets Act could prevent it from sharing information useful to intellectual property enforcement. Representative Moore said the legislation would help CBP “recognize and flag patterns of behavior” by repeat offenders.



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Sedona Conference releases draft model DTSA jury instructions

by | Dec 18, 2025 |

The Sedona Conference published the first comprehensive draft Model Jury Instructions for the Defend Trade Secrets Act of 2016 (DTSA) and invites public comment through January 17, 2026. The draft instructions, which have been three years in development, aim to provide clear, consensus-driven guidance on the key issues that juries must resolve in DTSA cases, against the backdrop of an evolving and often inconsistent body of federal trade secret law.

Background

Although the DTSA has been in effect since 2016, federal courts are only now beginning to generate a meaningful body of appellate decisions interpreting the statute, largely because of the slowdown in trial activity during the COVID-19 pandemic. According to the Sedona Conference’s announcement, more than 9,600 federal trade secret cases were filed between 2017 and 2022, but only about 300 reached a jury verdict in that period. This emerging landscape has underscored the need for model jury instructions that can guide courts and litigants in identifying, framing, and presenting DTSA issues at trial.

The draft instructions were prepared by members of the Sedona Conference Working Group 12 on Trade Secrets, a group dedicated to developing nonpartisan, consensus-based principles for managing trade secret litigation. As described in the commentary, the working group has published influential guidance on governance of trade secrets, clean room practices, and interorganizational sharing of confidential information.

Overview of the draft instructions

The Model Jury Instructions consist of core DTSA concepts and follow a familiar model instruction format, pairing proposed instructions with supporting authority and explanatory commentary. As summarized in the one-page publication outline, the instructions cover an introduction to DTSA claims, the elements of misappropriation, existence of a trade secret, misappropriation theories, and damages.

Key issues highlighted in the draft

Identifying trade secrets with “sufficient particularity”

Recent cases suggest that in some circumstances, the jury may need to decide whether the asserted trade secrets have been identified with sufficient specificity, although most practitioners agree that courts should police this issue before trial. This specificity requirement reflects a growing tension between early disclosure obligations and strategic concerns about revealing sensitive information.

What constitutes “reasonable measures”?

Whether a plaintiff took “reasonable measures” to maintain secrecy remains a fact-intensive inquiry. The commentary notes emerging case law holding that general confidentiality policies, cybersecurity protections, or “need to know” restrictions may be insufficient if not specifically tied to the trade secrets at issue. At least one court has suggested that failing to affirmatively tell an employee that a piece of proprietary information (such as source code) is a trade secret may defeat DTSA protection.

Combination trade secrets and proof of misappropriation

The draft rejects a patent-style “all-elements” test and instead endorses assessing substantial similarity between the combination trade secret and the accused method or system. This recommendation reflects a shift away from rigid element-by-element comparisons toward more flexible, fact-driven analyses.

Whether retention alone can constitute misappropriation

One unresolved issue is whether mere retention of trade secret information (once lawfully acquired) can [...]

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PTO Introduces Intellectual Property Identifier Tool

by | Jan 26, 2023 |

On January 18, 2023, the US Patent & Trademark Office announced the launch of its new Intellectual Property (IP) Identifier tool. This tool is designed for those who are less familiar with IP and assists users in determining whether they have IP and identifies what IP protections are available to support their business, invention or brand. The tool also briefly explains patents, trademarks, copyrights and trade secrets.

The IP Identifier tool comprises two modules: The Basic IP Identifier and the Advanced IP Identifier. The Basic IP Identifier module consists of six questions that allow users to quickly identify the type of IP they should protect. The Advanced IP Identifier module explains the specific types of IP and includes links to additional resources, including how to file an application for protection. A third module, Managing Your IP Assets, is currently under development.



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Party May Not Veil EU Individual’s Information under GDPR at the TTAB

by | Oct 14, 2021 | ,

In a rare precedential opinion, the Trademark Trial & Appeal Board (TTAB, Board) ruled that the EU General Data Protection Regulation (GDPR) does not apply in Board proceedings. Chicago Mercantile Exchange, Inc. v. Intercontinental Exchange Holdings, Inc., Opposition Nos. 91235909; 91254514 (T.T.A.B. Sept. 27, 2021) (Faint, Interlocutory Attorney).

This was a consolidated proceeding between Chicago Mercantile Exchange and New York Mercantile Exchange (collectively, CME) and Intercontinental Exchange Holdings (ICE) and brought before the TTAB. CME sought to amend the Board’s standard protective order (SPO) to allow in-house access to information and materials designated by ICE as “Confidential – Attorney’s Eyes Only” and asked the TTAB to find that the EU GDPR does not apply in the proceedings.

The Board’s SPO is automatically imposed in all inter partes proceedings. In order for the Board to disturb their SPO, CME needed to show that protection of ICE’s trade secrets will impair CME’s prosecution of its claims. ICE asserted that CME failed to show good cause for modification of the SPO and the Board agreed. As an initial matter, CME failed to provide information sufficient for the Board to determine in-house counsel’s responsibilities, including whether those responsibilities included competitive decision-making such that disclosure to in-house counsel would competitively harm ICE. Secondly, CME failed to clearly demonstrate that there was a need for access to the highly sensitive competitive information to adequately prepare its case. Accordingly, the Board denied CME’s motion to amend the protective order.

CME next raised the issue of whether ICE may redact names, email addresses and other information from documents and electronically stored information (ESI) originating in the European Union prior to its production on the basis that the GDPR requires such redaction. CME argued that because ICE waited more than 18 months to assert this objection, the objection is waived, that CME will be severely prejudiced if ICE’s objection stands and that the GDPR does not apply in inter partes Board proceedings.

For background, the GDPR is an EU regulation made effective May 25, 2018, in order to protect the privacy and security of EU citizens’ personal data by limiting the transfer of such information among member states of the European Union, as well as between the European Union and other countries, including the United States. The broad definition given to “personal data” in the GDPR encompasses “any information relating to an identified or identifiable person.” However, this class of information (an individual’s name, position, job title and email address) is generally required to be produced in discovery pursuant to the Fed. R. Civ. Pro. 26(b)(1).

In this precedential decision, the Board, citing the 1987 Supreme Court case Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court, established that a foreign country’s law precluding disclosure of evidence in US courts and tribunals will generally not deprive those courts and tribunals of “the power to order a party subject to its jurisdiction to produce evidence even though the act of production may violate that statute.”. Additionally, the GDPR does not per [...]

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USPTO Conducting Patent Eligibility Jurisprudence Study

by | Jul 15, 2021 |

At the request of Senators Thom Tillis (R-NC), Marie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE), the US Patent & Trademark Office (USPTO) is undertaking a study on the current state of patent eligibility jurisprudence in the United States and how the current jurisprudence has impacted investment and innovation, particularly in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods and pharmaceutical treatments. On July 9, 2021, the USPTO issued a Federal Register Notice seeking public input on these matters to assist in preparing the study. The deadline for submitting written comments is September 7, 2021.

The Federal Register Notice included 13 concerns on which comments were requested:

  1. Explain how the current state of patent eligibility jurisprudence affects the conduct of business in your technology areas, and identify your technology areas.
  2. Explain what impacts you have experienced as a result of the current state of patent eligibility jurisprudence in the United States. Include impacts on as many of the following areas as you can, identifying concrete examples and supporting facts when possible:
    1. patent prosecution strategy and portfolio management;
    2. patent enforcement and litigation;
    3. patent counseling and opinions;
    4. research and development;
    5. employment;
    6. procurement;
    7. marketing;
    8. ability to obtain financing from investors or financial institutions;
    9. investment strategy;
    10. licensing of patents and patent applications;
    11. product development;
    12. sales, including downstream and upstream sales;
    13. innovation and
    14. competition.
  3. Explain how the current state of patent eligibility jurisprudence in the United States impacts particular technological fields, including investment and innovation in any of the following technological areas:
    1. quantum computing;
    2. artificial intelligence;
    3. precision medicine;
    4. diagnostic methods;
    5. pharmaceutical treatments and
    6. other computer-related inventions (e.g., software, business methods, computer security, databases and data structures, computer networking, and graphical user interfaces).
  4. Explain how your experiences with the application of subject matter eligibility requirements in other jurisdictions, including China, Japan, Korea, and Europe, differ from your experiences in the United States.
  5. Identify instances where you have been denied patent protection for an invention in the United States solely on the basis of patent subject matter ineligibility, but obtained protection for the same invention in a foreign jurisdiction, or vice versa. Provide specific examples, such as the technologies and jurisdictions involved, and the reason the invention was held ineligible in the United States or other jurisdiction.
  6. Explain whether the state of patent eligibility jurisprudence in the United States has caused you to modify or shift investment, research and development activities, or jobs from the United States to other jurisdictions, or to the United States from other jurisdictions. Identify the relevant modifications and their associated impacts.
  7. Explain whether the state of patent eligibility jurisprudence in the United States has caused you to change business strategies for protecting your intellectual property (e.g., shifting from patents to trade secrets, or vice versa). Identify the changes and their associated impacts.
  8. Explain whether you have changed your behavior with regard to filing, purchasing, licensing, selling, or maintaining patent applications and patents in the United States as a result of [...]

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