Since the beginning of the industrial age, companies have outsourced part of the manufacturing process to third-party providers. In the twentieth century, as manufacturing processes became more complex and distribution more global, this trend accelerated.
In the topsy-turvy world of Standard Essential Patent (SEP) litigation, a court acknowledging the obvious often counts as news. Thus, when Judge Gilstrap in EDTX noted the other day in an order before trial (Doc 376) that the ETSI IPR policy does not require royalties being calculated on use by the smallest saleable patent practicing unit (SSPPU) as the base, it generated breathless headlines (Bloomberg).
By David Cohen & Donal O’Connell
“China national charged with stealing trade secrets” – U.S. Justice Department
“Chinese battery expert is charged with stealing trade secrets from US employer, as he prepared to join mainland firm” – South China Morning PostRead more
In October I was honored to be part of the John Marshall Law School IP Executive seminar program run by the inestimable Daryl Lim, and to be part of an all-day, three-person panel on Standard Essential Patents (SEPs). My co-panelists were Graham Bell of Cubicibuc Ltd. and Randall Rader, former Chief Judge of the US Court of Appeals for the Federal Circuit.
Over the course of my 20+ years practicing law, I have had the honor of working with many individuals who are involved at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have welcomed me into their professional world with open arms. To celebrate these individuals, I am inaugurating a series of interviews.
My next interviewee, Robert Colao, is the founder and President of radiusIP®, Inc. He is currently also the Chief Licensing Executive for SIPCO, LLC and IP Co, LLC, and is responsible for the overall licensing efforts and business aspects of the ESSENTIAL WIRELESS MESH™ portfolio/licensing program. Read more
- Consider filing a lawsuit for declaratory judgment (DJ).
In certain cases you may file a lawsuit against a patent owner for declaration that you are not infringing on any valid patents. Knowing the patent owner’s litigation history is crucial when considering this option. Read more
Very interesting study from the UK Intellectual Property Office and the British Business Bank about using IPR (at least in part) as collateral for business loans.
Very odd, however, is that there is NO mention of trade secrets at all. Which is quite surprising actually. While analyzing trade secrets usage as collateral is (understandably) more challenging that for registered IPR, not to even mention it seems like a major flaw in the study.
Regardless, the conclusion seems promising and there is a lot of data included in the annexes to review.
Donal O’Connell and I recently posted an article on trade secrets and director liability. https://kidonip.com/news/company-directors-duties/
A great piece published by Columbia University Law School earlier this year http://clsbluesky.law.columbia.edu/2018/04/04/wachtell-lipton-discusses-risk-management-and-the-board-of-directors/ provides a good summary of the many issues related to risk management and the board of directors.
Another piece https://pomerantzlawfirm.com/publications/2018/2/8/recent-derivative-actions-highlight-directors-obligation-to-monitor-and-prevent-employee-misconduct discusses a recent case In re Wells Fargo & Company Shareholder Derivative Litigation where the court refused to dismiss a shareholder derivative action against the board of directors holding that the numerous allegations of “red flags” of which the board was aware regarding the practices of the company bolstered the conclusion that the director defendants consciously disregarded their fiduciary duties to the company. http://www.wlrk.com/docs/InreWellFargoOrderonMotiontoDismissenteredMay42017.pdf
Trade secret’s new found prominence:
As we both have written previously, the changing nature of technology, product development and sales, and the patent enforcement landscape, have given trade secrets a new-found prominence.
Trade secrets are now becoming a much more significant part of a company’s value. As a result, trade secret asset management is becoming (and if not, it should become) a regular part of company board discussions and review.