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.
Jonathan J. Engler is an IP litigator with extensive experience in the International Trade Commission, representing complainants and respondents in patent, trade secret, trademark and copyright cases.
Member / Chair, Intellectual Property Division
Michael T. Renaud is an intellectual property litigator and patent strategist who helps Mintz clients protect and generate revenue from their patent holdings. Clients rely on Mike's counsel on complex and sensitive licensing agreement negotiations, acquisitions, and other technology transactions.