Intellectual Property

Trade Secrets Litigation

Mintz Levin's interdisciplinary team of intellectual property, employment, and litigation attorneys deliver exceptional counsel and representation on issues related to protecting intellectual capital. We meet your needs with a full range of legal services, providing everything from risk avoidance and pre-employment counseling to the preparation of temporary restraining orders and — when necessary — representation in court, from preliminary injunction proceedings up through trial and appeal.

Our attorneys have experience litigating claims regarding unfair competition, breach of contract, and noncompete agreements, and have the technical capabilities and industry experience to litigate the very complex scientific and technology issues that are often at the core of trade secret disputes. Having successfully litigated myriad highly technical patent and trade secret cases, we have the demonstrated ability to describe complex technologies and present arguments that are clear and accessible to lay judges and jurors.

Areas of Focus

  • Attorneys with substantial trial experience in multiple jurisdictions worldwide
  • Multidisciplinary practice, including litigation, employment, and intellectual property attorneys
  • Deep bench of technical talent
  • Experience with all areas of trade secrets protection in a host of industries
  • Prosecute, defend, and try trade secret and related patent cases in state and federal courts
  • Counsel clients on unfair competition protections, including confidentiality covenants not to compete, nonsolicitation provisions, no-hire clauses, and other post-employment restrictions
  • Advise on potential issues and proactive strategies
  • Work with insurers on coverage issues relating to intellectual property and employment matters

Rankings & Recognitions

  • IAM Patent 1000 (2016)
    • Patent Litigation Practice and 7 attorneys recognized among the "World's Leading Patent Practitioners"
  • IAM Strategy 300 (2015/2016)
    • Division Head for IP identified among "The World's Leading IP Strategists"
  • Chambers USA (2016)
    • 3 IP attorneys identified as leaders in their respective patent fields, including the Division Head
  • BTI Consulting Group's 2016 Litigation Outlook
    • IP Litigation ranked in top 5% of all law firms by corporate counsel

REPRESENTATIVE EXPERIENCE

  • Defended a fiber laser company against a claim of trade secret misappropriation brought by a former employee in the District of Massachusetts. Pre-answer motion to dismiss on a statute of limitations defense, while on its face denied, secured an order allowing expedited discovery and an early summary judgment motion. Judge Hillman observed that it was “difficult to fathom how a reasonably prudent person would not be deemed to be on inquiry notice.” In view of this order, the plaintiff voluntarily dismissed his case.
  • Defended a start-up medical technology company and its founding scientists against a trade secret misappropriation claim before the Business Litigation Session of the Massachusetts Superior Court. The scientists’ former employer alleged that inventions disclosed in several patent applications were misappropriated. Through aggressive motion practice, we secured an early identification of the alleged trade secret and moved for summary judgment. In the summary judgment hearing, the judge granted leave for the plaintiff to amend, while also commending the defense for “brilliantly” and “compelling[ly]” showing how the plaintiff’s claim “migrated,” and cautioned the plaintiff that this appeared to be “an appropriate case for the award of attorneys’ [fees].” The case settled very favorably shortly thereafter.
  • Represented the operator of a retail novelty store chain and Halloween “pop-up” stores which sued two former employees and a competing retailer who hired away the ex-employees for trade secret misappropriation. Through methodical forensic examination, we were able to ascertain various important business plans and documents that were stolen by the ex-employees. In connection with an application for a temporary restraining order, the judge ordered that the defendants’ laptops be seized. Shortly thereafter, the defendants came to the settlement table, and a favorable settlement for the client was achieved.
  • Efficiently and successfully defended a biotechnology company against trade secret and patent litigation brought by the founders’ former employer in Massachusetts state and federal courts. The plaintiff sought damages of $10 million. In the trade secret action, we prevailed on a motion for summary judgment on statute of limitations grounds, a ruling affirmed on appeal. In the patent infringement action, as a result of our filing a counterclaim of abusing legal process by knowingly asserting frivolous claims solely for the purpose of harassment and harming its business, we obtained a dismissal without prejudice and eventually resolved all matters for a modest royalty.
  • Defended a start-up developing explosives scanning technology in “bet the company” trade secret and patent litigation brought by an industry-leading competitor. After entering the market with vastly improved technology, the start-up and its founders, who were former employees of the competitor, were sued in Massachusetts state and federal court, and the validity of their patents was challenged at the USPTO. Over the course of several years, the team conducted extensive discovery, marshalled a compelling defense, and successfully moved for partial summary judgment in state court. The litigation resolved on terms favorable to our client following hearings on summary judgment in the federal court action.
  • Represented an automotive parts manufacturer as defendant in separate, but related, patent and trade secrets cases. The patent case settled favorably, after which the plaintiff almost immediately filed suit alleging trade secret misappropriation and breach of contract. The team devised a strategy which resulted in the firm’s client winning on summary judgment.
  • Represented six asset managers and their successful new company in a high profile, $250 million trade secret misappropriation and breach of fiduciary duty litigation, brought by their previous employer, a national asset management company. The team discovered potential electronic discovery abuses and filed comprehensive and persuasive motions for terminating sanctions. The resulting settlement was for a small percentage of the clients’ pre-litigation settlement offer and most importantly provided the clients with the unfettered right to use all of the intellectual property that was the subject of the complaint.
  • Represented a start-up solar energy company in defense of a trade secret misappropriation action brought by the giant in the solar industry brought after our client hired over 10 sales-related employees and managers from the giant. After defeating several motions filed by the plaintiff, including a motion for a TRO and Order re Preliminary Injunction, we were able to negotiate what amounted to a “walk away” settlement for our client.

Clients We Serve

  • All industries, including financial services, health care, manufacturing, and professional services.
  • Companies with significant investment in and focus on complex technologies.
  • C-level executives.
  • Fortune 500 companies.
  • Start-ups and emerging companies.