(Webcast) Cross-Border Trade Secret Litigation and Other Proceedings

Tuesday, December 1, 2020 | 4:30 pm – 6:15 pm

Register for the Live Webcast

Program Chair:
Richard B. Friedman
Richard Friedman PLLC

  • This program will address how to bring a trade secret claim against a non-U.S. defendant when the core misconduct occurs overseas. The panelists will also discuss the possibility of bringing an action under state trade secret law or the federal Defend Trade Secrets Act of 2016, an action under Section 337 action in the International Trade Commission, and/or requesting that governmental authorities pursue a criminal action. Other possibilities which will be addressed include pursuing litigation in the country where the defendant is located or arbitration where there is an applicable arbitration provision (such as with a dispute arising out of a joint venture) or where the parties agree to arbitrate after the dispute arises.

    Program Fee:
    $199 for Members | $299 for Nonmembers

  • Jayme L. Butcher
    Blank Rome LLP

    Anthony Candido
    Clifford Chance LLP

    Victoria A. Cundiff
    Paul Hastings LLP

    Richard B. Friedman
    Richard Friedman PLLC

    David H. Herrington
    Cleary Gottlieb Steen & Hamilton LLP

     

  • 4:30 – 4:35 pm  Introduction of Panelists and Other Proceedings

    Richard B. Friedman

     

    4:35 – 4:45 pm  Scenarios in Which Cross-Border Trade Secret Cases Arise

    Lead Panelist: David H. Herrington

    Panelists: Jayme L. Butcher , Anthony Candido;  Victoria A. Cundiff & Richard B. Friedman

    • Company hires a former employee who knows valuable trade secrets of a former employer.
    • A joint venture goes awry.
    • Inventor shares ideas pursuant to an NDA and recipient uses the ideas.
    • Outright corporate theft.

     

    4:45 – 5:05 pm Need for Discovery

    Lead Panelist: Jayme L. Butcher

    Panelists: Anthony Candido;  Victoria A. Cundiff;  Richard B. Friedman& David H. Herrington

    • There was an alleged theft but it has to be proven.
    • What is the scope of discovery in other countries?  Apart from common law countries, it is typically very limited.  Examples:  China, South Korea and France.
      • Some opportunity for pre-suit seizure of evidence, but generally discovery is limited.
    • U.S. companies should generally want to get their case into U.S courts if possible for both robust discovery and availability of substantial damage awards.
    • Ancillary proceedings in foreign countries
    • 28 U.S.C. §1782 Actions.

     

    5:05 – 5:20 pm State Law Claims

    Lead Panelist: Victoria A. Cundiff

    Panelists: Jayme L. Butcher ; Anthony Candido;   Richard B. Friedman& David H. Herrington

    • Need to have personal jurisdiction by contract or otherwise or in rem jurisdiction.
    • Possible extraterritorial reach based on contacts.
    • Discovery of foreign affiliates outside of the state.
    • State law would apply.
    • New York has not adopted the Uniform Trade Secrets Act.
      • No express entitlement to attorneys’ fees or punitive damages.

     

    5:20 – 5:35 pm Federal Court Actions

    Lead Panelist: Victoria A. Cundiff

    Panelists: Jayme L. Butcher ; Anthony Candido;   Richard B. Friedman& David H. Herrington

    • DTSA likely has extraterritorial reach against a non-U.S. defendant even when the core misconduct occurs overseas.
    • Can apply to any U.S. company or citizen.
    •  If the defendant is not a U.S. company or citizen, need to establish that “an act in furtherance” of the misconduct took place in the U.S.
    • Can assert pendent state law claims.
    • Ability to get a judgement for damages incurred abroad.
    • Enforceability of damage awards outside of the U.S.

     

    5:35 – 5:50 pm A Section 337 Claim in the U.S International Trade Commission

    Lead Panelist: David H. Herrington

    Panelists: Jayme L. Butcher , Anthony Candido;  Victoria A. Cundiff & Richard B. Friedman

    • Addresses importation of products made with misappropriated trade secrets; relief is an exclusion order prohibiting importation.
    • Claimant needs to establish a domestic industry and injury to that industry.
    • Overcomes issues of personal jurisdiction and forum non conveniens.
      • In rem jurisdiction exists over the respondent’s products and personal   jurisdiction exists over the respondent once it appears.
      • No forum non conveniens issue given that the claim is directed to the importation of products into the U.S. and the harm caused here.
    • Broad discovery is available because the jurisdiction is in rem.
    • Willingness to impose severe sanctions for discovery infractions.
    • Proactive role of ITC Office of Unfair Import Investigations.
    •  The decision lacks any preclusive effect in a foreign jurisdiction but could have persuasive effect.
    • Discovery can’t be used in other proceedings under ITC rules absent agreement between the parties.

     

    5:50 – 5:55 pm Possible Role of U.S. Law Enforcement Personnel in Initiating a Criminal Proceeding.

    Lead Panelist: Jayme L. Butcher

     Panelists: Anthony Candido;  Victoria A. Cundiff;  Richard B. Friedman&  David H. Herrington

    • Cybersecurity Information Sharing Act of 2015.

     

    5:55 – 6:05 pm International Arbitration

    Lead Panelist: Victoria A. Cundiff

    Panelists: Jayme L. Butcher ; Anthony Candido;   Richard B. Friedman& David H. Herrington

    • Desirability of arbitration versus another proceeding vehicle.
    • Often arises by contract in connection with disputes between joint venture partners.
    • Can be agreed upon after a dispute arises.
    • Role of international arbitration venue in determining the scope of discovery.

     

    6:05 – 6:15 Commencing an Action in Another Country

    Lead Panelist: Anthony Candido   

    Panelists: Jayme L. Butcher ; Victoria A. Cundiff;   Richard B. Friedman& David H. Herrington

    • Availability of negotiated agreed upon discovery.
    • Can non-signatories to an arbitration provision be brought into the arbitration.
    • Availability of seeking provisional relief from a court even where an arbitration provision exists.
    • Availability of seeking provisional relief from an emergency arbitration.
    • Feasibility of enforcing arbitration awards abroad.

     

  • New York: 2.0 Skills
    New Jersey: 2.1 General
    California: 2.0 Skills
    Pennsylvania: 1.5 General
    Connecticut: Available to Licensed Attorneys

  • Sponsoring Association Committees:

    Trade Secrets, John Siegal, Chair
    Council on Intellectual Property, James R. Klaiber, Chair
    International Commercial Disputes Committee, Frances Bivens, Chair

    Sponsorship Opportunities are Available! Please Contact:
    Angie Avila, Manager, Membership Outreach and Sponsorships | (212) 382-6608 | aavila@nycbar.org

Register for the Live Webcast

Print Registration Form