Intellectual Property

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Following the Seventh Circuit’s recent decision in Motorola Solutions Inc. v. Hytera Communications Corp. Ltd., the United States may become a destination venue for resolution of global trade secret disputes. The Seventh Circuit held that U.S. trade secret law applies extraterritorially—reaching the theft of trade secrets outside the United States—so long as “an act in furtherance” of the offense was committed in the United States. The court held, for example, that marketing products in the United States qualified as an “act in furtherance” if the products were made using stolen trade secrets. Once an “act in furtherance” is identified, damages can be based on a company’s global sales. Motorola, for example, resulted in an award of $135.8 million in compensatory damages based on Hytera’s worldwide sales. Similar to the global impact of U.S. antitrust and anti-bribery laws, the Seventh Circuit’s decision highlights the critical importance to companies of considering U.S. trade secret laws. For example, if a company suffers the theft of its trade secrets anywhere in the world, it should consider the United States as a possible venue for bringing a legal claim. Conversely, companies should take measures to train employees and ensure compliance with U.S. trade secret laws even if the employees are located outside of the United States.Continue Reading Companies Should Take Notice of the Extraterritorial Reach of U.S. Trade Secret Law

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In several recent decisions, district courts have held that liability under the Defend Trade Secrets Act can extend to extraterritorial defendants.  As set forth by Sheppard Mullin’s Tyler Baker in a prior blog post, the extraterritorial reach of the DTSA is rapidly expanding.  Non-U.S. Companies and the DTSA: Parameters of a Developing Reality | Trade Secrets Law Blog (citing vPersonalize Inc. v. Magnetize Consultants Ltd., 437 F. Supp. 3d 860, 878 (W.D. Wash. 2020); Micron Tech. Inc. v. United Microelectronics Corp., No. 17-cv-06932-MMC, 2019 WL 1959487 (N.D. Ca. May 2, 2019); Motorola Solutions Inc. v. Hytera Commc’ns Corp., 436 F.Supp.3d 1150, 1165 (N.D. Ill. 2020); ProV In’tl Inc. v. Lucca, No. 8:19-cv-978-T-23AAS, 2019 WL 5578880 (M.D. Fla. Oct. 29, 2019)).  As Mr. Baker observed, these rulings create a risk for foreign entities regarding trade secret theft, as federal courts have held that foreign actors may be subject to liability under the DTSA if the act in furtherance of the misappropriation occurred in the United States.
Continue Reading The DTSA as a Tool for Foreign Entities’ Enforcement of Trade Secrets: A New Legal Frontier

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Trade secrets frequently drive the success of a business both in South Korea and the United States.

Overview for Korean Businesses

Trade secret protection is more important than ever given increased workforce mobility and industrial espionage, as well as the advent of technology that makes misappropriation easier than it used to be. The loss of a trade secret can undermine a business’ competitive advantage.

South Korea’s Patent Act and the Unfair Competition Prevention and Trade Secret Protection Act (“UCPA”) proscribes trade secret misappropriation. It is comparable to U.S. trade secret law although there are some differences, such as in the U.S. the putative trade secret holder must take reasonable steps to protect the secrecy of the information.

U.S. trade secret legal requirements are relevant to South Korea businesses that do business or may do business in the U.S., especially given the importance of the U.S. market. If South Korean businesses want to protect their trade secrets as trade secrets in the U.S., they need to satisfy U.S. requirements for such protection – include that reasonable steps be taken to protect the trade secret before the information is misappropriated. This blog article underscores the need for a business to take such reasonable steps, what may be rejected as reasonable steps, and the ramifications if reasonable steps are not taken.
Continue Reading Don’t Wait Until There Is A Problem To Protect Your Trade Secrets

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On February 9, 2015, the United States’ Food & Drug Administration (“FDA”) issued final guidelines[1] to outline its regulatory enforcement approach to mobile medical applications (or “apps”).  The FDA is taking a risk-based approach, focusing its oversight on apps that (1) meet the definition of medical devices under section 201(h) of the Federal Food Drug and Cosmetic Act, and (2) could pose a risk to a patient’s safety if the app did not function as intended.  The FDA will not exercise authority over apps that are not medical devices under section 201(h), nor will it enforce its rules and regulations against the numerous apps that meet the definition of medical devices but present only minimal risk to consumers or patients.
Continue Reading U.S. FDA Issues Guidance for Mobile Medical Applications: What Will be Subject to FDA Oversight and Enforcement?

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Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank.  574 U.S. ___ (2015).  Justice Sotomayor, writing for a unanimous court, affirmed a Ninth Circuit ruling that the doctrine of trademark tacking presents a question of fact appropriate for jury determination.  735 F.3d 1158 (9th Cir. 2013).  This was the first substantive trademark decision by the U.S. Supreme Court in nearly a decade.  Partner Carlo Van den Bosch argued the case before the Supreme Court on behalf of client Hana Bank, who he has represented since the initial filing in 2007 in California federal court.Continue Reading U.S. Supreme Court Rules on Trademark Tacking: Insider’s View on Hana Financial v. Hana Bank