The Sedona Conference Working Group 12 Annual Meeting 2023

Date: 
Monday, September 11, 2023 - 8:45am to Tuesday, September 12, 2023 - 1:30pm

Location:
The Four Seasons Hotel Minneapolis

Meeting Description:

The WG12 Annual Meeting will be held on September 11-12, 2023 at The Four Seasons Hotel Minneapolis in Minneapolis, Minnesota. There will be a welcome reception on Sunday, September 10.

The primary focus of this meeting will be for our current WG12 brainstorming groups and drafting teams to lead a document-based dialogue to obtain member comment and advance the following project charters and draft commentaries toward publication for public comment:

  • Sharing Trade Secrets With Other Organizations
  • The Use of Clean Rooms to Minimize Risk and Protect Innovations
  • Model Jury Instructions under the Defend Trade Secrets Act
  • Protecting Trade Secrets Through Use of Confidentiality Agreements
  • Forensic Issues in Trade Secret Disputes
  • Willfulness Damages and Attorney Fees

Another goal during our meeting will be for the WG12 members to identify new topics for additional WG12 brainstorming groups to assess as candidates for future commentaries.

Our meeting will also feature a Judicial Roundtable, including some of our Judicial Advisors who have graciously and generously participated in our WG12 efforts to date and an In-House Counsel Roundtable.

A detailed agenda can be found below.

CLE:
We will seek CLE accreditation for this event in selected jurisdictions (except Virginia) as dictated by attendance.

Hotel Information:
While we obtained a very favorable room rate at the Four Seasons Hotel Minneapolis of $299 per night for a limited block of guestrooms on the evenings of September 10 & 11, the room block is now sold out. The hotel may have some suites or other premium rooms still available. There are many other hotels in downtown Minneapolis, however, for you to select.

Dialogue Leaders

O'Melveny & Myers LLP

San Francisco, CA, USA

Beck Reed Riden LLP

Boston, MA, USA

U.S. District Court, District of Minnesota

St. Paul, MN, USA

Cisco Systems, Inc.

Milton, GA, USA

Wilson Sonsini Goodrich & Rosati PC

San Francisco, CA, USA

Paul Hastings (ret.)

New York, NY, USA

Cornell Tech

New York, NY USA

Crowell & Moring LLP

New York, NY, USA

Duane Morris LLP

Palo Alto, CA USA

DLA Piper LLP (US)

Phoenix, AZ USA

U.S. District Court, Northern District of California

San Jose, CA, USA

ND Galli Law LLC

Philadelphia, PA, USA

Morgan, Lewis & Bockius LLP

Los Angeles, CA, USA

Perkins Coie LLP

Phoenix, AZ USA

Kirkland & Ellis LLP

Salt Lake City, UT USA

3M
3M

Saint Paul, MN, USA

Arnold & Porter

Chicago, IL, USA

Covington & Burling

New York, NY USA

Akron Law

Akron, OH

Faegre Drinker Biddle & Reath LLP

Minneapolis, MN, USA

Applied Materials Inc

Santa Clara, CA, USA

Foley Hoag LLP

Boston, MA USA

Seyfarth Shaw LLP

Atlanta, GA USA

Renmatix, Inc.

King of Prussia, PA, USA

Hennepin County Fourth Judicial District

Minneapolis, MN, USA

Seyfarth Shaw LLP

Chicago, IL USA

DLA Piper

San Francisco, CA USA

Procopio, Cory, Hargreaves & Savitch LLP

San Jose, CA, USA

Weil, Gotshal & Manges LLP

San Francisco, CA

US District Court - Northern District of Illinois

Chicago, IL USA

Pelletier Law, LLC

Chicago, IL, USA

Becker & Poliakoff, P.A.

Fort Lauderdale, FL, USA

James Pooley PLC

Menlo Park, CA, USA

ArentFox Schiff LLP

Chicago, IL, USA

Taft Stettinius & Hollister LLP

Naperville, IL, USA

Moses & Singer LLP

New York, NY, USA

iDiscovery Solutions
iDS

Costa Mesa, CA, USA

Epstein Becker & Green P.C.

Boston, MA, USA

The Sedona Conference

Phoenix, AZ, USA

Williams & Connolly LLP

Washington, DC USA

Buchalter

Sacramento, CA USA

WG12 2023 Agenda

Time Session Panelists
  Sunday, September 10, 2023  
6:00 — 8:00 p.m. Evening Welcome Reception  
  Monday, September 11, 2023  
7:30 — 8:45 a.m. Breakfast & Registration  
8:45 — 9:00 a.m. Welcome & Introductions Almeling, Cundiff, Weinlein
9:00 — 10:15 a.m. Panel 1 - Draft Commentary Review: Sharing Trade Secrets With Other Organizations Braun, Fine, Harezlak, Hon. Freeman, Hayes*, Pelletier*, Saeedi
  Today's dynamic business environment creates opportunties for businesses to share their trade secrets with suppliers or in connection with potential business transactions. Such sharing can create synergy and value, but also risks unauthorized disclosure and even misappropriation. In this panel, the dialogue leaders will explore the topics of protecting trade secrets with contractual, physical and technological tools before, when and after they are shared, from the disclosing party's perspective and the receiving party's perspective. This discussion will identify potential issues when sharing trade secrets and will suggest pragmatic available solutions in light of marketplace realities.  
10:15 — 10:45 a.m. Morning Break  
10:45 — 12:00 p.m. Panel 2 - Draft Commentary Review: The Use of Clean Rooms to Minimize Risk and Protect Innovations Elman, Gray, Linderman*, McPherson
  The term “clean room” is frequently used in trade secret disputes but with different meanings, needs and approaches. In the context of trade secrets law, the basic goal of any “clean room” is to ensure that development of new products/processes is not “tainted” by unauthorized use of another’s trade secrets. But how to implement that basic goal may vary depending on context: has information already been shared by a trade secret owner with a receiving party, or is the information sharing relationship under development? Is the immediate issue limited to staffing the team that will evaluate a potential business transaction, for example, or is an organization contemplating ways to design a competing product once a collaborative business relationship has untangled? Has some independent development already occurred? Is litigation possible, imminent, or already underway? Designing and implementing a clean room can be critical to minimizing risk and protecting innovations. Using a clean room can be an effective tool to avoid or defend against intellectual property infringement or misappropriation claims. Assessment of clean room protocols can test or rebut a defendant’s independent development or reverse engineering claim in trade secret litigation. This discussion will help (1) provide a foundation for practitioners to understand what a clean room is, why one would be used, and when one should be used; and (2) identify key provisions for consideration in developing a clean room protocol.  
12:00 — 1:15 p.m. Lunch  
1:15 — 2:30 p.m. Panel 3 - Model Jury Instructions Under the Defend Trade Secrets Act Candido*, D'Amore, Galli*, Gerber*, Hon. Pallmeyer, Wiseman
  This Project Team has prepared an outline of topics for jury instructions under the Defend Trade Secrets Act. Such topics include the definition of a trade secret, misappropriation via acquisition, disclosure or use, the nature of the injury or harm required, remedies available for misappropriation and affirmative defenses. This drafting team has collected and will continue to pursue exemplary jury instructions to assist practitioners and the courts in framing the issues to juries via clear and effective instructions.  
2:30 — 3:00 p.m. Afternoon Break  
3:00 — 4:00 p.m. Panel 4 - State of WG12: Where We've Been, Where We Are Going and Sedona's Impact On The Profession Almeling*, Cundiff*
 
  • Sedona WG12 Commentaries to date (see abbreviated summary in program materials)
  • Discussion of Sedona Commentaries in Courts and in Practice
  • Potential New Commentaries for Consideration
 
4:00 — 5:15 p.m. Panel 5 - Voices from the Bench: Judicial Perspectives for 2023 and Beyond Hon. Bowbeer (ret.), Cundiff*, Hon. Freeman, Hon. Miller, Hon. Pallmeyer
  This panel comprised of judges with varied Federal and State Court experience will provide thoughts on issues germaine to the trade secrets field.  
5:30 — 7:30 p.m. Reception (guests invited)  
     
  Tuesday, September 12, 2023  
7:30 — 8:30 a.m. Breakfast & Registration  
8:30 — 9:30 a.m. Panel 6 - Protecting Trade Secrets Through Use of Confidentiality Agreements Beck*, Hon. Bowbeer (ret.), Hines, Hrdy, Morton*, Pooley, Skoff
  This panel will explore several important issues. What can be protected under a confidentiality agreement? Should confidential information be treated differently depending on the context? Are there limits on enforcing confidentiality agreements? What are the key issues pertaining to the secrecy of a trade secret? The dialogue leaders will discuss and elicit membership feedback on the status, outstanding issues, and direction of this draft commentary.  
9:30 — 10:45 a.m. Panel 7 - Draft Commentary Review: Forensic Issues in Trade Secret Disputes Davis, Gerber*, Meier, Obaro, Vaughn*
  Computer forensic review is a mainstay of trade secret litigation. But what review is necessary, appropriate, proportional, or essential and when and how do the answers vary depending on the nature of the particular dispute? Members from the practitioner and forensic expert realms will start our collaborative discussion on pre-litigation forensic investigations, forensics in expedited discovery proceedings, the roles of court-appointed/independent forensic neutrals, initial disclosures and discovery of forensics, and forensic remediation as a remedy.  
10:45 — 11:00 a.m. Morning Break  
11:00 — 12:00 p.m. Panel 8 - Willfulness Damages and Attorney Fees Mintz, Morgan, Polenberg, Prewitt, Weibust*, Wilson
  Attorney’s fees are increasingly being sought and awarded in trade secret cases to litigants on both sides of the “v.” But they are not automatic. Similarly, while trade secret statutes permit the award of exemplary damages in cases of “willful” or “malicious” misappropriation, they do not necessarily follow a finding of willfulness. What criteria do and should courts use for making such awards and how should the availability of such awards shape trade secret litigation? This panel of experienced practitioners will address these issues and will use the meeting dialogue to inform their thinking as they build out their Commentary on this important topic.  
12:00 — 12:15 p.m. Break  
12:15 — 1:15 p.m. Panel 9 - In-House Perspectives Almeling*, Braun, Harts, McBride, Miller
  Trade secret counseling often involves a prescription of recommendations clients and their in-house counsel should follow to best protect company assets. While implementation of these ideas may well provide optimal protection for the enterprise, they may not always be practical, palatable or cost-effective. And advice on educating your workforce how to identify trade secrets and then how best to protect them can be complicated, often necessitating compromises regarding what is realistic in light of corporate resources and commitment. This expert panel of dialogue leaders with substantial in-house experience offer their thoughts on how our Sedona trade secrets Commentaries can better reflect the perspectives and realities of today's in-house practice.  
1:15— 1:30 p.m. Closing Statements Weinlein
1:30 — 2:00 p.m. Grab-&-Go Lunch (provided)  

Panel Moderator*

Date: 
Monday, September 11, 2023 - 8:45am to Tuesday, September 12, 2023 - 1:30pm