Agenda WG12 2022

[Panel 1] Draft Commentary Review: What Can and Cannot Be a Protectable Trade Secret 

This panel will explore several important issues.  Is confidential information coextensive with trade secrets? What is or is not a trade secret?  And how does one distinguish between trade secrets and an employee's general skill and knowledge? The dialogue leaders will discuss and elicit membership feedback on the status, outstanding issues, and direction of this draft commentary.

[Panel 2] Draft Commentary Review: Sharing Trade Secrets With Other Organizations

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.

D'Angelo, Engler, Fine, Hayes*, Parsons (J. ret.), Pelletier*, Saeedi, Schroder 

[Panel 3] Draft Commentary Review: Ethics Issues in Trade Secret Disputes

Ethical issues often attend litigation and disputes of any kind, but there are specific issues which arise in trade secrets matters.  This panel confronts some of them from a practitioner, academic and judicial perspective.  This discussion will consider ethical issues in the representation of multiple clients, in avoiding meritless claims and defenses, in connection with potential misappropriation red flags, and in the interplay between criminal proceedings and civil litigation.

Cameron-Banks, Fink*, Morris, O'Toole, Prewitt, Saeedi, Shenian, Stein (J)

3:30 — 5:00 p.m.

5:00 - 5:15 p.m.

[Panel 4] Voices from the Bench: Judicial Perspectives for 2022 and Beyond

This panel with varied federal and state court experience encompassing both coasts and the heartland will provide thoughts on issues which are germane to the trade secrets field.

Closing Remarks for Day One

Bowbeer (J. ret.), Doyle (J), Freeman (J), Parsons (J. ret.), Stein (J), Cundiff*

Weinlein

[Panel 5] State of WG12: Where We've Been and Where We Are Going - How Are the Sedona Commentaries Being Used?  Open Questions and Future Commentaries

Sedona Commentaries in the Courts and Practice

Potential New Commentaries for Discussion:

• Model Jury Instructions under the DTSA
• How to Ensure that "Clean Rooms" Are Truly "Clean": Lawful Reverse Engineering
• What is Misappropriation and What Remedies are Appropriate for Different Types of Misappropriation?
• Attorneys Fees and Exemplary Damages
• Other Suggested Topics? 

[Panel 6] Draft Commentary Review: Forensic Issues In Trade Secret Disputes 

This diverse and knowledgable panel comprised of members from the practitioner, forensic expert and judicial realms will consider a number of issues including pre-litigation forensic investigations, forensics in expeditied discovery proceedings, the roles of court-appointed/independent forensic neutrals, initial disclosures and discovery of forensics, and forensic remediation as a remedy.  The dialogue leaders will discuss and elicit membership feedback on the status, outstanding issues, and direction of this draft commentary. 

[Panel 7] Trade Secrets Across Borders: A World of Emerging Issues

Our prior work has focused on the extraterritorial reach of trade secrets law and selected issues concerning cross-border discovery. This panel will lead a discussion of work from the joint patent and trade secret teams -- cross-border discovery Phase II -- including:

• Extraterritoriality considerations under state and federal trade secrets law including 18 USC Sec. 1837
• Managing Discovery Requests Under 28 USC Sec. 1782
• Cross-Border Discovery Considerations
• Attorney-client Privilege Considerations

[Panel 8] In-House Perspectives On Managing Trade Secrets and Litigation About Them: How Can We Ensure Productive Consensus?

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 with substantial in-house experience - some of whom currently work in-house and others who did so in previous employment or in secondment roles -- offer their thoughts on how our Sedona trade secrets Commentaries can better reflect the perspectives and realities of today's in-house practice.