Keeping Your Secrets – Analyzing Successful Strategies to Secure Your Future - Phillip Petti, USG...
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Transcript of Keeping Your Secrets – Analyzing Successful Strategies to Secure Your Future - Phillip Petti, USG...
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KEEPING YOUR SECRETS
Phil Petti
Chief Intellectual Property Counsel
This Presentation Reflects Solely The Personal Views Of The Author
and Should Not In Any Way Be Attributed To USG Corporation
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USG Corporation Worldwide Leader In Wall and Floor Panels, Ceilings, Surface Products, and Building Material Distribution
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Industry Leading Brands
• SHEETROCK® Brand Wallboard and Joint Treatments
• DUROCK® Cement Board
• SECUROCK™ Glass-Mat Panels
• Mars™ Ceiling Tile
• DONN® Ceiling Grid
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USG Corporation Products Used In The World’s Tallest Buildings
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USG And IP Challenges
• Market and R&D leader in industry
• Manufacturing in 32 states and provinces in the North America
• Largest specialty construction materials distributer in the U.S.
• Joint Venture, USG Boral -- Manufacturing and Market Leader Throughout Asia, Australasia and the Middle East
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USG Boral JV - Leader In Its Markets Asia, Australasia, Middle East
CHINA
THAILAND
VIETNAM
MALAYSIA
INDONESIA
SOUTH KOREA
AUSTRALIA
NEW
ZEALAND
INDIA
SAUDI ARABIA
OMAN
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USG Experience With Trade Secret Loss
• Trade Secret Litigation With Major Competitor
7+ Trusted, Former Employees Left USG
Over 17,000 Pages of USG Sensitive Confidential
Documents Taken
Over 14 Billion Square Feet of Wallboard in U.S. Made
Using USG Trade Secrets
• USG Received a Settlement of $105 Million
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Stacks Of USG Documents Produced By Competitor (Approx. 17,000 Pages)
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Understanding The Dynamics
• The Ability to Detect Theft is Limited – the Opportunities are Widespread
Computer Information is Exceptionally Portable
Instantaneous Electronic Communication – a Bane to
Protection
Networking Makes More Available to All – Can Hide
Information too
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Understand The Dynamics
• Most Trade Secret Cases are Caused by a Violation
Of Trust:
Key Employees, Managers, Even Officers
Favored Vendors, Contractors, Trusted Others
• Governmental and Organized Crime Threats Also
Changing the Dynamics
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Understanding The Dynamics
• Mostly You are on Your Own – Third Parties of Limited Assistance
• Law Enforcement can Help, but Presents Other Issues
• The Sensitivity of the Situation can be a Factor
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Preparation Critical
• Paranoia is Tedious but Necessary
• The Steps to Protect Are a Critical Deterrent – and a
Critical Element of a Claim for Loss
Perfection Not Required – Commercially
Reasonable Measures is the Standard
• But, Once Trade Secrets Gone….
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Protection Challenges
• No Matter the Size, a Company’s Trade Secrets:
Can Encompass a Considerable Range of Information
Commercial, Technical – Documents, Electronic, Physical
Can be Difficult to Identify with Precision
• Those Close to the Trade Secrets May Underestimate Their Value and Significance
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Example Protection Focus Points
• Governance
• Physical Plant and Facility IP Security Measures
• IT And Data Security Tools and Systems
• Employee & Outside Party Protections
• Training & Accountability
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Mo
re P
rote
cti
on
Higher Sensitivity, Greater Commercial Value
Highly
Sensitive
Confidential
Restricted
Access
Public
One Approach - Classification Driven
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The Decision To Take Legal Action
• Taking Legal Action Normally is a Public Action
Alerting Customers and Competitors to Potentially Sensitive Issues
“Leakage” of the Trade Secrets in Court, Even with Protective Orders
• International Enforcement – Standards, FCPA, Other Concerns
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Legal Action - Remedies
• Focus on the Remedy – What Can You Expect?
TRO and Preliminary Injunctions – Enough?
Damages Meaningful?
Other Remedies Available – contract, unfair
competition?
• What can one afford to lose – are some losses
inevitable?
• Understand the cost – its not just legal fees
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Defending Trade Secrets Act Of 2016 – S. 1890
• Pending Bill to Provide Federal Trade Secret Remedy
• Amends 18 USC §1836 for Criminal Trade Secret Remedy
• Parallel To State Law Trade Secret Law
• Strong Bipartisan Support, Ready For Floor Debate
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Defending Trade Secrets Act Of 2016
• Uses Uniform Trade Secret Act definitions for Trade Secrets
• Injunctive Relief, Damages, Unjust Enrichment
• Also Ex Party Seizures
Extraordinary Risk of Irreparable Injury and Harm
Only Where Actual Possession of Trade Secrets
By Federal and State Law Enforcement, Court Holds Seized Materials
Provisions to protect defendant and confidentiality of information
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Defending Trade Secrets Act Of 2016
• Double Damages, Attorneys Fees (Bad Faith by Either Side)
• 3 Year Statute Of Limitations
• Protection of Trade Secrets in Court Proceedings
• Protection for Threat of Loss, but Not “Inevitable Disclosure”
• Protection of Whistleblowers and Their Counsel