Enforcing IP Rights Involving Foreign Companies Greg Vogler Chicago, Illinois May 2013

Protection of Technology Technology To Be Protected (cannot be reverse engineered) Company Decision Patent Protection (public) Trade Secret Protection (private) 1

2

U.S. Patent Infringement Enforcement 1.U.S. District Court Money Damages Injunction 2.U.S. International Trade Commission Exclusion Order 3

Trade Secret Theft Enforcement 1.U.S. International Trade Commission (“ITC”) 2.Federal or State Court 3.Federal or State Criminal Prosecution 4

St. Jude Wins $2.3B Verdict In Trade Secrets Trial A jury in California state court on Friday awarded a division of St. Jude Medical Inc. a $2.3 billion dollar verdict against a former employee and the Chinese medical device company he started, finding the defendants liable for stealing trade secrets. April 25,

ITC Issues Import Ban In Rail Wheel Trade Secrets Case Law 360, New York (February 18, 2010) – The U.S. International Trade Commission has issued a 10-year ban preventing four companies from importing and selling cast-steel railway wheels made using the trade secrets of Chicago-based Amsted Industries, Inc. February 18,

Stealing Trade Secrets - - Criminal  Two former Coca-Cola employees arrested in July ’06 after Pepsi tipped off Coke that it was being offered trade secrets for $1.5 million  Sentenced to serve federal prison terms of 5 and 8 years for conspiring to steal and sell trade secrets to Pepsi 7

When Trade Secret Problems Arise  New Employee Hired by Company from Competitors  Departing Employees  Due Diligence Investigation of Business Deals And Technology 8

TianRui Group v. U.S. Int’l Trade Commission  Trade Secret Misappropriation Case  Unfair Acts Occurred Exclusively In China  Federal Common Law Trade Secret Standard  Domestic Industry Did Not Use Trade Secrets 9

Federal Trade Secret Common Law 1.One or more trade secrets exist and are not within the public domain 2.Complainant is the owner of the trade secret or possesses a proprietary interest 3.Complainant disclosed the trade secret to Respondent in a confidential relationship or Respondent wrongfully obtained the trade secret by unfair means 4.Respondent used or disclosed the trade secret, causing injury to Complainant 10

State Trade Secret Statutes  “Misappropriation” is on “acquisition, disclosure or use” of a trade secret of another person by improper means  “Use” is a broad concept  Cognis v. Chemcentral Corp., 430 F.Supp 2d 806, 812 (N.D. IL 2006) 11 “marketing goods that embody the trade secret, employing the trade secret in manufacturing or production, relying on the trade secret to assist or accelerate research or development, or soliciting customers through the use of information that is a trade secret…all constitute ‘use’.”

Criminal Prosecution  Federal Economic Espionage Act  Federal Computer Fraud And Abuse Act  State Criminal Statutes 12