Intellectual Property Experts Comment on Trade Secret Dispute Between Construction Equipment Manufacturers

This case involves the alleged theft of trade secrets involving processes and procedures for the assembly of construction equipment. The Plaintiff in this case had worked with the Defendant for a number of years as a subcontractor responsible for the construction of high precision components for a range of power tools. The company had a long history of doing such work and had developed novel, highly efficient processes for doing so. The agreement between the two companies stipulated that the subcontractor conducted its work in a portion of the facility where access by employees of the Defendant firm was restricted. As their contract came to an end, the Defendant locked employees of the Plaintiff firm out of the facility, confiscating the Plaintiff firm’s materials, including CAD designs and schematics, and was reported to be using the Plaintiff’s methods at other plants.

Question(s) For Expert Witness

1. Please briefly describe your experience working with proprietary information.

Expert Witness Response E-074125

As a patent engineer, patent information and former patent examiner many inventions have passed my eyes since my career in patent business started in the late 90s. While a patented invention, which by definition is made public rather than kept secret, could be considered the opposite of a trade secret, my clients usually send me confidential information asking me to perform a patent search/analysis before deciding whether to file a patent application based on an idea. The idea could, for example involve a manufacturing process including a particular set of steps. After I have delivered my search report or my analysis, I do not know if my clients choose to file a patent application, otherwise make the idea public, or if they decide to keep the "secret sauce" of the manufacturing method. I have also come across trade secrets a few times when I have assisted in cases concerning patent infringement; in particular in cases where US patent law before America Invents Act (AIA) of 2011 was applicable, so that the rightful owner would be the one who was "first to invent" instead of the one who was "first to file"