Eversheds Sutherland
Firm overview:
Eversheds Sutherland is a UK-US full-service global firm with over 70 offices in more than 30 countries. The firm’s IP team of 100-plus IP specialist lawyers, advises many of the world’s largest companies on their IP portfolios, and specialises in the TMT, industrials and automotive, financial services, health and life sciences, and consumer (including luxury clients) sectors.
Eversheds operates a growing trade secrets practice for its global clients, with professionals in the USA (Washington, DC, San Diego and New York), Germany (Frankfurt and Munich), the UK (London and Nottingham), and Hong Kong.
The firm has advised a number of global companies on their trade secrets strategy across the international operations.
The Eversheds Germany team is “highly recommended for inclusion in the rankings” by a client, with partner Tobias Meier’s team picked out for being “technically good and highly commercially aware.”
The firm has been instructed on several trade secret disputes for key clients. Importantly, these have included industries as diverse as financial services, manufacturing and transportation. Software cases have been a particular area of focus, with computer source code being protected as a trade secret as well as under the law of copyright.
Team overview:
Eversheds Sutherland has 17 partners and another 50-plus lawyers with significant activity in trade secrets across its network.
Noteworthy recent partner hires have bolstered the trade secrets practice. David Wilkinson, former head of IP at Ashurst, with a mixed contentious and transactional practice, joined as UK head of IP in May 2022. In September 2022, Indradeep Bhattacharya joined as a partner in London from Jones Day. Bhattacharya specialises in complex patent litigation and works with corporate teams on commercial IP advisory and transactional matters.
Dr Anette Gärtner joined in January 2023 from Reed Smith, as a founding partner of the Frankfurt office. An experienced IP practitioner and patent litigator, Dr Gärtner focuses on patent and employee invention law, and other ‘hard IP’ matters such as know-how and trade secrets disputes, particularly in the Life Sciences and TMT sectors.
In the US, the firm’s trade secrets expertise was enhanced by the hire of three leading IP litigators: Nicola Pisano, Jose Patino and Christopher Bolten, who joined as partners in the San Diego office in 2019.
Hong Kong partner Cedric Lam is experienced in helping multinational corporations acquire, exploit and enforce their IP rights and trade secrets, as well as implement technology transfer, IP protection, licensing, litigation and anti-counterfeiting strategies.
Dr Gärtner with UK partners Indradeep Battacharya and Wilkinson wrote a report, “Trends in Trade Secrets Litigation—view from the EU and UK”, based on analysis the EU Intellectual Property Office’s Trade Secrets Litigation Trends report and approximately 40 UK claims brought in IP courts relating to trade secrets, breach of confidence, and misuse of confidential information/trade secrets over five years.
Dr Gärtner also co-authored the prestigious Praxishandbuch Geheimnisschutz, a German-language practitioner’s guide to trade secrets in Germany.
Key matters:
- Arkeyo v Metro Bank
Led by David Wilkinson (UK head of IP) and Ann Fort (partner, US), Eversheds represents UK retail and commercial bank Metro Bank in defending a complex English High Court claim (claim no. IL-2022-000039) brought by software developer Arkeyo.
The dispute has played out over several years and many of the claims are advanced under US law as well as English law. The case relates to the development of Metro Bank’s Magic Money Machine, now decommissioned in branches, child-friendly coin counting machines featuring lively animations.
US company, Arkeyo, provided the software for the Magic Money Machine to Metro for six years and claims that the lender later leaked its source code to a rival firm. It has been pursuing Metro through US courts since 2017 and filed a fresh lawsuit in the UK in 2022 in an attempt to sue the bank for £24 million ($32 million).
Arkeyo claims breach of confidence/misuse of trade secrets, copyright infringement, breach of contract and various economic torts.
Arkeyo claims that Metro instructed a Chicago-based company called Saggezza to reverse-engineer and copy Arkeyo’s software. Saggezza has denied wrongdoing. In its annual report, Metro Bank said: “We believe Arkeyo’s claims are without merit and are vigorously defending the claim.” Arkeyo was represented by a litigant in person.
Clients:
Florida State University Research Foundation, Hammerforce, Johnson Matthey, Masterbuilt Manufacturing, Metro Bank, Next, Otsuka, Outdoor Leisure Products, Tesla Wall Systems, Workplace Technologies Research.
