Ropes & Gray

Firm overview:

Ropes & Gray’s trade secret team, noted by peers for “excelling in litigation”, provides an advisory service covering all aspects of trade secrets protection at all stages of the development lifecycle of the key technologies, processes, systems and products, among others, at the core of our clients’ business models.

The team’s experience and expertise ensure that all possible threats to the client’s trade secrets are identified as soon as they become apparent and comprehensive and effective solutions are developed and implemented long before issues can arise.

Ropes & Gray’s intellectual property, labour & employment, government enforcement, business & commercial litigation, data, privacy & cybersecurity, and e-discovery groups collaborate to bring exceptional resources to our trade secrets practice, ensuring maximum protection of clients’ intellectual assets and strategic, coordinated handling of all relevant legal issues.

Team overview:

Collectively, Ropes and Gray’s attorneys have handled more than 100 trade secret investigations and were one of the first law firms in the US to apply for and be granted an ex parte seizure order under the Federal Defend Trade Secrets Act.

Peter Brody heads Ropes & Gray’s Trademark, Copyright, False Advertising and Trade Secret practice. Brody has successfully litigated intellectual property cases and other complex disputes in US federal and state courts for more than 35 years. He has litigated every type of IP case—trademark, trade secret, copyright, patent, and false advertising—as well as a wide range of constitutional, administrative, and contract disputes.

Brody regularly comments on trade secrets in outlets including The Wall Street Journal and Bloomberg, and he is a frequent speaker at continuing education programmes. Brody has successfully handled trade secrets matters for leading clients such as British semiconductor company IQE, a maker of advanced epitaxial wafers, semiconducting material used in photonics, microelectronics and photovoltaics.

David Chun is an experienced IP litigation partner and trade secrets specialist in the Silicon Valley office. Chun focuses on litigating trade secrets misappropriation, patent infringement, and copyright infringement matters in district and appellate courts and in connection with government enforcement actions. He has achieved successful results for industry-leading companies in trade secret cases across a broad range of industries, including Samsung Electronics.

Ropes & Gray IP litigators Matt Rizzolo, Brendan McLaughlin and Cassandra Roth hosted an edition of the firm’s Talkin’ Trade podcast on developments at the US International Trade Commission on the theme of “Trade Secrets, False Advertising, Antitrust, Oh My!”

Key matters:

• Exactech and XpandOrtho v Zimmer Biomet Holdings

Ropes & Gray, led by California partner Andrew Thomases and New York counsel Evan Gourvitz, achieved a positive settlement in trade secrets litigation for portfolio company Exactech and its subsidiary XpandOrtho. Both are both owned by TPG, a global alternative asset manager with $229 billion in assets under management. Exactech develops and produces bone and joint restoration products.

Ropes & Gray filed a suit for Exactech in multifaceted litigation against competitor Zimmer Biomet in the Southern District of California for misappropriation of trade secrets, breach of contract, copyright infringement, and other claims related to Zimmer’s use of Exactech technology related to soft-tissue-balancing in knee-replacement surgery.

Zimmer filed a suit against Exactech in the Middle District of Florida, alleging certain Exactech products infringed six patents owned by Zimmer and its subsidiaries. The Ropes & Gray team countered Zimmer’s suit by filing inter partes reviews at the US Patent and Trademark Office, challenging the validity of Zimmer’s patents. The USPTO instituted proceedings on five of the six patents, staying Zimmer’s Florida litigation.

After discovery and depositions of Zimmer’s key witnesses in the California trade secrets case, the parties agreed to settle the case. As part of the settlement, Zimmer transferred to Exactech the patents Zimmer filed which were alleged to incorporate Exactech’s trade secrets technology. Quarles & Brady represented Zimmer.

Clients:

Exactech