Buchalter

Firm overview:

Buchalter’s California Intellectual Property group advises employers seeking intellectual property protection, including the protection of trade secrets, and routinely advises businesses accused of engaging in trade secret misappropriation and acts of unfair competition.

Five of Buchalter’s 12 offices across the US have a significant trade secrets practice: San Francisco, Sacramento, San Diego, Orange County and Los Angeles.

Clients include national and international companies from a diverse range of industries, including insurance brokerage, venture capital and investment banking, commercial banking, aerospace, life sciences, healthcare and biomedical devices firms, professional services, renewable and sustainable energy, casinos, sporting goods, and media outlets.

As well as national matters, the team handles multi-jurisdictional litigation involving companies that have hired out-of-state employees who are subject to restrictive covenants, and assists with the preparation of non-disclosure agreements, IP assignment provisions, and non-solicitation covenants. The team also arbitrates and meditates nationally.

Team overview:

Buchalter has a deep bench of skilled trial lawyers with considerable trial and litigation experience, appearing in state and federal courts, and are well-versed in handling both single plaintiff and class action defence. They regularly publish and provide guidance in the trade secrets space.

In particular, the team offers substantial experience in representing employers in trade secrets matters, and in the defence of businesses accused of engaging in trade secret misappropriation and acts of unfair competition.

Along with shareholder Peter Bertrand, Dylan Wiseman is co-chair of Buchalter’s Trade Secret and Employee Mobility Practice Group. He has two decades’ experience as a trade secrets trial lawyer, offers substantial first-chair experience in complex arbitrations, and is recognised as a trade secrets expert in the US.

Wiseman is an author on trade secrets, in particular of practice guides relating to the Defend Trade Secrets Act. He has been a member of the Sedona Conference – Working Group 12 (Trade Secrets) since 2023.

Key matters:

• Philips North America v Advanced Imaging Services, US District Court, Eastern District of California, Case No. 2:21-cv-0076-KJM-AC

Buchalter represented Advanced Imaging Services, provider of CT/MRI parts and services in the US. Shareholder Dylan Wiseman defeated Philips North America’s motion for preliminary injunction based on claimed trade secrets in the MRI and CT scanning field, and defeated its motion to dismiss counterclaims asserting antitrust claims.

Philips claimed that the defendants misappropriated its trade secrets and circumvented security measures for its software when the defendants serviced and maintained MRI and CT scanning equipment under their contracts with hospitals and medical clinics. The value of the case is unspecified, with Philips claiming that its injuries were a matter of expert opinion.

The matter was set for trial in July 2024, but the parties voluntarily dismissed the action with prejudice in August. Advanced Imaging’s counsel at Buchalter were Dylan Wiseman, senior counsel Jacqueline Vu, and associate Berit Elam.

• Saint-Gobain Performance Plastics Corporation v Tuan La and Polymer Concepts Technologies, Superior Court of California, County of Los Angeles, Case No. EC068518

Buchalter represented Polymer Concepts Technologies, an aerospace seals engineering firm, in a matter involving the hiring of an employee from its competitor who allegedly misappropriated trade secrets. The new hire concealed the fact he had downloaded design and customer files from his previous employer.

Central to the dispute was whether the files contained the former employer’s protectable trade secrets. Buchalter shareholder Dylan Wiseman successfully obtained three protective orders under the California Code of Civil Procedure, section 2019.210, preventing the plaintiff from conducting discovery relating to alleged trade secrets until it identified with reasonable particularity the claimed trade secrets.

The dispute settled on the courthouse steps, shortly in advance of a December 2022 trial. Wiseman’s co-counsel included shareholder Roger Scott.

Clients:

Polymer Concepts Technologies, BHFO, Advanced Imaging Services, Prime Healthcare, Signal Hill Auto Enterprises, Supply Solutions