Morgan Lewis & Bockius
Firm overview:
Morgan Lewis & Bockius’ trade secrets practice comprises trade secrets counselling and litigation, with substantive areas relevant to trade secrets protection, such as employment, computer crimes, economic espionage, cross-border litigation and unfair competition.
Morgan Lewis draws on this background to take an aggressive approach to assisting with protecting clients’ trade secrets.
Considered by peers as a “capable law firm”, Morgan Lewis has more than 2,200 lawyers and legal professionals in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East.
The firm provides corporate, transactional, litigation, and regulatory services in major industries to clients from established, global Fortune 100 companies to enterprising startups.
Morgan Lewis regularly pursues and defends claims for misappropriation of trade secrets from client lists to sophisticated technology and software, for a broad range of clients. The firm’s litigators assist with trade secret matters in state or federal court, including assistance with injunctions to prevent actual or threatened misuse of trade secrets and other confidential information.
Team overview:
Morgan Lewis has nine partners and another 15 lawyers with significant activity in trade secrets. Seth Gerber, a partner in the Century City, California office, leads the firm’s IP Trade Secrets Working Group and is an active member of the Sedona Conference Trade Secrets Working Group 12.
Gerber is “one of the big names in the trade secrets arena and has a deserved reputation”. He is an experienced trial lawyer who focuses on trade secret, restrictive covenant, and employee mobility matters. Gerber has obtained a number of injunctive relief, trial, and post-trial victories for Alliant Insurance Services in connection with its US high-stakes trade secrets and non-compete matters.
Gerber’s cases range from customer lists to innovative technologies including semiconductors and custom-engineered aerospace parts. He has experience in cross-border litigation and forensic investigations and counsels clients on defining, protecting their confidential information.
Gerber serves on the Steering Committee for the Sedona Conference Working Group 12 on Trade Secrets, as co-leader of a brainstorming group on computer forensics, and as co-leader of a drafting committee for standard jury instructions under the Defend Trade Secrets Act. Gerber participated in a Morgan Lewis webinar: “FTC Proposed Noncompete Ban Forum”.
Joshua Dalton is a co-leader of the firm’s trademark and copyright litigation practice and head of the Boston IP practice. Dalton is a pretrial, trial, and appellate lawyer in trademark, trade dress, false advertising, copyright, patent, and trade secret/non-competition disputes. His IP clients have included Boston Scientific, Wayfair and ConAgra Foods.
Key matters:
- USI Insurance Services v Aitkin, Federal District Court in Portland, Oregon, case no. 3:21-cv-00267
Seth Gerber and Los Angeles-based employment law, unfair competition and trade secrets litigation partner, Debra Fischer led a Morgan Lewis team that obtained a complete defence verdict on February 16, 2023, for Alliant Insurance Services and a newly hired insurance producer, Mike Aitkin.
Plaintiffs USI Insurance Services and Kibble & Prentice Holding alleged that Aitkin breached his employment agreement by improperly taking, using, and disclosing confidential information to solicit, divert, and service clients and prospective clients and by failing to give 60-days’ notice when he resigned to join Alliant.
The plaintiffs also alleged that Alliant intentionally interfered with its agreements with Aitkin and its clients. Plaintiffs sought an award of $7 million for compensatory damages plus punitive damages. Gerber acted as first-chair trial counsel for the defence team, handling key cross-examinations and the experts and delivering the closing argument.
- USI Insurance Services National v Stanley Ogden, et al, case no. 2:17-cv-01394-SAB, US District Court, Western District of Washington
Morgan Lewis partner Debra Fischer, with partner Molly Terwilliger and associate Patrick Duffey, achieved a complete defence victory after a six-day jury trial in 2023 for clients Newfront and insurance producers Stanley Ogden, Eleanor “Sam” O’Keefe, and John Haskell.
The plaintiff—USI Insurance Services National—who originally made various claims including unlawful use of USI’s confidential information, had previously received summary judgment rulings in its favour, finding that Ogden and O’Keefe breached their employment agreements by continuing to handle the insurance business of their customers after changing jobs and joining Newfront’s predecessor, ABD Insurance and Financial Services.
The court also determined on summary judgment that Haskell had breached a provision of his agreement that prohibited him from soliciting USI employees to join ABD. During closing arguments, the plaintiff requested an award of more than $10 million in lost profits. Despite the adverse summary judgment rulings—and after less than two hours of deliberations—the jury returned a total defence verdict concluding that no damages had been caused by Morgan Lewis’ clients.
- Robert Half International v Jobot, et al
Debra Fischer serves as lead counsel for Jobot, a proprietary recruiting platform company, in employee mobility counselling throughout the US. Fischer and her team review new-hire restrictions based on agreements with former employers, advise all new hires on their applicable restrictive covenants, respond to demand letters from former employers, and handle any resulting disputes.
The Morgan Lewis team represented Jobot, and new hires, in six cases brought by rival recruiting agencies alleging theft of trade secrets and confidential information—four by Robert Half International alleging breach of restrictive covenants and additional issues, one by Aeroteck Affiliated Services, and one by Hayes Medical Staffing.
Clients:
ABD/Newfront, Alliant Insurance Services, Jobot.
