While patents and trade secrets can co-exist for the same device, the scope of the trade secret needs careful examination. Is this a case of bad facts overwhelming that careful examination?

 

More on Charles Tait Graves.

 

SPEAKERS

Wayne Stacy, Charles Tait Graves

 

Wayne Stacy  00:01

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, your host today, the Executive Director for BCLT. Today we're going to discuss the Life Spine case from the Seventh Circuit. It's a ruling upholding a preliminary injunction and a trade secret case. And we have one of the nation's leading trade secrets litigators with us today. Tait Graves from Wilson Sonsini. Tait, thank you for taking the time out of your busy schedule to talk with us today.

 

Tait Graves  00:33

Yeah, thanks, Wayne. Happy to be here.

 

Wayne Stacy  00:35

Well, so I want to start with kind of this fundamental proposition that comes in this case. And that's that, you know, you hear a lot of times people say that trade secrets and patents are completely incompatible. And this is a circuit court case that that shows otherwise. So can you tell us just a little bit about that incompatibility issue and what we should take away from this case?

 

Tait Graves  01:00

Sure, you know, at its most fundamentals, we all know that once you patent something, and it's released into the public domain, it can no longer be a trade secret. And when we stop and reflect that every patented invention begins its life as a trade secret. But once it's published, it either is a failed patent and a failed application or an issued patent. It's public, and it's no longer a trade secret. That's very simple. And I think people understand that. But what gets lost in the noise sometimes, and what Life Spine and the Federal Circuit are reminding us is that just because you release a lot of information into the public domain, whether by patents or whether by marketed products, it doesn't mean that you waive trade secret protection over other details and other information that you haven't released. So even a broad release into the public domain, doesn't mean that you waive your rights over other information that you've kept confidential.

 

Wayne Stacy  01:55

Well, when you when you read this case, at least I'm inclined first to focus in on some some comically bad facts that that the court really, really highlighted. But this this case is really about more than than a bad actor. There's a lot of good law and a lot of good lessons in here. So if we look past the parties and some of the the alleged bad acts, you know, what can we what can we learn about trade secrets?

 

Tait Graves  02:26

You know, you're you're right. The facts here look pretty bad reading the order and reading the docket and the different filings here. But if we back away from the actual parties, and we back away from the actual facts, there are some structural questions about trade secret law that are latent in the federal circuit's opinion that I think are important. What happened here essentially, is that the plaintiff was able to get injunctive relief, even though it had disclosed a great deal of information about its product into the public domain, on the argument that it had measurements and specifications that nonetheless remained trade secrets, even though so much had been disclosed. Now, that's not a surprising rule. That's black letter, trade, secret law, and totally unsur