At this morning’s plenary session, Wil Rao of McAndrews Held & Malloy in Chicago presented “Illuminating the Dark Side of IP: A Practitioner’s Look at Recent Thefts, Crimes and Other Developments in Trade Secrets Law in 2010-2011.” It was an excellent summary of the significant developments in trade secrets law over the past year. Wil covered all the bases — the high profile cases (including the Mattel/MGA and DuPont/Kolon verdicts), the legislative developments (the recent proposed amendment of the Economic Espionage Act and proposals in New Jersey and Massuchusetts to adopt the UTSA), the many recent criminal convictions, and, of course, the many important civil cases (including the SyncSort, Tewari, Faiveley and TianRui Group cases, among others). I will write a post or two in the coming weeks discussing some of the other developments Wil raised.
Also, I joined a fine panel on Thursday afternoon entitled “Ten Things In-House Counsel Would Like to Tell Outside Counsel about Trade Secrets and Vice Versa.” Dan Westman of Morrison & Foerster, Chair of the Trade Secret Law Committee, moderated the panel, which included Phil Petti, Chief Intellectual Property Counsel for USG Corporation and member of AIPLA’s Board of Directors, Dewayne Hughes, and experienced IP lawyer and currently IP counsel at Drager, and Warrington Parker of Orrick Herrington, an experienced trade secret litigator. It began as a standing-room-only presentation and the vast majority of the audience stayed for the entire 2 hour presentation. Thanks to those who attended and for your thoughtful questions, and a special thanks to Dan for organizing the presentation and panel (and, not the least of which, inviting me).
For us outside counsel, the key takeaway was the importance of providing objective advice to your in-house clients. The panel made clear that in-house counsel do not want their outside counsel serving as cheerleaders; instead, they want direct and straight evaluations of the litigation, with the risks and rewards stated plainly so they, as business advisors, can in turn advise their management and board. The panel also agreed that efforts by outside counsel to work with other officers or managers within the client’s organization (IT, sales, management) are important. They reinforce the ‘team” approach in litigation and provide an opportunity for other employees to become familiar with the status and responsibilities of that litigation.
Budgeting, as you would expect, remains an important tool. The development of project management skills to accurately predict and control costs was suggested as a course that should be offered in law school, or by law firms. One of the panelists noted that the most important communication an attorney has with his/her client is the invoice. As a result, we, as outside lawyers, need to make sure that it accurately explains and conveys the value that the client expects. In-house counsel also recognize that there may be unexpected developments in the litigation that require a budget’s adjustment; that being said, it is important for outside counsel to promptly advise in-house counsel of that possibiity to minimize any surprises. Finally, Dan made the inspired point that it might be prudent to budget senior management’s time so they fully appreciate the commitment that they will need to make in discovery and trial preparation.

Finally, there was an awful lot of discussion about the impact of the America Invents Act on the future of patents and trade secrets protection throughout the Annual Meeting. For brevity’s sake, this will be the subject of a future post.
All in all, a very productive few days.