Protecting Trade Secrets in a Remote Environment

Katherine E. Perrelli | Seyfarth Shaw LLP

Clients rely on Kate to help them navigate complex commercial disputes, protect their trade secrets, confidential and proprietary information—and to swoop in to litigate these issues with her team on a moment’s notice.

Clients turn to Kate when they are most concerned about losing their confidential proprietary information and trade secrets or when other companies have hit them with a shot across the bow alleging violations of common and statutory laws for hiring a new employee or group of employees. Kate is a nationally recognized authority in trade secret and unfair competition law and companies rely on her experience to counsel them in protecting their business assets both before and after a dispute arises. Not only is she a problem-solver, she is also a trusted business advisor and collaborative partner, learning her clients’ business so that she can help formulate and mold their policies and practices for protecting trade secrets and confidential information, and recommend and employ winning strategies in litigation involving these issues.

Kate is her clients’ first call when they face challenges with unfair competition, trade secret misappropriation, and other intellectual property theft, restrictive covenant litigation, complex commercial disputes, wrongful termination, and internal workplace misconduct and compliance complaints. In addition to representing her clients across the country on such matters in federal and state courts, arbitrations and mediations, she is also frequently retained to conduct complex investigations concerning executives, internal workplace misconduct and other internal complaints. Her services also include preparation of individual and multistate employer noncompete, nonsolicit, nondisclosure and other restrictive covenant agreements; advice regarding onboarding of employees or groups of employees from a competitor, or departing employees joining a competitor; and preparation and implementation of trade secret protection programs, including trade secret audits.

Kate is currently a member of the firm’s executive committee, the co-chair of the firm’s national Trade Secrets, Computer Fraud & Non-Competes group, and she is the chair of the ABA Committee on Trade Secrets and Interference with Contracts. Kate is the immediate past national chair of Seyfarth’ s Litigation department, has led a variety of litigation and business counseling practice areas, and she has collaborated with other firm non-litigation departments on client and industry initiatives. These various Seyfarth and industry leadership roles enhance her client service by giving her up to the minute access to emerging legal trends, best-practices and benchmarking information, as well as a deep knowledge of firm and industry talent that can be tapped for specialized client needs.

Kate has also studied and employed the most innovative techniques in the legal industry, including valuebased pricing, process improvement, and project management and service delivery that affect the business side of many in-house legal departments.

Kate also has considerable experience in devising and managing alternative, value-based fee structures. She is a certified Six Sigma Green Belt and applies Lean Six Sigma and SeyfarthLean principles to her practice, counseling clients on process improvements, data analytics, and project management.

Dawn Mertineit | Seyfarth Shaw LLP

For more than a decade, Dawn has represented corporations and their directors and officers in a number of industries in complex commercial litigation, litigating partnership, franchise, real estate, and whistleblower disputes, with a special emphasis on noncompete and trade secrets litigation. She understands that many clients rely on noncompete and nonsolicitation agreements to protect their most valuable assets, while others face hurdles in recruiting and onboarding new employees bound by such restrictive covenants. Dawn brings her experience and knowledge of state and federal laws to help her clients navigate these issues, from drafting agreements and executing rollout and enforcement strategies, to analyzing competitor agreements and proposing recruitment and onboarding plans, and prosecuting or defending against claims related to breach of restrictive covenants or misappropriation of trade secrets.

Dawn represents clients in trade secret and noncompete matters in a number of jurisdictions. This cross-state knowledge is particularly critical, as states continue to pass new legislation relevant to restrictive covenants and trade secrets. As the co-editor of and a frequent contributor to Seyfarth’s award-winning Trading Secrets blog, Dawn remains current with new laws and key developments in this space, and provides clients with crucial updates about the laws that affect their businesses. In light of her thought leadership in this area, Dawn has been quoted in a number of legal and industry publications, including Bloomberg Law, Law360, Massachusetts Lawyers Weekly, and SC Magazine.

In litigating all manner of disputes, Dawn provides practical advice and creative solutions, which play a critical role in helping her clients navigate costly and time-consuming litigation with minimal disruption to their businesses. She also helps clients avoid litigation when desired, allowing them to focus on their businesses rather than litigation.

Dawn enjoys working at Seyfarth because it allows her to collaborate with attorneys she describes as “smart, hard-working, and down-to-earth”—and who also provide practical, efficient solutions to complex legal issues. She is also proud to be the pro bono coordinator for the Boston office, as well as a member of the Diversity & Inclusion team.

I. Trade secrets | 2:00pm – 2:15pm

1. Definition of trade secrets (under DTSA and various state counterparts)
2. Requirement for secrecy
3. Why are trade secrets important?

II. What constitutes reasonable measures to protect secrecy? | 2:15pm – 2:30pm

III. Challenges of protecting trade secrets in a remote environment | 2:30pm – 2:45pm

1. Move towards remote work, even before COVID-19, has created significant challenges in protecting trade secrets
2. Use of personal devices
3. Lack of in-person observation and reduced opportunities to uncover and respond to unlawful conduct
4. Loss of collegial culture
5. Fewer reminders of importance of secrecy
6. Advanced technologies permitting misappropriation
7. Proximity of outsiders (i.e. families/roommates)
8. Potential for increased mobility, leading to more incentive/opportunities to misappropriate trade secrets for prospective employers

IV. How to respond to these challenges? | 2:45pm – 3:00pm

1. Well-drafted WFH policies, including clear restrictions intended to prevent nonemployees from gaining access
2. Regular reminders of what is a trade secret, including the necessity to keep it strictly confidential, as well as potential consequences for misappropriation
3. Increased training
4. Use of restrictive covenants (where permitted)
5. Staying abreast of new technologies, and investing in technology to detect misappropriation
6. Robust offboarding procedures
7. Remote investigations
8. Trade secret audits