Shrimp Genetics Case Dips Into Uncharted Trade Secret Realm

Trade secrets are defined as “information” not generally known that an entity makes “reasonable efforts” to keep secret. The owner also must derive economic value from that secrecy. The secrets are misappropriated if they’re acquired by someone else through improper means.

Precedent applying those principles to living things remains slim, but life-based secrecy is growing.

“We’re adapting to the fact that there’s a lot of business activity now around lifeforms,” trade secrets attorney James Pooley said.


Pooley said much of the shrimp case’s reasoning stems from Pioneer Hi-Bred’s dicta and its subsequent “mischaracterization” as a holding.

He predicted “it will take some time” before an appeals court tackles the question head on, but he called the reasoning in cases involving organisms-as-information “sort of sloppy” because they equate intangible information with tangible objects; a computer chip isn’t a trade secret, the information on it is, he said. He doesn’t think the cases are necessarily reaching the wrong results, just relying on faulty logic.

“It can matter in the law because there are certain things the law can do with tangibles that it can’t do with intangibles,” such as have them seized or destroyed, Pooley said. “If you’re trying to control the genetic information in your hybrid seed corn, you have to control the corn itself” so that the information doesn’t become accessible.


Surprisingly, 50.5% of companies that performed or funded R&D found utility patents “not at all valuable.” Some observers believe that if businesses are not filling patents, they are not disclosing inventions, which is harmful to innovation.

“This may be a result of a perception that the value of U.S. utility patents has diminished in recent years to due to erosion of patentability standards, coupled with increased cost and risk of enforcement,” James Pooley told IP CloseUp. Pooley is a trade secret expert and former Deputy Director General of WIPO and advisory board member of the Center for Intellectual Property Understanding.


The World Trade Organization last week approved a deal to loosen intellectual property protections that many policy professionals say will shatter investment and innovation incentives for drugmakers to meet the needs of major health crises. The deal was a blow to vaccine makers such as Pfizer Inc. and Moderna Inc., which fought to keep the current framework that enabled them to produce life-saving vaccines in record time.

“Anyone with a stake in preventing or responding to future crises should be concerned about the negative effect of this agreement,” said James Pooley, a former deputy director general at the United Nation’s World Intellectual Property Organization.

The IP waiver comes after nearly two years of debate and at a time when initial catalysts for a plan to spur vaccine access and production capabilities have largely been addressed—leaving many in the IP and drug spaces skeptical of the goals of the agreement beyond political gain.

“It delivers the worst possible result: coming at a time when there is an oversupply of vaccines, it is irrelevant to the current crisis; and by reducing the reliability and predictability of patent protection it makes it much harder to secure private investment in the research required to deal with the next global health crisis,” Pooley said.


The waiver indicates that patent rights include ingredients and processes necessary for the manufacture of the vaccine. Were that interpreted to include trade secrets, it could scare off investment capital, Pooley said.

“It signals that the United States is willing to play footsie with India and South Africa on this essential sort of lie, that pulling back on patent protections globally will somehow solve more problems than it creates, and that’s a delusion. And we’re buying into it,” said James Pooley, a former deputy director general at the World Intellectual Property Organization. “That itself will have a dampening effect on the willingness of companies to invest in technologies.”


According to the tentative plan, WTO members will decide whether to extend the waiver to “cover the production and distribution of COVID-19 diagnostics and therapeutics” within six months of an agreement.

McDole, however, noted that “like the vaccine manufacturers, Gilead and other therapeutic manufacturers are continuously entering into voluntary licenses to increase production and access” for Covid treatments.

The waiver, particularly from the U.S. point of view, is “the worst of both worlds,” Pooley said.

“It doesn’t solve the actual problems of vaccine availability,” and “it reinforces the idea that whenever we have some sort of global issue, let’s look at ways in which the IP system can be seen as a barrier,” he said.

DTAS (Defend Trade Secrets Act) claims now constitute almost three-quarters of those filed in suits. The DTSA, signed into law on May 11, 2016, provides litigants a private right of action in federal court for trade secret misappropriation claims.

“It’s no surprise that many plaintiffs favor the federal option, with nationwide service of process and harmonized rules,” says James Pooley, a leading trademark attorney, author and ex-Deputy Director General of WIPO. “Many still choose state court for essentially local cases, where it is generally easier to get your case to trial.

“As for the high percentage of judgments resulting in injunctions, that statistic should be understood in context of  how few cases actually get to a judgment after trial. Those that do would naturally tend to present strong facts that justify injunctive relief.”

Patents themselves are publicly accessible, noted James Pooley, intellectual property attorney and former deputy director general of the United Nations' World Intellectual Property Organization. But trade secrets developed by Pfizer/BioNTech, Moderna and others, "cook books" of manufacturing processes such as temperature and growing conditions, have not been made public. That may ultimately be a dual problem for negotiators. Before they protect the knowledge, U.S. officials would have to ensure access to it.

Those companies would need to be persuaded to come to the bargaining table to give up such trade secrets.

“What happens when it turns out that the U.S. can’t actually deliver the information that is critically important to implementing the inventions?” Pooley asked. “This will be seen as another failure by the U.S. and other rich countries to keep their promises.”

Unlike other forms of intellectual property, trade secrets are rarely clearly defined anywhere before a lawsuit begins, making it critical for counsel for defendants to know what exactly was allegedly stolen. But at such an early stage in the litigation, even overbroad or ambiguous claims of trade secrets require motions seeking clarity, not pre-discovery victory, intellectual property attorney James Pooley of James Pooley PLC said.

“My impression was the real lesson of the case is ‘Don’t try to challenge the sufficiency of a trade secrets identification with an early motion for summary judgment,’” said Pooley, who focuses on trade secrets cases and practices in California, where the case originated.

ETC’s summary judgment motion “put all its marbles on a risky maneuver, when it could have made a lower risk procedural attack,” he said.


Pooley said he could see how one could worry the decision takes the decision on what constituted a viable trade secret claim out of the hands of judges and hands it to a jury. But that reading takes the decision out of its context of a pre-discovery summary judgment motion.

“I think that’s a superficial and strained reading,” Pooley said. “A fair reading is that judges decide whether you’ve rung the bell enough to go forward, juries decide whether you’ve proved the case.”

WIPO and the other agencies may sound like obscure bureaucratic outposts, but they help shape standards and rules for global commerce. WIPO logs 250,000 patent applications every year, including more than 55,000 from the United States, and it’s supposed to keep them secret for 18 months until they’re published. The director general “exercises control over every aspect of WIPO’s operations,” according to James Pooley, a former WIPO deputy director general.

"....Based on evidence collected and presented in the civil trial, which started with a bang but ended prematurely with a whimper, Levandowski definitely took the files at the heart of the charges. But the case, the first one by a new corporate-fraud strike force in the northern district of California, is not as open and shut as the government would like it to sound.

“[A criminal case] has a much higher bar,” said James Pooley, a Silicon Valley attorney who specializes in intellectual-property law, adding that the government has to prove that what Levandowski took with him was “a trade secret, that it was valuable, and it was stolen, and you have to prove all that without a reasonable doubt.”

Eric Goldman, a professor at Santa Clara University School of Law, and Pooley pointed out that the government is going to have to prove that Levandowski downloaded the documents with intent to do harm to Waymo, that he believed these were trade secrets and that he intended to misuse them......."

"...Levandowski is a standout among an elite cadre of engineers with expertise in autonomous driving, which is widely considered the future of the auto industry. In 2004, he was part of a UC Berkeley graduate student team that created a self-driving motorcycle to compete in early federally sponsored races. He went on to found a series of companies related to autonomous vehicles, some of which were acquired by Google and later by Uber.

“For a guy who was so smart, the way in which he (allegedly) behaved here was really dumb,” said James Pooley, a Menlo Park lawyer specializing in trade secrets.

In Silicon Valley, where job-hopping is almost obligatory, the case underscores why companies “have to be sober and clear-eyed about the risk you face when you hire someone from a competitor in a fast-moving field where there are a limited number of very knowledgeable people,” Pooley said...."

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