Practice Areas & Industries: Sunstein Kann Murphy & Timbers LLP


Patent, Trademark & Copyright Litigation Return to Practice Areas & Industries

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Our trial lawyers excel at all aspects of trial practice and are unwavering in advocating the interests of our clients. We have won multi-million dollar recoveries, obtained emergency injunctive relief, and successfully defended bet-the-company cases. Our deep knowledge of patent and trademark law, technology and science informs our litigation strategy to deliver the results that achieve our clients' business goals. We have had equal experience and success in bringing copyright matters to trial.


Sunstein Approach to Litigation


At Sunstein we approach litigation systematically. To this end, we:

  1. Identify at the outset a unifying concept of the case that lets us integrate the facts and legal theories into a cohesive presentation favorable to our client's position;
  2. Determine explicitly our client's objectives in the litigation;
  3. Develop a budget for the litigation to assure that staffing and other resources are wisely allocated to meet the requirements of the case;
  4. Prepare an issues outline and identify for trial all relevant facts and the witnesses, documents and demonstrative evidence necessary to prove those facts, as well as applicable legal principles of liability and damages;
  5. Build on these four steps to develop a strategy to promote maximum control over the "agenda" of the litigation and to prepare fully for trial; and
  6. Conduct the trial, where settlement on reasonable terms is not available, using intelligent staffing consistent with the strategic needs identified for the matter.


Experience has proven our approach to be effective in a wide array of litigation matters, including patent, trademark, copyright, trade secret and unfair competition cases, as well as commercial, contract, corporate, health care and employment disputes. We have found that rigorous application of effective litigation techniques results in settlement on favorable terms of the great majority of cases prior to trial. In addition, our clients are able to evaluate litigation at any given point with a reasonable estimate of both the costs and the risks involved.

The unifying concept of the case may be simple or complex, but it is essential for guiding discovery efforts, strategic initiatives, trial preparation, settlement discussions and trial. We strive to emphasize the strengths of our client's position, but also are careful to identify any weaknesses, and to work them into a coherent presentation of the case that still permits our client to prevail.

Determination of our client's business goals and objectives is similarly crucial to proper handling and effective results. One of our clients, for example, a defendant in a patent infringement case, sought to continue to sell the accused product but wished to minimize its litigation expense. While we believed the plaintiff's patent could be effectively challenged on validity grounds at the trial, substantial expense would be involved. We accordingly undertook a vigorous defense, but also identified strong claims against the plaintiff and countersued the plaintiff and its business partner for trademark infringement. Settlement negotiations ensued and resulted in our client obtaining a royalty-free permanent license under the plaintiff's patent and an agreement by plaintiff and its business partner to refrain from further use of the infringing trademark.

The issues outline provides an important tool for the lawyer to maintain control over a litigation, to identify necessary or desirable initiatives, and to promote efficient preparation for trial. In similar fashion, the litigation budget permits the lawyer and client to keep track of costs and to determine what resources will be necessary for any given event in the proceedings. The budget also permits the client to make a more informed business decision about the relative risks of the proceeding and about the desirability of any settlement offers.

Since litigation is a dynamic process that frequently entails unpredictable turns of events, strategic planning is, in our experience, a necessary part of the effort to exert control over the "agenda" of the litigation for the benefit of our clients. We have substantial experience both in launching and in responding to emergency requests for temporary or preliminary injunctive relief. Thus, in one case involving sophisticated computer software, we obtained during the first week of the litigation a preliminary injunction on behalf of our client prohibiting further sales by the defendant of the infringing software programs. After expedited discovery, we obtained partial summary judgment on liability for copyright infringement defeating the defendant's repeated efforts to have the injunction dissolved. At trial we obtained substantial damages for copyright infringement, and also prevailed on our claims of breach of contract and fraud, obtaining contract damages as well as punitive damages on the fraud claim.

The lawyers in our firm have collectively had extensive trial experience, both jury and non-jury, in courts throughout the United States. We believe in staffing cases as efficiently as possible and using associates at lower rates on work commensurate with their abilities. In addition, where a trial, or an emergency hearing, or a large case on an expedited discovery schedule requires many hands, we pride ourselves on the ability to assemble and apply the requisite resources. Just before Christmas, one of our clients was sued by a major corporation and ordered to conduct the equivalent of full discovery within two weeks. We assigned five lawyers and two paralegals to the various tasks of depositions, document discovery, preparation of briefs and affidavits and settlement discussions. We successfully deflected the plaintiff's effort to obtain a preliminary injunction and negotiated a settlement of the controversy on favorable terms for our client.

We have also delivered excellent results for our clients through alternative dispute resolution (ADR), a category that includes arbitration and mediation. Arbitration calls for having a dispute decided by neutral persons, either a solo arbitrator or a panel of three, and ordinarily results from the parties' pre-dispute agreement to arbitrate any disputes that arise. Mediation, by contrast, is a consensual enterprise that relies on a neutral person to help the parties negotiate a resolution of their differences. Arbitration is usually binding, while mediation produces a settlement only if the parties deem it mutually acceptable.

We find that the principal virtue of arbitration is speed, because the "private judges" selected by the parties are not burdened with the caseload of state or federal judges. Pre-hearing discovery and evidentiary standards are only slightly less stringent than in the judicial context, and the decision is every bit as final as that of a judge or jury. Consequently, we devote to arbitration all the strategic planning and creative energy that we do to bringing a case to trial.

Mediation, by contrast, is valued for achieving resolutions at a fraction of the cost of taking a dispute all the way to trial. Still, we believe that the same rigor that helps position the case for mediation should apply throughout the process. To make the most of mediation, it is essential to devise a strategy that assures its value. Can our client's goals be achieved in the spirit of compromise that characterizes mediation? If so, when is the right time to pause from litigation and try to mediate a resolution? Do we possess enough information to meaningfully assess the value of the dispute? Can the parties agree to some limited but focused discovery to reach this point?

A serious and assertive approach to the actual conduct of mediation is a key to its success. For all the relative informality of the process, it provides a golden opportunity to communicate directly not only with opposing counsel but with a principal of the opposing party (whose presence is generally required). Accordingly, we invest tremendous effort into educating both the mediator and the opposing party about the strengths of our case, so as to encourage settlement on favorable terms.

In our experience, the consistent and energetic use of the sound litigation practices outlined here enables us to provide our clients with the highest quality of representation. It promotes good client relations, in which we take great pride, and it produces effective results for our clients.

If you have any questions about litigation or would like to discuss the handling of litigation in the context of your business, contact a member of our Litigation Practice Group.


Sunstein Patent Litigation Strategy


We try cases. Trying cases is a cornerstone of our practice. Just as we deliver the broadest possible protection for our clients' inventions through adroit prosecution, so too we aggressively safeguard their rights by means of litigation. Half of our professionals are trial lawyers. We can mobilize in support or defense of time-sensitive motions for preliminary injunction, and also wage prolonged contests of the most complex patent matters. We efficiently staff each case and diligently craft a controlling strategy. Some examples of our successes appear in Patent Litigation Cases.

Start with a strategy. As we explain in Sunstein's Approach to Litigation, our attorneys devise a long-range game plan from the earliest stages of a suit. We will never merely file a complaint, or answer one, only to take a wait-and-see attitude. A clear strategy is essential for keeping our client's goals in focus through the myriad events and skirmishes of a patent litigation. Our strategy must be rigorous enough to distinguish between what will and what won't advance the cause, and nimble enough to seize unexpected opportunities.

Think ahead. Patent cases create a ceaseless demand for creative problem-solving. Before lowering the litigation boom on behalf of a patentee, we make as certain as possible that the patent is forearmed against predictable attacks and defenses. Our patent and trial lawyers will collaborate to draft, reexamine or reissue a patent to provide maximum coverage that can withstand the rigors of litigation. We try to repel foreseeable challenges to the validity of the patent by triple-checking that no action by the client or the inventor renders the patent vulnerable.

Work creatively. Our wins on behalf of our clients are based on the exhaustive amassing of evidence and the often painstaking identification of the clinching argument or defense. We succeeded in invalidating one opponent's patent by locating a highly obscure Japanese-language reference and showing that it anticipated the patentee's invention. In another defense, we achieved victory on the rarely successful basis of patent misuse, a doctrine that bars a patent owner from exploiting the advantages of a patent for anticompetitive purposes. By demonstrating that the patentee had tried to restrict its customers' ability to resell the patented product, we obtained a judgment that the patent could not be enforced against our client.

In a case in which we represented one of several alleged infringers, we advised our client to break from the other defendants who were intent on a joint strategy of positing a broad claim construction that would support invalidating the patent on grounds of obviousness or anticipation. Instead, we advanced a narrow claim construction, based on which we won a judgment that our client's products did not infringe.

In a case in which pretrial discovery pointed us toward mounting a non-infringement (rather than patent invalidity) defense, we switched our approach at the trial itself when, in his testimony, the inventor attributed far greater breadth to his patent than he had in his pretrial deposition. Rather than impeach him based on his deposition, our cross-examination went toward reinforcing the inventor's expansive construction of his patent. We successfully used his testimony to invalidate the patent based on obviousness and anticipation.

Team up with great experts. Vetting potential expert witnesses is a task we approach very seriously. In several cases, we have interviewed tens of candidates, checking their background, examining their publications, and questioning their references closely. Senior members of the trial team meet with the finalists to determine whose personality, communicativeness and other, more indefinable, qualities will connect best with the jury.

The thoroughgoing effort we dedicate to selecting the right expert witness has, we have found, paid for itself in successful outcomes for our clients at trial. Bromberg & Sunstein's representation of several top universities, and our professional and personal contacts with yet others, provide us with unsurpassed access to the leading lights in numerous technological fields. Verdicts can turn on our chosen expert's stature, credibility and simple knack for teaching. We could not have achieved many of our successes in patent-infringement trials without the support of our formidable experts.

By way of examples, when our client was accused of infringing a method for the manufacture of specialized carpeting, our successful defense was aided by the trial testimony of one of the world's foremost authorities on the performance of textile materials in the manufacture process. When we prevailed on another client's claim that its immunoassay-related patent was infringed by a competitor's pregnancy test kits, we relied on the report and testimony of an eminent Boston-area professor who had influential publications in the field.

Tell a strong story. Making the client's case to a jury is the acid test of the trial lawyer's art. Our firm speaks the language of science and technology, and we count among our attorneys mechanical engineers, aerospace engineers, electrical engineers, biochemists, physicists, and computer scientists. Our challenge is to make sure that the complexity of the technology and the disparate threads of trial testimony do not prevent us from presenting a compelling narrative that prompts the jury to weigh the evidence in a manner beneficial to our cause. We present a clear theme to help jurors give shape to the case.

We always seek out ways to communicate powerfully with the people who make up our juries. Because Americans increasingly expect that information will be offered in visually appealing ways, there is, for better or worse, an entertainment aspect to patent litigation. Our firm uses the latest and most effective trial-presentation software and hardware tools, and teams up with outside graphics experts to help stage our presentation with maximum vividness. We have also used mock juries to help craft our approach in major cases.

Extract maximum value. The value of successful patent litigation to a patent-holder only begins when we help procure a verdict that the defendant infringes. We are equally assiduous in the ensuing phase of litigation¿maximizing our client's recovery of damages. To this end, we dig up every piece of data that can boost the award, sometimes by tracking accused goods internationally. Securing a rich award also requires coordinating the written and oral testimony of top economics experts.

In one litigation, we pursued proceedings before a Hong Kong magistrate to identify the defendant's sales to a distributor of infringing products that were slated for resale in the United States. Our argument that the defendant had infringed our client's patent was so powerful that we obtained triple damages, a very rare outcome that was upheld by the Federal Circuit Court of Appeals.

Go get the evidence. Marshalling evidence can present logistical hurdles. In an infringement action against a major international corporation, we assembled a team of translators to extract valuable support for our case from Japanese documents and to help us take the testimony of the many Japanese-speaking witnesses. Adapting to cultural differences, we refined our customary deposition techniques to overcome witnesses' inclination to provide answers deemed acceptable to the group and to elicit personal testimony instead.

When long-range travel has threatened to drive up discovery costs in any given litigation, we have taken depositions by video conference when we feel they can substitute for face-to-face questioning.

Sheer doggedness is sometimes rewarded. After we were frustrated in obtaining a key statement from an uncooperative foreign witness, whose testimony in his homeland the federal court could not compel, we learned that he was planning a trip to Boston. We printed a photograph of the individual from a German website, and handed it to a constable who was able to recognize, and subpoena, the witness at Logan Airport. We procured the testimony.

Live to fight another day. Litigation is rightly the occasion for rethinking design and sales strategies altogether. Our clients who sell products internationally sometimes face competitors who are determined to use their domestic and foreign patents to slow our clients' global sales efforts. Even successful litigation defenses can amount to Pyrrhic victories, so we create a plan for averting the expense and distraction of litigation.

Thus, while defending any infringement lawsuit, we can combine our in-house engineering and litigation skills to guide clients in designing their products around competitors' patents. This is a complex project, in view of the often varying scope of such patents and the need to ensure that a design that avoids U.S. patents also gets around patents issued by other countries where our client does business. We also advise on the differing standards of foreign courts in adjudicating patent disputes. The outcome is freedom to resume global marketing without the inhibiting threat of suit.

By taking this approach, we have steered clients toward relatively inexpensive outcomes. We have experience too in achieving successful results in patent cases through alternative dispute resolution. In one recent example, we obtained through mediation a settlement agreement and consent judgment that provided valuable rights to our client. We secured an acknowledgment of the validity of our client's patents, favorable terms for assigning them, and the right, if the opposing party defaults in payment, to recover twice the balance then outstanding under the agreement.

Whether our trial lawyers are enforcing patents or defending against allegations of infringement, our extensive patent litigation experience and technical depth enable us to provide maximum protection for our clients' rights.

If you have any questions about patent litigation or would like to discuss the handling of patent litigation in the context of your business, contact a member of our Litigation Practice Group.


Sunstein Trademark Litigation Strategy


Our trial attorneys use the winning combination of daily experience with trademark law and aggressive litigation advocacy to define the key theories of the case necessary to achieve our client's goals. As a matter of course, we think creatively, putting ourselves in the shoes of our adversaries, developing factual evidence in a novel way, and exploring important but often overlooked aspects of the trademark law, all in furtherance of winning real and tangible victories in court and in settlement. In addition, the trademark rights of our technology-driven clients often depend on subtle distinctions between the technologies embodied in the products of our clients and their competitors. We put our technological depth to work for our clients in crafting winning trademark strategies.

Trademark cases have unique aspects that must be understood to achieve success. For example, the law entitles a trademark owner to seek preliminary relief, which if obtained, can end a case immediately by forcing a favorable settlement, and by forcing a defendant to immediately take the trademark owner's claim seriously. We have sought preliminary injunctions in numerous cases and by doing so have drastically reduced the cost of litigation by settling the case before or after obtaining an injunction. Trademark law also provides for a permanent injunction, which compels parties to consider exactly what a particular litigation outcome will require of them. This, like the preliminary injunction, often acts as a catalyst for settlement, and we aggressively use this approach to obtain favorable results for our clients.

We turn the tables on our opponents. Our firm took over representation of a party during the discovery phase of a trademark battle between two banks that had been using their trademarks since 1853 and 1897, respectively. Our client was in a defensive position when we entered the case. Using a key provision of the Lanham Act, the federal trademark statute, that had not been addressed by the parties, we were able to take the offensive against the opponent, arguing that our client had superior rights and demanding that the opponent cease all use of the mark. We used the same statute to put the burden on our opponent to prove its lack of knowledge of our client in 1897, the factual linchpin of our legal theory. Finally, not resting on our procedural advantage, we engaged an economic historian who painstakingly analyzed the trade press of the late 19th century to prove that our opponent had to have known of our client in 1897, a proposition the court accepted at trial. After the trial and while on appeal, the case settled, after which our opponent ceased use of the offending mark.

We focus our theories to achieve the client's goals. In a case involving a preeminent university and a locally prominent health care company, our university client was sued for a declaratory judgment that the health care company could continue to use, without control or oversight, the name of the much older university, as it had for over 30 years. We argued that an implied license governed the parties' rights, and that the university retained control and oversight over the health care company's use of the name. We extensively developed the factual record, and took the depositions of every living former president of the university and numerous persons involved in the formation of the health care company in the 1960s. We pressed infrequently litigated trademark principles to present a strong case that produced a settlement of the suit in which the health care company acknowledged our view that the university retained ownership rights in the mark as well as the right to oversee and control all uses of the name.

We strengthen our client's marks. Representing a renowned custom car designer and exclusive licensee of a famous mark for its cars, we forged an alliance with the owner of the mark, a major U.S. automobile manufacturer, to obtain an injunction against an infringer making knockoffs of our client's distinctive car designs and using our client's trademark. The infringer attempted to defend by claiming the mark and designs had been abandoned after 30 years of non-use, a charge we rebutted by relying on focused factual research (including promotional films found in the car manufacturer's archives), strong survey evidence, and a strategy of making certain that the infringer understood we intended to press the case through trial. At trial, we obtained not only an injunction but also a declaratory judgment that the mark was valid and protectable, rebuffing all the infringer's attacks. Our client went on to sell his business at a substantial premium, in no small part due to the rehabilitation of the trademark and designs, and the automobile manufacturer reintroduced the mark on a key model of its U.S. sports car lineup.

We use experts in creative ways. In another case we defended a national telecommunications company from charges of trademark infringement brought by an enterprise software concern. We engaged an MIT economist to analyze the differences between the products and markets of the litigants to show that use of the two trademarks did not confuse consumers as to the source of the products. We also engaged an expert to perform an internet survey whereby company executives in relevant markets were questioned about whether the two marks created confusion. As a result of our advocacy, the suit was dropped against our client.

We convince our opponents. We also used the Lanham Act to obtain extraordinary relief - including public retraction and a statement of regret - in a false advertising case for a client with an inventive device for preventing joint injuries. Our client's competitor, which dominated the market for similar devices, engaged researchers at a major California research university to compare the two products and then advertised that the research tests proved the superiority of its device. Through our firm's technology contacts, we engaged what even our adversary agreed is the leading expert in the field, who determined that the university study was fatally flawed. Well prior to the deadline for disclosing expert opinions, we used the expert opinion in a federal court mediation to stunning effect. In settlement of the case, our adversary withdrew its advertisements, and agreed to corrective advertising in which it disavowed the university study, identified our expert by name, and repeated his opinion that the university study "is not reliable and cannot sustain any of the claims" in previous advertising. The corrective advertisement apologized further, saying our adversary "expressly regrets" its comparison of the products, and asking consumers to "to not use" or "rely on any statements" in the earlier advertising.

We apply a worldwide strategy. In numerous cases we have defended clients against trademark attacks in foreign jurisdictions. It is often the case that although our client may have junior rights in a particular country, it actually has superior rights in the U.S. or another country. We have frequently been able to leverage these superior rights against the adversary to force it to drop its suit in the original jurisdiction, because we have made the adversary realize that a win in that jurisdiction means a loss elsewhere. By treating our client's trademark rights as a whole package, rather than isolated assets, we can strength the portfolio and protect clients from piecemeal attacks.

If you have any questions about trademark litigation or would like to discuss the handling of trademark litigation in the context of your business, contact a member of our Litigation Practice Group.

Our success in copyright litigation comes from our understanding the way copyright law is ever changing to keep pace with technological advances. Our extensive trial experience and facility with technology issues give us an edge in developing powerful copyright litigation strategies.


Sunstein Copyright Litigation Strategy


We know copyright. Our copyright practice continually confronts complex legal and technical issues. Our ability to devise focused, strategic direction for copyright litigation enhances the prospects for success at trial, in alternative dispute resolution, or in settlement. Copyright cases often turn on technical defenses and contain traps for the unwary. Our experience in this field assures our clients aggressive and informed representation, which can turn those potential hazards to advantage. In one case involving a wall mural in a university museum, we identified an important flaw arising from the plaintiff's improper use of a copyright notice under then-existing copyright law. This flaw, we successfully argued, injected the work into the public domain with the result that our client could not be liable for infringement. In another case, involving collectable figurines, we cited the legal doctrines of merger and scenes a faire in convincing our opponent that its copyrighted work was not protectable because the features it shared with our client's products were derived from nature, and were not original.

Copyright litigation is often expensive in relation to the value of the assets in contest, such as an academic article, short story, or piece of visual art, which may have commercial worth that is difficult to quantify. Even under these circumstances, successful copyright litigants can vindicate their rights by using the fee-shifting provisions of the copyright statute to obtain an award of attorney's fees. The statute also entitles a plaintiff to seek statutory damages in a fixed amount rather than proving actual damages which may amount to less. We are thoroughly immersed in copyright law, and advise our clients in ways that leverage this knowledge.

We understand the technology. Technology is second nature for our attorneys, many of whom have science and engineering backgrounds. Copyright litigation is often bound up with computer science and digital technology. We have represented clients in matters involving the protectability of source code, the interplay between the Copyright Act and shrink-wrap licenses, file-sharing, and the effect of recent legislation barring the circumvention of measures that control access to a protected work. Our attorneys have worked with leading experts to assess whether complex computer software is original and protectable by copyright or merely reflects common programming practice or functional requirements. We take pride in our ability to present the issues clearly and simply to a jury.

We work with the right experts. Our relationships with leading research institutions and universities are valuable resources in selecting the best expert witness for the case. The choice of an expert can be of paramount importance, and we address this challenge early in the litigation. Experts offer invaluable help in evaluating the strength of a copyright infringement claim and in lending focus to pretrial discovery. Their testimony can tilt the contest at both the summary judgment level and at trial. Such testimony may address such issues as probative similarity (that is, whether sufficient similarities exist between the works to infer copying) or the calculation of revenues and profits in assessing damages.

We think expansively. Our facility in all areas of intellectual property law has benefited our clients in copyright litigation matters. A recent success came in a case that originated as a trademark dispute. We identified a strong copyright claim based on the trademark plaintiff's creation of a derivative-work film based on our client's underlying work, and flipped our client's position from trademark defendant to copyright plaintiff. In a case involving CAD-CAM software used in the paper box industry, we combined IP claims (copyright infringement and trade secret misappropriation) with other commercial claims (breach of contract and fraud) to effectively advance our client's case.

We aim to resolve disputes without litigation. Before filing a suit for copyright infringement, we consider the pros and cons of a demand letter notifying the defendant of our client's claims. The letter can provide the basis for a claim of willful infringement, thus increasing damages. A demand letter is particularly valuable if it produces a favorable settlement for our client without the greater expense of litigation. A demand letter may not be advantageous, however, when the delay in awaiting the defendant's response may decrease the chances of obtaining injunctive relief, or when giving the defendant more time to prepare its defense (and to continue infringement) would outweigh possible benefits. While the risk that the defendant receiving a demand letter may initiate a declaratory judgment action in an unfavorable venue can be mitigated by careful crafting of the demand letter or other strategies, we are careful to consider this risk. When our clients are on the receiving end of demand letters, our knowledge of copyright law often enables us to efficiently dispatch such claims and reduce the possibility of litigation.

We know the forum and the possibilities. Copyright infringement is litigated in the federal district courts, where we have extensive experience. We try to steer cases to a jurisdiction and venue that puts our client in the best position, and we have particular experience analyzing jurisdictional issues in connection with the Internet. We consider whether the complaint should be accompanied by a motion for temporary restraining order (TRO), preliminary injunction and/or a seizure order, which is implemented by a U.S. Marshal and can be used to effect seizure of the infringing items. We have used such motions to shut down an infringer's business in appropriate cases. In one case, we filed suit in federal court in North Carolina and asked the court for an immediate hearing. Within days, we presented our case at a hearing in which the court issued a TRO (which later became a preliminary injunction) that prevented the opposing party from distributing the infringing product.

We aggressively conduct discovery. We have extensive experience in pursuing discovery in cases involving complex technology to get the information needed to pursue our client's claims or defenses. In a suit relating to computer software, we worked with experts to evaluate whether source code contained elements that were included because they were required by industry standards or otherwise were dictated by function. We have vigorously litigated protective orders regarding confidential information to ensure that our client's confidential and trade secret information is adequately protected.

We apply pressure through summary judgment. We always consider whether summary judgment is appropriate. Often the issue of what is protectable under copyright law may be decided on summary judgment and may result in early disposition of the case. Even if this procedure does not fully resolve the case, the court's rulings can narrow the issues to be litigated. Presenting the arguments to the judge early on can also be useful for framing the issues for future determination.

We persuade. Copyright litigation often involves both complex law and complex technology. It is all the more important that the issues for the jury be framed clearly and compellingly. Early on in every case, we develop a theme in order to present a persuasive story for the finder of fact. Our experience in presenting complex technical issues to a jury in a straightforward, convincing manner has delivered winning results for our clients. The consistent and energetic employment of the sound litigation practices outlined here provides our clients with the highest quality of representation.

If you have any questions about copyright litigation or would like to discuss the handling of copyright litigation in the context of your business, contact a member of our Litigation Practice Group.


Sunstein Trade Secret Litigation Strategy


We understand that a company's closely guarded ideas and data are often its most valuable assets. Trade secrets include any confidential information that has economic value or confers a competitive advantage by virtue of being kept secret. A small sampling would include processes, formulas, research data, product designs, software programs, financial data, laboratory notebooks, and lists of existing or prospective customers or suppliers - as long as they are valuable and as long as reasonable measures are in place to restrict access to individuals who have a legitimate need to know or otherwise have an obligation of confidentiality.

Trade secret cases commonly arise when an employee entrusted with confidential company information takes a job with a competitor. When someone gains unauthorized access to a trade secret, litigation is sometimes the only way to prevent use or disclosure. Time is often of the essence. Emergency relief can be essential to safeguarding the integrity of a company's trade secrets. By the same token, companies often face claims that they have come by their own products, processes or techniques through misappropriation of another's secrets.

In this context, Sunstein is particularly well equipped to be of service. We combine extensive experience in employment litigation with equally broad technical expertise. Our attorneys include mechanical engineers, aerospace engineers, electrical engineers, biochemists, physicists, and computer scientists. In the rush for relief that often occurs, these resources enable us quickly to determine our client's rights under any express or implied employment agreements. More important, we can efficiently assess the value of the asserted trade secret in the relevant industry and determine whether it is in fact unknown in the field, a critical capability for practitioners in this area of litigation.

Our representative activities include:

  • Obtaining injunctive relief against persons who had misappropriated our client's trade secrets
  • Defending against claims that our client's products or processes had been misappropriated from another company
  • Counseling companies how, through employment practices, contracts, and access restrictions, to safeguard their confidential information in order to qualify for trade secret protection
  • Advising companies how to conduct hiring to avoid facing misappropriation claims from prospective employees' former employers
  • Guiding individuals how to avoid liability for misappropriation when starting a new company or switching jobs


If you have any questions about trade secret litigation or would like to discuss trade secret litigation in the context of your business, contact a member of our Litigation Practice Group.


Litigation Pointers


Litigation fundamentals

On our website, you'll find information on both the general nature of litigation as well as specific types of litigation. We also offer insights on effective litigation strategies and alternative methods of resolving disputes. This material should be considered informational in nature, as it does not constitute legal advice. Please direct any specific questions to Sunstein's Litigation Practice Group.

  • Tools for litigation management
  • Patent litigation 101
  • Trademark litigation 101
  • Copyright litigation 101
  • Trade secrets 101


Services Available

Group Presentations
  Conference, "New Media and the Marketplace of Ideas", Boston University, October 26, 2007
Discussion on patents in relationship to the design community, lead by Bruce Sunstein, Wentworth Institute of Technology, 550 Huntington Avenue, Boston, October 4, 2007
Boston Patent Law Association Seminar, "Rule Changes for Continued Examination and Claims Practice", Boston, September 25, 2007