March 20, 2024 Virtual CLE: Trade Secrets for Patent Lawyers

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Topic: Trade Secrets for Patent Lawyers: Implementing an Effective Trade Secret Strategy to Maximize the Value of Your Intellectual Property Portfolio

 

Trade secrets can add value to a company’s IP Portfolio and reduce prosecution costs associated with protecting a company’s innovation exclusively through patents. This CLE will explore when protecting a company’s innovation with trade secrets makes sense and effective methods for protecting those trade secrets.

 

CLE: Approved for up to 1.5 Credits of CLE

 

About Our Presenters:

Amelia Sargent. A deep thinker and intuitive strategist, Amelia Sargent brings the best of academia’s rigor and curiosity to her complex commercial litigation practice, with an emphasis on trade secrets and business disputes. Benchmark Litigation has named Amelia a “Litigation Star” for 2022-2024 and included her on their 2021 “40 & Under Hot List.”

 

Amelia’s thirteen years of trial and appellate experience includes stand-up roles at multiple trials, appellate briefing and argument before the Ninth Circuit, and three Supreme Court amicus briefs. Clients turn to Amelia for her steady judgment and her ability to weave the law and facts together into a compelling—and ultimately winning—narrative.

 

Amelia’s recent matters include:

• Orchestrated strategy for the damages phase of “one of the five big healthcare lawsuits” on behalf of AbbVie Endocrine, Inc. in a breach of contract case against Takeda Pharmaceutical Co. seeking $480 million in damages. At trial, Amelia presented two percipient witnesses on direct and second-chaired three other key percipient and expert witnesses. In the prior phase and trial, Amelia questioned or defended five witnesses, including cross-examining both key executive corporate witnesses, resulting in a liability ruling for the client.
• As lead counsel defending nine executives and employees in arbitration, Amelia leveraged her e-discovery and forensic expertise against a “Biglaw giant” to successfully resolve allegations of trade secret misappropriation and related torts involving the formation of a new start-up after her clients resigned from a competitor company.
• Briefed, argued, and won simultaneous motions for summary judgment, and a subsequent Ninth Circuit appeal, on behalf of a Korean LED manufacturer, winning $1m+ and defeating $16 million in cross-claims brought by a reseller.
• Drafted an amicus curiae brief on behalf of university professors on international comity issues before the United States Supreme Court in Republic of Hungary v. Simon (No. 18-1447) and Federal Republic of Germany v. Philipp (No. 19-351).

 

Amelia also represents nonprofit mission-driven organizations on a wide range of matters, including Title IX matters. Clients value Amelia’s ability to balance litigation goals with the values of mission-driven organizations and the communities they serve. Amelia also regularly publishes and presents on art law topics, and teaches “Art and the Law” at the University of California College of Law, San Francisco (formerly UC Hastings College of Law).

 

Prior to joining Willenken, Amelia practiced at Munger, Tolles & Olson LLP. She has a Ph.D. from the University of California, Berkeley in Comparative Literature.

 

Ashley Kirk has almost twenty years of experience in all aspects of intellectual property procurement, monetization, and enforcement strategies. During her career, Ashley has participated in the prosecution of over 750 patent applications and hundreds of trademark applications in the U.S. and abroad.

 

Ashley has extensive experience representing clients before the U.S. Patent and Trademark Office (USPTO) and various U.S. District Courts, and at the appellate level. She works closely with members of the firm’s intellectual property litigation practice to provide clients with powerful, comprehensive strategies for protecting their intellectual property in their chosen markets and with winning results at trial.

 

With a bachelor’s degree in engineering, Ashley has represented clients across a range of dynamic industries covering various technologies, such as: semiconductor manufacturing, telecommunications, medical device manufacturing, oil and gas logging, oil field services, aviation, defense, consumer goods, retail, finance, entertainment, software, optics, and higher education. Her clients have included global companies, public institutions, and start-ups. Ashley’s experience representing a diverse client base, coupled with her extensive knowledge of the nuances of practice before the USPTO, allows her to efficiently evaluate claims and develop enforcement and defense strategies to fit the specific needs of each client.

 

Ashley has litigated numerous intellectual property matters. She has assisted with inter partes reviews before the Patent Trial and Appeal Board and with trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. She has also played a key role in: patent re-examination proceedings, defensive invalidity and non-infringement opinions, drafting and reviewing of pleadings, claim construction and invalidity contentions, participating in witness depositions and trial, and negotiating intellectual property-related settlement agreements.

 

Prior to joining Willenken, Ashley was with the Palo Alto office of WilmerHale.