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Defend Trade Secrets Act of 2016: Congress Enacts Federal Civil Trade Secret Protections


Speaker(s): Koray J. Bulut, Michael G. Strapp, Robert D. Carroll
Recorded on: Jun. 2, 2016
PLI Program #: 185116

Rob Carroll is a partner in the firm’s Intellectual Property Litigation and Business Litigation groups. He has experience in complex commercial litigation and arbitration, appellate practice, and intellectual property litigation and counseling, including patent, copyright, trademark, false advertising and unfair competition matters. Mr. Carroll joined Goodwin Procter in 2005.

PROFESSIONAL ACTIVITIES

Mr. Carroll is a member of the Boston and American Bar Associations. He has provided pro bono legal services for asylum applicants from Africa, Asia, Europe and Latin America.

MEDIA

Mr. Carroll served as a faculty member in the Practising Law Institute’s (PLI) national Patent Litigation seminars in 2010 and 2011 in which he presented on “Recent Developments in Patent Law and Their Impact on Patent Litigation.” He also taught the PLI patent litigation briefing “Therasense: Reshaping the Inequitable Conduct Doctrine” in 2011. He is the co-author of “10 Simple Steps to Ensure Software Licensing Compliance,” IP Law 360 (2008) and “Electronic Trespass Requires Physical, Not Economic, Injury,” MediaLawLetter (2003), and author of “Connecticut Retrenches: A Proposal To Save the Affordable Housing Appeals Procedure,” 110 Yale L.J. 1247 (2001). From 2002 to 2004, Mr. Carroll edited revisions to Copyright Law: A Practitioner’s Guide (PLI 2001).

PROFESSIONAL EXPERIENCE

Before joining Goodwin Procter, Mr. Carroll was a litigation associate at the New York office of an international law firm. Before that, he served as a law clerk for then-Chief Judge Edward R. Becker of the U.S. Court of Appeals for the Third Circuit.

BAR AND COURT ADMISSIONS

Mr. Carroll is admitted to practice in Massachusetts and New York, and before the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Second Circuit, U.S. District Court for the District of Massachusetts, U.S. District Courts for the Southern, Eastern and Northern Districts of New York, and U.S. District Court for the Eastern District of Texas.

RECOGNITION

While in law school, Mr. Carroll served as Book & Case Notes Editor of the Yale Law Journal and as an Articles Editor of the Yale Journal of International Law.


Koray J. Bulut, a partner in Goodwin Procter’s Labor & Employment Group, focuses his practice on employment law, with an emphasis on litigation matters. He is experienced litigating cases in both state and federal courts, as well as before administrative agencies, in a wide variety of disputes, including employment discrimination, harassment, retaliation, unfair competition, enforcement of non-competes and other restrictive covenants, misappropriation of trade secrets, wrongful termination and breach of contract.

With more than a decade of experience collaborating with employers ranging in size from start-ups to large public companies, Mr. Bulut advises employers on all facets of employment relationships, including establishment of employment policies and contracts, classification of employees, family and medical leave, workplace investigations, risk assessment of harassment and discrimination claims, terminations, reductions in force and post-termination protection of trade secrets. He is experienced in conducting onsite sexual harassment and discrimination training for clients as well as in conducting training on internal investigations for human resources professionals.

Recognition

Mr. Bulut has been listed in Northern California Super Lawyers – which has recognized him as a “Rising Star” – from 2012 through 2015.

Professional Experience

Prior to joining Goodwin Procter, Mr. Bulut was a shareholder at Greenberg Traurig. Previously, he practiced at Wilson Sonsini Goodrich & Rosati for nearly a decade.

Mr. Bulut served as a judicial law clerk to the Hon. Mary E. Hannon of Minnesota District Court.

Mr. Bulut is a member of the Bar Association of San Francisco and the California Bar Association.

Mr. Bulut’s client work has included:

  • Defending, through trial, a Fortune 50 client in a closely watched pregnancy and discrimination and retaliation action brought by a member of the client’s executive team claiming over $40 million in damages.*
  • Winning summary judgment in a disability and age discrimination case on behalf of a large semiconductor client.*
  • Achieving a complete defense verdict in a breach of contract and fraud case brought by a founder and former chief executive against several venture capital firms and board members.*
  • Representing a large pharmaceutical company in its prosecution of misappropriation of trade secrets, unfair competition and breach of non-compete claims brought against a departing executive who formed a competitive joint venture.*
  • Obtaining an injunction for a start-up company preventing a founder and chief technology officer from working for a large public competitor or using the client’s trade secret information.*
  • Winning a motion to dismiss claims alleging theft of non-trade secret information, resulting in a strongly worded, and often-cited, federal opinion that the California Uniform Trade Secrets Act comprehensively preempts tort claims arising from theft of confidential information.*
  • Advising client through large-scale employee misclassification audit conducted by state and federal agencies.*
  • On behalf of a large Bay Area technology company, obtaining dismissals with prejudice of suits brought by both the alleged harasser and the alleged harassment victim for wrongful termination.*
  • Authoring California Supreme Court petition for review and appellate briefs in Reid v. Google Inc. relating to summary adjudication of age and disability discrimination claims. 50 Cal. 4th 512 (2010).*

*Denotes experience prior to joining Goodwin Procter.


Michael Strapp, a partner in Goodwin Procter’s IP Litigation Group, focuses on patent and trade secret litigation. He has been selected for inclusion in Chambers USA and recognized as a “Super Lawyer” for his work representing clients in intellectual property matters. In addition to patent and trade secret litigation, Mr. Strapp handles complex business litigation, including unfair competition, trademark infringement, false advertising and contract claims. He has also provided pro bono services to KIND (Kids in Need of Defense) and the Political Asylum/Immigration Representation Project.

Mr. Strapp is an authority on patent reform, including the 2011 America Invents Act, the most significant change to the U.S. patent system in several decades, and the Innovation Act and PATENT Act, bills pending before Congress designed to curb NPE litigation. Mr. Strapp has been featured in Corporate Counsel, GigaOM, Inside Counsel, Law360, American Lawyer, Executive Counsel and elsewhere. He is also the lead author of NPE Litigation: A Tactical Guide for Practitioners.

Mr. Strapp has substantial trial and appellate experience, representing companies in the software, computer security, telecommunication, semiconductor manufacturing, and medical device industries. He has served as lead counsel, including first-chair trial counsel, and he has argued before the Court of Appeals for the Federal Circuit.

Mr. Strapp represents companies of all sizes, from startup technology companies to large public companies, in all manner of intellectual property matters including patent licensing, patent portfolio development, and the protection and enforcement of intellectual property rights in state and federal courts. His representative experience includes:

Patent Infringement

  • Lead counsel and trial counsel for ePlus, a provider of enterprise supply management solutions. Mr. Strapp obtained a verdict of patent infringement for ePlus. After trial, the district court entered a permanent injunction and denied the infringer's request to stay the injunction. The district court later found the infringer in contempt of the injunction and awarded ePlus more than $18 million. Mr. Strapp was quoted in an article in The American Lawyer concerning the ePlus victory titled, “Goodwin Procter Scores for ePlus in Contempt Ruling.”
  • Lead counsel for Sonus Networks, a supplier of communication equipment including VoIP, video and Unified Communications through IP Networks. Mr. Strapp represents Sonus Networks in ongoing patent litigations in Massachusetts and California.
  • Lead counsel for Demandware, a software technology company. Mr. Strapp represents Demandware in ongoing patent litigation in Florida.
  • Lead counsel for Rite Aid, the third largest drugstore chain in the United States. Mr. Strapp represented Rite Aid in a patent litigation in Pennsylvania. The plaintiff agreed to dismiss all claims against Rite Aid with prejudice and with no money changing hands.
  • Trial counsel for Veracode, a cloud-based application security software company. Mr. Strapp obtained a jury verdict of willful infringement for Veracode. The jury also awarded Veracode damages nearly equal to all of the defendant’s infringing revenue.
  • Lead counsel for Secure EDI, an information technology company that offers solutions to enhance healthcare efficiency. Secure EDI and several other companies were accused of infringing patents relating to the creation of health insurance claims. Alone among the defendants, the plaintiff agreed to dismiss claims against Secure EDI with prejudice and with no money changing hands.
  • Lead counsel for Grandstream Networks, a manufacturer of innovative IP voice/video telephony and video surveillance solutions. Mr. Strapp has represented Grandstream Networks in patent infringement lawsuits and achieved critical pre-trial victories for the company, leading to favorable settlements.
  • Lead counsel for Veramark Technologies, a provider of telecom expense management solutions and managed mobility services. Mr. Strapp assisted Veramark in achieving a favorable settlement in a patent litigation.

Trade Secret

  • Counsel for Applied Materials, a provider of manufacturing solutions for the semiconductor industry. Mr. Strapp represented Applied in a trade secret misappropriation case against a company founded overseas by several former Applied employees. Applied defeated motions to dismiss based on lack of jurisdiction and overcame export control issues to obtain key evidence. The case settled on the eve of trial with the defendant agreeing to transfer ownership of several patents to Applied and to make a substantial payment to Applied.
  • Counsel for Persimmon Technologies, a provider of robotics for the semiconductor, data storage, LED, OLED, solar and flat panel display equipment markets. Persimmon was sued in federal court for trade secret misappropriation, patent infringement, tortious interference with contractual relations and unfair and deceptive trade practices. Within one month of the suit being filed, the plaintiff voluntarily agreed to dismiss all claims against Persimmon..

Appellate

  • Appellate counsel for NMT Medical, a maker of heart devices. Mr. Strapp secured reversal of a summary judgment infringement decision in NMT Medical v. Cardia (Fed. Cir. 2007).
  • Appellate counsel for Lucent Technologies, a telecommunications equipment company. Mr. Strapp obtained confirmation of an arbitration award against a patent licensee who had failed to pay royalties in Lucent Technologies v. Tatung (2nd Cir. 2004).

Mr. Strapp has been named by Chambers USA: America’s Leading Lawyers for Business as a leading lawyer in the field of Intellectual Property. He has also been recognized as a New England “Super Lawyer” by Boston magazine and was previously honored as a "Rising Star" by the same publication.

Before joining Goodwin Procter, Mr. Strapp was an associate at Kirkland & Ellis LLP in New York.

Mr. Strapp is a member of the American, Massachusetts and Boston Bar Associations and a member of the American Intellectual Property Law Association.

Mr. Strapp frequently writes and speaks on intellectual property topics across the country and around the world. He has been quoted in such media outlets as The American Lawyer and Corporate Counsel. His recent publications include:

  • NPE Litigation: A Tactical Guide for Practitioners,” (October 2014)
  • “Combating Trade Secret Theft Abroad Through Legal Action at Home,” Executive Counsel (April 2012)
  • “Preparing for Changes Under New America Invents Act,” Massachusetts Lawyers Weekly (November 2011)
  • “Options for Intellectual Property Litigation Against Foreign Entities,” BNA International World Intellectual Property Report (August 2010)

Mr. Strapp’s recent speaking engagements include:

  • “Injunctive Relief in a Post-eBay World,” 3rd Annual NJIPLA Electronics, Telecom and Software Patent Practice Update (November 12, 2013)
  • “Patentable Subject Matter: Has the Supreme Clarified a Murky Area or is More Guidance Necessary?,” Keynote Speaker at Patentable Subject Matter Symposium hosted by the Israel Bar Association (November 5, 2013)
  • “NPE Litigation and Patent Reform: Responding to Critical Changes in the Patent Landscape,” General Counsel Roundtable (May 9, 2013)

NPE Litigation Seminar
November 20, 2014
Menlo Park, CA

NPE Litigation Seminar
November 17, 2014
Boston, MA

Symposium on Patentable Subject Matter
November 5, 2013
Tel Aviv, Israel

"IP Issues Commonly Encountered in Contracts"
July 19, 2012

Practices

Education

J.D., 2002
Harvard Law School
B.A., 1999
Columbia University
(magna cum laude, Phi Beta Kappa)

Admissions

Bar

Massachusetts

New York

Courts

U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
U.S. District Court for the District of Massachusetts
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Southern District of New York