Often companies are faced with a dilemma in protecting their IP—should the company disclose its IP to the world and seek a patent that will protect its IP for a set number of years? Or, should the company keep the IP a secret perpetually and protect it through state and federal trade secret laws? The answer is typically not one or the other; but, instead, a complex combination of the two. This article outlines a few thorny issues that can come up when balancing these two types of IP protections: READ MORE
Cathy Lui concentrates on trade secrets litigation, representing both plaintiffs and defendants in the tech, financial services, and retail industries. Cathy has a particular focus on obtaining and defending against temporary restraining orders and preliminary injunctions under exigent circumstances in fast-paced trade secret actions.
Her practice also includes trade secrets counseling and investigations on joint ventures, third-party vendor relationships, and emerging technology to help minimize the risk to companies. Bloomberg recently quoted Cathy regarding the risk on joint ventures. Cathy has significant experience in actions arising from the Defend Trade Secrets Act (DTSA), which created the first federal civil misappropriation of trade secrets claim in May 2016. Cathy has helped shape DTSA law on behalf of her clients through her involvement in some of the earliest DTSA litigation. Many of her trade secrets cases involve parallel criminal proceedings. For her achievements, Legal 500 recognized Cathy as a "Next Generation Partner" in trade secrets in 2019 and 2020. The National Asian Pacific American Bar Association also recently honored Cathy as a 2019 Best Lawyer Under 40. This annual list recognizes individuals within the APA community who have achieved prominence or distinction in their field and demonstrated a strong commitment to the APA community or civic affairs.
Cathy also engages in complex commercial litigation including employee mobility, breach of contract, and fraud cases. Her matters are often high-profile and industry-changing. She is currently representing Netflix in a novel employee mobility matter related to the use of fixed-term personal agreements with business executives; the matter is closely watched by the Hollywood and tech industries.
Cathy is an editor and contributing author of Orrick's trade secrets blog, Trade Secrets Watch, and regularly speaks and writes about trade secrets issues. Cathy currently serves as the Co-Vice Chair of the Trade Secrets Interest Group of the California Lawyers Association's (formerly of the California State Bar) Intellectual Property Section.
Cathy is very active within the firm and her community. Cathy currently serves as the Hiring Partner for the San Francisco office. In addition, she is very involved in diversity, equity, and inclusion ("DEI") initiatives. Orrick selected Cathy to serve as the firm's 2020 Fellow for the Leadership Council on Legal Diversity and as a firm ambassador for an innovative DEI initiative called Move the Needle. Cathy also co-led the Firm's Asian Pacific Attorneys Affinity Group for over three years and remains an active participant and mentor in the Affinity Group. In addition, Cathy previously served as the Co-Chair of the Asian American Bar Association's Judiciary Committee and continues to serve on the Judiciary Committee, which helps advance representation on the bench.
Cathy also maintains an active pro bono practice. Cathy's dedication to pro bono service was demonstrated by her work in an asylum merits hearing representing a Salvadoran religious activist persecuted by gangs in El Salvador. For her work on this matter, the Lawyers Committee for Civil Rights honored Cathy with the Father Cuchulain Moriarity Award. In addition, the Justice & Diversity Center of the Bar Association of San Francisco recognized Cathy as an Outstanding Volunteer in Public Service in 2014 through 2020 for her work with helping homeless clients remove outstanding warrants barring them from access to housing and employment.
Posts by: Catherine Y. Lui
Trade secret protections are a powerful tool for companies seeking to police international theft of their intellectual property. READ MORE
During the course of a trade secrets litigation, neglecting to preserve electronically stored information (“ESI”) may result in a finding of spoliation. In a recent Order issued by Judge Edward Davila (United States District Court, Northern District of California), two startups in the autonomous vehicle industry, WeRide and AllRide, learned that failure to adequately preserve ESI can also lead to terminating sanctions. READ MORE
COVID-19 has presented countless challenges, among them, the extraordinary need—and conversely, extreme shortages—of basic protective gear, ventilators, and personal protective equipment (“PPEs”) for healthcare professionals and essential businesses. With these challenges come a myriad of opportunities for companies to develop, engineer, and deploy novel ways to address the shortage. Possible solutions have included the federal government ordering, under the Defense Production Act, manufacturers to prioritize the manufacturing of essential medical products. As a result of high demand and a compelling need, manufacturers are stepping outside their established businesses and joining with new partners to quickly manufacture necessary products. READ MORE
Loyal readers are familiar with the DOJ’s “China Initiative,” launched in November 2018 to prosecute the theft of U.S. trade secrets by or for Chinese interests. Attorney General Barr reaffirmed the DOJ’s commitment “to combat the threat posed by theft directed and encouraged by the PRC” in an address at the China Initiative Conference last month. The DOJ’s campaign recently intensified with two new, gripping indictments. READ MORE
In the midst of nationwide efforts to reform the use of non-compete restrictions, a recent decision from the Eastern District of Pennsylvania illustrates the broad approach courts may take when enforcing restrictive covenants against high-level executives. READ MORE
You are a state-government contractor. You respond to an RFP issued by a state-government entity. In your bid proposal, you submit documents that contain your trade secrets. You do not get the contract, but you later learn that the state-government entity gave your trade secret information to your direct competitor who did get the contract. Do you have any options under federal or state trade secret laws to sue the state? READ MORE
Trade Secrets Watch has been covering the escalating economic tension between China and the U.S., including the U.S. Trade Representative’s investigation on China’s alleged IP theft under Section 301 of the Trade Act of 1974, dueling imposition of tariffs in March 2018, and the USTR announcement of products against which it proposed to impose 25 percent import duties. READ MORE
With the holidays behind us and our calendars flipped over to 2019, we’re taking a look back at some key trade secrets developments of the past year. Here are some of the big cases and legislative developments from 2018. READ MORE
Trade Secrets Watch previously had its eye on the U.S. Trade Representative’s investigation on China’s alleged IP theft under Section 301 of the Trade Act of 1974. As an update, late last month, President Trump announced the imposition of tariffs on as much as $60 billion worth of Chinese goods due to China’s alleged IP theft and intimidation tactics to obtain American technology. China, in turn, proposed tariffs of its own on 128 American products, valued at $3 billion. READ MORE