Diana Szego Fassbender

Senior Associate

Washington, D.C.


Read full biography at www.orrick.com
Diana Szego Fassbender has significant experience in a broad array of intellectual property matters, including patent, copyright, and trademark actions.

Ms. Fassbender regularly represents international clients, including particularly businesses and organizations in Asia and Europe, on a range of IP matters. She works closely with clients to develop innovative and cost-effective case strategy to favorably resolve litigation or achieve other legal objectives.

Ms. Fassbender has been involved in all phases of litigation, from inception through trial and appeal. She regularly litigates complex multi-defendant, multi-patent district court infringement actions and Section 337 Investigations in the International Trade Commission. Ms. Fassbender also is experienced in representing clients in trademark disputes, such as trademark infringement cases and domain name arbitrations under the Uniform Dispute Resolution Policy. She also provides advice on international trademark prosecution and branding strategy, and often works with emerging companies in the technology sector on trademark and branding issues. Additionally, Ms. Fassbender has experience in intellectual property issues surrounding the Internet, such as pursuing actions under the AntiCybersquatting Consumer Protection Act, and drafting terms of use and other similar agreements governing content for website operators.

Posts by: Diana Fassbender

Senate Judiciary Committee Creates IP Subcommittee to Combat IP Theft

Last week, the United States Senate Judiciary Committee announced the creation of a new subcommittee on intellectual property.  The IP subcommittee will address a range of IP issues, including theft by state actors such as China.  The announcement of the subcommittee comes in the wake of increasing tension over trade with China and shortly after the Department of Justice announced criminal charges against China’s Huawei Technologies for alleged trade secrets theft. READ MORE

Federal Circuit Illuminates Right to Disgorgement as Remedy for Trade Secret Misappropriation

The Federal Circuit recently issued an opinion, Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., that addressed several interesting issues impacting the calculation of damages in trade secret actions.  Perhaps the Court of Appeals’ ruling of greatest consequence involved its determination that there is no Seventh Amendment right to a jury decision on disgorgement of profits – a remedy also often commonly described as “unjust enrichment.”  The Federal Circuit instead ruled that the calculation of disgorgement damages is for the trial court to decide after making findings of fact and conclusions of law.  If the decision is extended by other federal courts, it could have wide-reaching implications for claims under the Defend Trade Secrets Act, which allows for unjust enrichment damages as a remedy for misappropriation of trade secrets. READ MORE

PILLOW TALK: A Threat to Trade Secrets?

It turns out that, even in romantic relationships, some things are best kept secret.  On July 7, 2017, Teva Pharmaceuticals USA, Inc. filed a complaint in the Eastern District of Pennsylvania alleging that a former executive disclosed confidential information to a romantic partner who happens to be an executive of one of Teva’s direct competitors. READ MORE

“It’s a Free Country, Right?” Court Declines to Enjoin Ex-Free Country Ltd. Employees From Contacting Customers on Purloined Contact List

Within days of each other, your clothing company―Free Country Ltd.―loses two employees who decamp to a rival to set up a competing apparel line.  You discover that just before leaving, they transferred some 50,000 documents to a personal account—customer orders, your master contact list, and product design information.  Incensed, you file a trade secrets lawsuit and seek an injunction prohibiting the thieves from soliciting your customers.  Their defense amounts to, “so what if we took the documents―it’s a free country!”  Easy win, right?  Wrong.  These are the facts of a recent trade secrets lawsuit in the Southern District of New York, in which the court denied the plaintiff’s request that its former employee defendants be prohibited from soliciting plaintiff’s customers. READ MORE

Navigating Non-Competes When a Worldwide Presence Is the New Norm

Businesses that compete globally are once again reminded of the need to avoid overreaching when requiring employees to sign non-compete agreements.  Earlier this year, the Court of Appeals for the Eighth Circuit affirmed a ruling that a non-compete agreement was unreasonable on its face and thus enforceable because it imposed a blanket prohibition on the employee’s ability to seek employment of any kind with a competitor worldwide.  While the Eighth Circuit recognized that non-compete agreements had been upheld in the past despite containing no geographic limitations, the court distinguished those agreements on the basis that they contained narrowly circumscribed prohibitions.  The Eighth Circuit’s analysis provides a valuable “lesson learned” for businesses crafting or considering an effective non-compete. READ MORE

We Have Your Data. Pay Up or Else…

You wake on a Tuesday morning expecting to have an average day at work.  You are skimming through the emails that came in while you were asleep, when you notice an email from one of your employees.  He is not only giving his resignation, but is also, more importantly, demanding a ransom in exchange for not disclosing company trade secrets and other highly confidential information.  What do you do?
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