This is a detailed analysis of the firms in Band Three.

Hello, and welcome to Global Trade Secrets. Here, you’ll find what we believe to be the first genuine global ranking of law firms for trade secrets, reflecting the fact that at the sharp end, trade secrets are cross border, complex and high value. Editor Baron Armah-Kwantreng has spent months wading through submissions, talking to the market and developing an understanding of how it works in order to produce rankings that we feel are robust and credible, but more than that, extremely useful for corporate counsel who find themselves with a trade secrets challenge.

Bird & Bird

Overview:

A client describes Bird & Bird’s “absolutely stellar” trade secrets advice as “psychological comfort on such important and sensitive matters” and “substantive advice where we need it”.

The firm’s trade secrets offering combines an international legal practice of 17 dedicated partners across the UK, Finland, Spain, Italy, Belgium, France, Netherlands, and Germany with OXYGY, an innovative in-house consultancy providing global advisory services. Helsinki-based partner and client favourite Tom Vapaavuori, who wrote the leading trade secrets text on Finnish law, and Brussels-based Domien Op de Beeck, jointly manage the pan-European team. City partner Robert Williams, co-head of the firm’s IP group, is recognised as a go-to veteran in the field and has been the co-author of the UK chapter of Thomson Reuter’s “Trade Secrets Throughout the World” for several years.

Key Matter:

Celgard v Shenzhen Senior Technology Material Co ([2020] EWHC 2072 (Ch))

In its first decision to consider the Trade Secrets Regulations in UK law in July 2020, the Court of Appeal upheld the decision of the High Court to grant an interim injunction under the Regulations to prevent the import of allegedly “infringing goods” into the UK pending trial.

The application was brought by Celgard, a US company, represented by Bird & Bird London IP partners Patrick Kelleher and William Smith, against a Chinese company, Shenzhen Senior Technology Material Co. It concerned the proposed importation into the UK of highly engineered ‘separators’ for use in lithium-ion batteries. Celgard asserted that Senior’s battery separators had been developed using trade secrets and confidential information misappropriated by Dr Xiaomin Zhang, an ex-Celgard employee and current Senior employee.

Celgard obtained a pro tem interim injunction at an ex parte hearing before Justice Mann in May 2020. The injunction continued through to trial following an inter partes hearing before Justice Trower in July 2020.

Bird & Bird partner Tom Vapaavuori advised client Nokian Tyres in Finnish proceedings from 2011 to 2020 in a Supreme Court ruling upholding the conviction of former employees and a subcontractor on allegations of trade secrets infringement. Tens of thousands of records containing Nokian Tyres’ business secrets on factory technology and product development were used by rival the Black Donuts Engineering group of companies.

Eight defendants received suspended jail sentences and Black Donuts Engineering was fined €300,000, €537,000 in proceeds of crime forfeiture to the state, and €600,000 in legal costs to Nokian Tyres. The case is Finland’s largest trade secrets case and is sizeable on a European scale. “We are happy a decision has been reached and all defendants have been convicted,” said Hille Korhonen, president and CEO of Nokian Tyres.

Clients:

Celgard, Nokian Tyres.

Freshfields Bruckhaus Deringer

Overview:

Freshfields Bruckhaus Deringer, a “big litigation firm with a good European network”, has trade secrets practice principally in the UK, Germany, the Netherlands and Austria, and the United States. Work comprises three key strands: commercial collaborators; former employees; and theft of trade secrets, which is increasingly cybersecurity/data-related. The work is typically led by the IP group collaborating with employment lawyers and commercial litigators. Key lawyers include: UK: Christopher Stothers (“a good London IP lawyer”), Laura Whiting, Paul Abbott, Germany: Frank-Erich Hufnagel, Wolrad Prinz zu Waldeck und Pyrmont, Matthias Koch, Norbert Nolte, Tobias Timmann, Netherlands: Rutger Kleemans, Jelle Drok, Austria: Lutz Riede, Matthias Hofer, United States: David Livshiz.

On the non-contentious side, the team has been advising globally leading industrial and tech businesses on the implications of the EU’s new digital legislation on trade secret protection, such as the EU’s Data Act and the Digital Services Act.

The firm regularly publishes on trade secret protection, such as Riede, Timmann and Hofer on the EU chapter on trade secret protection in “Getting The Deal Through—Trade Secrets in the European Union”. At a recent AIPPI Congress, the UK national group on trade secrets was led by Stothers and Whiting, and the German group by Prinz zu Waldeck und Pyrmont.

Key Matter:

Freshfields acted for Heraeus enforcing trade secrets in its bone cements action against Zimmer Biomet. Bone cements are used in hip, knee and other joint replacement surgery. Related litigation was pursued across Europe and in the United States, relating to conduct dating back well over a decade. Zimmer Biomet forced Heraeus to litigate the complex case on a country-by-country basis, with both sides seeking to maximise the strategic opportunities that presented. The technical issues include whether the trade secrets were ascertainable from public materials and/or obtainable by reverse-engineering of Heraeus’s products. The case was heard at the Court of Appeal at an interim stage (Zimmer Biomet ultimately abandoned the appeal before a hearing) but settled in the UK before trial in March 2020, and globally in 2022.

Goodwin

Overview:

Goodwin has a comprehensive, technology-focused trade secret and employee mobility practice. The team comprises intellectual property, employment law, privacy and cybersecurity and business litigation lawyers. It represents cutting-edge companies, entrepreneurs, investors and startup founders facing critical issues and disputes in innovation hubs around the world. Clients include employers and employees in trade secrets and employee mobility matters.

Goodwin lawyers advise clients on the identification of trade secrets and other protectable information, and the establishment, maintenance and enforcement of programmes to protect this information. The firm is active in fast-paced litigation procedures and deal diligence, to identify risks and resolve trade secrets ahead of transactions.

Neel Chatterjee is identified by peers as the go-to lawyer at the firm. He is “respected by judges and has a great reputation”. He brought “strategy and judgement” in representing Anthony Levandowski, the engineer at the centre of the complex intellectual property dispute between Google/Waymo and Uber related to self-driving car technology.

Morgan Lewis & Bockius

Overview:

Morgan Lewis is a “good full-service law firm” with a Trade Secrets, Proprietary Information and Non-Competition/Non-Disclosure Agreements group that works with clients to implement trade secret policies, “invention”, post-employment non-competition and other agreements. The team provides clients with counselling and transactional trade secrets advice. In disputes the firm pursues litigation in US federal courts with respect to ex parte applications for an order providing for the seizure of property to prevent the propagation or dissemination of the trade secret.

The team also routinely conducts trade secret audits and designs protection programmes via confidentiality agreements to protect employers and others.

Morgan Lewis lawyers also works with clients to design and implement initiatives to enhance employee longevity and loyalty. These programmes may include stock option and equity programmes, along with appropriate restrictive covenants. Seth Gerber is seen as a leading lawyer at the firm.

Key Matters:

Gerber obtained a dismissal with prejudice of claims for misappropriation of trade secrets against a Chinese telecommunications company on the grounds that the plaintiff did not plausibly allege a conspiracy.

He also obtained a preliminary injunction against a sales engineer and competitor in the aerospace industry prohibiting the defendants from any improper use or disclosure of confidential, proprietary, or trade secret information.

Ropes & Gray

Overview:

Ropes & Gray “is a sophisticated firm with global reach” deploying 1,500 professionals spanning the US, China, Japan and South Korea. Collectively, Rope’s attorneys have handled more than 100 trade secrets investigations. Ropes was one of the first US law firms granted an ex parte seizure order under the DTSA.

The trade secrets team comprises four dedicated professionals in Washington DC, Boston, Silicon Valley and New York. Ropes & Gray’s intellectual property, labour and employment, government enforcement, business and commercial litigation, data, privacy and cybersecurity, and eDiscovery groups collaborate on intellectual assets protection. Team leader Peter Brody led an arbitration trial team that won a complete defence victory and US$4.5 million in attorney’s fees for semiconductor wafer maker IQE in a case brought by Solar Junction. Silicon Valley IP litigation partner and trade secrets lawyer David Chun’s successes in trade secret cases for industry leaders include Samsung Electronics.

Key Matter:

Ropes & Gray represents Exactech and its subsidiary XpandOrtho in a dispute against Zimmer Biomet Holdings involving multiple allegations, including patent infringement, misappropriation of company trade secrets, and unfair competition. Zimmer filed patent applications with XpandOrtho’s technology that it had access to via NDA following a proposed but aborted acquisition.

Ropes’ Southern District of California suit sought permanent injunctive relief to bar Zimmer from using or disclosing XpandOrtho’s trade secrets, confidential information, and copyrighted works and seeking ownership of innovations derived from and/or related to XpandOrtho confidential information and XpandOrtho trade secrets, among other relief. The court has denied Zimmer’s motion to dismiss, and all counts remain pending. Counter litigation is also ongoing.

Clients:

Bain Capital, Gillette, IQE, Exactech, Motorola.

Simmons & Simmons

Overview:

“Leading employment practice and IP litigator” Simmons & Simmons represents big-brand clients on big-ticket secret litigation with a focus on life sciences, fintech and TMT. Based in the UK, Germany, Netherlands, France, Italy and China, the team has acted on many of the largest, most complex trade secret cases in recent years. Examples include a Dutch Supreme Court element of multi-jurisdictional Zimmer Biomet v Heraeus, id-Technik v Dutchclamp: three parallel trade secret infringement cases before three different German Courts and one of the first German Trade Secret Act cases, and Boston Scientific v Nevro: a hard-fought case, in different jurisdictions between medical device companies.

Priya Nagpal, an IP litigator with 20 years of experience on multi-jurisdictional, technology patent and trade secrets IP disputes, leads the trade secrets practice in the UK. Stefania Bergia and Giulio Enrico Sironi are involved in significant matters for Sulbana in Italy and George Chan runs an ongoing trade secrets test case in China. The core international trade secrets team comprises up to 62 lawyers across six offices. The team is complemented by an integrated team of patent attorneys and trademark attorneys. Advising global players on complex IP and technology projects, complemented by antitrust, employment, data compliance, funds, corporate and tax disciplines enhances the firm’s offering.

Key Matter:

A Simmons team of IP, dispute resolution and labour law lawyers defended electronic cable clamp maker Dutchclamp in three parallel trade secret infringement cases before three different German courts. Claimant, id-Technik, alleged that a previous employee was using id-Technik’s confidential supplier information at Dutchclamp. The case was one of the first trade secrets cases under the April 26, 2019 German Trade Secrets Act (GeschGehG). It is an example of the added complexity in cases under the Act with multiple defendants given the provisions on the competence of different courts. Proceedings were split between two Civil Courts (Arnsberg and Düsseldorf) and a Labour Court (Mannheim). Simmons achieved full dismissals and withdrawals of all three actions.

Clients:

Zimmer Biomet, Boston Scientific, Dutchclamp, Qube Research & Technologies, Time Base Technologies/GoodNotes, Sulbana, Roxtec, Flextech, Vegitalia, Tarkett.

Main rankings page