Seyfarth Shaw
Firm overview:
Seyfarth Shaw has a dedicated Trade Secrets, Computer Fraud, and Non-Competes Practice that is fully integrated with the international employment, IP, cybersecurity, and data privacy teams, providing clients with holistic, business-oriented counsel across jurisdictions.
The firm is regularly retained in cross-border disputes for clients that operate globally, in industries including technology, life sciences, financial services, and manufacturing. Recent highlights include achieving a significant US trade secrets victory safeguarding proprietary electric vehicle technology, valued in the billions.
Seyfarth is also a trusted advisor on trade secrets matters outside of dispute resolution, and works closely with clients to improve their internal processes for protecting confidential information. This includes hosting client workshops on trade secrets and writing legal updates on critical issues such as the FTC non-compete ban. The team also provides trade secrets audits and investigations, supported by experts in eDiscovery and digital forensics.
The team’s thought leadership contributions on the subject include filing an amicus brief on behalf of the Society for Human Resource Management (SHRM) in response to the FTC’s proposed non-compete rule, and producing a legal update on the topic that was the most engaged client alert in firm history.
Team overview:
Michael Wexler, national chair of the Trade Secrets, Computer Fraud and Non-Competes practice group, is regularly called upon by Fortune 500 companies for representation in business-critical trade secrets matters. Based in Chicago, Wexler’s courtroom victories include one of the largest settlements in the US in 2024 involving EV source code, and he has argued precedent-setting cases before the Ninth Circuit.
Also leading the practice is Katherine Perrelli (Boston), a nationally recognised thought leader on restrictive covenant law who is known for handling high-profile trade secrets litigation.
Another notable member of the team is Dawn Mertineit (Boston), who co-edits Seyfarth’s Trading Secrets blog and regularly handles multijurisdictional matters involving restrictive covenants, trade secrets, and whistleblower defence.
The firm added to its trade secrets capabilities in February 2024 with the addition of Gary Friedman in the New York office, who joined from Weil Gotshal and has over three decades of experience in complex trade secret and restrictive covenant matters.
Key matters:
- Panda Express: Arbitration
Seyfarth represents Panda Express, the US’s largest family-owned Chinese restaurant with over 2,000 stores globally. The team works with the client on IP matters including trade secret and non-compete transactional and litigation matters.
Seyfarth recently represented the company in a contentious breach of contract dispute with a vendor involving confidentiality, software, and exclusivity issues in which the vendor sought over $100 million. In 2023, the vendor amended its arbitration demand to allege trade secret misappropriation. The parties participated in an arbitration hearing in October 2023, followed by a post-hearing briefing.
The arbitrator issued a decision in Panda’s favour on the majority of the vendor’s claims, and ruling that based on the vendor’s rejection of Panda’s reasonable offer to compromise before the arbitration hearing, Panda was entitled to the majority of its attorney’s fees—thus resulting in a final award to Panda of millions of dollars.
Partners Dawn Mertineit (Boston), Kevin Woolf (Boston) and Steven Richman (Atlanta), associate Sierra Chinn-Liu (Los Angeles), and counsel Joshua Salinas (Los Angeles) make up Seyfarth’s team.
- Stryker: Trade secrets lawsuit
In July 2020, Howmedica, a subsidiary of Seyfarth client Stryker, filed suit against a former Stryker managerial employee in the District of New Jersey, alleging breach of contract, breach of fiduciary duty, unfair competition, and misappropriation of trade secrets.
Stryker alleged that the former employee violated contractual and common law duties by working for a competitor while at Stryker and afterwards used Stryker trade secrets to aid in improper competitive activities against Stryker including information regarding business plans, pricing, product characteristics and more. The matter settled favourably in 2024.
Partners Michael Wexler (Chicago) and Robyn Marsh (Chicago) handled the matter.
- Procon Pacific: Temporary restraining order
The team successfully defeated a motion for a temporary restraining order on behalf of client Procon Pacific in a case filed by Commercial Bag Company against a former executive and Procon in Illinois. The case involved allegations that the former executive had breached his non-compete agreement and fiduciary duties, and committed fraud, while Procon was accused of tortious interference and unjust enrichment.
Seyfarth’s team highlighted certain errors in Commercial Bag’s case and argued that the former executive’s non-compete agreement was void. The court found these arguments compelling, ruling that there was no enforceable contract, and Commercial Bag had no ascertainable rights or likelihood of success. The case was a decisive victory for Procon.
Partner Michael Wexler led the team which also included associate Bessie Fakhri (Chicago).
Clients:
Baker Hughes Oilfield Operations, Capstone Logistics, JWE, Karma Automotive, Kelsey-Seybold Medical Group, Korn Ferry, LG, Lonza Houston, OnPrem Solutions, Panda Restaurant Group, SeneGence International, Stryker Corporation, US Foods, Whittier Trust Company
