Implementing A Method of Suing for Theft of Patented or Publicly Known Secrets.

The Ad world tends to self-publicize events involving itself, such as the suit against WPP and JWT arising from an ad campaign for Microsoft’s Bing search service (they’re so cool, everyone in the club knows them by their initials). News reports suggested a patented method to produce a “program-intergrated advertisement” was allegedly infringed. Actually the suit began as a breach of an NDA against Mindshare, a subsidiary of WPP (Del. Ch. dkt. #4659-VCL), seeking injunctive relief. That now has expanded to a damages suit under the UTSA, in the Delaware Superior Court (dkt. #09C-08-138), against WPP, which owns JWT and Mindshare. The origin of both cases was a meeting between plaintiff Denizen’s principals and Mindshare’s reps.

There’s a wide path to travel when suing for misappropriation of trade secrets under the UTSA, or based on a NDA, where the technology is patented or was published in a patent application, but it leads to a narrow gate. “It is well established that disclosure of a trade secret in a patent places the information comprising the secret into the public domain.” Stutz Motor Car of America, Inc. v. Reebok Intern., Ltd., 909 F.Supp. 1353, 1359 (C.D.Cal. 1995), aff’d, 113 F.3d 1258 (table) (case involving “The Pump” hi-tops from Reebok – which you really wanted!). The method of producing a “program-intergrated advertisement” was patented “in 2005” according to plaintiff Denizen’s pleadings. Separate research disclosed that the BPAI (Appeal no. 2008-0732) upheld rejection of all claims in a CIP of Denizen’s USP 6,859,936.

The case recalls those NDA forms that define “Confidential Information” to include “patents,” followed by the anti-definition that excludes information in the public domain. I know what thou art, but what art thou not?  It too recalls words like foreclosed, preempted and barred.

What Denizen pleads is its confidential disclosure, and Mindshare’s misappropriation of, how “to implement program integrated advertisements, such as …ways to shoot the ad[]s, strategies for obtaining [SAGuild] contracts, methods to gain access or rights to [TV] program content, and how an ad[] agency could work with a production house or network.” Curiosity suggests that persons at JWT/WPP with skill in the art, may have known much about those elements of the secrets.  Denizen’s method is patented, some further methods in its CIP were rejected as anticipated, but Denizen’s suit alleges that how “to implement” what it had disclosed (presumably in an enabling manner) in its patent and patent applications, are trade secrets.

It’s no secret that in all litigation, and so too, in IP litigation, to win – you’ll need some luck.