Over the last few days I have started my work on the DDIP Blog "makeover" to provide additional functionality, reference materials, and an updated appearance. As such, please look forward to the "new" DDIP blog beginning Monday, September 8th!

As referenced within a recent USPTO announcement (link below), the USPTO Museum has unveiled a new exhibit called “Portrait Gallery” that “highlight[s] past and present individuals who have made a contribution to America's intellectual property (IP) system.” This exhibit highlights digital images of a number of famous inventors and USPTO personnel, whereby “through the magic of computer-generated special effects and exclusive control software, spontaneously come to life, interactively engaging in humorous banter that highlights the history and growth of America's intellectual property system.” This new free exhibit is being featured at the Madison Building in Alexandria, VA, and is available Monday-Saturday. Additional information regarding this exhibit may be found within the link below.

USPTO Announcement: LINK
USPTO Museum Webpage: LINK

By Jay G. Taylor

In Ideal Aerosmith Inc. v. Acutronic USA, Inc., 87 U.S.P.Q. 2d 1341, the United States District Court for the Western District of Pennsylvania found that a valid claim of trade secret misappropriation had been plead and denied a motion to dismiss where the defendant allegedly received the trade secrets through misdirected emails. The defendant allegedly read the emails and used the trade secret information to compete against plaintiff.

In this case, a third party, Carco Electronics, which was in the same business as the parties, went into bankruptcy and was required by the bankruptcy court to market and sell its assets free and clear of liens. Plaintiff Ideal entered into an asset purchase agreement with Carco and took possession of its operations and hired most of its employees to continue Carco's operations to preserve its assets pending approval of its purchase sale by the bankruptcy court. The former Carco employees continued to use their Carco email addresses in the continued operation of the Carco business. Subsequently, however, defendant Acutronic outbid Ideal for the assets in bankruptcy court and acquired Carco's assets. Ideal tendered the Carco facilities to Acutronic the next day and all of the former Carco employees vacated the Carco premises and moved to Ideal's offices.

Ideal immediately assigned the former Carco employees with new email addresses, however, some of those employees and third parties doing business with Ideal inadvertently continued to use the old Carco email addresses in transmitting emails regarding Ideal's business. Those misaddressed emails, some of which contained sensitive trade secret information, were received by Acutronic on the old Carco servers and redirected to Acutronic servers. Acutronic allegedly read the emails, disclosed the emails to numerous Acutronic employees and used the information in those emails to compete against Ideal. Acutronic did not disable the old Carco servers, did not inform the senders that the old email addresses were no longer in use, and did not forward the email to the intended recipient.

When discovered, Ideal sued Acutronic for trade secret misappropriation under the Pennsylvania Uniform Trade Secrets Act (PUTSA). Acutronic moved to dismiss the trade secret claim on the basis that it had not acquired the trade secrets though any misconduct on its part and therefore there was no misappropriation of those trade secrets. The court found that under the PUTSA, misconduct is not required. Rather, the court found that any use or disclosure of information that Acutronic knew or had reason to know was a trade secret without consent of the owner of the trade secret can be a violation of PUTSA.

Thus, the message from this case is recipient beware. Receipt of misdirected email of another that arguably contains confidential business information should be treated very carefully to avoid possible liability. Such emails should be forwarded to the correct recipient if that address is known, and the sender should be informed of error by reply email so that the error can be avoided in the future. Any use or disclosure of any possible confidential information contained in such a misdirected email should be avoided as it could subject mistaken recipient to liability for trade secret misappropriation.

Jay Taylor is a Partner with Ice Miller LLP focusing his efforts on patent, trademark, copyright, and trade secret litigation.

The USPTO recently announced that it has partnered with the National Inventors Hall of Fame Foundation (NIHFF), The Advertising Council, and the boutique advertising agency Publicis & Hal Riney to prepare and launch a new series of public service advertisements (PSAs) designed to target children and hopefully inspire them to be the next generation of innovators. As referenced by the USPTO (link below), “the United States has been a global leader in technology and innovation … account[ing] for nearly one-third of the world’s science and engineering researchers and 40 percent of all research and development... However, with increased economic competition globally, it’s widely understood that the United States must take steps now to maintain its leadership,” and “[i]n particular, America must ensure we inspire future generations of innovators.” This current series of PSAs follows the USPTO’s efforts last year for reaching out to children, and according to Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “As we enter the next phase of the campaign, I am confident this new series of public service announcements will strengthen America’s legacy of innovation by showing children how their talents and education help them change the world for the better.” Additional information on this new campaign and the partners involved may be found at the link below.

USPTO Announcement: LINK