Scott Steinberg · Consultant, Analyst and Business Strategist
Trade secret cases generally reduce to factual questions an industry expert can answer: was the information genuinely proprietary or was it published practice anyone in the field already knew, and did the owner behave like someone protecting a secret. A consultant to 3000+ organizations, Scott Steinberg addresses these topics and more.
Expert reports, declarations, deposition and trial testimony on public availability of information, reasonable secrecy measures, departing employee matters, customer and audience data, etc.
Sample questions that attorneys ask cover areas like what the field already knew, and what the owner actually did to keep the information contained.
The most common finding in these matters is that the asserted secret was documented in trade press, conference material, vendor documentation or professional literature well before the alleged taking.
Testimony assembles that public record for a specific date and addresses what a practitioner in the field would already have known without any misappropriation.
Owners are expected to behave like the information matters: restricted access, confidentiality terms, marking practice, exit procedures and controls that were actually enforced rather than documented.
Testimony addresses what protection practice organizations of that type and size customarily maintained and how the owner's conduct compared.
Disputes examine what an employee took, whether it exceeded the general skill and knowledge they were entitled to carry, and what exit practice the employer followed.
Testimony addresses convention in that industry around employee mobility, onboarding practice at the receiving company, and where the line between experience and appropriation typically sits.
Customer lists are asserted as secrets constantly, and the question is whether the information was genuinely compiled at cost or was assemblable from public sources by anyone willing to do the work.
Testimony addresses how such data is customarily built in that industry and what compiling an equivalent would actually have required.
Proprietary frameworks, marketing methods and operating processes frequently turn out to be common practice with internal branding attached.
Testimony addresses whether the method represented genuine competitive investment or was standard approach documented across the field.
Product roadmaps, specifications, configurations and technical documentation raise questions about how much was disclosed through the product itself or through normal commercial channels.
Testimony addresses what a competitor could learn through legitimate means including purchase, observation and public documentation.
Systems records establish who could reach what, when access changed, and whether restriction was real or nominal.
Testimony addresses what those records support about containment and where the evidence stops supporting an inference about what was taken.
Valuing information requires evidence about the investment behind it, what a license would have commanded, and what competitive advantage it actually conferred.
Testimony supplies those market inputs and addresses whether an asserted figure reflects commercial reality or an aggregation of theoretical value.
Establishing what was publicly available at a given date requires searching literature, product documentation and trade sources that take time to assemble. Any party may instruct.
Written opinions on public availability, secrecy measure adequacy and the commercial value of the information, etc.
Testimony on areas like what a field already knew and what protecting information in that industry actually looks like.
Responsive analysis of secrecy assertions, novelty claims and valuation approaches, among other topics.
Non-testifying public availability research, secrecy practice assessment and discovery scoping.
Scott Steinberg is an analyst, consultant and business trends expert with over 25 years of experience providing management and strategic consulting services to more than 3,000 businesses and brands ranging from startups to government agencies and Fortune 500 firms.
He has testified in sample areas including intellectual property — copyrights, trademarks and patents — patent infringement, marketing, branding, video games, mobile applications, consumer product development, and the growth and monetization of online distribution platforms.
He is the author of over 30 books and has published more than five thousand articles addressing areas including but not limited to marketing, technology, leadership, innovation, advertising, digital transformation, data privacy and social networks. He appears regularly on ABC, CBS, CNN and NBC, and has led seminars and training programs for organizations including Wells Fargo, the PGA Tour, Century 21, Ford, Dell and Procter & Gamble.
His consulting work has been broadly recognized. He has served as a thought leader for the American Bar Association and Corporate Counsel magazine, and has received honors from the International Association for Scholastic Excellence, Fortune, and the 21st Century Icon Awards, among others.
Factual questions underneath most cases like whether the information was genuinely proprietary or was already documented in the field, and whether the owner maintained the protection practice organizations of its type ordinarily maintain. Valuation and departing employee conduct are the other frequent assignments.
Often by searching what existed before the alleged taking: trade press, conference proceedings, vendor and product documentation, professional literature, patents and job postings. It is common to find the asserted secret described publicly, sometimes by the claimant's own marketing.
Some might say behavior consistent with protecting something valuable: restricted access enforced technically, confidentiality terms actually signed, marking practice applied consistently, and exit procedures followed. Policies that existed on paper while everyone had access to everything are a recurring finding.
Employees are entitled to carry general skill, experience and knowledge acquired through work. The factual question is whether what moved was that, or specific compiled information the employer invested in creating. Industry convention around mobility helps locate that line.
The IP practice addresses portfolios and multi-right disputes where trade secrets appear alongside patent, trademark and copyright claims. This practice goes deeper on secrecy specifically. Matters combining several rights often use all services; a misappropriation case might fall here.
Initial conversations about scope, timing and conflicts are without charge. Helpful detail includes the information alleged to be secret, the industry, and any expert disclosure deadline already set.
A conflicts check is run before any substantive discussion. An initial note listing the party names and a one-line description of the dispute is enough to start; please hold privileged or confidential material until the check clears.