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January 2016

Honeywell Protects Patent Secrets with Former Employee

United States - Washington

Honeywell International secured a favorable settlement in litigation to prevent its former division chief intellectual property counsel from joining a direct Honeywell competitor as chief intellectual property counsel — a role that would require him to oversee technology development efforts and patent prosecution in technology spaces identical to those he had managed for Honeywell. Our firm represented Honeywell.
Fearing that the former employee could not fill his new role consistent with his ethical and contractual obligations, Honeywell sued the former employee in the United States District Court for the Western District of Washington. Our firm crafted a creative declaratory judgment claim — one of first impression in the federal courts — and a litigation strategy based on the interpretation and application of the federal regulations governing patent attorney ethics. 

Our firm defeated three different dispositive motions and, working with Honeywell inventors on three continents, built a highly complicated but highly compelling case. In the midst of a vigorous discovery period, Honeywell settled the litigation, securing restrictions on the former in-house counsel that protect Honeywell’s trade secrets and confidential information.
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