CHARLES TAIT GRAVES
Trade Secrets & Employee Mobility
Based in the firm's San Francisco office, Charles Tait Graves focuses on intellectual property and technology litigation and counseling, particularly in trade secret and related areas of law.
Litigation: Case filings involving trade secret claims and other allegations of information misuse have grown in recent years. Tait handles trade secret, nondisclosure agreement, invention assignment, Computer Fraud and Abuse Act, idea submission, Work for Hire, and similar matters related to this area of law. Through his litigation wins and frequently cited publications, he has helped shape California's trade secret laws by repeatedly advancing creative theories on issues such as claim identification, statutory preemption of alternative causes of action, the meaning of the statutory phrase "threatened misappropriation," expert damages opinions, choice of law, bad faith claims, and the application of Business & Professions Code Section 16600 in various contexts. Tait has participated in dozens of trade secret and related cases around the country in a wide variety of industries.
Tait also has litigated a broad range of disputes involving technology companies, including license, Lanham Act, copyright, TCPA, and other commercial disputes. He represents clients at all levels, including trial and appeal, in state court and in federal courts. Tait is also the practice development leader for the firm's trade secret and employee mobility practice.
Counseling: Many potential problems never result in litigation because clients receive precise and careful counseling. For more than a decade, Tait has counseled a vast number of companies—from start-ups to well-known enterprises—as well as individuals and investors on the entire range of issues associated with trade secret law. This includes the resolution of disputes without litigation in addition to internal investigations, workforce training, clean room development, advising new start-ups and company founders, hiring and mobility, international questions, restrictive covenants, pre-acquisition diligence, and due diligence for venture capital firms. He has assisted clients in fields such as clean technology, social networking, and a host of other software, Internet, and hardware-based applications. His counseling efforts regularly address cutting-edge questions and unusual contentions.
Rulings of note include SunPower Corp. v. SolarCity Corp., 2012 WL 6160472 (N.D. Cal. 2012) (comprehensive UTSA preemption ruling); Edifecs, Inc. v. TIBCO Software Inc., 756 F. Supp. 2d 1313 (W.D. Wash. 2010), 2011 WL 1045645 (W.D. Wash. 2011) (choice of law principles under trade secret law; interpretation of "threatened misappropriation" on a motion to dismiss); FLIR Systems, Inc. v. Parrish, 172 Cal. App. 4th 1270 (2009) (after prevailing at bench trial, clients were awarded one of the largest defense-side attorneys' fees amounts ever granted in a trade secret case; interpretation of "threatened misappropriation" under California's Uniform Trade Secret Act); AirDefense, Inc. v. AirTight Networks, Inc., 2006 WL 2092053 (N.D. Cal. 2006) (UTSA preemption at the pleading stage); O2 Micro Int'l, Inc. v. Monolithic Power Systems, Inc., 399 F. Supp. 2d 1064 (N.D. Cal. 2005) (denial of injunction and limitations on expert testimony based on improper claim analysis methodology); Digital Envoy, Inc. v. Google, Inc., 370 F. Supp. 2d 1025 (N.D. Cal. 2005) (the test for UTSA preemption later adopted by the California Court of Appeal); and Jasmine Networks, Inc. v. Marvell Semiconductor, Inc., 12 Cal. Rptr.3d 123 (2004) (appellate victory on privilege issues in so-called "voicemail case").
Tait began his career as an appellate attorney at another firm, and he worked on commercial and intellectual property appeals in the Ninth Circuit and state appellate courts before joining Wilson Sonsini Goodrich & Rosati in early 2000.
Since 2009, Tait has taught a spring semester course at the University of California, Hastings College of Law titled "Intellectual Property under State Law: Trade Secrets and Employee Mobility." He has been a guest lecturer on trade secret law and has participated in scholarly conferences on the subject at several law schools.
Tait has written numerous research articles and essays on the history, theory, and practice of trade secret and employee mobility law. His articles focus on unexplored policy aspects and discontinuities found in these areas, and his publications have been cited by courts in California and elsewhere, as well as by scholars and practitioners.
Tait also speaks basic Japanese.SELECT LITIGATION MATTERS:
- Used Rule 11 procedures to obtain early dismissals of two lawsuits against software and Internet company clients in 2011 and 2012
- Defended a software company in an unusual case where a business partner alleged that the client's acquisition of a competitor put trade secrets at risk
- Represented a social gaming company in an invention assignment dispute over ownership of a multiplayer game
- Helped entrepreneurs accused of trade secret misappropriation win perhaps the largest Uniform Trade Secrets Act fee award ever awarded to trade secret defendants upon a finding of "bad faith"
- Represented a start-up company in the Silvaco cases, which alleged downstream third-party liability under the Uniform Trade Secrets Act
- Represented a major search company in a copyright and trade secret dispute over software
- Defeated an "inevitable disclosure"-based request for a preliminary injunction for a debugging software company and won summary judgment on related customer list claims
- Defended a venture capital firm against a novel claim of trade secret misappropriation
- Obtained favorable settlements for numerous clients facing trade secret and related accusations
- J.D., University of California, Hastings College of the Law, 1998
- B.S., University of California, Berkeley, 1994
- Co-author with E. Tippett, "UTSA Preemption and the Public Domain: How Courts Have Overlooked Patent Preemption of State Law Claims Alleging Employee Wrongdoing," 65 Rutgers Law Review 59
- "Trade Secrecy and Common Law Confidentiality: The Problem of Multiple Regimes" in The Law and Theory of Trade Secrecy: A Handbook of Contemporary Research, edited by Rochelle C. Dreyfuss and Katherine J. Strandberg, 2011
- "Analyzing the Non-Competition Covenant as a Category of Intellectual Property Regulation," 3 Hastings Science & Technology Law Journal 69, 2011
- "Trade Secrets as Property: Theory and Consequences," 15 Journal of Intellectual Property Law 39, 2008
- "The Law of Negative Knowledge: A Critique," 15 Texas Intellectual Property Law Journal 387, 2007
- Co-author with B. Range, "Identification of Trade Secret Claims During Litigation: Solutions for a Ubiquitous Dispute," 5 Northwestern Journal of Technology & Intellectual Property 68, 2007
- "Non-Public Information and California Tort Law: A Proposal for Harmonizing California's Employee Mobility and Intellectual Property Regimes under the Uniform Trade Secrets Act," 2006 UCLA Journal of Law & Technology 1, 2006
- Co-author with J. DiBoise, "Do Strict Trade Secret and Non-Competition Rules Obstruct Innovation?" 1 Ohio State Entrepreneurial Business Law Journal 323, 2006 (symposium presentation)
- "Bad Faith and the Public Domain: Requiring a Pre-Lawsuit Investigation of Potential Trade Secret Claims," 8 Virginia Journal of Law & Technology 12, 2004
- Co-author with A. Macgillivray, "Combination Trade Secrets and the Logic of Intellectual Property," 20 Santa Clara Computer & High Technology Law Journal 261, 2004
- Tait is a past editor of two often-cited treatises, Trade Secrets (2006-09) and Trade Secrets Practice in California (2004-08), and has contributed to other treatises as well.
- State Bar of California
- U.S. District Court for the Central District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. Court of Appeals for the First Circuit
- U.S. Court of Appeals for the Ninth Circuit