CHARLES TAIT GRAVES
Charles Tait Graves litigates trade secret disputes and provides intellectual property counseling on complex trade secret matters. Few globally have similar depth, experience, and insight in this area.
Tait is renowned for his focus on trade secret law. Over nearly two decades, he has handled countless trade secret matters in Silicon Valley and around the country. He is often hired for the most difficult cases, including jury trials. He has secured defense verdicts in jury and bench trials and eliminated a large number of cases through motion practice. He also frequently writes and lectures in the field. A number of his ideas and approaches have been adopted in important court rulings that have set new precedent in California and influenced the practice of trade secret law nationwide.
Tait most recently served as co-chair of the firm's Nominating Committee. He is also a member of the San Francisco office's trial practice team.
Litigation: Trade secret cases have increased in recent years. From inception through trial and appeal, Tait handles trade secret, nondisclosure agreement, invention assignment, Computer Fraud and Abuse Act, idea submission, work for hire, and similar matters.
Through his litigation wins and influential publications, he has helped shape California's trade secret laws by 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.
Counseling: Many potential problems never result in litigation because clients receive precise and careful counseling. Tait has counseled a vast number of companies—from start-ups to some of technology's biggest names—as well as individuals and investors. This includes pre-dispute counseling, 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.
Rulings on important points of trade secret law include the following:
- Preemption: Tait has been a leading voice in bringing order and clarity to trade secret law through UTSA preemption in widely cited rulings, including GSI Tech., Inc. v. Integrated Silicon Solution, Inc., 2015 WL 5655092 (N.D. Cal. Sept. 25, 2015) (UTSA preemption on summary judgment); SunPower Corp. v. SolarCity Corp., 2012 WL 6160472 (N.D. Cal. 2012); (comprehensive UTSA preemption ruling); AirDefense, Inc. v. AirTight Networks, Inc., 2006 WL 2092053 (N.D. Cal. 2006); and 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).
- Claim Identification: Tait won the first published ruling in Texas on early trade secret claim identification, in United Serv. Auto Ass'n v. Mitek Systems, Inc., 289 F.R.D. 244, 248 (W.D. Tex. 2013), aff'd, 2013 WL 1867417 (W.D. Tex. 2013) (first published ruling in Texas on early trade secret claim identification).
- Employee Mobility, Inevitable Disclosure, and Bad Faith: Tait won an important trial and appeal that made so-called "inevitable disclosure" sanctionable against departing employees and established new standards for awarding sanctions against overbearing former employers in 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).
- Threatened Misappropriation: Tait limited the definition of "threatened misappropriation" in the FLIR case and in 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).
- Intent and Access: Tait advanced the interpretation of the UTSA's intent requirement in Be In, Inc. v. Google Inc., 2013 WL 5568706 (N.D. Cal 2013) (granting motion to dismiss for Google, YouTube, and Google UK), and, representing a client in a multi-defendant case, contributed to an important decision on downstream immunity in the Silvaco cases (California State Court 2005-2010).
- Advertising/Trade Secret Interplay: Tait secured dismissal of a Lanham Act advertising claim improperly premised on trade secret allegations in United Serv. Auto Ass'n v. Mitek Systems, Inc., 2013 WL 781900 (W.D. Tex. 2013).
- Damages Apportionment: Tait helped undermine a runaway damages award where an expert failed to apportion claimed trade secret damages in 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 trade secret damages expert testimony based on improper claim analysis methodology).
- IP Claims and Mergers: In a multi-defendant case, Tait helped win dismissal with prejudice of a lawsuit raising IP allegations aimed at a merger agreement in The Florey Institute of Neuroscience and Mental Health v. Kleiner Perkins Caufield & Byers et al.,31 F. Supp. 3d1034, (N.D. Cal. 2014).
Since 2009, Tait has taught a course at the University of California, Hastings College of Law, titled "Intellectual Property under State Law: Trade Secrets and Employee Mobility." He has also co-taught the IP seminar there. In addition, he has been a guest lecturer on trade secret law and has participated in scholarly conferences on the subject at numerous law schools. In 2017-18, this has included appearances at conferences panels, and lectures at UC Hastings, the U.S. Patent and Trademark Office, Stanford Law School, and the Sedona Conference Working Group on Trade Secrets.
Tait is one of the nation's most widely-published writers on trade secrets law, with 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. These publications have been frequently cited by courts in California and around the country, as well as by scholars and practitioners.
Tait also speaks basic Japanese.EDUCATION:
- J.D., University of California, Hastings College of the Law, 1998
- B.S., University of California, Berkeley, 1994
- "Is the Copyright Act Inconsistent with the Law of Employee Invention Assignment Contracts?" 8 NYU Journal of Intellectual Property & Entertainment Law 1, 2019
- "Is There an Empirical Basis for Predictions of Inevitable Disclosure?" 18 Wake Forest Journal of Business & Intellectual Property Law 190, 2018
- 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, 2013; reprinted in Trade Secrets and Undisclosed Information, edited by S. Sandeen and E. Rowe, 2014
- "Trade Secrecy and Common Law Confidentiality: The Problem of Multiple Regimes," The Law and Theory of Trade Secrecy: A Handbook of Contemporary Research, edited by R. Dreyfuss and K. 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). He has contributed to other treatises and authored numerous shorter articles. Most recently, he contributed to a guidebook on trade secret law to be published by the World Intellectual Property Organization (WIPO).
- 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