CHARLES TAIT GRAVES
Trade Secrets & Employee Mobility
Based in the San Francisco office of Wilson Sonsini Goodrich & Rosati, Charles Tait Graves practices intellectual property litigation and counseling. Tait is well known for his focus on trade secret law. Over the past 15 years, he has handled countless trade secret matters in Silicon Valley and around the country, and frequently writes and lectures in the field. Few globally have similar depth, experience, and insight regarding trade secret-related matters.
Tait is a member of the firm's Nominating and Hiring Committees.
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 frequently cited 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. Tait has participated in dozens of trade secret and related cases around the country.
Tait also has litigated a broad range of disputes involving technology companies, including licensing, Lanham Act, copyright, TCPA, and other commercial cases.
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 public company enterprises—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. He has assisted clients in fields such as clean technology, solar energy, social networking, medical devices, and a host of other software, Internet, and hardware-based applications. His counseling efforts regularly address cutting-edge questions and unusual contentions.
Rulings on notable points of law include the following:
- The Florey Institute of Neuroscience and Mental Health v. Kleiner Perkins Caufield & Byers et al., _ F. Supp. 2d _, 2014 WL 1248045 (N.D. Cal. 2014) (dismissal with prejudice for client in multi-defendant case alleging IP violations through a merger agreement)
- Be In, Inc. v. Google Inc., 2013 WL 5568706 (N.D. Cal 2013) (granting motion to dismiss claims including trade secret allegation where plaintiff failed to properly allege UTSA's intent requirement)
- Ophthalmic Research Assoc. v. SARcode Corp., 2013 WL 2247584 (D. Mass. 2013) (granting motion to dismiss copyright claim and switching applicable law governing trade secret claim to California law from Massachusetts law)
- 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)
- United Serv. Auto Ass'n v. Mitek Systems, Inc., 2013 WL 781900 (W.D. Tex. 2013) (dismissal as a matter of law of Lanham Act passing off claim premised on trade secret allegations)
- 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 trade secret damages 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)
- Jasmine Networks, Inc. v. Marvell Semiconductor, Inc., 12 Cal. Rptr.3d 123 (2004) (appellate victory on privilege issues in so-called "voicemail case")
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 numerous law schools, including UC Berkeley, NYU, and the University of Texas at Austin.
Tait has written 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 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
- Presenter, "Is There an Empirical Basis for Predictions of Inevitable Disclosure?" 3rd Mobility and Competition Clause Workshop, Max Planck Institute for Innovation and Competition (Munich), November 2014
- 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