Client, Firm Lose 12(b)(6) Motion to Inventor who Claims Firm Stole his Trade Secrets

Nicolo v. Patterson Belknap Webb & Tyler, LLP, is a suit brought by an inventor-patentee who claims that a Patterson attorney met with him under the guise of seeking to represent him in a suit against third-parties, while the real purpose was to obtain information for its client, Ethicon.  The judge recently denied the defendants’ 12(b)(6) motion, reasoning that Pennsylvania law protects against mere acquisition of trade secrets through improper means (subsequent use/disclosure need not be alleged, in other words).  The opinion doing so is here.

In addition to the obvious lessons, at the Emory conference I mentioned, one of the panelists asked how often large corporations take advantage of solo inventors. If the allegations here are true, this could be one such example.  “Troll” is a word that might have been applied to the inventor had he sued Ethicon, in other words.

Stay tuned.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

7 thoughts on “Client, Firm Lose 12(b)(6) Motion to Inventor who Claims Firm Stole his Trade Secrets

  1. 3

    anon, if want to quote to us what Chisum has to say, we would all appreciate it.

    I quote Curtis all the time.

    1. 3.1


      I will not quote an entire chapter.

      Your penchant for Curtis is also misplaced – for at least two reasons given in a previous comment.

  2. 2

    The take-away is good, but states vary. In some states it’s an objective test, others it’s subjective, and in some, a mixture/unclear. “I’m not your lawyer” is a good opening line when you are not…

    1. 2.1

      Agreed – as also it should be made clear – for both sides – exactly what the purpose of any meeting is.

  3. 1

    Interesting that the motion did not survive with an Iqbal/Twombly level of scrutiny.

    Also interesting that this reaffirms that the use of the “Troll” boogeyman rhetoric is overblown (see the GAO report of summer 2013). It bears reminding that Large Corporations coined the term “Troll” and they did so solely for their benefit and not for the benefit of the american people.

    (in a side note to Ned Heller, it is also interesting the interaction with state laws – see page 6 of the decision)

    A good take-away: the possible presence of a client-attorney relationship must be viewed from the potential client’s perspective.

    1. 1.1

      anon, I am not sure what your point is about state law. Could you clarify?

      If these facts are correct, I would think all the attorneys involved should face some close scrutiny by their state bars.

      1. 1.1.1

        My point here about state laws is related to our inventor/owner discussion and how you wanted to avoid painting US patent law as having any stat by state balkanized effect. In particular, I believe the discussion was about a State marital property laws.

        In that discussion I pushed you to review what Chisum on patents had to say about state law effects. To this day I do not know if you took me up on my advice, as you dropped out of the conversation.

        That happens a lot when continuing the conversation jeopardizes your viewpoints.

Comments are closed.