Our CISO Lee Neubecker recently spoke to Johnson & Bell attorney Joseph Marconi about the role that computer forensics plays in intellectual property and trade secret litigation. A transcript of this interview can be found below.
Lee Neubecker: Today I’m here with Joseph Marconi from Johnson & Bell who’s going to take a little bit about trade secret litigation cases he’s been involved with and how computer forensics has played a key roll in getting success for him and his clients.
Joe, thanks for being on the show.
Joseph Marconi: Thank you, Lee, it’s good to see you again.
Neubecker: Joe, we started working together a long time ago. The first case we had was one of my very first forensic expert cases ever, I think it was back in 2002 or 2003. I think it was the Liebert matter. Can you tell us a little bit about the issues involved there and ultimately what happened in that case.
Marconi: Yes, that was Liebert v. Mazur, and it was a trade secrets case. We actually tried it in a bench trial and it went to the appellate court twice. The appellate court actually quoted from your testimony at the trial, and in that case, we sued a sales distributor’s top salesman. We represented the manufacturer and the local distribution company.
You were able to prove that before their key sales representative left the distributor, he downloaded a number of files shortly before, a couple weeks before. As with other trade secrets cases that I’ve been involved with – and I’ve tried several – computer forensics were very important. And I think you’ve been helpful in a few of these.
Neubecker: I remember there was one case we worked on where your firm was being accused of spoliation of evidence, can you tell people a little bit about that.
Marconi: Typically in trade secret cases there’s an employee or sales distributor who leaves the company, or the company terminates a contract with a distributor, and in the process they take trade secrets. In this case, again, it was a local distributor – the case involved a company that distributed wines from all over the world. The new employer of the local distributor hired us to defend it and its now current employee.
We had her computer, and you made a forensic copy of the hard drive, and it was blank. The court accused not the firm, but this particular distributor of destroying evidence. That was the key issue in the case. During trial, we had an unusual moment. The night before the testimony by your forensic expert, you were able to open it up and show that nothing was really destroyed. Then, during the trial the next day, the other side’s forensic expert made a big point about how this hard drive had been wiped, and had been wiped to destroy evidence of her misappropriation of trade secrets.
We then put on your forensic expert, and he testified, displaying it with a screen, opened it up. The judge through her pencil down on the desk, looked at her law clerks who were there, and said “this does not happen every day.”
Neubecker: I recall that was a situation where the other expert said that the hard drive had been wiped clean based upon his testing of it on a PC. But, in fact, I had my expert stay late that night and connect the drive to all different types of computers. When it was connected to a Macintosh computer, lo and behold, it prompted for a password to decrypt the hard drive, so it was in fact an encrypted hard drive.
Once the password was supplied, viola, it wasn’t a drive empty, but it had all of the data, and the judge certainly was animated. I think that the transcript on that was pretty interesting.
Marconi: And the opponent’s expert had no clue. The lawyer said to me afterward that “I’m going to sue that guy.”
Neubecker: I felt bad for the expert, but that’s one of the problems that happens when you hire an expert that hasn’t been doing it for a long time – problems can happen and mistakes can happen.
Marconi: For the most part, the times we’ve used you have dealt with trade secrets. I also remember the case that we recently tried last year in federal court regarding a Chinese manufacturer. Again an employee left a manufacturing company, started a competing distributorship here in Chicago, and employed a Chinese manufacturer to make products for the same market.
The local manufacturer had claimed that he had taken the plans and designs of the products and given them to the Chinese manufacturer, and you helped us disprove that, or also prove that they could not prove that happened. I find that computer forensics is an essential part of any trade secrets case.
Neubecker: So you have experience in being on all sides – the firm that lost the employee, the firm that hired the employee – and you have been able to get good results for your client whether they are plaintiff or defense.
Marconi: The issues are the same no matter what side you’re on. There’s not really only plaintiff trade secret lawyers and defense lawyers – you either defend them or prosecute them. I’ve done both over the years, and it’s a fascinating area of law. It’s something that every company deals with when they lose an employee.
And, as you know, when one of my clients lose a sensitive employee that has confidential information, one of the first things I do is call you to make a forensic copy of that person’s computer before anyone opens the file and, in any way, causes it to change at all. You can explain why that’s important.
Neubecker: I appreciate you calling me when that happens. If you’d like to know more about computer forensics you can check my blog out at leeneubecker.com, and Joe’s contact information is also there. Thank you, Joe.
Marconi: Thank you, Lee.”