by Kathleen Lynch | Apr 28, 2026 | Confidentiality, Entrepreneur, Entrepreneurship, Intellectual Property, IP, IP Management, Trade Secrets
Recently, the U.S. Court of Appeals for the Federal Circuit issued a significant reversal of a California district court’s finding of trade secret misappropriation. In the case of International Medical Devices, Inc. (IMD) v. Cornell (April 2026), the court ruled that no reasonable jury could have found several alleged trade secrets to be, in fact, “secrets.”
The Dispute: Cosmetic Penile Implants
The litigation centered on the Penuma® cosmetic penile implant. The plaintiffs alleged that four specific elements of their technology were stolen trade secrets:
- Structural Pockets: Internal voids within the implant to enhance softness and elasticity.
- Mesh Tabs: Components around the distal tip to facilitate tissue ingrowth.
- Absorbable Sutures: Used in combination with mesh tabs to hold the implant during initial healing.
- The “Supply List”: A specific list of materials and instruments used to perform the surgical implantation.
The “Death” of a Trade Secret: Public Disclosure
The Federal Circuit held that the first three alleged secrets (the structural design elements) were ineligible for protection because they had already been disclosed in prior patents.
Citing the precedent in Atl. Rsch. Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, the court reaffirmed a fundamental rule of intellectual property:
“A trade secret is secret, a patent is not. That which is disclosed in a patent cannot be a trade secret.”
Because these design concepts appeared in public patent filings—some dating back decades—they were part of the public domain. You cannot claim “secrecy” over information that the government has already published for the world to see.
The Failure of Internal Protection
The fourth alleged trade secret—the list of surgical instruments—failed for a different reason: lack of reasonable efforts to maintain secrecy.
The plaintiffs had emailed this list to the defendant without any:
- Confidentiality caveats
- “Trade Secret” labels
- Explicit instructions on restricted handling
Under the California Uniform Trade Secrets Act (CUTSA), information only qualifies as a trade secret if the owner takes active, reasonable steps to keep it secret. Because the plaintiffs treated the list as ordinary correspondence in the past, they could not retroactively claim it was a protected secret during litigation.
The Takeaway: How to Protect Your Innovation
This case serves as a vital reminder for tech and medical device companies: If you have a trade secret, keep it that way.
- Audit Your Patents: Ensure you aren’t trying to protect information as a “secret” if it’s already described in your (or someone else’s) patent filings.
- Use NDAs Every Time: Never disclose sensitive information to an outside individual or organization without a signed Non-Disclosure Agreement (NDA).
- Label Everything: Mark confidential documents clearly as “Trade Secret”, “Proprietary” or “Confidential.”
- Need-to-Know Access: Limit employee access to sensitive data and provide regular training on internal security protocols.
Protect Your Innovation
Protecting your intellectual property is critical to the survival of any organization. In an evolving legal landscape, having the right counsel to navigate these decisions is more important than ever.
The Law Office of Kathleen Lynch PLLC is designed to help your business stay ahead of the game.
Your first consultation is free. Email us: kl****@*****aw.com
by Kathleen Lynch | Mar 26, 2026 | Patent, Patent Prosecution
A client of mine read this post and found me. He recently contacted me about a different matter, and it reminded me of this post, so I thought I would share it again.
We hear a lot these days about cost cutting and austerity. I also hear a bit of grousing from time to time from people who use IP legal services about costs. I believe inventors and companies can find reasonably priced intellectual property law services when the potential client does her homework.
First, check out smaller cities, towns and suburbs. Larger cities have higher overhead costs. Firms pay more for rent, salaries etc. Smaller cities and towns have many talented patent firms, attorneys and agents equally qualified to do the work at more reasonable rates.
If you are focusing on patent preparation and prosecution, you don’t need to stay in your own backyard. With all of the wonderful modern tools of connectedness, your patent agent or attorney can be as close or as far away as you want them to be. Documents are easily exchanged via the internet, and telephone and video conferences can connect folks who are time zones apart. Where there is a significant distance, time zones may become an issue, but you will find that most patent attorneys and agents are willing to provide the necessary flexibility to make the relationship work, including trips to your offices at a discount or gratis in exchange for keeping your business.
Background matters. Take a look and ask questions about what kind of work your patent attorney does. What was his or her major in college? Did they work as a scientist or engineer before they practiced patent law? If so, what did they do? What is the focus of their present practice? If you are looking for someone to prepare and file a patent application, you don’t want to work with someone whose experience is limited to patent litigation. Just like you wouldn’t allow your internist to perform heart surgery, you don’t want someone with a chemistry background preparing patent applications for you if you are in the high tech industry. Find someone who has the technical background suited to your project, as well as the experience needed to meet your needs. In looking for possible patent attorneys or agents, check out the US Patent and Trademark website which enables you to search either for a particular person or those registered to practice before the US Patent Office in a particular location. Once you have that, check out their credentials and ask questions before you make your decision.
Selecting the right patent attorney is important to ensure your patent strategy is managed by someone with the appropriate experience and background. The Law Office of Kathleen Lynch PLLC has over 35 years of experience in the preparation and prosecution of patent applications and is designed to help businesses such as yours keep ahead of the game. The first consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Feb 16, 2016 | Trademark Service Mark
If you want to be a superhero, you’re going to have to create your own logo. In a recent California court case, DC Comics v. Mad Engine, Inc., the court refused to dismiss an action brought by DC Comics against Mad Engine for trademark infringement. Mad Engine was selling t-shirts with a “dad” logo in red and yellow on a blue shirt. The logo was a five-sided shield similar is style to the Superman “S” that appears in DC Comics books and movies.
Mad Engine asked the court to dismiss the lawsuit on the basis that the “dad” logo was a parody of the Superman logo. The court rejected the argument and the case now moves on to trial.
What’s the take away here? Even if you think your mark is a parody of another mark. The owner of the other mark may not share your sense of humor. Think twice before proceeding with a mark like that.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
As an aside, I’ll be speaking on Thursday, February 18th at the NC Bar Association Business Law Section Annual Meeting on a panel discussion of IP issues in Pinehurst NC. Anyone thinking of attending, I hope you do as it is shaping up to be an interesting program. I’ll also be there on behalf of NCLEAP (North Carolina Lawyer Entrepreneur’s Assistance Program) recruiting new volunteers. If you’re there, please come and say “hello”.
by Kathleen Lynch | Feb 12, 2016 | Intellectual Property
A recent Federal Circuit Court of Appeals decision highlights the need to ensure that contracts with third parties ensure that any intellectual property developed is owned by the company. In TriReme Med., LLC v. AngioScore, Inc., TriReme sued to correct inventorship on some AngioScore patents directed to angioplasty balloon catheters. AngioScore had hired a consultant, Dr. Lotan. Dr. Lotan was not named as an inventor in any of the AngioScore patents at issue. TriReme, motivated by a concern that AngioScore may sue for patent infringement, acquired from Dr. Lotan, all of his interest in the subject AngioScore patents.
AngioScore offered up the consulting agreement executed with Dr. Lotan in defense. AngioScore asserted that it obtained all rights in all inventive works by Dr. Lotan.
The Federal Circuit disagreed. The court found that the agreement did not give AngioScore rights to Dr. Lotan’s inventions developed or made prior to the agreement and remanded the case back to district court to determine whether the language in the agreement grants AngioScore rights in any inventive developments made by Dr. Lotan after that execution of the agreement.
What’s the take away here? When contracting with any third party, be sure to cover all aspects of ownership of any intellectual property developed during the term of the agreement. Also ensure that all parties to the agreement have a clear understanding as to who is entitled to what when dealing with IP developed by the third party either before or after the term of the agreement.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Jul 29, 2015 | Innovation
I recently came across an interesting article in the Economist on the way in which inventions are developed today and in the past. It raises some intriguing points on how developments are handled today, as well as some insights regarding the scope and breadth of innovation over time.
