Esha Bandyopadhyay

Esha Bandyopadhyay, a principal at Fish & Richardson, is an experienced intellectual property trial lawyer with over 20 years involved in trade secret litigation, representing both plaintiffs and defendants in complex, high-stakes trade secret disputes.

Most of her matters are confidential. One of the current cases involves a "David and Goliath" story. It revolves around an innovative and complex medical device developed by her client, with well-documented trade secrets. These trade secrets were shared with a much larger player in the medical device industry, with hopes of a partnership or acquisition. Instead, the trade secrets were misappropriated in the form of patent applications and a competing device, posing a substantial threat to her client's business.

The case also encompasses related claims, including breach of contract, unfair competition, and misappropriation of ideas. Since some of the misappropriation occurred through public patent filings, the case delves into issues such as correction of patent inventorship under 35 USC 256, fraud on the U.S. Patent and Trademark Office, and a counterclaim for patent infringement. The case is therefore notable for its exploration of how trade secret law intersects with other fields of IP law and commercial claims.

Because this case involves issues of correction of patent inventorship and fraud on the USPTO, on the one hand, and patent infringement claims on these same patents, on the other hand, Bandyopadhyay says that her team has needed to engage in creative thinking to build a robust defense while pursuing its own claims. Additional challenges in this case include the fact that the team took over the case three and a half years after it was initiated. Catching up on multiple years of litigation without significantly delaying the case schedule proved to be a considerable undertaking. Transitioning the case from previous counsel also presented its own difficulties, as the team had to navigate a strategy that would best serve their client, even if it differed from the approach taken at the outset.

In terms of trends in the trade secrets field, Bandyopadhyay said, "As patent rights have arguably been weakened in recent years by Alice and its impact on Section 101, as well as the ability to file for inter partes review, there is increasingly more and more interest in trade secret enforcement. Despite an increasing number of trade secret suits, however, there appears to still be inconsistency district-to-district with respect to the requirement to identify a trade secret with sufficient particularity as a prerequisite to discovery."

Additionally, different interpretations of the statute of limitations add to this inconsistency, with some courts determining it from the date a plaintiff should reasonably have been aware of misappropriation and others from the date of actual misappropriation. State law preemption issues, such as when other commercial torts are preempted by state trade secret law, may also surface in the coming years.

"There are also questions about generative AI and how it intersects with the maintenance of secrecy," Bandyopadhyay said. "Namely, whether an act of your AI platform (e.g., a disclosure) could be a trade secret-destroying act. As the entire AI world evolves, there are likely to be more and more related trade secret issues that arise."

In addition to her legal contributions, Bandyopadhyay is actively involved in the Silicon Valley IP Lawyers Association, the Women's IP Lawyers Association, the National Asian Pacific American Bar Association, the South Asian Bar Association and ChIPs -- a community of women in technology, law, and policy. She also teaches Trade Secret Law at UC Davis School of Law.