Investigators play a vital role in helping litigators identify actionable evidence. They provide insight across various areas of the law such as employment, class action, personal injury and civil rights. However, one area that is often misperceived as outside the realm of private investigation is intellectual property (IP). In our experience, investigators are critical in the success of IP litigation matters, and their investigations often determine the outcome of a case. As examples, investigators may be instrumental in proving or disproving claims involving misappropriation of trade secrets, as well as infringement of trademarks, trade dress and copyrights.

Gryphon recently assisted a client who was pursuing declaratory judgment of patent ownership. The client was concerned that the defendant, a former high-level employee, had misappropriated the client’s trade secrets to start a new business of their own. We conducted an investigation to provide insight into the former employee’s new business ventures and attempt to determine whether the defendant had misappropriated the client’s confidential information.  

During our investigation, we:

• Identified and interviewed former employees of the defendant’s new business
• Researched and reviewed patent applications to determine whether the defendant was applying for new patents and assigning those applications to his new business endeavors
• Performed social media research to identify online commentary, job postings and marketing advertisements associated with the defendant’s new company
• Conducted surveillance at the defendant’s company to observe and document any business activities and individuals associated with the defendant’s business
• Researched backgrounds of the principal individuals of the purported new business to assess whether the individuals had a history of intellectual property claims against them
• Pulled building permits for the buildout of the commercial building associated with the defendant’s business to ascertain the nature of the business

As a result of the investigation, we determined that the former employee was starting a new business that claimed strikingly similar innovations in manufacturing processes involving products in the same space as the client’s business. We confirmed the defendant’s misappropriation of the client’s trade secret extraction process, and also discovered social media advertisements promoting the company as examples of trademark infringement by the defendant. 

While each investigation is unique and requires a bespoke and custom-tailored investigative approach every time, this was one example in which an investigation associated with intellectual property claims was critical to obtain declaratory judgment of patent ownership.