The US International Trade Commission (ITC) found that a Chinese company misappropriated trade secrets from a Wisconsin company, and infringed the company’s patents, and thereby harmed the US crane industry.
Manitowoc Cranes, LLC filed a complaint with the ITC alleging violations of subsection (a)(1)(B) of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337.
Manitowoc alleged that at least one crane made by Sany Heavy Industry Co., Ltd. of Changsha, China, and imported by Sany America, Inc. of Peachtree City, Georgia infringed two of Manitowoc’s patents.
Manitowoc also alleged that the crane was made using six Manitowoc trade secrets.
According to Vertikal.net, Manitowoc’s former employee, John Lanning, was recruited by Sany specifically for his knowledge of Manitowoc trade secrets.
Lanning, who was named as an inventor on one of the patents at issue, had signed an NDA with Manitowoc in which he agreed not to reveal the company’s trade secrets for five years or until the formerly secret information became generally available. He was reminded of this obligation during his exit interview.
Lanning is considered an icon in the construction industry, and his face was featured on a giant Sany banner at a trade show, as reported by Fortune. He was served with court papers at the show.
The ITC granted a limited exclusion order prohibiting the entry of the cranes into the US for ten years, and a cease-and-desist order prohibiting Sany America from “importing, selling, marketing, advertising, distributing, transferring… and soliciting United States, agents or distributors for,” cranes made using the trade secrets.
We often discuss how companies can use civil litigation and criminal prosecution to protect their trade secrets. An ITC proceeding offers a way to block imports into the US of goods made using stolen trade secrets, and thus can help reduce the economic harm to a trade secret owner.
The firm’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.
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Photo Attribution: “Crane Grue machine Viatour” by I, Luc Viatour. Licensed under CC BY-SA 3.0 via Wikimedia Commons.