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Demonstrating trade secret misappropriation in a civil case often turns on the IP owner’s ability to show that it has a protectable trade secret. Yet in the criminal context, the US Government has taken the position that it can establish attempted trade secret theft irrespective of such a showing. In a criminal prosecution of theft, the Government must generally prove beyond a reasonable doubt each element of the offense — including the specific object of the alleged theft. Recent prosecutions involving allegations of trade secret theft and attempted trade secret theft highlight an important deviation from this principle and draw a line between two provisions of the Economic Espionage Act, 18 U.S.C. § 1831 and 18 U.S.C. § 1832.

In United States v. O’Rourke,1 it was undisputed that the defendant took information that he was not legally entitled to from his employer.2 The defendant argued that § 1832 permits prosecution for attempt violations only if a defendant tries and fails to misappropriate actual trade secrets.3 Relying on United States v. Hsu,4 the legislative history of the EEA, and the analogous case law addressing convictions for distributors of sham drugs, O’Rourke held that the Government can pursue attempt charges under § 1832 if the defendant believed the information to be a trade secret, even if the information taken did not constitute a trade secret under the Act.5 The court reasoned that individuals seeking to harm a company and benefit a competitor should not receive a “get out of jail free” card due to their mistaken belief as to the proprietary nature of the misappropriated material.6

Similar issues are arising in United States v. Levandowski,7 as the Government pursues criminal charges of attempted trade secret theft against a former engineer accused of stealing trade secrets related to self-driving cars. In response to a bill of particulars filed by the defendant on November 6, 2019, US District Judge William Alsup has ordered both parties to file a brief outlining their positions as to the level of specificity required by the prosecution when it pursues trade secret theft charges. The prosecution has argued that they have met this threshold by proving that the defendant reasonably believed the information was a trade secret to support the attempt charges.

O’Rourke established that criminal penalties can be imposed for the attempted theft of trade secrets, even if the information does not qualify as a trade secret per 18 U.S.C. § 1839. Levandowski may provide more clarity on level of specificity required by the Government in order to pursue charges of attempted trade secret theft.

If you have any questions about these updates, please contact the authors or the Baker McKenzie attorney with whom you work.


1 United States v. O’Rourke, No. 17-cr-00495, 2019 U.S. Dist. LEXIS 174962 (N.D. Ill. Oct. 9, 2019).
2 Id. at *11.
3 Id. at *8.
4 United States v. Hsu, 155 F.3d 189, 198 (3d Cir. 1998).
5 United States v. O’Rourke, No. 17-cr-00495, 2019 U.S. Dist. LEXIS 174962, *10-11 (N.D. Ill. Oct. 9, 2019).
6 Id. at *11.
7 5:19-cr-00377 (N.D. Cal.).


Kevin O'Brien is a partner in Washington, DC and former Chair of the North America Intellectual Property Practice Group. Mr. O'Brien has served as Co-Chair of the Patent Litigation Committee of the Federal Circuit Bar Association and has taught a course on Trade and Competition at Johns Hopkins University. He is currently Chair of the Trade Secrets Business Unit of the Global IPTech Group. He has more than 30 years of experience practicing in the areas of intellectual property and international trade law, with an emphasis on counseling and enforcement. Mr. O'Brien has been recognized as a leading lawyer by Chambers USA (District of Columbia) and has been selected as one of the "best lawyers" for IP law in Best Lawyers in America and in the Legal 500.


Brian Whisler is a member of Baker McKenzie’s Compliance and Investigations, Dispute Resolution and Global Pharmaceuticals Practice Groups. Prior to joining the Firm, Mr. Whisler served as the criminal chief assistant United States attorney in the Eastern District of Virginia, where he managed the criminal trial practice of the Richmond office which handled cases ranging from white collar crime, violent crime, public corruption and terrorism. Mr. Whisler focused his own trial practice on white collar prosecutions including health care fraud, securities fraud, money laundering, and tax fraud. He also served as an assistant United States attorney for the Western District of North Carolina where he focused on white collar prosecutions and served as chief of appeals and health care fraud coordinator.


Christine Streatfeild is a partner in the IPTech Practice Group. She has a broad range of trade, regulatory, and litigation experience, most frequently representing clients in antidumping and countervailing duty cases, safeguard measures, duties imposed for national security purposes (Section 232 duties), and Section 337 intellectual property and trade secrets disputes. She appears before the US International Trade Commission (ITC), US Department of Commerce (DOC), and the federal courts. She also routinely advises companies regulated by the Food and Drug Administration (FDA) on issues affecting mergers, acquisitions, licensing, and compliance. Prior to joining Baker McKenzie, Ms. Streatfeild served as the acting deputy director of the Generalized System of Preferences (GSP) and in the Environment and Natural Resources division of the Office of the United States Trade Representative. She has also served as an adjunct professor at the Krieger School, Johns Hopkins University, where she taught Global Trade, Policy and Competition.


Maleena Paal is an associate in Baker McKenzie's Intellectual Property and Technology Practice Group in Washington, DC. She represents both US and international clients on a wide range of intellectual property and trade remedy matters. Maleena began her career with Baker McKenzie as a summer associate, during which time she completed an International Clerkship in the Firm's London office. Currently, Maleena serves as the co-chair for the women's affinity group, BakerWomen.