Skip to main content

Trade Secrets 2016: What Every IP Attorney Should Know


Speaker(s): Alan Cox, David S. Almeling, Hon. James L. Warren, Hon. James P. Kleinberg (Ret.), John F. Marsh, Julia Elvidge, Laura Wen-yu Young, Marti A. Johnson, Pamela Passman, Thomas A. Counts, Victoria A. Cundiff
Recorded on: Dec. 5, 2016
PLI Program #: 150464

Education
PhD in economic analysis and policy, Haas School of Business, University of California, Berkeley
MA in economics, University of British Columbia
BSc in environmental science, York University, Toronto

Experience
Dr. Cox participates in the Intellectual Property, Antitrust, and Securities practices of NERA. He has extensive experience testifying in federal court, state court, US and international arbitrations, and before utility commissions. In arbitrations he has appeared before the NASD, the American Arbitration Association, and the Japan Commercial Arbitration Association. In graduate school he specialized in industrial organization, antitrust, regulation, and natural resource economics, including energy. His previous positions include Visiting Economist at MIT's Energy Laboratory.

In intellectual property matters, Dr. Cox has testified on a wide variety of patent issues in the semiconductor, biotechnology, telecommunications, consumer product, and other industries. He has also testified on trademark, copyright, and trade secret matters. For example, he testified in Delaware District Court in a matter involving alleged theft of trade secrets and false advertising in the manufacture and sale of golf balls. He was retained by Texas Instruments in a New Jersey patent case, which resulted in a jury award of $112 million to Texas Instruments. He has also testified in matters related to standards and patent pools.

Antitrust issues on which Dr. Cox has testified include allegations of price fixing of semiconductors and professional services, price manipulation in natural gas markets, attempts to monopolize in the credit card and other industries, Robinson-Patman matters, the competitiveness of crude oil and product pipeline services, allegations of anti-competitive licensing, and the competitive consequences of a major electric utility merger. He has examined and provided economic advice on a wide array of competition issues including vertical restraints in gasoline retailing, allegations of crude oil price fixing, the competitive consequences of mergers in several industries, and the economic costs of restraints imposed on a "dominant" telecommunications carrier. He has been included in the "Who's Who of Competition Lawyers and Economists" by the Global Competition Review.

In Securities matters, Dr. Cox has testified in class action fraud cases, including on materiality, causation, and damages in Section 10 and 11 matters. His testimony has also included the valuation of restricted stocks, options, bonds, preferred shares in venture-capital backed firms, goodwill, and the appropriate valuation of physical assets. Dr. Cox has also testified on unjust enrichment from alleged insider trading, and has calculated harm due to alleged inappropriate investments, backdating, breach of contract, and banking practices.


John Marsh, a partner with Hahn Loeser & Parks LLP, focuses his law practice on trade secrets litigation and the enforcement of non-competes.  John is listed in the most recent edition of The Best Lawyers of America for Litigation – Intellectual Property and in the 2009-15 editions of Ohio Super Lawyers, and he is AV® Preeminent™ Rated by Martindale-Hubbell, its highest available rating for legal ability and professional ethics.

He is the Chairman of the American Intellectual Property Law Association’s Trade Secret Law Committee, and is a former Chair of the American Bar Association’s TRO, Preliminary and Permanent Injunction Sub-Committee.

John frequently speaks and writes on topics in the area of injunctive relief, trade secret litigation and non-compete agreements.  He has been quoted on trade secret law and restrictive covenant issues by Inside Counsel, Law360, The National Law Journal, and Managing IP; and his blog, “The Trade Secret Litigator” (www.tradesecretlitigator.com), has been cited by publications including The Wall Street Journal.


Judge Kleinberg retired from the Superior Court of California in April, 2014 after 12 years of service. Since then he has served as a neutral with JAMS based in both the San Francisco and Silicon Valley offices handling arbitration, mediation, mock trials and appeals, and special federal and state court assignments, such as discovery referee and special master. During his last three years on the bench he supervised the Complex Civil Litigation department. After graduating from Michigan Law School Judge Kleinberg was a Trial Attorney with the U.S. Department of Justice, Antitrust Division. In 1969 he entered commercial litigation practice with a firm in San Francisco and in 1983 joined McCutchen, Doyle, Brown & Enersen (later Bingham McCutchen) as a litigation partner in San Jose, Palo Alto, and San Francisco. In practice he handled major commercial cases in courts throughout the United States, Europe, and Asia. In 2013 he was named “Outstanding Jurist” by the Santa Clara County Bar Association, and in 2014 he was named “Trial Judge of the Year” by the Santa Clara County Trial Lawyers Association. He serves as co-ombudsperson in a program initiated by the U.S. District Court, Northern District of California and is a past-President and currently Director of the Association of Business Trial Lawyers, Northern California and the William A. Ingram Inn of Court. He is a regular panelist for PLI and the Sedona Conference, and was designated a Holton Teaching Fellow at the Haas School of Business, University of California at Berkeley.


Pamela Passman is President and CEO of the Center for Responsible Enterprise And Trade (CREATe.org), and its wholly-owned subsidiary, CREATe Compliance Inc., two entities with a common mission to promote leading practices in intellectual property (IP) and trade secret protection, cybersecurity and anti-corruption.

Prior to founding CREATe in 2011, Passman was Corporate Vice President and Deputy General Counsel, Global Corporate and Regulatory Affairs, Microsoft Corporation. From 2002 to 2011, Passman led Microsoft’s global public policy work and regulatory compliance across a range of issues, including privacy, security and cloud computing issues. She worked with Microsoft’s leadership to advance its businesses in China and other emerging markets.

She first joined Microsoft in 1996 and until 2002 led the Legal and Corporate Affairs organization in Asia, based in Tokyo, with a focus on Japan, Korea and the People’s Republic of China. Prior to joining Microsoft, Ms. Passman practiced law with Covington & Burling in Washington, D.C. and Nagashima & Ohno in Tokyo, Japan.


Tom Counts is a partner in the IP and Complex Litigation practice groups and co-chair of the firm’s Privacy and Cybersecurity practice. He is based in the firm’s San Francisco office.

Mr. Counts’ practice focuses on complex business and technology litigation and trial practice, with an emphasis on intellectual property disputes, privacy and data security law, trade secret litigation, trademark, false advertising and unfair competition litigation, licensing litigation, competitive business torts, and litigation stemming from failed joint venture agreements. He has substantial experience obtaining and opposing demands for prejudgment remedies, including writs of attachment, temporary restraining orders, and preliminary injunctions. Mr. Counts has conducted numerous arbitrations and mediations, and has successfully briefed and argued appeals before both the Ninth Circuit Court of Appeals and the California Court of Appeal.

Experience

  • Align Technology, Inc. – Represent maker of Invisalign invisible braces in multiple litigation matters, including three International Trade Commission matters involving patent infringement and trade secret misappropriation by foreign competitor.
  • WideOpenWest – Represent Illinois Internet Service Provider in privacy class action litigation alleging ECPA and related-claims stemming from behavioral advertising program.
  • Leading Electronic Device Manufacturer – Represent Company in multiple class action matters involving allegations of hardware product defects and warranty claims, false advertising, and privacy claims involving collection of personal information during e-commerce transactions.
  • Hitachi GST – Represent Hitachi in litigation involving failed joint venture involving development of 100+ acre South San Jose property.

Speaking Engagements and Publications

  • Presenter at 2012 Bridgeport program on privacy litigation and privacy policies
  • Presenter at annual PLI Intellectual Property Law Institute on recent developments in trade secret law
  • Presenter at PLI program on Trade Secret Litigation and Employee Mobility


Victoria Cundiff is a partner at Paul Hastings resident in New York, where she is a leader of the Firm’s nationally ranked global trade secrets litigation practice.  She works with clients in industries including technology, software, media, financial services, insurance, pharmaceuticals, chemicals and sales and distribution organizations. She has tried trade secrets and related commercial and intellectual property disputes throughout the United States and before a variety of arbitration and mediation tribunals.  As important is her work to help organizations avoid litigation.  She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside court. 

Ms. Cundiff is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law and at the University of Pennsylvania Law School, where she teaches trade secrets law.  She is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her a “Leading Lawyer” nationally in Trade Secrets Litigation); and New York Super Lawyers, among other directories. She is the Vice Chair of the IPO’s Committee on Trade Secrets.


As SVP TechInsights Research, Julia Elvidge is responsible for the Competitive Technical Intelligence and Product Development division at TechInsights, Inc.  Ms. Elvidge joined Chipworks in 1994 as the second employee and held increasingly senior positions before being name President in 2003.  As a major shareholder, she was instrumental in growing the firm from a small start up to a global enterprise of 120 people.  TechInsights, the industry leader in proving patent value, acquired Chipworks in June 2016.

A renowned thought-leader in the industry, Ms. Elvidge recognised early in her career the business value that competitive technical intelligence and Intellectual Property held for technology companies. She began her career with Mosaid Technologies; then joined LSI Logic, where she honed her expertise in ASIC design, ultimately leading her own engineering groups. Ms. Elvidge holds multiple patents for her work.

Ms. Elvidge is a board member of the Information Technology Association of Canada; and is a longstanding member of the Licensing Executives Society.  A winner of numerous awards for her contributions to entrepreneurship in the high-tech industry, she is a regular speaker at intellectual property events, such as the Licensing Executives Society (LES) and the Intellectual Property Business Congress (IPBC) conferences.

A role model for women in technology and business – and a technology geek at heart, Ms. Elvidge was one of six women in a class of 100 to pursue an education in electrical engineering. She earned her degree in Electrical Engineering from the University of Waterloo in Ontario.


Born in San Francisco, to a father from Shanghai via Taiwan, and an American mother, Ms. Young grew up in a Chinese-speaking household, and was educated at UC Berkeley. She received her Juris Doctor from Boalt Hall, UC Berkeley, and began her practice by splitting her time between San Francisco and Taipei, Taiwan in 1988. She added mainland China into her regular schedule in 1994, when Wang & Wang added its Beijing office. She was admitted in California and to the Federal District Court, Northern District of California in 1988, and was registered as a foreign legal expert with the Taipei Bar Association in 2004, and with China's Ministry of Justice in 2005.

She an editorial advisor, and author of the Taiwan volume of CCH Asia’s Employment Law series, the author of the Intellectual Property chapter of Juris Publishing’s Doing Business in China, and author of numerous articles on Chinese law and business, and has presented many lectures for the Practicing Law Institute, International Trademark Association, International Anti-Counterfeiting Association, and local bar associations. Young is a Trustee of the UC Berkeley Foundation and is a member of its Executive Committee. She also serves on the Board of Advisors of the C.V. Starr East Asia Library at UC Berkeley, and is the President of the Board of the Phoebe A. Hearst Museum.


David Almeling is a partner of O’Melveny & Myers LLP, where focuses his practice on both patent and trade secret litigation. He is also a leader in those fields. David was profiled in The National Law Journal’s inaugural list of “Intellectual Property Trailblazers & Pioneers,” which highlights 50 of the top intellectual property lawyers across the country “who are raising the bar in intellectual property law.” David is recognized as a leading attorney in the IAM Patent 1000, which describes him as an “up-and-coming star” who “gets great results,” and a “trade secret authority.” Legal 500 identifies David as one of the “key figures in the trade secrets space.” David is currently working on the third edition of his book, Trade Secret Law and Corporate Strategy, which will be published by Lexis/Nexis in 2018.

David has been successful in every stage of litigation, from securing fast and favorable results through early motion practice to winning jury trials (in both patent and trade secret cases) to preserving victories on appeal. Clients also entrust David with a wide variety of non-litigation tasks, from conducting pre-filing patent analysis to investigating alleged trade secret theft to advising companies regarding employee mobility issues. He has also represented clients at the U.S. Patent & Trademark Office (“PTO”), including serving as first chair at several Inter Partes Review hearings.


Hon. James L. Warren (Ret.) has been a full-time neutral since 2006, and has mediated and arbitrated hundreds of matters.  He is known for his insightful analysis, creative problem solving, and warm but firm manner with all parties.  Judge Warren is often chosen to handle complex cases, and his experience includes a variety of practice areas, including business and commercial disputes, professional malpractice, insurance, employment and IP matters.  Prior to becoming a neutral, Judge Warren was involved in many complex and high profile cases as a San Francisco Superior Court judge.  Prior to his appointment to the bench, Judge Warren was Senior Counsel for Pacific Bell in San Francisco, where he was primarily responsible for large and complex commercial litigation.  Previously, Judge Warren practiced for nearly twenty years with Pillsbury Winthrop (formerly Pillsbury, Madison & Sutro), where he specialized in antitrust and large commercial cases and was founding Chair of the firm’s Intellectual Property Specialty Group.


Marti Johnson concentrates her practice on intellectual property and technology law, with a focus on patent and trade secret litigation. She has represented clients in federal and state litigation, multidistrict litigation, arbitration, and before the Patent Trial & Appeal Board.  She is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Ms. Johnson has represented clients in matters involving a wide array of technologies, including computer hardware and software, financial systems, e-commerce, Internet technologies, food processing and engineering, telecommunications systems, medical devices, data transmission, semiconductors, electronic displays (including micromirror array and LCD technology) and pharmaceuticals.

Ms. Johnson also provides guidance to her clients on a variety of issues, including intellectual property transactions, freedom to operate determinations, electronic discovery parameters and damages evaluations.

Ms. Johnson’s pro bono practice includes nonprofit intellectual property investigations, social security benefits representation, prisoner abuse cases, and work for the Innocence Project.