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Trade Secrets 2018: What Every Lawyer Should Know


Speaker(s): Amy H. Candido, Andrea Weiss Jeffries, Audra A. Dial, Bryan J. Wilson, Hon. James P. Kleinberg (Ret.), James Pooley, Jeff A. Pade, Jennifer A. Kenedy, Jon Putnam, Russell Beck, Victoria A. Cundiff, Wendy T. Wu
Recorded on: Nov. 7, 2018
PLI Program #: 219412

Andrea Weiss Jeffries is a trial lawyer who has handled formidable intellectual property disputes involving patents, trade secrets, and other forms of IP for over 20 years. She has represented clients in the pharmaceutical, chemical processing, consumer goods, and semiconductor industries in a wide range of cases.  She has particularly extensive experience representing clients in high-stakes matters involving patents relating to pharmaceutical formulations, medical devices, and wireless communications.

Andrea litigates in California state courts and Federal courts across the country. Her many representations include a pharmaceutical company accused of infringing three patents relating to various aspects of an immunoassay analyzer in the District of Delaware, obtaining a favorable settlement just prior to trial; an American multinational conglomerate in a patent ownership dispute relating to technology used in wind turbine generators, and after a six-day bench trial, obtaining a favorable decision regarding the patent at issue; and a global semiconductor chip maker in the Central District of California in a significant competitor dispute involving the infringement of five patents in four technology areas and negotiating a favorable settlement.

Over the last few years, trade secret counseling and litigation have become a more significant portion of Andrea’s practice.  Recently, Andrea led the representation of a chemical processing company in a trade secret matter in the District of Montana involving an employee who departed with over a decade of exposure to the Company’s trade secrets.  After obtaining a TRO, Andrea was able to negotiate a favorable settlement for her client.  Current trade secret matters involve collaborations between business entities that have not proceeded as planned, and allegations of misuse of trade secret information shared under the terms of the collaborations. 

Andrea is a member of the Patent Damages & Remedies Working Group Committee (chair emeritus) and the Patent Litigation Best Practices Working Group Committee (vice chair emeritus) of the Sedona Conference. She is a Vice Chair of the Amicus Committee of the Federal Circuit Bar Association, a member of the Executive Committee of the University of Southern California Intellectual Property Institute's Planning Committee, and a member of the California and Los Angeles County Bar Associations.   Andrea has written and spoken extensively on IP-related subjects, including on Artificial Intelligence.


Audra Dial is the Managing Partner for Kilpatrick Townsend’s Atlanta office and specializes in patent, trade secret and complex commercial litigation involving technology.

Ms. Dial has obtained favorable verdicts in many high-profile intellectual property disputes, including on behalf of several Fortune 500 companies. She has represented companies whose intellectual property was misused both domestically and abroad.

Ms. Dial graduated cum laude from The American University in 1994 and William & Mary School of Law in 1998.  She served as Managing Editor of the William & Mary Law Review while in law school.

She has received numerous accolades for her leadership and community service including recognition by the Atlanta Business Chronicle as a Woman Who Means Business, by the Daily Report in its 2014 Verdicts Hall of Fame for intellectual property litigation and by the State Bar of Georgia and the Georgia Supreme Court Chief Justice’s Commission on Professionalism with a Justice Robert Benham Community Service Award and serves on several non-profit boards, including the Fernbank Museum Corporate Leadership Council and the Board of Directors for Leadership Atlanta.


Bryan Wilson is a partner in the firm’s Intellectual Property Group. He is a first-chair trial lawyer with an expansive range of experience handling intellectual property matters in a variety of venues. His successful track record in recent years includes trade secrets and patent cases in both state and federal courts as well as in arbitration proceedings. He chairs the Litigation Department in the firm’s Palo Alto office, and is co-chair of the firm’s Trade Secrets Working Group. Mr. Wilson teaches a seminar in trade secret law as a Lecturer in Law at Stanford Law School (Spring 2014 and 2016), and is a contributing editor to Trade Secrets (Law and Business 2016).

Mr. Wilson’s jury trials include Hansen Medical, Inc. v. Luna Innovations, Inc., which wastried in Santa Clara County Superior Court and resulted in a $36 million trade secret and breach-of-contract verdict for Hansen Medical.

Mr. Wilson also has extensive experience in arbitration proceedings with JAMS/Endispute, the American Arbitration Association, and private arbitration proceedings, including the arbitration of patent infringement claims, business disputes and trade secret matters.

Mr. Wilson also maintains an active pro bono practice, representing organizations including the Mono Lake Committee, the Peninsula Open Space Trust, the Coastside Land Trust, the Tuolumne River Trust, and the National Law Center on Homelessness and Poverty. Before law school, Mr. Wilson worked for the Save San Francisco Bay Association and the U.S. Environmental Protection Agency.

In 2012, 2013, 2014, 2016, and 2018, Legal 500 US recommended Mr. Wilson as a leading attorney for trade secrets, describing him as “‘a very smart, thoughtful attorney,’ who is ‘courteous and assertive in trial.’”


James Pooley is a Silicon Valley lawyer representing clients in trade secret, patent and technology-related commercial disputes, and provides advice on IP strategy and data security management. He also serves as a special master, expert and arbitrator.

Mr. Pooley is an author or co-author of several major works in the IP field, including his treatise Trade Secrets (Law Journal Press) and the Patent Case Management Judicial Guide (Federal Judicial Center). His recent business book is Secrets: Managing Information Assets in the Age of Cyberespionage (Verus Press 2015). His most recent journal article is The Myth of the Trade Secret Troll: Why the Defend Trade Secrets Act Improves the Protection of Commercial Information, 23 Geo. Mason L. Rev. 1045 (Summer 2016).

The Senate Judiciary Committee relied on Mr. Pooley for expert testimony and advice during consideration of the 2016 Defend Trade Secrets Act, and one Senator later called his participation “instrumental” in achieving passage of this landmark legislation. 

In 2014 he completed a five-year term as Deputy Director General at the World Intellectual Property Organization in Geneva, where he was responsible for management of the international patent system. He is a past President of the American Intellectual Property Law Association and Chairman of the National Inventors Hall of Fame. He currently serves as Chair of the Sedona Conference Working Group 12 on Trade Secrets and as Co-Chair of the Trade Secret Task Force of the International Chamber of Commerce. He also teaches trade secret law at the University of California’s Berkeley School of Law.

In 2016 Mr. Pooley was inducted into the IP Hall of Fame for his contributions to IP law and practice.


Jeffrey A. Pade is a partner in the Washington D.C. office of Paul Hastings. He is an intellectual property litigator with over 20 years of experience in all phases of trade secrets, patent, and other intellectual property laws. He has directed complex and international civil and criminal trade secrets and patent litigation strategies concerning mechanical, semiconductor, and many other technologies for clients around the globe, and actively represents international clients in intellectual property audits, trade secrets investigations and related counseling, strategic intellectual property initiatives, and corporate transactions. Prior to practicing law he interned for Judge Norman H. Stahl of the U.S. Court of Appeals for the First Circuit. Before law school, he was an engineer in the water treatment and aerospace industries.


Jennifer Kenedy is a Vice Chair of Locke Lord's Executive Committee and former Managing Partner of the firm’s Chicago Office. She concentrates her practice on commercial litigation, including trade secret misappropriation and other intellectual property litigation. Jennifer mediates, arbitrates and tries cases on behalf of clients nationwide. She also acts as Locke Lord LLP’s Deputy General Counsel.

Since 2003 Jennifer has acted as national counsel on trade secret issues for Fidelity Investments. She obtains injunctions in federal and state courts nationwide against former brokers who leave, join competitors and misappropriate the Company's proprietary trade secret customer data. She also handles arbitrations before the Financial Industry Regulatory Authority (FINRA) seeking damages caused by the former employee and new employer's misappropriation of trade secret client data. She also acts as national restrictive covenant and trade secret counsel for several other insurance and financial services clients, acting as lead counsel in litigation pending around the country.

In December, 2017, Jennifer secured a major victory for TLS Management & Marketing Services LLC (TLS) in hard fought trade secret and business litigation  pending before the U.S. District Court for the Southern District of Mississippi Northern Division.  Jennifer successfully argued that the defendants had, throughout the litigation, permanently destroyed relevant data, perjured themselves under oath denying such destruction occurred and generally thwarted the litigation process.  On the eve of trial, TLS successfully obtained the harshest civil sanction for the intentional destruction of evidence — a default judgment against all defendants (two competing companies and an individual). The court opened its decision by stating: “A court does justice by finding truth. That search requires evidence. Intentionally destroying evidence, then, is more than a devious litigation strategy. It is a lethal attack on a court’s purpose, and must be responded to in kind.”

  • Named One of Chicago’s Most Influential Women Lawyers by Crain’s Chicago Business (2017 and 2018)
  • Recipient, Best Lawyers 2017 Woman of Influence Award
  • Recipient, Leadership Excellence in the Law Award, National Diversity Council (2014)
  • Recipient, Women's Bar Association of Illinois Esther Rothstein Award (2012)
  • Named, The Best Lawyers in America, 2011 (Commercial Litigation) and (2012-2017) (Commercial Litigation and Product Liability)
  • Named, Illinois Super Lawyer by Law & Politics magazine (2012-2018)
  • Named, "2011 Most Powerful and Influential Women in Illinois," National Diversity Council 


Jon Putnam founded Competition Dynamics as a platform for economic research and testimony at the intersection of antitrust, intellectual property and international trade.

Jon Putnam holds BA, MA and PhD degrees in economics from Yale University, where he specialized in international, macro and R&D economics. He received fellowships at Yale and Columbia Law Schools, and a Yale International and Area Studies fellowship for the study of European patent systems. Dr. Putnam’s PhD thesis, The Value of International Patent Rights, was the first to measure the world value of patent rights.

From 2001 to 2005, Dr. Putnam held a professorship in the Law and Economics of Intellectual Property at the Centre for Innovation Law and Policy, University of Toronto. Dr. Putnam has also held academic appointments at the Boston University Graduate School of Management, Columbia University Schools of Law and Business, Vassar College, and Yale College.

Among other publications, Dr. Putnam is the author of “Patent Valuation,” in The New Palgrave Dictionary of Economics (2008); “The Law and Economics of International Intellectual Property: A Primer,” in Frontiers of Economics and Globalization, vol. 2: Intellectual Property, Growth and Trade (2008); and is the editor of and a principal contributor to Intellectual Property Rights and Innovation in the Knowledge-Based Economy (2006).

Dr. Putnam has been retained in more than 100 consulting engagements, and has testified more than 20 times, in patent, antitrust, copyright, trade secret, and contract actions, in federal, state, and bankruptcy courts, before the Federal Trade Commission and International Trade Commission, and in US and international arbitrations.

Dr. Putnam regularly testifies in large-scale intellectual property litigation. Cases with more than $500 million in controversy include:

  • Tessera v. ASE et al
  • MedioStream v. Microsoft et al
  • TSMC v. SMIC
  • LG Display v. AU Optronics
  • SCO v. IBM
  • Nokia v. InterDigital
  • Eastman Kodak v. Sun Microsystems
  • TM Patents v. IBM
  • In re Paragon Trade Brands


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.


Russell Beck is a business and intellectual property litigator, nationally recognized for his trade secrets and noncompete experience.  He's been invited to the Obama White House to develop guidelines for the proper use of noncompetes and has been cited as an expert in trade secrets and noncompetes by The New York Times, The Wall Street Journal, the White House, the Treasury Department, National Public Radio, the BBC World News Service, Le Monde, and many others.

Russell has over 28 years of experience, representing clients (ranging from Fortune 500 companies to individuals) throughout the country in federal and state trial and appellate courts, arbitrations, and mediations.

  • In 2016, he was invited to the White House to participate in working group discussions that led to the development by the White House of a Call to Action on noncompetes. (He was the only private practice lawyer to participate in those discussions.)
  • He is assisting a United States Senator on proposed noncompete legislation.
  • He was asked to advise on, and ultimately to draft, one of the first two noncompete bills filed in Massachusetts. He advised several legislators and drafted the language for the recently filed trade secrets and noncompete bill in Massachusetts, which was signed into law in Massachusetts on August 10, 2018 as part of a larger economic bill.
  • He has been quoted and his work cited in The Wall Street JournalThe New York TimesThe Boston GlobeThe Boston Herald, and Fortune,as well as by the White House and the United States Treasury Department. He has also been interviewed on NPR’s On Point, PBS Newshour, and NECN News.

Russell writes and administers the award-winning Fair Competition Law blog and publishes and lectures frequently, including authoring the book, Negotiating, Drafting, and Enforcing Noncompetition Agreements and Related Restrictive Covenants (5th ed., MCLE, Inc. 2015) and the chapters, Trade Secret Misappropriation and Noncompetition Agreements, for the book, Intellectual Property Practice (MCLE, Inc. 2016).

Russell developed and teaches Trade Secrets and Restrictive Covenants at Boston University School of Law and serves as chair of the American Intellectual Property Law Association’s Trade Secrets Committee.

Prior to founding the firm, Russell was a partner with Foley & Lardner LLP, where he was founder and chair of the Trade Secret/Noncompete Practice.  Before that, he was a partner at Epstein Becker & Green, PC, and an associate at Reynolds Rappaport & Kaplan and at Simpson Thacher & Bartlett.


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.


Wendy T. Wu is a Managing Director in Stroz Friedberg’s Los Angeles office, where she directs engagements involving cybercrime and data breach response, information security, digital forensics, intellectual property protection, and electronic discovery.  Ms. Wu has more than 15 years of legal and investigative experience having served as an Assistant United States Attorney (AUSA) and a white-collar criminal and civil litigator.

Prior to joining Stroz Friedberg, Ms. Wu was an AUSA in the U.S. Attorney’s Office for the Central District of California, where she most recently served in the Cyber and Intellectual Property Crimes Section, National Security Division.  She also served as a member of the Los Angeles Electronic Crimes Task Force, an inter-agency cybercrime response organization.   As an AUSA, Ms. Wu conducted and supervised investigations and prosecutions of computer intrusions, extortionate denial of service attacks, computer and Internet fraud, theft of trade secrets, criminal copyright infringement, cyber exploitation of victims, financial fraud, and other abuses involving the theft and use of personal identity.  Among her notable cyber cases, Ms. Wu was lead counsel in the first criminal trial involving violations of the Digital Millennium Copyright Act; prosecuted the operator of the now-defunct “revenge porn” website, isanyoneup.com; and supervised an international investigation involving the use of hired hackers to launch computer attacks against healthcare companies.  She trained new prosecutors regarding electronic surveillance and data privacy issues, and served as formal mentor to new prosecutors during trial.  During her tenure as an AUSA, Ms. Wu also served in the U.S. Attorney’s Office’s Organized Crime Drug Enforcement Task Force, where she focused on prosecuting large scale drug trafficking and gang related offenses.

Before joining the U.S. Attorney’s Office, Ms. Wu was a member of the White Collar Defense & Investigations Group of Proskauer Rose in New York and Los Angeles.  While at Proskauer, Ms. Wu’s practice focused on white collar criminal defense and compliance matters, with an emphasis in the Foreign Corrupt Practices Act.

Ms. Wu graduated with honors from American University, Washington College of Law, and received her B.A. from the University of California, Santa Barbara.  She speaks fluent Mandarin Chinese and Taiwanese.

Education

J.D., American University, Washington College of Law

B.A., University of California, Santa Barbara


Amy Candido is a partner at Quinn Emanuel Urquhart & Sullivan LLP based in San Francisco.  She is an experienced trial lawyer, focusing on high-stakes, complex intellectual property litigation on behalf of both plaintiffs and defendants.  She has litigated and advised clients in a wide range of technologies, including the Internet, computer hardware and software, semiconductor manufacturing, casino gaming and genetic testing.  Ms. Candido has conducted jury trials in the Eastern District of Texas, the Northern District of California, and the Southern District of California, bench trials at the International Trade Commission, and argued before the Federal Circuit.  Most recently, Ms. Candido has been involved in several trade secret misappropriation cases, with a particular focus on damages issues.  Previously, Ms. Candido represented ViaSat in a complex patent and breach of contract jury trial against Space Systems/Loral involving broadband satellites, which resulted in a jury verdict of $283 million for ViaSat.  She tried the Function Media v. Google and Bright Response v. Google jury trials, both of which resulted in complete defense verdicts of non-infringement and invalidity for Google.  She was trial counsel for HTC in the two ITC investigations (337-TA-797 and 337-TA-710) initiated by Apple as part of the “smartphone wars,” and represented Google in numerous ITC and multi-district actions concerning the Android operating system and various smart phone technologies.  Ms. Candido has been selected as an Intellectual Property Rising Star by Law360 and as one of the top 100 women litigators in California by The Daily Journal