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Trade Secrets 2019: What Every Lawyer Should Know

Speaker(s): Amy H. Candido, Andrea Weiss Jeffries, Barbara A. Reeves, Hannah T. Joseph, Hon. James P. Kleinberg (Ret.), James Pooley, Jeffrey A. Pade, Jennifer A. Kenedy, Jon Putnam, Julie McCarthy, Laura Wen-yu Young, Neel Chatterjee, Sean R. McTigue, Victoria A. Cundiff, Wendy T. Wu
Recorded on: Oct. 7, 2019
PLI Program #: 252843

Amy Candido is a partner at Quinn Emanuel Urquhart & Sullivan LLP based in San Francisco.  She is a trial lawyer with extensive experience litigating patents, trade secrets, copyrights and other intellectual property in “bet the company” cases on behalf of both plaintiffs and defendants.  She has litigated and advised clients in a wide range of technologies, including self-driving cars, various smart phone technologies, advertising on the Internet, computer hardware and software, semiconductor manufacturing, casino gaming, satellite design, 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.  Ms. Candido has litigated numerous complex trade secret misappropriation cases, including representing Waymo in Waymo v. Uber.  She has a particular interest in trade secret damages issues and is a member of the Sedona Conference Working Group on Trade Secrets Damages.  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—Top Verdict of 2014 by the National Law Journal, Top California Verdict of 2014 by the Recorder, and “Milestone Case of the Year” from the Managing IP North America Awards.  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

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 lnstitute'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.

Barbara A. Reeves, Esq., is a mediator, arbitrator and special master with JAMS, based in Southern California. She handles domestic and international cases in intellectual property, healthcare, sports and entertainment law, and commercial cases. She has been a full-time neutral since January 2006. Before becoming a full-time neutral, she was a litigator with the United States Department of Justice, Antitrust Division in Washington, D.C. and Los Angeles, a partner at national law firms and Associate General Counsel and Vice President for Southern California Edison and Edison International.

Ms. Reeves has 30 years of intellectual property experience. Her experience began in connection with litigation involving the interaction between antitrust (her specialty at the time) and patent law. She has since handled many cases involving antitrust and patent claims and counterclaims, as well as trade secret claims, and counseled clients on the intersection of trade secret, contract, antitrust and patent law.

Ms. Reeves has an in-depth understanding of various types of technology as it relates to intellectual property cases, including biotechnology, medical devices, semiconductors, telephony, broadband DSL, energy, software, computer and industrial equipment.

She is an arbitrator on the Court of Arbitration for Sport, a Fellow of the Chartered Institute of Arbitrators and the College of Commercial Arbitrators, an arbitrator on the U.S. Olympic and Para-Olympic Committee SafeSport panel, and a certified mediator with the International Mediation Institute. She received her J.D. cum laude from Harvard Law School.

Hannah T. Joseph is a business and intellectual property litigator who represents corporate and individual clients in complex commercial litigation.

Hannah specializes in noncompete and nonsolicitation agreements, trade secrets, and employee mobility.

Hannah is an attorney with the firm’s litigation group, focusing her practice on the growing areas of trade secrets law, restrictive covenants, employee mobility, and unfair competition. She has counseled both corporate and individual clients on the use and enforceability of noncompete, nonsolicitation, and nondisclosure agreements, and successfully litigated cases on both sides regarding the enforcement of such agreements. Hannah also represents corporate and individual clients in disputes involving breach of contract, breach of fiduciary duty, and intra-corporate matters.

Hannah vigorously represents companies in employment matters, including discrimination, retaliation, harassment, wrongful termination, wage and hour, and retaliation claims.

She has litigated in state and federal court, and obtained successful results in mediation.

Hannah is also an active member of the Greater Boston legal community. She is an active member of the Boston Bar Association, where she currently serves as committee co-chair in the Intellectual Property Law Section. Hannah also co-founded the Boston Associates’ Networking Group, a networking association for associates at small- and mid-sized law firms, as well as in-house legal departments.

Jeff Pade is a partner in the Washington D.C. office of Paul Hastings LLP.  Jeff is an intellectual property litigator with over 20 years of experience in all phases of trade secrets and other intellectual property disputes.  He directs complex civil and criminal trade secrets litigations concerning diverse technologies for clients around the globe, and also represents clients in internal trade secrets audits and related forensic investigations, as well as trade secrets compliance initiatives. 

Jeff recently obtained two successful dismissals of two separate trade secret suits against foreign defendants, which garnered international recognition.  In addition, Jeff’s representation of Kolon Industries in its six-year, billion-dollar, civil and criminal international trade secrets litigation was instrumental in his firm’s recognition by Chambers, Legal500, and The American Lawyer.

Jeff’s current representations include trade secrets litigations and arbitrations, offensive and defensive internal trade secrets investigations, and pre-litigation counseling, nearly all on behalf of overseas clients.  Jeff is a frequent speaker and author on trade secrets issues, and is an active member of the Sedona Conference’s working group on trade secrets.  Jeff also teaches Trade Secrets Law at The George Washington University Law School. 

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).

  • Named One of Chicago’s Most Influential Women Lawyers by Crain’s Chicago Business (2017- 2020)
  • 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 (2012-2020) (Commercial Litigation and Product Liability)
  • Named, Illinois Super Lawyer by Law & Politics magazine (2012-2020)
  • Named, "2011 Most Powerful and Influential Women in Illinois," National Diversity Council

Jim Pooley is a Silicon Valley lawyer representing clients in trade secret and technology-related commercial disputes.  He advises companies on trade secret strategy and management.  He also serves as a special master, expert witness and arbitrator.

Jim 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 most recent business book is Secrets: Managing Information Assets in the Age of Cyberespionage (Verus Press).

The Senate Judiciary Committee relied on him 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 Jim 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 (PCT). He is a past President of the American Intellectual Property Law Association and former Chairman of the National Inventors Hall of Fame. He currently serves as Chair of the Sedona Conference Working Group 12 on Trade Secrets and has served as Co-Chair of the Trade Secret Task Force of the International Chamber of Commerce. He also taught trade secret law at the University of California’s Berkeley School of Law for many years.

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



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. Most recently, Dr. Putnam testified for plaintiff SS&C in an Illinois trade secret litigation, resulting in a $44 million jury verdict. 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 the University of 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 a Director of the Association of Business Trial Lawyers, Northern California and the William A. Ingram Inn of Court. And Judge Kleinberg was Chair of the California State Bar's Litigation Section. 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.

Julie McCarthy joined the Genomics Institute of the Novartis Research Foundation (GNF) in September 2014 as General Counsel and Vice-President of Legal. Previously, Julie held the position of Executive Director and Associate General Counsel at the Novartis Institute of Biomedical Research (NIBR) in Cambridge, Massachusetts, specializing in employment matters. Prior to joining NIBR in 2010, Julie worked in-house at Harvard Vanguard Medical Associates in Boston, a 16-site multi-specialty medical group practice with over 500 physicians. Before moving in-house, Julie worked at a large law firm for six years and for the federal government for five years. Julie was honored in March 2014 as an “In-House Leader in the Law” by Massachusetts Lawyers’ Weekly, Rhode Island Lawyers’ Weekly, and New England In-House Journal, for outstanding professional accomplishments and demonstrating innovative and practical business and legal skills. 

Laura Wen-yu Young is a Partner in the law firm of Wang and Wang, LLP, with offices in Shanghai, and San Francisco.  She received her AB and JD from UC Berkeley.  She is a Director of the Wang Family Foundation, and serves as President of the Phoebe A. Hearst Museum Advisory Board, and is a Trustee of the UC Berkeley Foundation. 

She has taught International Intellectual Property Law at Soochow University’s Kenneth Wang School of Law, Cornell University Law School, Pacific/McGeorge School of Law, and also taught Foundations of Law: China and the West, at UC Berkeley.  She is the author of many articles on business law and intellectual property in China and Taiwan, published by CCH Asia, Juris, Warren Gorham Lamont, West Publishing, INTA’s Trademark Reporter, and others.

Mr. McTigue is a Principal at Bartko Zankel Bunzel & Miller, P.C. Most recently, he represented ASML US, Inc. v. XTAL, Inc. trade secrets jury trial in Santa Clara Superior Court. During the trial, he examined ASML’s expert witnesses, cross-examined XTAL, Inc.’s damages expert, and argued damages during closing argument. The case concerned theft of ASML US, Inc. trade secrets by former employees to develop highly sophisticated computational lithography software. The Bartko Zankel trial team, led by Patrick M. Ryan and assisted in Court by Stephen Steinberg, Brian A. E. Smith, and Sean McTigue, prevailed at the jury trial on all causes of action, and ultimately obtained a judgment of $845M and a permanent injunction against XTAL, Inc.

Mr. McTigue represents both plaintiffs and defendants in complex commercial disputes and intellectual property litigation, with a focus on trial practice. He attended University of California, Berkeley School of Law (2012). During law school, he competed nationally in moot court competitions, including reaching the national final round in the National Moot Court Competition. He served as an extern to Justice Mark B. Simons of the First District Court of Appeal. During his time at Bartko he has assisted with a number of trials and arbitrations tried decision.

Neel Chatterjee is a Partner in Goodwin’s Intellectual Property Litigation Practice. An internationally recognized technology litigator and trial lawyer, Neel has a proven track record of wins in high profile hard-to-win technology cases. His cases often break new ground in undefined areas of the law and are regularly on the cutting edge of the most important new technologies. His clients have included Microsoft, Oracle, eBay, Facebook, Synopsys, NVIDIA, LinkedIn and many others.  Neel has been recognized as a top IP litigator and trailblazer by multiple publications and directories.

Neel is involved with many organizations promoting diversity and social justice.  His involvement includes serving on the Board of Directors of the Law Foundation of Silicon Valley.  He also founded the Bay Area Diversity Career Fair, one of the most successful diversity career fairs in the U.S.

Neel has a J.D. from Vanderbilt Law School and a B.S. from Dartmouth College.

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 Principal of Pacific Intelligence & Cyber and is a recognized expert in cybercrime and data breach response, information security, digital forensics, and intellectual property protection. Wendy joined Pacific Intelligence & Cyber after leading the West Region Practice of Stroz Friedberg, an industry-leading global cybersecurity and risk management firm. 

Wendy was an Assistant U.S. Attorney in the U.S. Attorney’s Office for the Central District of California, where she served in the Cyber and Intellectual Property Crimes Section. She also served as a member of the Los Angeles Electronic Crimes Task Force, an inter-agency cybercrime response organization. As an AUSA, Wendy conducted and supervised investigations and prosecutions of computer intrusions, extortionate denial of service attacks, computer and Internet fraud, criminal copyright infringement, theft of trade secrets, cyber exploitation of victims, financial fraud, and identity theft. Among her notable cyber cases, Wendy 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.

Before joining the U.S. Attorney’s Office, Wendy was a member of the White Collar Defense & Investigations Group of Proskauer Rose in New York and Los Angeles.