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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 in the San Francisco office of Wilson Sonsini Goodrich & Rosati. She is a trial lawyer who focuses on high-stakes, complex intellectual property matters. She has extensive experience litigating patents, trade secrets, copyrights, and other IP in “bet the company” cases nationwide on behalf of both plaintiffs and defendants. Amy has tried numerous jury and bench trials, securing courtroom victories in a variety of difficult cases. Her trial victories include The National Law Journal’s Top Verdict of 2014 and three complete defense verdicts in the Eastern District of Texas.

While successfully leading many of the largest and most important IP litigation matters over the past two decades, Amy has also become a trusted advisor to technology companies of all sizes. Her clients have ranged from market leaders to innovative start-ups in a diverse array of industries, including the mobility, internet, mobile, computer hardware and software, semiconductor, networking, storage, aerospace, gaming, and life sciences sectors. In addition to IP, Amy has litigated antitrust, securities, employment, and complex commercial cases. She practices in federal and state courts throughout the United States, as well as before the International Trade Commission.

Amy regularly speaks and publishes on a wide range of IP topics, including trade secrets, damages, and the intersection of IP and antitrust. Since 2019, she has served as a member of the drafting group on monetary remedies in trade secret litigation for the Sedona Conference’s Working Group on trade secret law, an effort by judges, academics, and practitioners to promulgate recommendations on various aspects of the law. 

Prior to joining Wilson Sonsini in 2021, Amy was a partner at Quinn Emanuel Urquhart & Sullivan, LLP.  After receiving her J.D. with Honors from the University of Chicago Law School in 1997, Amy practiced general litigation for seven years at Cravath, Swaine & Moore LLP, in New York.


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 Senior Counsel at Beck Reed Riden LLP, where she focuses her practice on the growing areas of trade secrets and restrictive covenants law, employee mobility, and unfair competition.

She represents both corporate and individual clients on issues concerning the protection of trade secrets and enforceability of noncompete, nonsolicitation, and nondisclosure agreements. In this regard, she has successfully litigated cases on behalf of both employers and employees, including at the preliminary injunction stage. Hannah also represents clients in cases involving breach of contract, breach of fiduciary duty, and intra-corporate matters. She has successfully litigated in state and federal court, and obtained favorable results through mediation.

Hannah is an active member of the Greater Boston legal community. In 2014, she pioneered the Boston Bar Association’s Intellectual Property Basics Workshop series. In 2016, she co-founded the Boston Associates’ Networking Group, an attorney networking group that she later grew to over 70 members. Today, Hannah regularly publishes and speaks on the topics of trade secrets and restrictive covenants law, including through the American Intellectual Property Law Association, Boston Bar Association, and Practising Law Institute. Hannah also co-teaches Trade Secrets and Restrictive Covenants at Boston University School of Law.


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. Since 2017, she acts as Locke Lord LLP’s Deputy General Counsel, handling a wide array of ethical issues. She speaks on and trains lawyers on ethical issues arising from litigation, particularly in the trade secret/noncompete context. 

For over 15 years, Jennifer has acted as national counsel on restrictive covenant and trade secret issues for Fidelity Investments. She obtained injunctions in federal and state courts nationwide against former brokers who leave and violate their restrictive covenants by joining competitors and misappropriating 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’s violation of their restrictive covenants and 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), which led to a judgment for 100% of her client’s damages and attorney’s fees.

  • 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 A. 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 a variety of industries including technology, software, media, financial services, insurance, pharmaceutical, Ecommerce, manufacturing 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 contracts, training programs, and confidential verification protocols for investigating and resolving intellectual property use and ownership disputes in and outside court. 

Ms. Cundiff writes and speaks frequently on intellectual property issues. She particularly enjoys sharing her experience with students.  She is a Visiting Lecturer in Law at Yale Law School, where she teaches intellectual property law and at the University of Pennsylvania Law School and the University of Virginia Law School, where she teaches trade secrets law and has spoken at WIPO’s summer school for lawyers, professionals and officials from around the world.

Ms. Cundiff is the Vice Chair of the Sedona Conference Trade Secrets Working Group and has served as the Vice Chair of the IPO’s Committee on Trade Secrets and Chair of the New York State Bar Association’s Intellectual Property Section.  She is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her to its “Hall of Fame” nationally in Trade Secrets law); and New York Super Lawyers, among other directories. She is on the Board of the United States Senate Youth Program Alumni Association and on the Advisory Board of the Yale Law School Center for the Study of Corporate Law. She is a member of the American Law Institute.  She provides legal services to Open Style Lab, a 501(c)(3) organization committed to making style accessible for everyone, regardless of their cognitive and physical abilities, and has served on the Board of the York Theatre Company, a 501(c)(3) organization a 501(c)(3) organization based in Manhattan that is devoted to developing new musicals and talent and rediscovering prior gems.


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.