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Advanced Trade Secrets 2020: New Risks, New Challenges & Emerging Solutions

Speaker(s): Amy H. Candido, Audra A. Dial, Jeffrey A. Pade, Jon Putnam, Julie McCarthy, Matthew J. Kalas, Neel Chatterjee, Randall Kay, Rebecca Edelson, Russell Beck, Seth M. Gerber, Victoria A. Cundiff
Recorded on: Oct. 28, 2020
PLI Program #: 277965

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

Audra Dial is the Assistant General Counsel - Litigation at Mercedes-Benz USA where she leads the company’s litigation efforts.  Her team handles a wide range of litigation from intellectual property to product liability to labor and employment throughout the United States.  Prior to joining Mercedes-Benz USA, Ms. Dial was a partner at Kilpatrick Townsend & Stockton where she focused her practice on complex federal court litigation involving trade secrets, patent disputes, restrictive employment covenants, and complex business disputes involving intellectual property. Ms. Dial was recognized by The Best Lawyers in America® in 2018 and 2019 for Technology Law and was recommended by Legal 500 US in the area of Trade Secrets Litigation.

Ms. Dial earned her J.D. from William and Mary School of Law and served as the Managing Editor of the William & Mary Law Review and a member of the Moot Court Team.  She received her Bachelor of Arts from American University, where she graduated cum laude in Interdisciplinary Studies.

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. 

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

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. 

Matt is a litigator with a range of experience handling commercial, product liability, and trade secret litigation as well as both direct defense and insurance coverage matters for domestic insurers and the London Market in matters pending across multiple jurisdictions in the U.S. and abroad.  He has handled, participated in, and overseen cases in trial and appellate courts up through the U.S. Supreme Court and the Cour de Cassation (French Supreme Court).  Matt also advises clients on privacy and cybersecurity issues, risk mitigation, and related issues.  He received his J.D. from Chicago-Kent College of Law with an intellectual property program certificate.  Prior to entering the legal profession, Matt served as an engineering consultant on both government and privately funded ventures upon obtaining his B.S. in Aerospace Engineering from Pennsylvania State University. 

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.

Randy Kay is a trial lawyer who represents intellectual property owners in trade secret and misuse of confidential information disputes, patent litigation and other lawsuits over intellectual property rights.  Randy has handled more than thirty trials and arbitrations in venues across the United States.  Randy also has handled intellectual property appeals in federal and state courts. 

Randy chairs Jones Day’s global Trade Secrets practice comprised of over 100 lawyers worldwide.  The Legal 500 named Randy as a Leading Lawyer for trade secret litigation.  He has served as an expert witness on trade secret litigation.  Randy is co-editor/author of the treatise “Trade Secret Litigation and Protection in California, Third Edition” published by the State Bar of California.  He serves on the Southern District of California federal court’s Patent Advisory Committee.  Randy is a founding master of the J. Clifford Wallace Chapter of the American Inns of Court. 

Randy’s trade secret practice often involves disputes with international players and events occurring cross-borders.  Randy represented the plaintiff in the first case under the Defend Trade Secrets Act finding personal jurisdiction over foreign actors whose misappropriation took place primarily on foreign soil.  This precedent-setting opinion ordered two foreign defendant entities accountable in a U.S. court.

As a trade secret thought leader, Randy has spoken at engagements worldwide regarding the strength of U.S. trade secret protection as a model for other countries to follow.  Speaking engagements include programs in Taipei, Taiwan (addressing Taiwanese legislators on U.S. trade secret protection), Paris, France (speaking on U.S. trade secret law), at The Sedona Conference (speaking on trade secrets across borders), and Lyon, France (educating academics and Pan-European industry on U.S. trade secret law).

In addition to his trade secret litigation practice, Randy also leads prefiling investigations of intellectual property theft, he guides companies on early readiness programs for trade secret disputes, he directs trade secret audits, and he counsels companies on trade secret protection.

Randy’s awards and recognitions include "Top Intellectual Property Lawyers" and “Top Trade Secrets Lawyers” (Los Angeles/San Francisco Daily Journal); "Top Defense Verdict of 2015" (Daily Journal); California "IP Star" (Managing Intellectual Property); "Top 50 Under 45" (IP Law & Business); and "San Diego's Top Attorneys in Intellectual Property Litigation" (San Diego Daily Transcript).

Rebecca (Bec) Edelson leads her firm’s trade secret practice.  She is a seasoned litigator; she handles all phases of state and federal litigation, including pre-trial development, injunction proceedings, discovery and motion practice, trials, writs and appeals. Her clients value her ability to see the big picture, hone in on the strategic options, and then focus on the best path to achieve the desired outcome. Bec also counsels clients on how to protect their intellectual property and how to minimize the risk of litigation.

Bec has unmistakable expertise in the trade secrets arena.  She “wrote the book” on trade secrets -- she is co-editor and co-author of the treatise, Trade Secret Litigation and Protection in California, published by the State Bar of California, as well as its 2017 supplement on the Defend Trade Secrets Act (DTSA). She also contributed to a handbook on trade secret litigation in the United States created for the Ministry of Commerce of the People’s Republic of China.

Bec strives to meet her clients’ goals as efficiently and quickly as possible and understands a “win” is frequently achievable without the need for prolonged litigation (although she also is prepared to try a case should it be necessary). Bec prides herself in providing creative solutions that meet her clients’ business and budgetary objectives. Examples of Bec’s favorable resolutions for clients include:

  • Bec obtained a consent judgment for an aerospace company in a trade secret misappropriation, copyright infringement and trademark infringement case shortly after deposing the defendant. Bec understands that if a deposition is handled strategically and with finesse, it can bring a client’s litigation adversary to their knees (figuratively speaking) and set the stage for a resolution without the need for the client to incur the expense of going the full distance to trial.  
  • Bec also is adept at counseling clients so that they can resolve potential disputes without litigation. For example, after she offered a client a strategic action plan in response to its discovery that an employee misappropriated a former employer’s purported confidential materials in connection with the development of a new product, no litigation was filed even after the former employer learned of the incident.  Bec recognizes effective crisis management can be critical to a client’s business and, therefore, works to contain potential crises so that they do not turn into actual crises for clients.
  • Bec also is skilled at assisting clients to conduct themselves to avoid disputes before they occur. For example, she advised a client on "best practices" to address a concern that a misappropriation claim may be asserted by a former joint development partner (e.g., implement "clean room" and "reverse engineering" protocols). Taking proactive measures by a client can often avert what would otherwise be an expensive dispute.

Bec represents clients in a variety of industries, including the entertainment, aerospace, energy, retail, fashion, financial, medical technology, biotech, computer, panel-maker, database, toy, jewelry, heavy/industrial equipment, lighting technology, insurance, food and travel and leisure industries, among others.

Bec served from 2015-2016 on the Board of Directors for the Century City Chamber of Commerce. She also served as the 2004-2005 Chair of the Executive Committee of the Intellectual Property Section of the State Bar of California, and is former Chair of its Trade Secrets Subcommittee.

Russell Beck is a business, trade secrets, and employee mobility litigator, nationally recognized for his trade secrets and noncompete experience.  He was invited to the Obama White House to develop guidelines for the proper use of noncompetes, and has been cited as an expert on 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, PBS Newshour, Le Monde, and many others.

Russell has over 30 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. Russell also serves as a mediator in trade secrets and noncompete disputes, as well as in commercial, copyright, and trademark matters.

  • 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 assisted 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. For the next nine years, he advised several Massachusetts legislators on potential trade secrets and noncompete legislation, drafted or revised many of the proposed noncompete bills (which became law effective on October 1, 2018), modified the trade secrets bill (which became law effective on October 1, 2018), and provided advice to the Patrick Administration about its proposed noncompete and trade secrets bill.

Russell writes and administers the award-winning Fair Competition Law blog and publishes and lectures frequently, including authoring the books, Negotiating, Drafting, and Enforcing Noncompetition Agreements and Related Restrictive Covenants (5th ed., MCLE, Inc. 2015) and Trade Secrets Law for the Massachusetts Practitioner (1st ed., MCLE 2019). He prepared his firm’s widely used 50 State Noncompete Survey (the first of its kind and updated regularly since 2010). He prepared the firm’s 50 State Trade Secrets Comparison Chart (also the first of its kind).

Russell developed and teaches Trade Secrets and Restrictive Covenants at Boston University School of Law and served as chair of the American Intellectual Property Law Association’s Trade Secrets Committee. Russell is also the President of the Boston Bar Foundation.

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.

Seth M. Gerber is a trial lawyer with more than 20 years of litigation experience. His practice focuses on trade secret and non-compete matters. Seth leads Morgan Lewis’s IP Group’s trade secrets practice, which was recognized by Legal 500 as among the best in 2020. Law360 also featured Seth’s trial victories when Morgan Lewis was named “Employment Group of the Year” in 2018. Seth has been recognized in The Best Lawyers in America (commercial litigation), as a Southern California “Super Lawyer,” and as one of the top 20 lawyers in California under the age of 40 by the Daily Journal.

Seth represents companies and individuals in intellectual property and business litigation involving a wide range of claims, including misappropriation of trade secrets, breach of contract, intentional interference, and breach of fiduciary duty. He also counsels clients with respect to defining, classifying, and protecting their confidential, proprietary, and trade secret information. Seth works with forensic experts to conduct investigations of current and former employees. He has successfully defended complex mass “raid” cases to verdict after lengthy jury trials, and obtained and defeated ex parte applications for temporary restraining orders and motions for preliminary injunction.

Seth has represented clients in a broad range of industries, including insurance brokerage firms and insurance professionals, manufacturers, medical groups, a medical device company, a biopharmaceutical therapeutics company, a mobile technology company offering global mobile data services, and a producer of custom-engineered parts for the aerospace, space and defense industries.

Seth is experienced in cross-border and foreign sovereign immunity litigation involving the theft of trade secrets and cultural property, including in China and the Russian Federation. Seth co-authored the chapter on injunctions in the State Bar of California treatise on Trade Secrets and currently serves on the drafting team for the Sedona Conference, Working Group 12, on the topic of Cross Border Trade Secret Issues.

Seth has served on boards of several community organizations. Seth is a recipient of the State Bar of California’s Wiley M. Manuel Award for Pro Bono Legal Services.

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.