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Advanced Trade Secrets 2021: New Risks, New Challenges, New Ideas


Speaker(s): Amy H. Candido, Audra A. Dial, Elizabeth C. McBride, James Pooley, Jennifer A. Kenedy, Jon Putnam, Julie McCarthy, Mindy M. Morton, Neel Chatterjee, Russell Beck, Victoria A. Cundiff, Walter Brown
Recorded on: Oct. 13, 2021
PLI Program #: 304313

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.


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.


Elizabeth is Vice President, Litigation, Compliance & Privacy at Applied Materials, leading the Global Litigation, Ethics & Compliance, and Privacy & Data Governance teams. She currently leads global risk and compliance programs while overseeing complex investigations and litigation around the world. Elizabeth plays a key role in shaping corporate strategy on risk management, data governance, and compliance. In addition, Elizabeth serves as an advisor to Eclipse Ventures, providing guidance to the investment team and portfolio companies on intellectual property strategy and on managing offensive and defensive risk at early stages. Prior to joining Applied Materials, Elizabeth was an IP litigator at Orrick, Herrington & Sutcliffe focusing on trade secret, copyright, and patent litigation involving complex technologies in high-stakes cases. She also clerked in the U.S. Attorney’s Office, Criminal Division, in the Northern District of California. Elizabeth graduated from Princeton University and earned her J.D. at Stanford University.


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 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, healthcare, technolgoy 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


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.


Mindy Morton is a partner at Procopio and her practice is focused on internet and intellectual property litigation.  She is the head of Procopio’s trade secrets practice group.  She helps clients resolve critical disputes involving trade secrets, copyrights, trademarks, complex contracts, and patents. She also litigates cutting-edge cases at the intersection of technology and free speech issues. She defends internet companies against defamation, copyright, trademark and related claims on First Amendment, Communications Decency Act Section 230, DMCA and US SPEECH Act grounds. 

Ms. Morton is the Co-Chair, Sedona Conference on Remote Case Management of IP Proceedings and Member of Drafting Team for the Sedona Conference Working Group 12 on Trade Secrets and is the Vice-Chair of the ABA Trade Secrets Committee, Intellectual Property Section.  She is also active in ChIPs and serves as the co-chair of the NextGen Mock Pitch Program.  Ms. Morton is a former President of the Santa Clara County Bar Association, and she was recently honored with the SCCBA Diversity Award, recognizing her work advocating for and mentoring women attorneys. 

Ms. Morton earned a degree in political science from the University of California, Berkeley, and her J.D. from Yale Law School.


Neel Chatterjee is a Partner in Goodwin’s Intellectual Property Litigation Practice and serves on the firm’s Executive Committee. 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. Neel has particular experience in cutting edge automotive and artificial intelligence spaces.  He has handled some of the most high profile litigation related to self-driving devices (such as cars, trucks, and drones), electrification of cars, and artificial intelligence related to logistics. Neel has represented some of Silicon Valley’s biggest companies in some of their biggest disputes.  His clients have included NVIDIA, Cruise Automation, Facebook, Oracle, Microsoft, eBay, CoreLogic, Umicore, Samsara, and Synopsys.   Neel has been recognized as a top IP litigator and trailblazer by multiple publications and directories.

Mr. Chatterjee serves or has served on numerous highly influential nonprofit boards. He currently serves on the Board of Directors of the Law Foundation of Silicon Valley and the Asia Pacific Fund. He also serves on the National Advisory Committee of the National South Asian Bar Association. In addition to his board-level work, Mr. Chatterjee has served on the Magistrate Selection Committee, the Patent Local Rules Committee, and the Federal Practice Program for the Northern District of California. He is also active in the Sedona Conference Patent Litigation section. As a passionate proponent of diversity, he founded the Bay Area Diversity Career Fair, one of the most successful diversity career fairs in the U.S., and Mr. Chatterjee is a regularly invited speaker on the issues of intellectual property, internet law, litigating high-profile cases, diversity and inclusion, and mentorship.

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


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.

Named a Lawyer of the Year in 2019 by Massachusetts Lawyers Weekly, and included in the Top 10 Lawyers in Massachusetts by Super Lawyers® in 2020, Russell and has over 30 years of experience as a complex business, trade secrets, and noncompete litigator, representing clients throughout the country.

Called “one of the foremost trade secret litigators in the country,” Russell is a recognized authority on the law of trade secrets, noncompetes, and employee mobility. In addition to revising language for the Massachusetts Uniform Trade Secrets Act, he wrote the law, wrote the book, and teaches the course on noncompetes in Massachusetts. His books include, Trade Secrets Law for the Massachusetts Practitioner (1st ed. MCLE 2019) and Negotiating, Drafting, and Enforcing Noncompetition Agreements and Related Restrictive Covenants (6th ed., MCLE, Inc. 2021), and the course he created and teaches is Trade Secrets and Restrictive Covenants at Boston University School of Law.

Russell also writes and administers the award-winning Fair Competition Law blog and publishes and lectures frequently. He also prepared his firm’s widely used 50 State Noncompete Survey (the first of its kind and updated regularly since 2010) and the firm’s 50 State Trade Secrets Comparison Chart (also the first of its kind).

Russell is President of the Boston Bar Foundation. And, 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 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, e-commerce, 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 and the Berkeley Center for Law and Technology Asia IP & Technology Program. She is a member of the American Law Institute (Adviser, Restatement (Third) of Conflict of Laws).  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 based in Manhattan that is devoted to developing new musicals and talent and rediscovering prior gems.


A partner in the Litigation Department at Paul, Weiss, Rifkind, Wharton & Garrison LLP, Walt Brown has been on the front lines of many of the most significant government investigations, prosecutions and litigations for 25 years. He represents companies and individuals in connection with criminal and regulatory investigations, parallel civil and administrative litigation and proceedings, and complex business litigation, as well as in crisis management matters.

Walt’s cases have spanned trade secret misappropriation, securities fraud, antitrust offenses, the FCPA, health care fraud and government fraud. He is frequently engaged by public and private companies and audit and special committees to conduct internal investigations. He has successfully represented clients in trial and appellate courts throughout the United States, most notably obtaining the recent complete acquittal of a former tech executive at FitBit in a high-profile criminal trade secrets jury trial in the Northern District of California.

Walt was named to the Daily Journal’s 2020 list of Top Trade Secrets Lawyers in California. Benchmark Litigation recognized Walt as its “White Collar-Litigator of the Year – California” in 2021, as a California Litigation Star in 2018, and as one of the Top 100 Trial Lawyers in the United States in 2017. Chambers USA has recognized Walt as a leading lawyer in the white collar and government investigations area since 2005.

Earlier in his career, Walt served as an Assistant U.S. Attorney in the Criminal Division of the U.S. Attorney’s Office for the Central District of California, where he tried 20 felony cases to verdict and handled numerous appeals before the Ninth Circuit.