Skip to main content

Trade Secrets 2018: What Every Lawyer Should Know


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

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.


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

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

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

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

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


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.


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, 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.