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Trade Secrets 2016: What Every IP Attorney Should Know

Speaker(s): Alan Cox, David S. Almeling, Hon. James L. Warren, Hon. James P. Kleinberg (Ret.), Julia Elvidge, Laura Wen-yu Young, Marti A. Johnson, Pamela Passman, Thomas A. Counts, Victoria A. Cundiff
Recorded on: Dec. 5, 2016
PLI Program #: 150464

PhD in economic analysis and policy, Haas School of Business, University of California, Berkeley
MA in economics, University of British Columbia
BSc in environmental science, York University, Toronto

Dr. Cox participates in the Intellectual Property, Antitrust, and Securities practices of NERA. He has extensive experience testifying in federal court, state court, US and international arbitrations, and before utility commissions. In arbitrations he has appeared before the NASD, the American Arbitration Association, and the Japan Commercial Arbitration Association. In graduate school he specialized in industrial organization, antitrust, regulation, and natural resource economics, including energy. His previous positions include Visiting Economist at MIT's Energy Laboratory.

In intellectual property matters, Dr. Cox has testified on a wide variety of patent issues in the semiconductor, biotechnology, telecommunications, consumer product, and other industries. He has also testified on trademark, copyright, and trade secret matters. For example, he testified in Delaware District Court in a matter involving alleged theft of trade secrets and false advertising in the manufacture and sale of golf balls. He was retained by Texas Instruments in a New Jersey patent case, which resulted in a jury award of $112 million to Texas Instruments. He has also testified in matters related to standards and patent pools.

Antitrust issues on which Dr. Cox has testified include allegations of price fixing of semiconductors and professional services, price manipulation in natural gas markets, attempts to monopolize in the credit card and other industries, Robinson-Patman matters, the competitiveness of crude oil and product pipeline services, allegations of anti-competitive licensing, and the competitive consequences of a major electric utility merger. He has examined and provided economic advice on a wide array of competition issues including vertical restraints in gasoline retailing, allegations of crude oil price fixing, the competitive consequences of mergers in several industries, and the economic costs of restraints imposed on a "dominant" telecommunications carrier. He has been included in the "Who's Who of Competition Lawyers and Economists" by the Global Competition Review.

In Securities matters, Dr. Cox has testified in class action fraud cases, including on materiality, causation, and damages in Section 10 and 11 matters. His testimony has also included the valuation of restricted stocks, options, bonds, preferred shares in venture-capital backed firms, goodwill, and the appropriate valuation of physical assets. Dr. Cox has also testified on unjust enrichment from alleged insider trading, and has calculated harm due to alleged inappropriate investments, backdating, breach of contract, and banking practices.

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.

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.

Marti has represented clients in courts throughout the United States with respect to patent, trade secret, unfair competition, antitrust, and internet law matters.  Marti has litigated disputes involving an extensive variety of technologies, including biotechnology, pharmaceuticals, medical devices, computer hardware and software, financial systems, e-commerce, internet technologies, food processing and engineering, telecommunications systems, data transmission, semiconductors, and electronic displays (including micromirror array and LCD technology). Selected representations include:

  • successfully arbitrating a trade secret misappropriation claim against a major pharmaceutical company;
  • representing a leading cellular services provider in multiple patent infringement litigations and licensing negotiations, including obtaining a victory on summary judgment as well as a dismissal at the pleading stage;
  • securing a summary judgment win for a defendant in an antitrust case premised on allegations of sham patent litigation and Walker Process fraud; and
  • successfully resolving a trade secret dispute involving chemical and processing engineering technology on behalf of a leading flavor and fragrance company.

Marti has also counseled technology companies regarding intellectual property transactions, licensing negotiations, freedom to operate determinations, electronic discovery parameters, and damages evaluations.

Prior to joining Gish PLLC, Marti was Counsel at Skadden, Arps, Slate, Meagher & Flom, LLP where she practiced in the Patent and Technology Litigation group. 

Marti’s pro bono practice includes nonprofit intellectual property investigations, Social Security benefits and unemployment insurance representation, as well as prisoner abuse cases and work for the Innocence Project.

Pamela Passman is President and CEO of the Center for Responsible Enterprise And Trade (, and its wholly-owned subsidiary, CREATe Compliance Inc., two entities with a common mission to promote leading practices in intellectual property (IP) and trade secret protection, cybersecurity and anti-corruption.

Prior to founding CREATe in 2011, Passman was Corporate Vice President and Deputy General Counsel, Global Corporate and Regulatory Affairs, Microsoft Corporation. From 2002 to 2011, Passman led Microsoft’s global public policy work and regulatory compliance across a range of issues, including privacy, security and cloud computing issues. She worked with Microsoft’s leadership to advance its businesses in China and other emerging markets.

She first joined Microsoft in 1996 and until 2002 led the Legal and Corporate Affairs organization in Asia, based in Tokyo, with a focus on Japan, Korea and the People’s Republic of China. Prior to joining Microsoft, Ms. Passman practiced law with Covington & Burling in Washington, D.C. and Nagashima & Ohno in Tokyo, Japan.

Tom Counts is a partner in the IP and Complex Litigation practice groups and co-chair of the firm’s Privacy and Cybersecurity practice. He is based in the firm’s San Francisco office.

Mr. Counts’ practice focuses on complex business and technology litigation and trial practice, with an emphasis on intellectual property disputes, privacy and data security law, trade secret litigation, trademark, false advertising and unfair competition litigation, licensing litigation, competitive business torts, and litigation stemming from failed joint venture agreements. He has substantial experience obtaining and opposing demands for prejudgment remedies, including writs of attachment, temporary restraining orders, and preliminary injunctions. Mr. Counts has conducted numerous arbitrations and mediations, and has successfully briefed and argued appeals before both the Ninth Circuit Court of Appeals and the California Court of Appeal.


  • Align Technology, Inc. – Represent maker of Invisalign invisible braces in multiple litigation matters, including three International Trade Commission matters involving patent infringement and trade secret misappropriation by foreign competitor.
  • WideOpenWest – Represent Illinois Internet Service Provider in privacy class action litigation alleging ECPA and related-claims stemming from behavioral advertising program.
  • Leading Electronic Device Manufacturer – Represent Company in multiple class action matters involving allegations of hardware product defects and warranty claims, false advertising, and privacy claims involving collection of personal information during e-commerce transactions.
  • Hitachi GST – Represent Hitachi in litigation involving failed joint venture involving development of 100+ acre South San Jose property.


Privacy and Cybersecurity, Life Sciences and Healthcare, Technology, Internet of Things, Trade Secrets, Intellectual Property, Patent Litigation, Class Actions, ITC Section 337 Investigations


  • University of California, Berkeley (Boalt Hall), JD, 1990
  • Stanford University, MA, 1984
  • Stanford University, AB, 1983

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.

As SVP TechInsights Research, Julia Elvidge is responsible for the Competitive Technical Intelligence and Product Development division at TechInsights, Inc.  Ms. Elvidge joined Chipworks in 1994 as the second employee and held increasingly senior positions before being name President in 2003.  As a major shareholder, she was instrumental in growing the firm from a small start up to a global enterprise of 120 people.  TechInsights, the industry leader in proving patent value, acquired Chipworks in June 2016.

A renowned thought-leader in the industry, Ms. Elvidge recognised early in her career the business value that competitive technical intelligence and Intellectual Property held for technology companies. She began her career with Mosaid Technologies; then joined LSI Logic, where she honed her expertise in ASIC design, ultimately leading her own engineering groups. Ms. Elvidge holds multiple patents for her work.

Ms. Elvidge is a board member of the Information Technology Association of Canada; and is a longstanding member of the Licensing Executives Society.  A winner of numerous awards for her contributions to entrepreneurship in the high-tech industry, she is a regular speaker at intellectual property events, such as the Licensing Executives Society (LES) and the Intellectual Property Business Congress (IPBC) conferences.

A role model for women in technology and business – and a technology geek at heart, Ms. Elvidge was one of six women in a class of 100 to pursue an education in electrical engineering. She earned her degree in Electrical Engineering from the University of Waterloo in Ontario.

David Almeling is a partner in the San Francisco office of O’Melveny & Myers.  He is one of the country’s leading attorneys in trade secret law.  Legal 500 describes him as one of the “key figures in the trade secrets space,” IAM Patent 1000 calls him a “trade secret authority,” he has taught trade secret law at UC Berkeley Law School, and he has testified before Congress on safeguarding trade secrets. David was profiled for his trade secret work in The National Law Journal ’s “Intellectual Property Trailblazers & Pioneers” as one of the top 50 intellectual property lawyers and in Daily’s Journal’s list of “Top Trade Secret Lawyers” in California.  The third edition of his book, Trade Secret Law and Corporate Strategy, was published by LexisNexis in 2018.

Hon. James L. Warren (Ret.) has been a full-time neutral since 2006, and has mediated and arbitrated hundreds of matters.  He is known for his insightful analysis, creative problem solving, and warm but firm manner with all parties.  Judge Warren is often chosen to handle complex cases, and his experience includes a variety of practice areas, including business and commercial disputes, professional malpractice, insurance, employment and IP matters.  Prior to becoming a neutral, Judge Warren was involved in many complex and high profile cases as a San Francisco Superior Court judge.  Prior to his appointment to the bench, Judge Warren was Senior Counsel for Pacific Bell in San Francisco, where he was primarily responsible for large and complex commercial litigation.  Previously, Judge Warren practiced for nearly twenty years with Pillsbury Winthrop (formerly Pillsbury, Madison & Sutro), where he specialized in antitrust and large commercial cases and was founding Chair of the firm’s Intellectual Property Specialty Group.