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Trade Secrets 2014: What Every IP Attorney Should Know


Speaker(s): Hon. Faith S. Hochberg, Hon. James P. Kleinberg, Hon. Ronald S.W. Lew, John F. Marsh, Laura Wen-yu Young, Marti A. Johnson, P. Anthony Sammi, Stephen F. Lapham, Victoria A. Cundiff, Vivek Mani
Recorded on: Feb. 24, 2014
PLI Program #: 51640

John Marsh, a partner with Hahn Loeser & Parks LLP, focuses his law practice on trade secrets litigation and the enforcement of non-competes.  John is listed in the most recent edition of The Best Lawyers of America for Litigation – Intellectual Property and in the 2009-15 editions of Ohio Super Lawyers, and he is AV® Preeminent™ Rated by Martindale-Hubbell, its highest available rating for legal ability and professional ethics.

He is the Chairman of the American Intellectual Property Law Association’s Trade Secret Law Committee, and is a former Chair of the American Bar Association’s TRO, Preliminary and Permanent Injunction Sub-Committee.

John frequently speaks and writes on topics in the area of injunctive relief, trade secret litigation and non-compete agreements.  He has been quoted on trade secret law and restrictive covenant issues by Inside Counsel, Law360, The National Law Journal, and Managing IP; and his blog, “The Trade Secret Litigator” (www.tradesecretlitigator.com), has been cited by publications including The Wall Street Journal.


Marti Johnson concentrates her practice on intellectual property and technology law, with a focus on patent and trade secret litigation. She has represented clients in federal and state litigation, multidistrict litigation, arbitration, and before the Patent Trial & Appeal Board.  She is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Ms. Johnson has represented clients in matters involving a wide array of technologies, including computer hardware and software, financial systems, e-commerce, Internet technologies, food processing and engineering, telecommunications systems, medical devices, data transmission, semiconductors, electronic displays (including micromirror array and LCD technology) and pharmaceuticals.

Ms. Johnson also provides guidance to her clients on a variety of issues, including intellectual property transactions, freedom to operate determinations, electronic discovery parameters and damages evaluations.

Ms. Johnson’s pro bono practice includes nonprofit intellectual property investigations, social security benefits representation, prisoner abuse cases, and work for the Innocence Project.


P. Anthony Sammi
Patent and Other Complex Intellectual Property Litigation

P. Anthony Sammi concentrates his practice on litigating intellectual property cases, particularly high-technology patent and trade secret cases, at the trial level.

With a background in electrical engineering and physics, Mr. Sammi has litigated a broad range of matters involving software, hardware, business method and e-commerce patents and trade secrets, as well as computer source code copyrights. His practice also includes counseling both U.S. and multinational clients on evaluating, licensing and protecting intellectual property portfolios.

Representative technologies that Mr. Sammi has litigated include: digital electronics and hardware; computer software and source code (HLASM, C++); mobile telephone and VoIP technology; blood centrifuge devices; satellite on-board computer stability systems; medical implant devices; sporting equipment; pharmaceuticals; cosmetics; MPEG video technology; Ethernet connectivity hardware; and digital imaging and storage systems in the financial industry.

He is a member of the Skadden group recognized by The National Law Journal as one of the country’s leading IP practices in its 2013 “IP Hot List.”

Selected engagements include:

  • lead trial counsel on technology claims in a U.S. District Court, Southern District of Texas, trade secret misappropriation and copyright infringement jury trial representing plaintiff, a leading software technology company; obtained a jury verdict, multimillion-dollar damages award, and permanent injunction for infringement and misappropriation;
  • lead trial counsel in a U.S. District Court, Eastern District of Texas, patent infringement jury trial representing defendant, one of the largest national archives of check images and electronic content for multi-bank infrastructure solutions; lead counsel in successfully defending against a preliminary injunction sought by the plaintiffs in a U.S. District Court, Eastern District of New York, copyright infringement and trade secret misappropriation action representing a leading global software development firm;
  • trial counsel in a U.S. District Court, District of Arizona, patent infringement trial representing defendant, a leading sports equipment manufacturer, in which judgments of non-infringement and patent claim invalidity due to obviousness were obtained;
  • arguing before the U.S. Court of Appeals for the Federal Circuit representing the defendant-appellee, a leading sports equipment manufacturer, in the plaintiff’s appeal of district court post-trial judgment of invalidity and non-infringement; District Court judgments in favor of client were affirmed;
  • representing a world-leading satellite manufacturer in defending against claims of patent infringement involving complex satellite guidance, stability, and station-keeping circuitry and control systems;
  • leading the patent aspects of a multibillion-dollar acquisition of a social networking and VoIP service provider company; and leading the patent aspects of a multibillion-dollar merger and settlement relating to mobile device manufacturers.
  • Representative clients have included: JPMorgan Chase & Co.; Bank One Corporation; Lockheed Martin Corporation; Motorola, Inc.; Virgin Mobile USA, LLC; Rocket Software, Inc.; AstraZeneca PLC; Benetton Sportsystem USA, Inc.; Compaq Computer Corporation; Viewpointe Archive Services L.L.C.; Trish McEvoy, Inc.; Infra+ S.A.; and Aspen Technology, Inc.

Presentations

  • Speaker, “US Round Table: Best Practices Post AIA,” MIP Global IP & Innovation Summit, September 4-5, 2013, Shanghai
  • Presenter, “Litigating Against Non-Practicing Entities,” Sixth Annual Patent Law Institute, February 16, 2012
  • Member, Steering Committee; Speaker, "Building Client Relationships," The New Partner Forum, The American Lawyer, New York City, October 11-12, 2011
  • Presenter, "The Role of the Specification in Claim Construction: Is It a Guidepost or a Fence?" BNA webinar, June 15, 2011
  • TV Interview, “How ‘Gesture Technology’ Like Microsoft Kinect Will Change the Way We Live,” PBS’ Need to Know, April 8, 2011
  • Presenter, “Litigating With An Eye Toward Trial,” Fifth Annual Patent Law Institute, February/March 2011
  • Presenter, “Reexamination: Be Careful What You Wish For,” AIPLA 2011 Mid-Winter Institute, February 2011
  • Speaker, “Strategic Xenophobia: Fighting Litigation Techniques that Vilify Origin and Ethnicity,” 2010 National South Asian Bar Association Annual Convention, June 26, 2010
  • Panelist, Morning Plenary Session, 2010 Asia Society Diversity Leadership Forum, May 17, 2010

Bar Admissions
New York
U.S. Court of Appeals for the Federal Circuit
U.S. District Courts for the Southern and Eastern Districts of New York

Education

J.D., Cornell Law School, 1998
B.S., Electrical Engineering, University of Maryland, 1995

Associations
Member, American Intellectual Property Law Association
Member, New York Intellectual Property Law Association
Past President and Director, South Asian Bar Association of New York
Past Director, National South Asian Bar Association

Authorships

Co-Author “Good Clean Fun: Using Clean Room Procedures in Intellectual Property
Litigation,” Intellectual Property and Technology Journal, October 2013 (Vol. 25, No.
10)
“Trade Secrets,” (Chapter 15) New York Business Litigation, New York Law Journal, 2013

Languages

Hindi
Punjabi

Related Practices

  • Intellectual Property and Technology
  • Litigation
  • Patent and Other Complex Intellectual Property Litigation


Stephen Lapham
Chief Administrative Officer and General Counsel
Viewpointe, LLC

Steve Lapham joined Viewpointe in 2003, and his responsibilities include handling corporate governance and business transactions for the company, as well as overseeing intellectual property, litigation, human resources, audit, compliance, and areas of risk management. Steve’s professional background includes six years in private practice where he handled both business transactions and civil litigation. Prior to joining Viewpointe, he was Associate General Counsel at Sonic Automotive, Inc., where he handled transactional work, governmental/regulatory issues, and managed litigation for the company. Steve graduated from the University of North Carolina at Chapel Hill with a Bachelor of Arts and a Juris Doctor.


Victoria A. Cundiff is a partner at Paul Hastings, LLP resident in New York, where she is a leader of the Firm’s nationally ranked trade secrets litigation practice.   She works with clients in a wide variety of industries to protect and obtain value from their intellectual property and to defend against claims of encroachment.  She has litigated intellectual property and commercial disputes in state and Federal courts throughout the United States and before a variety of arbitration and mediation tribunals and has coordinated such disputes internationally.  Ms. Cundiff’s articles on intellectual property issues have appeared in publications including the Santa Clara Computer and High Technology Law Journal; IDEA ®: The Intellectual Property Law Review; The New York Business Law Journal; The Computer Lawyer; The New York Law Journal; The Employee Relations Law Journal and a variety of course handbooks published by the Practising Law Institute.  She is a frequent speaker on the implications of recent IP developments and has been quoted on best practices in a variety of legal and industry publications.  She has served as an instructor in programs sponsored by the USPTO on trade secrets law and practice for, among others, representatives of a variety of US trading partners.  She has contributed to amicus curiae briefs filed in the United States Supreme Court on copyright and intellectual property licensing issues.

Ms. Cundiff is a Visiting Lecturer in Law at Yale Law School, teaching intellectual property law.

Ms. Cundiff is a Member of the American Law Institute, serving as an Adviser on the Restatement, Third, Conflict of Laws.  She is a member of the Executive Committee of the New York State Bar Association’s 2000 member Intellectual Property Section and is the past Chair of that section. She is a member of the Trade Secrets Committee of the American Intellectual Property Law Association.   She has completed the National Institute of Trial Advocacy’s Teacher Training Program and the CPR Institute’s Mediator Training Program and was an invited civilian guest at the U.S. Army War College National Security Seminar.  She is a fellow of the New York and American Bar Foundations and has been recognized in The Best Lawyers in America; Chambers; Legal 500 (Leading Lawyer, Trade Secrets, Nationally); and New York Super Lawyers, among other directories.  

Ms. Cundiff received her B.A. degree from the University of Denver, where she was a Boettcher Foundation Scholar, and her J.D. degree from Yale Law School. She is admitted to practice in New York, Colorado, the District of Columbia, various Federal District and Circuit courts and the United States Supreme Court.  She is on the advisory board of the Yale Law School Center for the Study of Corporate Law.  She was a founding member of the Print Club of the City of New York and serves as Chair of the Scholarship Committee of the United States Senate Youth Program Alumni Association and as a member of the board of the York Theatre Company in New York, which is dedicated to providing support for musical theatre and theatre education.


Born in San Francisco, to a father from Shanghai via Taiwan, and an American mother, Ms. Young grew up in a Chinese-speaking household, and was educated at UC Berkeley. She received her Juris Doctor from Boalt Hall, UC Berkeley, and began her practice by splitting her time between San Francisco and Taipei, Taiwan in 1988. She added mainland China into her regular schedule in 1994, when Wang & Wang added its Beijing office. She was admitted in California and to the Federal District Court, Northern District of California in 1988, and was registered as a foreign legal expert with the Taipei Bar Association in 2004, and with China's Ministry of Justice in 2005.

Admissions

Memberships and Professional Organizations


HONORABLE RONALD S.W. LEW
United States District Judge

Judge Ronald S.W. Lew was born in Los Angeles, the third of nine children. His father was a Chinese launderer who immigrated from Guangdong Province and operated the Mandarin Laundry in downtown Los Angeles. Judge Lew worked his way through school in his father's laundry business.

Upon graduation from Loyola University, Judge Lew commenced his study at Southwestern University School of Law. His legal education was interrupted by the draft. After serving as a First Lieutenant in the United States Army, he returned to Southwestern and was admitted to practice law in 1971. He worked as a deputy city attorney for two and a half years before going into the private practice of law.

While in the last year of law school, Judge Lew married Mamie (who was born in Guangdong, China) and started their family. Judge Lew enjoys sharing his free time with his four children, spouses and grandchildren.

Judge Lew was first appointed to the Los Angeles Municipal Court in 1982, and then elevated to Superior Court in 1984. On May 7, 1987, President Ronald Reagan appointed Judge Lew to the federal bench where he now serves in the Central District of California. He is the first Chinese-American appointed as a United States District Judge in the continental United States.

Always active in civic and community affairs, Judge Lew helped to establish the Chinatown Service Center, the Asian Pacific American Bar Association, Southern California Chinese Lawyers Association and the Chinese American Museum. He currently sits on the boards of the Southwestern School of Law, Friends of the Chinese American Museum, American Inns of Court and the Federal Bar Association. He is a past board member of the Chinese Heart Council, Federal Judges Association, Federal Circuit Bar Association Judges= Committee, Committee on International Judicial Relations of the United States Judicial Conference and both a past board member and member of the Committee of 100.

As a past board member of the Committee on International Judicial Relations, Judge Lew traveled abroad to assist foreign courts and international judicial organizations create programs and establish lasting relationships. Today, as a Senior U.S. District Court Judge, he continues his efforts to promote the establishment and expansion of the rule of law and administration of justice by his frequent participation in speaking engagements overseas. Furthermore, in his personal time, Judge Lew consistently gives back to the legal profession by participating in educational programs, both domestic and overseas, organized by various governmental agencies, bar associations, and law schools.


Judge James P. Kleinberg retired from the California Superior Court in April, 2014 after 11 1/2 years of service. For over two years he has been with JAMS, based in both the San Francisco and Silicon Valley offices handling arbitration, mediation, and special reference cases such as mock hearings and appeals. During his last three years on the bench he was in charge of the Complex Civil Litigation department, and prior to that he was the supervising judge of the civil department, as well as handling law and motion, discovery, and trials. While on the bench he also had assignments in criminal and family law departments. After graduating from the University of Michigan Law School in 1967 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 where he became a partner. In 1983 he joined McCutchen, Doyle, Brown & Enersen (later Bingham McCutchen) as a litigation partner in San Jose, Palo Alto, and San Francisco. For over thirty three years he had a national and international business litigation practice with an emphasis on antitrust, securities, corporate governance, and intellectual property issues. He was listed for over ten years in the publication “Best Lawyers in America.” He also served for over ten years as an advisor to the Litigation Section of the California State Bar, is a Holton Teaching Fellow at the Haas Graduate School of Business, U.C. Berkeley and is a member of the American College of Business Court Judges. 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. In 2014 he was appointed co-ombudsperson in a new program by the U.S. District Court, Northern District of California.


The Honorable Faith S. Hochberg is a nationally recognized Federal Judge and former United States Attorney known for her broad expertise in complex corporate, securities, antitrust and patent litigation. She retired from the bench in 2015 and founded Hochberg ADR, which provides mediation, arbitration and litigation strategy services. In addition to her own firm, Judge Hochberg is also a distinguished neutral on the rosters  of AAA, ICDR, Fed Arb, CPR, WIPO, the ITC and International Court of Commerce (ICC).

Judge Hochberg presided over 132 patent cases as well as numerous nationwide cases where she was appointed by the Judicial Panel on Multi District Litigation. She is regularly invited to speak both in the US and abroad about patent litigation, trade secrets, class actions, international arbitration, employment law, and mediation.

Judge Hochberg sat by designation on the Federal Circuit Court of Appeals and has served as a Patent Pilot judge and co-chair of the Judges’ Committee of the Federal Circuit Bar Association.   She was honored as the first Fellow of the Innovation Center for Law and Technology at New York Law School, in recognition of her contribution to the advancement of intellectual property law. She also serves on its Advisory Board, together with entrepreneurs and business leaders.

Prior to ascending the bench, Judge Hochberg served as the United States Attorney for the District of New Jersey, and Deputy Assistant Secretary of the United States Treasury Department, as well as the private practice of law.  In those roles, she worked at the top levels of the United States Justice and Treasury Departments on issues involving bank regulation, investigation and enforcement; money laundering; and supervised the Treasury Department's Office of Foreign Assets Control; Bank Secrecy Act; and its law enforcement divisions.

Judge Hochberg received her J.D. from Harvard Law School, magna cum laude, where she was an Editor of the Harvard Law Review. She graduated, summa cum laude, from Tufts University, and was elected to Phi Beta Kappa. She also attended the London School of Economics.


Vivek Mani specializes in applying economic and financial analyses to complex commercial litigation matters. He has worked on numerous cases involving intellectual property, securities, valuation, and financial institutions. Mr. Mani has broad experience in all all phases of litigation, including preparation of expert reports, deposition testimony, mediation and trial. Mr. Mani received a M.A. from Boston University, a M.S. from Madras School of Economics and a B.A. from Fergusson College.