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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

The Honorable Faith Hochberg is a nationally recognized Federal Judge and former United States Attorney known for her broad ex-pertise in both governmental enforcement and complex corporate and patent litiga- tion. She retired from the bench in 2015 and now serves as a mediator and arbitrator of complex litigation. She has an exceptional ability to forecast potential litigation outcomes and has demonstrated a unique talent to mediate resolutions in both the courtroom and the boardroom. Judge Hochberg has been described by the patent bar as a thought leader in intellectual property law. She guides decision makers by quickly grasping deeply complex issues, asking key questions, and eliciting creative solutions.

Judge Hochberg was twice nominated by President Clinton, and confirmed by the Sen- ate, first as United States Attorney for New Jersey and then as a United States District Judge. During her judicial tenure, she has been invited to speak nationwide and abroad about patent litigation, employment law, and efficient dispute resolution She has represented the United States in international judicial conferences.

Judge Hochberg has presided over 132 patent cases, including multiple nationwide cases where she was appointed by the Judicial Panel on Multi District Litigation. She has handled many pharmaceutical patent cases arising under the Hatch Waxman Act and related Antitrust cases; Technology patents; and cases of first impression, e.g., Fuji vs. Jazz ( repair vs. reconstruction doctrine) and Ibormeith vs Mercedes (new ana- lytical framework under sec.112). Judge Hochberg was invited to sit by designation on the Federal Circuit; has served as a Patent Pilot judge; and vice chair of the Patent Rules Committee. She is co-chair of the Judges' Committee of the Federal Circuit Bar Association, where she has taught symposia on recent trends in patent law. Intellec- tual Property conferences, including the IPO, PLI and AIPLA , CHIPs, and several renowned Law schools regularly ask her to speak on emerging topics in the field.

Judge Hochberg has been named the first Fellow of the Innovation Center for Law and Technology at New York Law School in recognition of her contribution to the advance- ment of intellectual property law.

Prior to ascending the bench, Judge Hochberg served as the United States Attorney for the District of New Jersey, where she led one of the largest United States Attor- ney’s Offices. She was selected to serve on the Attorney General’s Advisory Commit- tee in Washington, D.C. She previously served as Deputy Assistant Secretary of the Treasury, where her responsibilities included supervision of the Office of Foreign Assets Control and leading the international anti-money laundering initiatives of the Treasury Department. She led intra-governmental negotiations between the law enforcement agencies of the Treasury Department and their counterparts at the Justice and State Departments. Judge Hochberg has also led a national Treasury office that enforced compliance and financial risk reforms in the savings and loan industry. She was a fre- quent speaker at national banking conferences.

Judge Hochberg has served on the Board of the Lasker Foundation, renowned for its dedication to the alleviation of human suffering through advances in science and med- icine. She has been honored by the International Women’s Forum; the Harvard Law School Women’s Alliance; Seton Hall Law School; and numerous federal agencies.

Judge Hochberg graduated from Harvard Law School with a J.D., 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. Judge Hochberg is married to a surgeon and has two grown children and two exceptional grandchildren.


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 resident in New York. She leads the litigation department’s global trade secrets litigation practice, which is ranked in “Tier 1” by Legal 500.

Ms. Cundiff has successfully tried or resolved trade secrets, non-compete, "inevitable disclosure,” intellectual property ownership, and other intellectual property and commercial disputes in state and Federal courts throughout the United States and before a variety of arbitration and mediation tribunals. She also advises on such disputes internationally and coordinates multi-jurisdictional litigation. She has designed confidential verification protocols for resolving intellectual property use and ownership disputes in and outside of court. She has worked with clients in a wide variety of industries, including technology, software, media, financial services, insurance, pharmaceuticals, chemicals, marketing, and sales and distribution organizations.

Ms. Cundiff’s articles on topics including “Preventing the Inevitable,” “How to Hire Your Competitor’s Employee,” and “How to Own Your Own Intellectual Property” have been published 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 has been quoted on best practices in a variety of legal and industry publications. 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, where she teaches 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 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; is listed in The Best Lawyers in America; Chambers; Legal 500 (which has named her a “Leading Lawyer” in Trade Secrets Litigation); and New York Super Lawyers. She was an invited civilian guest at the U.S. Army War College National Security Seminar. She has completed the National Institute of Trial Advocacy’s Teacher Training Program at Harvard Law School and the CPR Institute’s Mediator Training Program.

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 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. She is admitted to practice in New York, Colorado, the District of Columbia and several Federal courts.


After graduating from the University of Michigan Law School in 1967 Judge James P. Kleinberg began his career as a Trial Attorney with the Antitrust Division of the U.S. Department of Justice. In 1969 he entered commercial litigation practice witfh a medium-sized firm in San Francisco where he became a partner. In 1983 he joined McCutchen, Doyle, Brown & Enersen (now Bingham McCutchen) where he practiced for over 19 years as a litigation partner in San Jose, Palo Alto, and San Francisco. He had a national business litigation practice with emphasis on antitrust, securities, corporate governance, and intellectual property issues. He was listed for over ten years in the publication "Best Lawyers in America" under the heading of Business Litigation. Appointed by Governor Davis to the Superior Court ten years ago, Judge Kleinberg has had criminal, family, civil discovery, civil trial, and case management duties, and served as the supervising judge of the civil division of the Superior Court in Santa Clara County, the largest court in Northern California. That county, commonly known as Silicon Valley, has 1.8 million residents. Since January, 2011 he has been in charge of the Court's Complex Civil Litigation Department, responsible for approximately 180 cases involving securities and employment class actions, corporate governance, products liability, trade secrets, and large construction projects. He has served for over ten years as a board member and advisor on the Executive Committee of the California State Bar's Section of Litigation and now serves on the Board of Governors of the Association of Business Trial Lawyers, Northern California. He is a Holton Teaching Fellow at the Haas School of Business, University of California at Berkeley, was formerly on the Committee of Visitors of the Michigan Law School, is President of the William A. Ingram chapter of the American Inns of Court, is a member of the American College of Business Court Judges, and is a member of the American Bar Foundation.


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 in1988. 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

  • California, 1988
  • Federal District Court, Northern District of California, 1988

Memberships and Professional Organizations

  • State Bar of California (Member, 1988 - present)
  • Taipei Bar Association (Member, 2004 - present)
  • UC Berkeley Foundation (Trustee, 2010 - present)
  • Boalt Hall Alumni Association (Member, Board of Directors, and Treasurer, 1995 - 2000)
  • American Bar Association (Member, Section on International Law, 1988 - present)
  • Bar Association of San Francisco (Member)
  • International Trademark Association (Chair, China Subcommittee, 1998 – 2003, Member, China Trademark Office committee, Internet Committee, Famous and Well Known Marks committees 2003-present)
  • University Club of Taipei (Member)

Languages         

English(fluent), Chinese (fluent), Spanish (reading), and French (reading)

Selected Publications

  • “Protecting Trade Secrets in China”, Practicing Law Institute: Trade Secrets 2013: What Every IP Attorney Should Know, February 2014
  • “Taiwan Advertising Law”, in World Trade Press’ A to Z World Business, February2013
  • “Protecting Trade Secrets in China”, Practicing Law Institute: Trade Secrets 2013: What Every IP Attorney Should Know, February 2013
  • “Intellectual Property Law”, chapter in Intellectual Property Law of China,  Juris Publishing, 2011
  • “Expatriates Face China’s Criminal Law System”, in ABA’s International Law News, vol.40, no 2, Spring 2011
  • "Dilution in Taiwan and China" in New Matter, California Bar Association's IP Journal, Fall 2010
  • "Intellectual Property in China" in Doing Business in China, Juris Publishing, 2009
  • "Enriching the Law School Curriculum: Summer Law Institute at the Kenneth Wang School of Law, Soochow University in Suzhou, China," Volume 26, No. 4 Penn State International Law Review, Spring 2008
  • "Building Bridges: Fostering Cross Cultural Learning in the Law," co-author, International Association of Law Schools, Suzhou, China, October 2007
  • "China's Market Economy: An Historical Perspective," The Transnational Lawyer (now known as the Pacific McGeorge Global Business and Development Law Journal), vol. 18:1, 2004
  • "China Staff Employment Law Guide: Taiwan," CCH Asia Pte Limited, 2003
  • "Telecommunications Regulation in China," CCH's China Law Update, September 2003
  • "Dealing with China's Compensation Issues," CCH's People Strategist, May 2002
  • "Taiwan Employment Law," CCH Asia Pte Limited, 2002, updated annually
  • "Hiring Household Help in China," West Publishing's International HR Journal, Winter 2001
  • "Compensation Issues in China," West Publishing's International HR Journal, Summer 2001
  • "An Expatriate's Nightmare: Entangled in the Chinese Criminal Justice System," West Publishing's International HR Journal, Winter 2000
  • "New Internet and E-Commerce Regulations in China," Kluwer's International Lawyers Newsletter, July/August 2001
  • "China: Overview of the Criminal Law System for Foreign Managers," Kluwer's International Lawyers Newsletter, July/August 2000
  • "Expatriate Residence in China," Kluwer's International Lawyers Newsletter, May/June 2000
  • "Hiring and Managing Employees in China," Warren Gorham Lamont's International HR Journal, Summer 2000
  • "Expatriates Facing Criminal Charges in China," Warren Gorham Lamont's International HR Journal, Spring 2000
  • "Expatriate Residence in China," RIAA's International HR Journal, Fall 1999
  • "In China, 'Discoveries' are not Patentable," The National Law Journal, September 27, 1999
  • "Protection of Pharmaceuticals in China," Pearson's China Law for Business, Vol. 4, No. 9, January 1999
  • "Health Care of Foreign Managers in China," Warren Gorham Lamont's International HR Journal, 1998
  • "Expatriates Stationed in China Importing Household Effects," Warren Gorham Lamont's International HR Journal, 1998
  • "China's Anti-Dumping Regulations," Pearson Publishing's China Law for Business, 1998
  • "Latest Sino-US Agreement Brings No New Protections for IP," IP Worldwide, November/December 1996
  • "Unfair Practices in Software Patent Licensing," Practising Law Institute, June 1996
  • "Comparison of Taiwan and China's IP Regimes," National Law Journal, May 1996
  • "Taiwan's Compliance with TRIPs," East Asian Executive Reports, April 1996
  • "("On US Section 301 Actions") co-author, (IP Studies), Beijing, 1996
  • "Analysis of the 1995 Sino-US Agreement," IACC Update, Fall 1995
  • "New Laws Bring Taiwan Closer to WTO Regime," National Law Journal, March 1995
  • "Taiwan's New Patent Law," East Asian Executive Reports, 1994

Selected Lectures and Appearances

  • “Protecting Trade Secrets in China,” Practicing Law Institute, February 21, and March 24,2014
  • “Teaching Law in Asia”, at INTA Leadership Meeting, Miami, November 13, 2013
  • “Protecting Trade Secrets in China,” Practicing Law Institute, February 12, 2013
  • “Dilution and Squatting in China and Taiwan,” California State Bar, Standing Committee Continuing Legal Education Programs, March 2010
  • "Perspectives on Chinese Legal Education," Keynote Speech to Conference: Experiential Legal Education in China, Pacific/McGeorge School of Law, Sacramento, January 2008
  • "Trademark Dilution in China and Taiwan," International Trademark Association, Annual Meeting, Chicago, May 2007
  • "Practitioners' Perspectives on East Asian Corporate Governance," Berkeley Center for Law, Business and the Economy conference on Corporate Reforms in East Asian, UC Berkeley, May 2006
  • "IP Protection in China and Taiwan," Hastings Chinese Law and Culture Society, November 2005
  • "The Importance of Psychology to the Law" (in Chinese), Keynote Speech, Fifth Annual Chinese Psychology Scholars Conference, Suzhou, China, July 2005
  • "Licensing in China: Context and Practice," Licensing Executives Society, Annual Meeting: China Add-on Session, October 2005
  • "China's Legal Education at a Cross-roads: Confucius vs. Socrates," China Law Review, Berkeley, California, February 2005
  • "From Communism to Capital Markets: A Quarter Century of Chinese Economic and Legal Development," Berkeley Legal Studies Association, February 2005
  • "Cultural Foundation of Chinese Common Law" (in Chinese), Chinese National Dean's Symposium, Soochow University, July 2004
  • "Foundations of Chinese Law," lecture series at Pacific/McGeorge School of Law, September - October 2003
  • "("Exporting Chinese Trademarks") (in Chinese, International Trademark Association, Beijing and Shanghai, March 2003
  • "Trademark Licensing" (in Chinese), International Trademark Association's Shanghai Forum, April 2002
  • "Intellectual Property Law for Software Sales Teams" (in Chinese), Beijing Software Association, April 2001
  • "Chinese International Anti-Counterfeiting Programs," International AntiCounterfeiting Coalition Annual Conference, Fall 2001
  • "Practical Advice for China and Taiwan Anti-Counterfeiting Programs," International AntiCounterfeiting Coalition, Fall 2000
  • "The Asian Meltdown One Year Later," International AntiCounterfeiting Coalition Annual Conference, May 1999
  • "The Effect of the Asian Financial Crisis on Counterfeiting" (Moderator and Speaker), International AntiCounterfeiting Coalition Annual Meeting, May 1998
  • "Defending Software Patent Infringement Claims," Practising Law Institute, June 1997
  • "Coping with Software Patents" (Moderator), State Bar of California, November 1996
  • "Berkeley Roundtable on Law and Technology" (Moderator), March 1996
  • "Legal History of China and Taiwan and Protecting American IP," Harvard Asia Business Conference, January 1996
  • "Protection of American Rights in China and Taiwan," International AntiCounterfeiting Coalition Annual Conference, May 1995
  • "Protecting IP in China and Taiwan," State Bar of California, February 1995
  • "Protecting IP in China and Taiwan," Seminars for State Bar of New York and Bar Association of the District of Columbia, 1994
  • "Protection of Computer Software in Taiwan," AT&T's IP Seminar, May 1992
  • "Taiwan Copyright Law and Enforcement Procedures" (in Chinese and English), U.S. Copyright Office, August 1991
  • "Protecting American Electronics in Taiwan," American Electronics Association, June 1990
  • China, Taiwan, Hong Kong Law Seminar (Moderator), Bar Association of San Francisco, January 1990
  • Various Appearances on NPR Marketplace, etc. regarding legal issues in Taiwan and China

Academic Courses Taught

  • China Law and Society (Chinese Legal History), UC Berkeley, Boalt Hall's Jurisprudence and Social Policy Program (2003 - 2006)
  • Foundations of Law: Greece, Rome, China, UC Berkeley, Rhetoric Department (2004 - 2010)
  • International Intellectual Property, Cornell Univeristy Law School (2013), Pacific/McGeorge School of Law (2006 - 2013)
  • International Business Transactions, Soochow University, Kenneth Wang School of Law, China (ABA accredited course) (2004 - present)


John F. Marsh has experience representing and advising clients in trade secrets, emergency litigation, licensing and intellectual property disputes, injunctive proceedings including temporary restraining orders and preliminary injunction hearings, securities and shareholder disputes, mediations and arbitrations, commercial and contractual disputes, product liability lawsuits and issues, jury trials and evidentiary hearings, and other complex legal matters. John discusses these topics and more on his blog at www.tradesecretlitigator.com, on Twitter at @TSLitigator, and on LinkedIn at http://www.linkedin.com/in/tradesecretlitigator.

Representative Matters:

  • Lead counsel for the Bank of New York in extensive injunctive, evidentiary and appellate proceedings that thwarted a white collar fraud ring's attempts to convert $18 million in bank assets; secured contempt orders and various judgments totaling more than $750,000 in attorneys' fees and costs.
  • Lead counsel for securities affiliate of a national bank in extensive state court injunctive proceedings and co-counsel for related NASD permanent injunctive proceedings arising out of the departure of a team of financial analysts, sales representatives and other former employees to form a competitor; through that litigation, client was able to secure favorable settlement barring contact with key customers despite absence of noncompetition agreements.
  • Secured preliminary injunction for the national realtor, HER Real Living, and its principals enjoining a competitor from "cyber squatting" and improperly using certain internet domain names.
  • Secured injunction and favorable consent decree on behalf of national computer consulting firm against competitor and former employee to preserve client's trade secrets, enforce that employee's covenant not to compete, and enforce non-solicitation agreement against competitor.
  • Secured injunction on behalf of scholastic manufacturer Herff Jones, Inc. enforcing covenant not to compete against former sales representative and distributor and successfully dissolved ex parte TRO entered against client in related proceeding.
  • Defeated injunction sought against the United States Olympic Committee by Ohio Taekwondo Association that would have effectively displaced USOC from supervising the sport of taekwondo throughout the United States.
  • Secured various orders freezing national telemarketer's assets to prevent dissipation and/or transfer of those assets through bankruptcy.
  • Secured favorable settlement after successful cross-examination and effort to strike testimony of critical expert witness in toxic tort jury trial.
  • Successfully removed shareholder physician from medical practice after two-day preliminary injunction hearing.

Recent Presentations:

  • Presenter, “Trade Secrets vs. Patents: Which Protection is Best for Your IP?” Practising Law Institute Webinar,
    October 2010.
  • Speaker, “Litigating the Trade Secret and Non-Compete Case in the Present Economy,” Ohio State Bar Association, August 2010.
  • Speaker, "Current Developments in Non-Competes and Non-Disclosure Agreements," Ohio State Bar Association Seminar: Advising Corporate Directors and Officers, May 2010.
  • Speaker, “Trade Secret Protection vs. Patent Protection: Which Protection is Best For Your IP?” Columbus Intellectual Property Law Association Meeting, March 2010.
  • Speaker, "Steps to Take Pre- and Post-Litigation to Protect Trade Secrets," American Intellectual Property Law
    Association Mid-Winter Meeting, January 2010.
  • John is listed in the 2009-14 editions of Ohio Super Lawyers and he is AV® Preeminent™ Rated by Martindale-Hubbell, its highest available rating for legal ability and professional ethics.

Education

  • Vanderbilt University Law School J.D. 1989
  • John Carroll University B.A., cum laude


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.


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.