Trade Secrets 2018
About our Keynote
Matthew A. Parrella
Assistant United States Attorney Chief, Computer Hacking/Intellectual Property (CHIP) Unit
United States Attorney’s Office for the Northern District of California
Assistant United States Attorney Matt Parrella is currently the Chief of the Computer Hacking and Intellectual Property (CHIP) Unit for the U.S. Attorney’s Office for the Northern District of California (NDCA), where he also previously served as the San Jose Branch Chief. The NDCA CHIP Unit, which was the first created in the nation, is based in Silicon Valley and investigates and prosecutes complex trade secret thefts, economic espionage, computer intrusions, criminal copyright violations, and other high tech and intellectual property crimes.
Mr. Parrella is a career prosecutor with over 32 years’ experience in both U.S. Attorney’s and District Attorney’s Offices across the nation. He has personally prosecuted and tried cases ranging from murder, narcotics, tax evasion, money laundering, fraud, and arson, to computer hacking, export violations, intellectual property crimes, trade secret violations, and economic espionage.
About our Chairs
Principal, Fish & Richardson
Esha Bandyopadhyay, a Principal in Fish & Richardson’s Silicon Valley office, has been practicing intellectual property and technology-related commercial litigation and counseling in the Bay Area for close to two decades. She has successfully tried and managed matters through all phases of litigation in venues across the nation, including the Northern District of California, the Eastern District of Texas, the District of Delaware, and the International Trade Commission, attaining verdicts of patent invalidity and recovering millions in damages awards and settlements. Ms. Bandyopadhyay brings to any team a keen sense of trial strategy and jury presentation. She has successfully represented companies ranging in size from Fortune 100 to emerging start-ups, as well as highly innovative inventors.
Managing Principal Silicon Valley Office, Fish & Richardson
Michael Headley, the Managing Principal of Fish & Richardson’s Silicon Valley office, is a trial lawyer specializing in complex disputes related to intellectual property across a broad range of technologies. A Stanford alum with start-up experience and more than a dozen jury and bench trials to date, he has tried cases and counseled clients through disputes involving patents, trademarks, trade secrets, copyrights, unfair competition, and other technology-related issues in courts from Delaware to San Francisco to China. In 2015, Mr. Headley obtained a $139 million verdict for Power Integrations against Fairchild Semiconductor, one of the largest jury verdicts of the year. In 2016, the California Daily Journal named Mr. Headley one of the “Top IP Lawyers in California.”
Partner, O’Melveny & Myers LLP
Darin Snyder is O’Melveny’s Regional Head of Litigation for Northern California. He has thirty years’ experience in trade secret and other technology-intensive litigation. Darin also serves as O’Melveny’s Diversity and Inclusion Partner. Darin is a noted authority on trade secret law. The third edition of his book, “Trade Secret Law and Corporate Strategy,” was published by LexisNexis in 2018. Among his many accolades, the Daily Journal has repeatedly named Darin one of the top 75 IP litigators in California; The National Law Journal named him among its 2017 “Winning Litigators” for a jury trial win for Google; and Chambers USA (2018) recognized Darin as an “excellent IP litigator” across the range of patent, copyright, and misuse of trade secrets disputes.
About our Panelists
Teresa N. Burlison
Head of Litigation, Dropbox, Inc.
Teresa N. Burlison is the Head of Litigation at Dropbox, Inc. Under her leadership, her teams run litigation, employment and immigration law, Dropbox’s content safety function, and Dropbox’s law enforcement response unit. Each of these disciplines is important in its own right; collectively, they tackle many of the cutting-edge legal and policy issues affecting global tech companies today. Before joining Dropbox in 2015, Teresa practiced general litigation and employment law with Baker & McKenzie and Morrison & Foerster, where she developed considerable jury trial and arbitration experience. She is licensed to practice law in California, New York, and Texas
Partner, O’Melveny & Myers LLP
O’Melveny Partner Ron Cheng is a recognized expert on international cybercrime and data security, and one of few Mandarin-speaking attorneys with experience in both US and Chinese data and privacy matters. Ron has advised on trade secret theft and data breach planning and incident response. Ron has spoken in the US and internationally, and written extensively on data security, privacy, and US-China cybersecurity cooperation and cross-border data flows. Ron also maintains a blog on Forbes that focuses on these issues. Ron served for more than 20 years at the US Attorney’s Office for the Central District of California, including work in the Cyber and Intellectual Property Crimes Section where he handled hacking, counterfeit goods, and trade secrets matters.
Partner, Ropes & Gray LLP
David Chun is one of the founding partners of the firm’s Seoul office and currently works in Silicon Valley. He focuses his practice on litigating patent infringement, trade secret misappropriation and copyright infringement matters in district and appellate courts and in connection with government enforcement actions.
While David has particular expertise in representing Korean companies in IP disputes, he represents both foreign and domestic clients in litigations involving a broad range of subject matters. He has substantial experience on matters in the areas of semiconductor and flash memory, wireless mobile devices, digital signal processing for hearing aid devices, on-line gaming, hard disk drives, alternative fuels, software interfaces, medical devices, business methods and consumer products.
Hon. Nathanael Cousins
Magistrate Judge, United States District Court, Northern District of California
Nathanael Cousins serves as a U.S. Magistrate Judge in San Jose, the Northern District of California. He joined the Court in 2011 from the U.S. Department of Justice, where he worked as an Assistant U.S. Attorney and Antitrust Division Trial Attorney. Immediately before joining the Department of Justice, he worked as a civil litigation associate and then partner in the Chicago office of Kirkland & Ellis LLP. He clerked for the Hon. F.A. Little, Jr., Chief Judge of the U.S. District Court, Western District of Louisiana. Judge Cousins graduated from the University of California, Hastings College of the Law, in San Francisco, and was born, raised, and received his undergraduate degree at Stanford University.
Director, NERA Economic Consulting
Richard Eichmann specializes in the application of applied economic analysis in intellectual property, securities, and other commercial litigation. His skills include valuation, econometrics, statistics, sampling, and survey research. He has calculated economic damages in a variety of industries, including the automotive, airline, credit card, financial, energy, gaming and pharmaceutical industries. He has filed expert reports in Federal court on the application of statistical methods, sampling, survey design, and business valuation, lost profits, and patent damages. He has provided arbitration, deposition and trial testimony.
Prior to joining NERA, Mr. Eichmann provided economic analysis and dispute advisory services at public and private litigation consulting firms as well as two Big 4 accounting firms. In addition, he has worked as an analyst in the automotive industry and as a research assistant for the Survey Research Center at the Institute for Social Research in Ann Arbor, Michigan on panel study surveys.
Thomas F. Fitzpatrick
Partner, Pepper Hamilton LLP
Thomas F. Fitzpatrick is a partner in the Intellectual Property Department of Pepper Hamilton LLP, resident in the Silicon Valley office. Mr. Fitzpatrick focuses his practice on all aspects of intellectual property, including litigating patent, trade secret, trademark, technology licensing and other related disputes. He has represented both patent owners and patent defendants in federal courts throughout the country, including in the Northern, Central and Southern Districts of California, the Eastern District of Texas, the Eastern District of Virginia, the District of Delaware, the Northern District of Georgia and the District of Arizona. Most recently, Mr. Fitzpatrick has successfully represented internationally based and publicly traded companies in the computer database, telecommunications, semiconductor, Internet and power supply industries.
Partner in Charge, Palo Alto Office, WilmerHale
Mark Flanagan is the partner-in-charge of WilmerHale’s Palo Alto office, a partner in the firm’s Litigation/Controversy Department, and a member of the Intellectual Property Litigation, White Collar Defense and Investigations and International Arbitration and Litigation Practices. Mr. Flanagan counsels and litigates on behalf of clients in the tech and finance industries on a variety of matters, including patent and copyright infringement, trade secret misappropriation and government investigations. Among his many accolades, Mark has been included in the 2013-2018 editions of Best Lawyers in America for intellectual property litigation. Prior to joining the firm, Mark served as an Assistant United States Attorney in the Central District of California.
Hopkins Guy, III
Partner, Baker Botts L.L.P.
Hopkins Guy is a lead trial attorney and Intellectual Property partner in the Palo Alto office of Baker Botts. Mr. Guy focuses his practice on patent, trade secret, and commercial contract litigation. His clients range from Silicon Valley start-ups to mature technology companies that rely on his deep understanding of business and technology to guide their legal strategy at all stages from pre-litigation disputes and preparation through trial. Mr. Guy represents his clients in all phases of litigation including discovery, summary judgment, and jury and bench trials, as well as appeals before the Federal Circuit and Ninth Circuit. He also represents clients in other proceedings including inter partes review (IPR) and other post-grant proceedings before the USPTO, as well as International Trade Commission (ITC) Section 337 investigations. Mr. Guy has been recognized as a leading intellectual property lawyer by The Legal 500 U.S., Chambers USA, and The Best Lawyers in America.
Principal Mediator, Jeff Kichaven Commercial Mediation
Jeff Kichaven is “Ranked in Chambers USA 2018” as one of the best mediators in the country. “Who’s Who Legal 2018” lists Jeff as a “Global Elite Thought Leader” in mediation, one of only five US mediators so to be honored. Jeff is an Honors Graduate of Harvard Law School (J.D. Cum Laude, 1980) and a Phi Beta Kappa Graduate of the University of California, Berkeley (A.B. Economics, 1977). He is a Member of the American Law Institute. His views on mediation have been cited in The New York Times and The Wall Street Journal.
Hon. Peter H. Kirwan
Judge, Santa Clara County Superior Court
The Honorable Peter H. Kirwan was appointed to the Santa Clara County Superior Court Bench in Feb. of 2006 by Governor Arnold Schwarzenegger and is currently assigned as a Civil Case Manager for the civil division of the Court. Prior to his current assignment, Judge Kirwan spent three years as the head of the Complex Litigation Department for Santa Clara County handling complex commercial disputes including class action lawsuits, shareholder derivative litigation, misappropriation of trade secret cases and other similar complex cases. Judge Kirwan has also served as the Supervising Judge of the Court’s Civil Division (Jan. 2012-Jan. 2014) and as a Civil Case Manager for three years (Jan. 2011-Jan. 2014). He has also had prior assignments as a Civil Trial Judge (Oct. 2009-Jan. 2011), Drug Court (Jan. 2008-Oct. 2009) and Misdemeanors (April 2006-Jan. 2008). Prior to his assignment to the bench, Judge Kirwan spent 15 years at the Hoge, Fenton, Jones and Appel Firm in San Jose (1986-2001) and 5 years at Needham, Davis, Kirwan and Young in San Jose (2001-2006) specializing in commercial civil litigation. Judge Kirwan has been an adjunct professor at Santa Clara University School of Law where he taught a mediation class for several years and currently teaches a Negotiation class. He has been an active member of the American Inns of Court since 1988 and currently serves as the President of the Santa Clara Inn. He also serves on the Board of Governors for the American Business Trial Lawyers’ Association and is a frequent lecturer/panelist for CEB programs on a variety of topics related to civility, professionalism and general civil litigation issues.” His personal interests include swimming, golf, fly fishing and hiking.
Diane Gabl Kratz
Senior Corporate Counsel, Intellectual Property Seagate Technology
Diane Gabl Kratz is Senior Intellectual Property Counsel at Seagate Technology’s headquarters in Cupertino, California. A USPTO-registered patent attorney, she manages the patent portfolio for the Consumer Products and Media groups, advising on strategy, prosecution, litigation, and IP-related transactions. She also manages Seagate’s global trademark portfolio, leading strategy and handling enforcement of trademark, copyright, and domain name rights. Previously, Diane was in private practice at the Silicon Valley offices of international law firms Morrison & Foerster LLP and Sidley Austin LLP. There, she focused on IP litigation in industries such as semiconductors, software, telecom, consumer electronics, and medical devices.
A four-time Super Lawyers Rising Star, Diane regularly speaks at conferences throughout the West Coast and has been featured as a guest lecturer at Stanford University’s Management Science & Engineering Department and the University of California-Berkeley’s Haas School of Business. She was recently honored to serve as faculty at PLI’s Patent Law Institute in San Francisco. Diane received her J.D. from the University of Chicago Law School and earned a Physics degree from Cornell University.
Carolyn Hoecker Luedtke
Partner, Munger, Tolles & Olson LLP
Carolyn Hoecker Luedtke, a litigation partner in Munger, Tolles & Olson’s San Francisco office, is co-chair of the firm’s Trade Secret and Employee Mobility practice. Carolyn focuses her practice on complex business litigation, with a particular emphasis on intellectual property matters. Ms. Luedtke has extensive experience counseling clients in their highly complex trade secret cases, both in situations involving employee mobility and in cases involving allegations of trade secret theft in connection with business relationships, non-disclosure agreements, due diligence and partnerships. She has been named among California’s “Top Women Lawyers” by the Daily Journal three times, including in 2017.
Eugene Y . Mar
Partner Farella Braun + Martel LLP
Eugene Mar represents companies in intellectual property litigation and advises start-ups and emerging companies on strategies for diversifying intellectual property protection and counsels them on licensing, assignments and best practices. He has represented clients in all aspects of intellectual property litigation, including jury trials, Markman hearings, and appeals. Clients value Mr. Mar for his legal knowledge and strategic thinking in finding the most cost-efficient solution to an early adjudication, or when necessary, shaping technology cases for trial. Mr. Mar chaired the Bar Association of San Francisco’s Intellectual Property Section for six years and currently co-chairs the ABA Litigation Section’s popular Intellectual Property Roundtable program.
Fabio E. Marino
Chair of IP Litigation, Polsinelli LLP
Fabio Marino is an experienced intellectual property trial lawyer who tries high-stakes patent, trade secrets, and copyright cases across the United States and argues appeals at the Federal Circuit. Prior to becoming an attorney, Fabio earned his bachelor’s and master’s degrees in computer science and worked in the industry as a software architect. He coaches University of California-Berkeley teams in the Giles S. Rich Patent Moot Court Competition. Fabio serves as Vice Chair of the Polsinelli’s Intellectual Property department, chair of the Intellectual Property and Technology Litigation group and Managing Partner of the firm’s Silicon Valley office.
Erik R. Puknys
Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Erik Puknys is a seasoned litigator and leads Finnegan’s appellate section. His career in intellectual property began more than 25 years ago, when he joined the U.S. Patent & Trademark Office as a patent examiner. He represents clients across industries in intellectual property disputes filed in state and federal district courts and government agencies. Mr. Puknys lectures on patent and trade secret law at conferences hosted by industry, government, and academic organizations. He has been recognized as a leading patent litigator in California by Intellectual Asset Management, an “IP Star” in Palo Alto by Managing Intellectual Property, and for “superior client service” in The 2015 BTI Client Service All-Stars.
Vice President, The Cyrpsis Group
Sam manages Crypsis’ West Coast operations and also maintains an active docket of cases, often serving as an expert witness in digital forensics. He has deep expertise in matters involving theft of intellectual property, incident response, e-forgery, leaks of confidential information, and information security best practices. He has provided technical advice and expert opinions in a number of high-stakes cases. Sam is co-author of “What Every Lawyer Should Know About Digital Forensics,” published in The Pennsylvania Lawyer, and is a frequent presenter and lecturer on computer forensics, insider threats to proprietary data, and other cyber-related topics.
Mark Selwyn is a partner at WilmerHale in the Litigation/Controversy Department, co-chair of the Intellectual Property Litigation Practice Group and a member of the firm’s Management Committee. He has been recognized for exceptional standing in the legal community in the area of intellectual property in Chambers USA, 2005-2018 editions. Sources say “he is one of the hardest-working practitioners around” and is “top notch.” Major corporations have relied on him to litigate biomedical, electrical, chemical, mechanical and business method patents involving a diverse array of technologies. He has represented clients in dozens of patent and other intellectual property cases in federal courts throughout the country and before the International Trade Commission. Mr. Selwyn counts among his clients many of Silicon Valley’s most prominent technology companies.
Stephanie P. Skaff
Partner, Farella Braun + Martel LLP
Stephanie Skaff represents companies in complex litigation involving intellectual property, technology, privacy and licensing issues. Ms. Skaff’’s is a past president of the Bar Association of San Francisco and as a former co-chair of the Northern District of California Lawyer Representatives Committee. She is regularly chosen as lead counsel for patent infringement and other intellectual property actions venued in jurisdictions around the country. Ms. Skaff represents clients in actions involving computer hardware, software, internet search and applications, mobile devices, gaming, financial services, encryption, networking and database technology.
Partner, Paul Hastings LLP
Robert Unikel is a partner in the Chicago office of Paul Hastings and is head of the Chicago and Midwest IP practice. Rob has a diverse practice and extensive experience that includes litigating patent, trade secret, and trademark cases in a variety of industries, including digital media distribution, consumer products and brands, financial products and services, auto parts, and medical devices. Intellectual Asset Management notes that Rob “is a versatile litigator” who “litigates with aplomb in all fields of intellectual property” “with his impressive patent, trade secret and trademark nous.” Chambers lauds Rob for being “’a very sophisticated patent litigator’ who is particularly recognized for his work on cutting-edge technology intellectual property issues emanating from Silicon Valley.”
Hon. Susan van Keulen
Magistrate Judge, United States District Court, Northern District of California
Magistrate Judge Susan van Keulen graduated from UCLA School of Law in 1988 and, after 28 years as a commercial litigator in Silicon Valley, joined the bench in the Northern District of California in January, 2017.
Magistrate Judge van Keulen’s private law practice focused substantially on intellectual property cases in federal and state courts, with particular experience handling commercial disputes involving semiconductor, computer, and electronics technologies. Magistrate Judge van Keulen prepared dozens of cases for trial and served as lead trial counsel in a number of cases in the Northern District. In addition Magistrate Judge van Keulen served on the Northern District’s Patent Local Rules Advisory Subcommittee as a practitioner from 2006 to 2014 and now sits on the Committee as a judicial member.
Thomas E. Wallerstein
Partner, Venable LLP
Tom Wallerstein is a well-known commercial litigator and partner in Venable’s San Francisco office with over 18 years’ experience. Tom practices high-stakes litigation and specializes in trade secret litigation, non-competes and other employment litigation; intellectual property disputes; partnership disputes and all manner of complex commercial litigation with the disputes often reaching into the tens or even hundreds of millions of dollars. An expert on the 2016 Defend Trade Secrets Act, Tom obtained one of the first published opinions on the law’s ex parte seizure provision. He can be reached at TWallerstein@Venable.com.
Crowne Plaza Palo Alto
4290 El Camino Real
Palo Alto, CA 94306
Registration & Breakfast
8:00 am - 8:55 am
Introduction by Chairs
8:55 am - 9:00 am
Litigating Trade Secrets: A View from the Trenches
9:00 am - 10:00 am
Michael Headley, Managing Principal, Silicon Valley, Fish & Richardson
G. Hopkins Guy, III, Partner, Baker Botts L.L.P.
Jeff Kichaven, Principal Mediator, Jeff Kichaven Commercial Mediation
Doug Lumish, Partner, Latham & Watkins LLP
Stephanie P. Skaff, Partner, Farella Braun + Martel
Thomas E. Wallerstein, Partner, Venable LLP
The Convergence of Criminal and Civil: Keeping Yourself and Your Boss Out of Jail
10:00am - 11:00am
Lawyers and their clients typically think of trade secret misappropriation allegations as constituting a civil litigation threat. But existing laws on both the federal and state levels also include the possibility of criminal prosecution for trade secret misappropriation. Accordingly, whether your client is an alleged perpetrator of misappropriation or the victim of it, it is important to be able to assess the possibility of criminal investigation and prosecution. This panel will explore questions relating to the existence of criminal trade secret laws, including: what makes a given misappropriation a matter of interest to law enforcement; what are the considerations for and implications of making a referral to law enforcement; and how best to deal with such an investigation if one does occur.
Mark D. Flanagan, Partner-in-Charge Palo Alto Office, WilmerHale
11:00 am - 11:20 am
International Trade Secrets
11:20 am - 12:20 pm
In recent years, trade secret violations have regularly involved an international dimension. Attempts to steal and exploit trade secrets have been aimed both at U.S. facilities from overseas and overseas operations of a U.S. or multinational company. The panelists will discuss the international risks (particularly in Asia), how to protect against them, the potential for both civil and criminal proceedings, how foreign jurisdictions handle trade secret violations, and how to handle and respond to international trade secret theft situations
Ronald Cheng, Partner, O’Melveny & Myers LLP
David Chun, Partner, Ropes & Gray LLP
Mark D. Selwyn, Partner, WilmerHale
12:20 pm - 1:30 pm
Matthew A. Parrella, Assistant United States Attorney, Chief, Computer Hacking/Intellectual Property (CHIP) Unit United States Attorney’s Office, Northern District of California
Trade Secrets Investigations
1:30 pm - 2:30 pm
If you or a client suspect that they have been a victim of trade secret misappropriation, a thorough investigation is essential before taking any formal action. Likewise, if you or a client have been accused of trade secret misappropriation, a similarly thorough investigation is necessary before developing your response. This panel will explore the questions a proper investigation should seek to answer, potential resources and approaches to answering those questions, and the strategic and tactical choices that you will face along the way.
Darin Snyder, Partner, O’Melveny & Myers LLP
Thomas F. Fitzpatrick, Partner, Pepper Hamilton LLP
Diane Gabl Kratz, Senior Corporate Counsel, Intellectual Property, Seagate Technology
Carolyn Hoecker Luedtke, Partner, Munger Tolles & Olson
Eugene Y. Mar, Partner, Farella Braun + Martel
Fabio E. Marino, Chair of IP Litigation, Polsinelli LLP
Sam Rubin, Vice President, The Crypsis Group
2:30 pm - 2:40 pm
Trade Secret Damages: Money, Money, Money: Remedies for Victims of Trade Secret Violations.
2:40 pm - 3:40 pm
A look at the evolving world of trade secret damages, with insight from industry experts, in-house and outside counsel, and members of the judiciary, regarding recent rulings and changes in the law since the passing of the DTSA.
Esha Bandyopadhyay, Principal, Fish & Richardson
Teresa N. Burlison, Head of Litigation, Dropbox, Inc.
Richard J. Eichmann, Director, NERA Economic Consulting
Erik R. Puknys, Partner, Finnegan Henderson
Robert Unikel, Partner, Paul Hastings LL
3:40 pm - 3:50 pm
Judges’ Panel - What Do Judges Really Want?
3:50 pm - 4:50 pm
What do judges (and their clerks) really want from counsel? What their pet peeves and never do that’s, and what makes them happy? We will have a panel of judges who will show you the do’s and don’ts of trade secret litigation. The highlight of the day, you will not want to miss this special conversation!
Esha Bandyopadhyay, Principal, Fish & Richardson
Hon. Nathanael Cousins, Magistrate Judge, United States District Court, Northern District of California
Hon. Peter H. Kirwan, Judge, Santa Clara County Superior Court
Hon. Susan van Keulen, Magistrate Judge, United States District Court, Northern District of California