Jones Day

Firm overview:

Jones Day deploys its vast global resources to assist clients with some of the most consequential trade secrets cases around the world. The firm has built a truly international trade secrets team with expertise in all the major jurisdictions, experience of winning trade secrets disputes in forums worldwide, and end-to-end strength in handling such cases from prefiling investigation through trial, arbitration, and appeal.

The firm maintains a sizeable docket of trade secrets matters and takes a cross-practice approach to litigation, which combines the capabilities of its IP lawyers with colleagues from the labour and employment, business litigation, appellate, cybersecurity, antitrust, and global disputes practices.

Clients rely on Jones Day to handle complex issues such as disputes arising from failed collaboration agreements and other business deals, employee mobility matters, cybersecurity attacks, data breaches, and claims of criminal theft. International arbitration is a particular forte of the team.

Services also include prefiling investigations of IP theft, preparation of early readiness programmes for trade secret disputes, trade secret audits, counselling on trade secret protection, and handling technology transactions pertaining to shared confidential technical and business information. Attorneys offer thought leadership on global trade secrets issues via webinars, publications and presentations.

Team overview:

Jones Day offers clients a highly integrated team of trade secrets specialists that collaborate to provide unified strategies across borders and maximise the strength of claims in court. There are 30 partners at the firm with a significant trade secrets practice, located across 32 of its 40 global offices.

Chair of the firm’s global Trade Secrets Task Force, California-based Randall (Randy) Kay has more than 30 years’ experience as a technology lawyer and an international reputation as a trade secrets tour de force. Described by a peer as “one of the most knowledgeable trade secrets practitioners”, Kay coordinates a large, international team spanning the US, UK, France, Germany, Spain, China, Hong Kong, Taiwan and Australia. “He is astute, professional, personable and very well versed in trade secret law and strategy,” a peer acknowledges. “One area in which he especially stands out is where the trade secret dispute has an international angle.”

London-based partner Rebecca Swindells advises a wide range of clients on strategy to protect their trade secrets, as well as litigating trade secret cases before the courts. Recent work highlights include representing a US-based multinational manufacturer in a cross-border technical trade secrets claim against a competitor in the UK High Court, and acting for a multinational software company in a breach of confidence and trade secrets infringement dispute with one of its key competitors.

In Cleveland, of counsel Calvin Griffith focuses his practice on IP litigation involving patents, trade secrets, and copyrights. A renowned litigator, Griffith has handled cases involving a wide range of technologies for clients including AbbVie, Canon, General Electric, Goodyear, and Johnson & Johnson.

Other core members of the team include Michael Oblon, based in Washington, DC, who specialises in trade secret litigation and counselling for electronics and software companies. Oblon has led significant cross-border trade secrets litigations in the International Trade Commission and district courts, and draws on his background as an electrical engineer and former patent examiner to work on cases concerning complex technologies.

In San Francisco, Jennifer Bennett handles high-stakes trade secrets disputes in federal court and arbitration proceedings. With a science background, she handles matters involving all areas of technology ranging from software to healthcare.

Los Angeles-based partner Andrea Jeffries leads significant IP matters involving patents, trade secrets, and other forms of IP across a range of technologies, and has represented major pharmaceutical companies in high-stakes Hatch-Waxman, trade secret, and biotech matters.

Key matters:

• AbbVie v Adcentrx Therapeutics and Abbvie v BeiGene

Jones Day is representing AbbVie in asserting claims for trade secret misappropriation under the Defend Trade Secrets Act (DTSA) against the client’s former scientist and his new employer Adcentrx, a biotechnology company located in San Diego.

The case (AbbVie v Adcentrx Therapeutics et al, US District Court for the Southern District of California, 3-23-cv-02290) involves the former AbbVie employee’s alleged theft of AbbVie’s trade secrets relating to antibody drug conjugates (ADCs) used to fight certain types of cancer.

Jones Day’s team includes partners Andrea Jeffries (Los Angeles), Randall Kay (San Diego) and Tom Koglman (Cleveland); of counsel Lisamarie LoGiudice (New York); and associates Unmesh Shah (New York), Maeve Dineen (Cleveland) and Shane Padilla (San Diego).

The firm is also representing AbbVie in asserting trade secrets misappropriation claims against a former scientist and his new employer, BeiGene, a pharmaceutical company based in China. The case involves the former employee’s alleged theft of AbbVie’s trade secrets relating to Bruton’s tyrosine kinase (BTK) degraders.

The team on that case (AbbVie v BeiGene et al, US District Court for the Northern District of Illinois, 1-24-cv-08167) is partners Andrea Jeffries (Los Angeles), Randall Kay (San Diego), Jason Winchester (Chicago), John Michalik (Chicago) and John Evans (Cleveland); and associates Michelle Smit (Chicago), Unmesh Shah (New York), Mounir Jamal (Chicago), Ariana Wilner (Los Angeles) and Shane Padilla (San Diego).

• Danieli et al v SMS Group et al

Jones Day successfully represented SMS in a long-running, hard-fought trade secret case between global competitors who build equipment for the steel industry. SMS started as a trade secret defendant facing expedited proceedings and the threat of a damaging preliminary injunction that would have prevented it from developing and marketing its flagship thin slab casting technology. SMS ended the case on the eve of trial as a counterclaim plaintiff sought substantial damages from the competitor.

In 2024, Jones Day won a complete defence victory at summary judgment for SMS on all trade secrets and other claims. SMS’s counterclaims were set for a jury trial beginning in May 2025, but the matter was resolved during a judicial settlement conference in late April.

The case is Danieli, et al v SMS Group, et al, US District Court for the Western District of Pennsylvania, 2:21-cv-1716. Jones Day’s team included partners John Goetz (Pittsburgh), Margaret Gleason (Pittsburgh), Jeffrey Baltruzak (Pittsburgh), Tarek Abdalla (Pittsburgh), Adrienne Mueller (Cleveland), James Saywell (Cleveland) and Thomas Koglman (Cleveland); and associates Ryan Nelson (Pittsburgh), Michael Gallagher (Pittsburgh) and Christian Roberts (Pittsburgh).

• Biological Dynamics v Exokēryx

Jones Day is defending Exokēryx over alleged theft of “lab on a chip” technology in a trade secret lawsuit brought by a competitor. Both parties are attempting to create and market “lab on a chip” technology that would allow for the isolation and characterisation of biomarkers such as exosomes within a biological sample placed on the chip. Exokēryx was founded by former employees of the plaintiff company.

The case is Biological Dynamics, Inc v Exokēryx, Inc, US District Court for the Southern District of California, 3:23-cv-01664-BC-JLB.

Clients:

Catcher Technology, Exokeryx, MedImpact Healthcare Systems, Qualcomm