Randall E. Kay

Few things showcase the internationality and gravity of Kay’s practice quite like a major case on behalf of Micron Technology Inc., in which he represents the semiconductor giant in litigation over the theft of trade secrets by Taiwanese and Chinese companies.

Kay pointed specifically to the Defend Trade Secrets Act, passed in 2016, as a key tool for holding the alleged offenders accountable.

“The Defend Trade Secrets Act seems to have been written for this Micron case. They brought claims against the Taiwanese and Chinese entities for conduct in the United States and in Asia,” he said.

The law allows owners of trade secrets to sue in federal court for misappropriation abroad.

“[Micron] can complain in the United States about conduct abroad, and that’s what we have here,” he said. “For example, Micron had employees in Asia contacting U.S. servers in the environment and stealing technology. Our experts were able to uncover that once we realized it occurred.”

Whether claims are anchored at home or in another country, his firm’s broad practice base in multiple jurisdictions and nations enables Kay’s practice, he said. Micron Technology Inc. v. United Microelectronics Inc. et al., 17-CV06932 (N.D. Cal., filed Dec. 5, 2017).

In another matter, Kay heads the team representing Qualcomm Inc. against tech juggernaut Apple Inc. accusing the latter of improperly using trade secrets.

Kay’s team recently beat a series of motions and appellate writs by Apple challenging Qualcomm’s claim, allowing a multibillion dollar case proceed toward trial.

“The claim is that Apple was using Qualcomm secrets to improve iPhone performance. Qualcomm and Apple had been in numerous agreements with strict confidentiality and use restricting what Apple can do with the trade secrets and it’s about Apple misusing that information,” he said.

For Kay, part of the pleasure of intellectual property work is his experiences on both sides of the issue, and staying abreast of technological advances.

“It’s the type of work where it’s required reading on both sides because you get to immerse yourself on both sides, and I’ve had so many cases for so many innovators. I love learning the technology, and between working with the experts, clients, and inventors, ultimately I become an expert in the technology at issue,” he said.

“Over time, you explain it to judges and juries so many times you develop best practices in how to do that in a simplified fashion so they can focus on the issues and the technology that’s been stolen,” he added.

Kay also leads his firm’s multidisciplinary international practice group, to make sure large-scope cases get viewed through every lens possible.

“Many of my cases involve international aspects, and that angle adds a degree of complexity,” he said.

— Andy Serbe