Randall E. Kay

Jones Day

San Diego

Trade secrets litigation

One of Kay's first IP litigation cases involved ink cartridges. He met with the person who invented the inkjet cartridge, who explained to him how it works.

Kay's fascination with learning how things work has only grown since then. Today, he litigates cases that have received worldwide attention.

He is a lead attorney for semiconductor company Micron Technology Inc. in a trade secret lawsuit against two competitors in Asia. Micron Technology, Inc. v. United Microelectronics Corp. et al., 17-CV06932 (N.D. Cal., filed Dec. 5, 2017).

The case has garnered international attention as emblematic of President Donald J. Trump's trade war with China.

For Kay, the lawsuit posed challenges in terms of proving personal jurisdiction to U.S. District Judge Maxine M. Chesney of San Francisco, because the alleged theft originated in Taiwan.

"We had four hooks for why we should have personal jurisdiction over the two defendants in the United States. One was they applied for U.S. patents on the stolen technology at the [U.S. Patent and Trademark Office] in Virginia. And the court did find that that constituted basis to have the defendants answer for these claims in the United States," Kay said.

The judge also found that although the defendants stole digital information while in Taiwan, they did so accessing U.S. servers. She found that as a second and independent basis for personal jurisdiction in the U.S. court, Kay explained.

The third and fourth basis that Kay and his team managed to prove is called "acts in furtherance" of misappropriation, a term that is closely linked to the new federal trade secret laws, according to Kay.

"The facts there were that the defendants visited Northern California for two purposes, one to recruit engineers and two, to meet with equipment suppliers. And that was in order to go into development of the DRAM technology at issue in the case," Kay said. "And the court found that the defendants' presence in Northern California for recruiting engineers and for meeting with equipment vendors constituted the 'acts in furtherance' of misappropriation under the federal Defend Trade Secrets Act," Kay said.

Although he enjoys representing big clients, such as Micron Technology, he still finds it rewarding to help smaller companies succeed.

"I particularly have enjoyed helping smaller companies whose technology has been taken and misused by larger companies in circumstances where the larger company may think that the small company is never going to be able to detect it or never be able to do anything about it," Kay said.

"And I have had several of these cases where there's some brazen theft that we uncover through forensics and I'm able to truly make a difference in the life of a family-owned business," he added.

-- Henrik Nilsson