Randall E. Kay

Kay’s handling of complex cross-border trade secrets disputes as a Jones Day partner has led policymakers in other countries to seek out his expertise.

“Last month I appeared virtually in a talk arranged by the Korean IP office—they wanted to hear from me on how the U.S. has developed its reputation for strong trade secrets protections,” he said. “It’s significant because trade secrets rights and criminal prosecutions have strengthened here even as patents have lost some of their power, and foreign countries are taking note. In prior years I’ve spoken on this in Taiwan and France. There are moves in Europe and Asia to model legislation there on U.S. trade secrets law.”

Along with his litigation in this area, Kay is the senior editor of “Framework for Analysis on Trade Secret Issues Across International Borders: Extraterritorial Reach,” published by The Sedona Conference in March 2021.

“The trade secrets world has exploded in the last couple of years, due to the expansion of international dispute and under the Defend Trade Secrets Act provision that allows bringing claims to the U.S. even where the claims may have arisen elsewhere.”

Two of Kay’s cases illustrate that reality. Last year, he established that his health care client’s trade secrets misappropriation claims against entities in the United Arab Emirates should be heard in the Southern District. Medimpact Healthcare Systems Inc. v. IQVIA Holdings Inc., 3:19-cv-01865 (S.D. Cal., filed Sept. 26, 2019).

Medimpact sued for violation of the DTSA and the California Uniform Trade Secret Act over claims related to alleged misappropriation of aspects of its pharmacy benefits management platform used by pharmacies to make drug dispensing decisions. Kay overcame jurisdictional challenges by demonstrating that the defendants’ virtual presence in California triggered personal jurisdiction.

He showed that the virtual contacts among the defendants in the U.S. and abroad by phone, email, Skype and FedEx met the DTSA minimum contact standard.

“This has become the leading case on personal jurisdiction over a foreign defendant in a DTSA case based on virtual contacts,” Kay said. Earlier this year he defeated the defendants’ motion for partial summary judgment; a motion for reconsideration failed. “The judge was even more firm the second time,” Kay said. The case is now in international fact discovery.

Kay also represents a U.S. technology company against two Asian would-be competitors over their alleged trade secrets theft. Micron Technology Inc. v. United Microelectronics Inc. and Fujian Jinhua Integrated Circuit Co Ltd., 4:17-cv-06932 (N.D. Cal., filed Dec. 5, 2017).

“In Micron, the defendants physically visited the U.S.,” he said, making achievement of personal jurisdiction here easier. One of the defendants has confessed to criminal trade secret theft and agreed to pay a $60 million fine. Kay’s civil case is trailing the criminal proceedings, with billions of dollars at stake. “This is currently the largest dollar case I have,” he said.

—John Roemer