Miriam Kim

Kim has practiced at Munger Tolles since 2005, concentrating on trade secrets and employment mobility issues, copyright cases, technology disputes and trials.

“Always something new,” she said.

She spent part of the summer monitoring a federal criminal trial in which her client, Santa Clara-based Applied Materials Inc., which supplies equipment, services and software to the semiconductor industry, was the victim of an alleged massive technology theft. Four former company engineers were charged with conspiring to steal trade secrets and use them to launch a competing business to be based in the U.S. and China. U.S. v. Chen et al., 5:17-cr-00603 (N.D. Cal., filed Nov. 30, 2017).

In late August, defendant Donald Olgado was found guilty on 11 counts of possessing trade secrets related to LED manufacturing technology that Applied Materials had spent hundreds of millions of dollars to develop; two were acquitted and the jury hung in part on the fourth. As the trial proceeded, Kim prepared company executives to testify and worked on readying the company’s civil case against the four. Applied Materials Inc. v. Chen et al., 112CV237790 (S. Clara Co. Super. Ct., filed dec. 13, 2012).

The civil case is currently on hold for an appeal as part of the defendants’ effort to move the matter to arbitration, which the trial judge rejected. Kim said the civil case will move forward as soon as possible and that the criminal acquittals won’t block the civil litigation. “There is a different standard of proof: preponderance of the evidence instead of reasonable doubt. And our civil case is also about the theft of lithium ion battery technology in addition to the LED claims. All that makes it a very different case. And we are confident the Court of Appeal will agree with the trial judge.”

An aspect of the Applied Materials litigation illustrates a key element of Kim’s counseling practice as she urges companies to keep better track of their employees’ use of trade secrets. “Back in 2012 when Mr. Olgado attempted to download computer aided design drawings, he was blocked by Applied’s data loss prevention software,” she pointed out. “He even emailed a manager complaining about the company’s ‘stupid’ policy. But thanks to the software, we were able to see what he had written and done.

“I’m big on clients doing preventive proactive monitoring, especially with so many working from home these days.”

In another case, Kim reached a confidential settlement in defense of background check services supplier Checkr Inc. on trade secrets theft claims. SambaSafety v. Checkr Inc. 3:20-cv-03004 (N.D. Cal., filed April 30, 2020).

She and the opposition reached the deal after she discovered that the only purported trade secret in the complaint, a compilation of codes, was publicly available on the internet.

—John Roemer