David R. Eberhart

Eberhart moved to the Bay Area and joined O’Melveny almost 24 years ago after practicing commercial law in Ohio. He became one of the firm’s most experienced trade secrets litigators for a roster of marquee clients, many of them confidential.

“As the internet boom began in the ’90s I realized I was most interested in tech law,” Eberhart said. “I got out here and almost immediately got involved in the Avanti case”—an early, long-running Silicon Valley white collar crime clash involving claims over software code stolen by Avanti Corp. from Cadence Design Systems Inc.

“I became a soft IP guy, working with trade secrets, copyright and trademark cases,” Eberhart said. “Moving here and joining O’Melveny was the best decision I ever made.”

Trade secrets have become a hot sector recently due in part to the pandemic and the switch to remote work. “It’s more difficult for companies to protect their trade secrets when employees are at home in a less secure environment. There’s greater opportunity for employees to take trade secrets while nobody appears to be watching. More trade secrets claims are also driven by the increase in employee mobility—that’s often a trigger for what I do.”

Eberhart keeps confidential the identity of many of his clients, but publicly available information shows he’s defended Apple Inc. in several cases, which he declined to discuss.

An openly-known client is JHL Biotech Inc., a Taiwanese biopharmaceutical company accused by heavyweight U.S. rival Genentech Inc. of misappropriating trade secrets related to its top-selling cancer and cystic fibrosis drugs. Genentech Inc. v. JHL Biotech Inc., 3:18-cv-06582 (N.D. Cal., filed Oct. 29, 2018).

Genentech’s motion for a broad injunction could have shut JHL’s doors permanently, but Eberhart and colleague Darin W. Snyder persuaded Senior U.S. District Judge William H. Alsup of San Francisco to issue a more limited injunction that allowed JHL to maintain both its R&D and production operations as the lawsuit proceeded.

“We showed that the scope of the injunction they were seeking was not supported by the evidence,” Eberhart said. “We were hired by the company to try to make things right,” he added, in the face of criminal convictions of JHL’s former CEO and another executive on charges of conspiracy to steal trade secrets and wire fraud.

“Our client, the company, and its current CEO were not charged,” Eberhart said, “despite the wrongdoing by the founders.” The O’Melveny team negotiated a settlement that cleared a path forward for JHL under its new leadership.

“The company feared a death sentence, but this was an example of how we pulled together a white collar team to work with us trade secrets lawyers. I’m not a former prosecutor, so I collaborate when necessary—and I’ve done a dozen or so cases like this with parallel civil and criminal claims.”

—John Roemer