Randall E. Kay

Randall E. (Randy) Kay’s impactful results for leading tech companies as a prominent Jones Day IP litigator include a big win in early March 2022 for San Diego-based client Medimpact Healthcare Systems Inc.

That success comes atop an impressive roster of other cases, including a multibillion-dollar trade secrets theft claim for Micron Technology Inc. against two Asian would-be competitors, a case Kay that remains in litigation. Kay said it remains “the largest dollar case I have at present.” Kay’s firm describes the matter as “gargantuan.”

Other clients include Merck Shjarp & Dohme Corp., a foreign manufacturer accused of misappropriating software systems technology and a San Diego pharmaceutical company that hired a scientist accused of stealing trade secrets from her former employer.

“IP litigation is booming,” Kay said. “I have trade secrets trials and arbitrations coming— there’s no shortage of court proceedings, in person, virtually and on the papers. Lawyers adapt, and it’s fun to have more tools.”

In the Medimpact case, Kay’s client is suing over alleged misuse of its trade secrets by global data science entities and individuals in the United Arab Emirates. Medimpact Healthcare Systems Inc. v. IQVIA Holdings Inc., 3:19-cv-01865 (S.D. Cal., filed Sept. 26, 2019).

Medimpact’s claims relate to its pharmacy benefits management platform used to make drug dispensing decisions. Kay moved for partial summary judgment on claim preclusion grounds, arguing that an earlier arbitration found in his client’s favor, preventing IQVIA from re-litigating the claims.

U.S. District Judge Gonzalo P. Curiel agreed in a March 10, 2022 order.

“The judge held that based on the strength of our evidence and our win in a binding arbitration, Medimpact’s trade secrets are in fact protectable. That’s very significant because it’s an issue that is usually determined at trial,” Kay said.

Kay’s earlier major achievement in the case was to maneuver the case into the Southern District. He showed that the virtual contacts among the defendants in the U.S. and abroad by phone, email, Skype and FedEx met the Defend Trade Secrets Act’s minimum contact standard.

He said the next step will be a June trial on damages and IQVIA’s further liability. “I am ready, willing and able,” Kay added.

For semiconductor giant Micron, Kay is asserting trade secrets and RICO claims against a Chinese state owned enterprise. In November 2021, Micron settled its civil suit with co-defendant United Microelectronics Inc. Micron Technology Inc. v. Fujian Jinhua Integrated Circuit Co. Ltd., 4:17-cv-06932 (N.D. Cal., filed Dec. 5, 2017).

That litigation is on hold pending a criminal trial against Fujian but is expected to resume later this year. “The remaining claims are very large,” Kay said.

– John Roemer