Randy Kay

The majority of Randy Kay’s cases are international, which often requires him to work with companies and witnesses across as many as three or four continents.

Some of his cases are huge. Chief among those, he represents semiconductor giant Micron Technology in its multibillion-dollar trade secrets lawsuit against a large Chinese tech company, Fujian Jinhua, that has been blacklisted by the federal government. The case has been described as emblematic of the U.S. trade war with China, and in fact the Department of Justice indicted the company and a co-defendant for theft of trade secrets less than a year after the civil case began.

The case arose when several Micron employees allegedly took “thousands and thousands of electronic files” about DRAM chip manufacturing from the company’s Taiwanese facilities for Funian Jinhua, Kay said. In a 2019 first-impression decision, he obtained personal jurisdiction over those former employees under the new Defend Trade Secrets Act. Micron Technology Inc. v. Fujian Jinhua Integrated Circuit Co. Ltd., 4:17-cv-06932 (N.D. Cal., filed Dec. 5, 2017).

Kay also represents Micron, as the victim, in the criminal case. The civil case is stayed until the criminal case concludes.

He spent much of the past three years pursuing a large international trade secrets case on behalf of MedImpact Healthcare Systems against a data science company in the UAE. The case finally settled in February, just weeks from trial. MedImpact Healthcare Systems Inc. v. IQVIA Inc., 3:19-cv-01865 (S.D. Cal., filed Sept. 26, 2019).

Along the way, Kay won several significant motions for summary judgment, including one holding that his client’s secrets were protectable and another establishing several issues on misappropriation, he said.

Also in February, he represented a European technology company in arbitration over intellectual property rights following a failed collaboration. He persuaded a federal court to send the case to arbitration before the International Chamber of Commerce, which proved successful. “We received an award in Jones Day’s client’s favor on all claims,” he said.

Kay said he truly enjoys the international aspect of his work, including when it presents difficult questions about what court or arbitral body should be presiding over an IP dispute.

So far, he has been quite successful in keeping many of his clients’ matters in U.S. courts. But he won’t disclose how he does it. “Those are trade secrets.”

“No appellate court has ruled on the specific issues on which I’ve won in these cases,” he said. “I do think that the trial courts have gotten it right … based upon the evidentiary foundation that I put before the courts to support the courts’ exercise of jurisdiction.”

On a more local level, Kay serves on the Southern District’s Standing Committee on Discipline, which investigates attorneys. This February, for the first time in his 11 years with the panel, he acted as a sort of prosecutor in a full bench trial against an attorney accused of unprofessional conduct before the court.

— Don DeBenedictis