Randy Kay

When Randy Kay started working in technical IP, he said he really enjoyed working with engineers and scientists and hearing their invention stories or their "flash of genius."

"As an example, one of the original inventors of the inkjet cartridge told me that his inspiration for managing the pressure of the ink bag came from the New Year's party blower which would expand and contract based on airflow," he said. "I used that story in his direct examination at trial."

Currently, his IP work involves a steady diet of international trade secret disputes and fights over patent ownership.

Kay recently completed two global trade secret disputes brought under the DTSA provision allowing for a federal district court to preside over claims of foreign misappropriation when the requisite "acts in furtherance" of the misappropriation occurred in the U.S. (MedImpact Healthcare Sys., Inc. v. IQVIA Inc., 19CV1865-GPC(LL), 2020 WL 5064253 (S.D. Cal., filed Aug. 27, 2020).

His client's lawsuit arose from IQVIA's theft and misuse of MedImpact's trade secrets in competing software systems deployed in the Middle East. MedImpact demonstrated that the Middle Eastern defendants' virtual presence in California met the minimum contacts standard for personal jurisdiction.

"At the pleading stage, these cases involve litigation over whether or not an act in furtherance has been alleged sufficiently," Kay explained. "In one of these lawsuits, we established in a case of first impression that purely virtual contacts with the forum can qualify as the requisite acts in furtherance."

During discovery in these cases, he deals with taking foreign depositions and securing evidence abroad that the district court will consider admissible at trial.

Kay ultimately succeeded in winning summary judgment multiple times, including on the protectability of trade secrets and on misappropriation.
"Obstacles that we had to overcome in the MedImpact litigation included a nonstop barrage of motion practice from the defendants at every stage of the case including jurisdictional fights, multiple rounds of summary judgment motions, choice of law battles, and Daubert challenges, he added.

And given the variety of subject matters that comes with his line of work, Kay has an interesting sequence of cases coming up.

"Up next, I have cases involving slot machines, cancer therapies and software inventions," he said. "I like the diversity of technologies in the cases I handle."

Discussing recent observations, Kay said he is definitely seeing greater interest in trade secret protection from clients who did not pay much attention to it in the past.

"In house counsel want to learn more about protecting company trade secrets as well as how to avoid being on the receiving end of a trade secret lawsuit," he said. "I am seeing a lot more trade secret lawsuits than in the past, and I am seeing many more trade secret disputes get filed in arbitration rather than in court."