Cathy Lui, a partner in the San Francisco office, is a member of the Complex Litigation and Dispute Resolution group. Cathy
primarily specializes in trade secrets litigation, and has particular expertise in obtaining and
defending against temporary restraining orders and preliminary injunctions
under exigent circumstances in fast-paced trade secret actions.
practice is across multiple jurisdictions in both federal and state courts, and
involves a variety of different types of trade secrets including technical
secrets, financial information, and products and sales information. She has significant experience in trade secret actions arising from the Defend Trade Secrets Act ("DTSA"), which created the first federal civil misappropriation of trade secrets claim in May 2016. Cathy has been involved in some of the earliest DTSA litigation, helping her clients shape DTSA law. Her practice crosses all industries and sectors including biotech, retail, and financial services, among others. Cathy’s trade secret practice often involves
parallel criminal proceedings. She represents plaintiffs as often as defendants in trade secret actions. In
addition, Cathy also practices complex commercial litigation including breach of contract, fraud, and employee mobility cases.
Cathy regularly speaks and writes about trade secrets litigation. She is an editor of Orrick's trade secrets blog, Trade Secrets Watch.
Cathy is very involved in diversity and inclusion initiatives and the legal community. She is co-chair of the Bay Area Asian American Bar Association Judiciary Committee. She is also active in the California Minority Counsel Program, and the Firm's Asian American Affinity Group, hiring, and recruiting committees. Cathy also dedicates a significant amount of time to pro bono matters. In an asylum merits hearing, she successfully represented a Salvadoran religious activist who was persecuted by gangs that dominate El Salvador. For her work on this matter, the Lawyers Committee for Civil Rights awarded Cathy the Father Cuchulain Moriarity Award. In addition, the Justice & Diversity Center of the Bar Association of San Francisco recognized Cathy as an Outstanding Volunteer in Public Service in 2014 through 2016 for her work with helping homeless clients remove outstanding warrants, which serve as barriers for housing and employment.
Cathy's notable engagements include the following:
- Successfully defended Scopely, Inc., a gaming company, in defeating a TRO and preliminary injunction sought by Zynga in one of the first DTSA cases in Northern District of California.
- Represented AllCells, LLC, a biotech company specializing in stem cell blood products, in successfully obtaining a preliminary injunction against former employees who started a competing company in an early DTSA case. AllCells also successfully defeated a motion to dismiss based on the effective date of the DTSA.
- After a three-day evidentiary hearing, successfully represented two subsidiaries of Williams-Sonoma, Inc. in obtaining a preliminary injunction against a former executive and his new employer from using plaintiffs' trade secrets.
- Represented Oracle America, Inc. in defending against a $6.6 billion breach of contract, fraud, false claims act, and civil RICO claims brought by the State of Oregon. The matter resolved very favorably to Oracle.
- Represented medical devices leader Varian Medical in successfully obtaining a preliminary injunction after an evidentiary hearing against its biggest competitor, Elekta, in a trade secrets action. The injunction included the rarely-granted enjoinment that forced a senior
VP of Elekta to stop sales activity related to Varian’s customers.
- Represented Toyota Motor Credit Corporation in successfully obtaining a preliminary injunction against a former employee who misappropriated Toyota's trade secrets.
- Represented semiconductor manufacturer Nanya Technology Corporation and Nanya Technology Corporation USA in DRAM antitrust price-fixing cases, including actions brought by direct and indirect purchasers, U.S. government entities, and the European Commission.
- Represented Nanya Technology Corporation in patent infringement defense before Northern District of California and International Trade Commission.
The Waymo v. Uber trade secrets litigation has been underway for less than two months but the case has already hit quite few speed bumps with multiple discovery battles, Waymo’s efforts to obtain a preliminary injunction from Judge William Alsup of Northern District of California, a fight over arbitration, assertions of 5th Amendment rights, and now an appeal to the Federal Circuit that has temporarily halted a portion of the district court proceedings.
As a quick recap of how we got here, Waymo alleges that one of its former key managers in charge of Waymo’s driverless car business, Anthony Levandowski, downloaded more than 14,000 files to start a competing company—Otto—that Uber later purchased. The key technology relates to a LiDAR system, which is mounted on top of the car and gives the driverless car the ability to “see” other cars and obstacles. Waymo is seeking a preliminary injunction enjoining Uber from using or disclosing any of Waymo’s trade secrets and from selling any devices based on Waymo’s patents. In aid of the PI hearing on May 3, 2017, the parties are engaging in expedited discovery. Since this case started, the docket has been quite active and full of interesting, thorny legal issues. READ MORE
With all the hubbub over the Presidential election, it would not be hard to overlook some of the Obama administration’s final moves. Recently, the White House issued a call to action to state legislators to ban non-compete agreements for most classes of workers. In an era where even sandwich makers can be bound to a non-compete agreement, the White House is concerned about the overuse of non-compete agreements and the potential stifling effect of these agreements across the economy. According to the White House, 20 percent of U.S. workers are bound by non-compete agreements, including 14 percent of those earning less than $40,000 per year. READ MORE
Expectations didn’t appear high for the latest round of China-U.S. talks about a variety of economic issues including trade secret protection. As previously discussed at TSW, China had not signed onto the Trans-Pacific Partnership Agreement, and earlier this summer, the U.S. had threatened economic sanctions against China for lax cybersecurity enforcement. READ MORE
We rely on the federal government for a lot of things, but helping a corporation recover attorney’s fees is not something that immediately comes to mind. With a recent federal court opinion in the Northern District of California that made executive search firm Korn/Ferry International $827,983.25 richer (although the order likely will be appealed), more corporations may think about getting an assist from federal prosecutors in trade secret actions, rather than taking on the burden themselves in civil litigation. READ MORE
State court or federal court? If the Defend Trade Secrets Act of 2014 (DTSA) (S. 2267, introduced on April 29, 2014) becomes law, then trade secrets plaintiffs—not just those who can maintain diversity jurisdiction—could proceed in federal court under new federal law. But would they want to? While the knee-jerk reaction of many litigants is a resounding “Yes!,” we wonder whether federal court under the DTSA would be preferable to the well-known Uniform Trade Secrets Act (UTSA), which is available in forty-eight of the fifty states.
Let’s first look at where DTSA and the UTSA appear the same or similar. Both statutes provide nearly identical definitions of trade secrets and misappropriation. Both also offer similar remedies for injunctive relief, actual damages, unjust enrichment, reasonable royalties, punitive damages, and attorneys’ fees. READ MORE
When you think of gyms, romance, and reality TV, what’s most likely to come to mind is an episode of Jersey Shore — not a lawsuit for trade secret misappropriation. But you won’t hear about JWoww, Snooki, or The Situation in three recently-filed trade secret complaints. These complaints reflect a growing trend in which trade secret cases aren’t limited to traditional spheres like corporate espionage or technical secrets like source code, but instead are based on creative trade secret assertions that go after competitors in unique settings. READ MORE
The recent arrest and likely prosecution of three executives at Taiwanese smartphone giant HTC Corporation may foreshadow an era of tougher prosecutions under Taiwan’s newly amended Trade Secrets Act. Although the arrests allegedly target the leaking of Taiwanese trade secrets to China, the case could also signal changes for U.S. companies seeking to recruit talent from Taiwan.
On August 31, 2013, three top HTC product designers were arrested in Taiwan on suspicion of stealing trade secrets and submitting fraudulent expense claims after HTC filed a complaint with the Taiwan Investigation Bureau. The trio allegedly planned to set up a competing design company and stole trade secrets related to HTC’s upcoming “Sense 6.0 UI” design. In addition, they allegedly submitted false commission fees from an external design firm, although the design work was performed in-house.
An additional layer of intrigue and scandal came to light when reports surfaced that the arrested executives were allegedly passing on the confidential information to READ MORE