Jacob M. Heath

Senior Associate

Silicon Valley

Read full biography at www.orrick.com
Whether it be a Fortune 500 company or a startup, technology companies are not immune from competitors, former employees, and relentless cybercriminals. To protect his clients’ intellectual property, their data, their customers, Jake Heath offers the most diligent and aggressive protection possible.

Undaunted by a case’s legal or technical complexity, precedent, or magnitude, Jake will not stop until his clients’ patents, copyrights, and trade secrets are protected; the cybersecurity breach is stopped; and the cybercriminals are brought to justice.

To develop those creative legal solutions, Jake draws upon his unique blend of experience. He has carried out Internet enforcement actions involving cybercrime, fraud, and deceptive activity; brand violations; intellectual property infringement; trade secrets; and cybersecurity breaches. Jake has also handled a variety of complex commercial litigation in federal and federal court, as well as several white collar criminal investigations. Jake also draws from his practical litigation experience and trial advocacy.

Trade Secret Misappropriation Litigation

  • We currently represent a Russian-based client against its former chief executive officer in U.S. federal court. The case centers on allegations of conveying the company’s confidential, proprietary, and inside information to disadvantage the company in a trade secret matter.
  • We investigated, identified, and successfully tracked an international defendant who stole and disclosed confidential technical information to his former employer’s competitor in corporate espionage and trade secret matter.
Technology-Based Complex Litigation – At the heart of Jake’s practice is complex litigation that fundamentally stems from a dispute involving technology. In each matter, Jake uses his unique blend of experience and skills to develop winning solutions for his clients.

  • The State of Oregon v. Oracle  In 2014, we were asked to represent Oracle and several individual defendants in litigation involving the State of Oregon’s health insurance exchange. Oregon had hired Oracle to assist in developing technology for the State’s health insurance exchange and, after several bureaucratic setbacks, the Governor canceled the project. The State refused to pay tens of millions of dollars in outstanding invoices. We represented Oracle in several federal and state lawsuits against the State of Oregon. On behalf of Oracle, we sued the State for copyright infringement and breach of contract in federal court. The State filed two separate lawsuits in state court, seeking an injunction and more than $6 billion in damages on claims ranging from fraud to racketeering. Several other lawsuits between the parties ensued. To resolve this difficult dispute and often contentious litigation lasting more than two years, we crafted an aggressive, multi-faceted litigation strategy. That strategy resulted in a favorable settlement that resolved all pending litigation. Instead of the requested $6 billion, the settlement package included free software licenses for the State, Oracle’s contribution of $10M to an Oracle-branded STEM educational initiative, and payment of $25M, representing a portion of the State’s attorneys’ fees incurred.
  • Ruckus Wireless Ruckus, an innovator and world leaders in Wi-Fi access points, hired us seven weeks before trial in a “bet-the company” trial against NetGear. In October 2013, a Delaware jury returned a verdict for our client, finding that its Wi-Fi access points did not infringe NetGear’s patents.
  • NVIDIA Corp. We successfully defended NVIDIA in a patent infringement case involving graphics card and computer bus architectures.
  • QuickLogic Corp. We successfully defended QuickLogic in a patent infringement case involving its customizable semiconductors as integrated in smart phones and other portable devices.
  • SPIL and SUI  Jake played an integral role in developing a litigation strategy that resulted in a favorable settlement with Tessera, Inc.
Disabling Computer Botnets - Since 2010, Jake Heath with a team of Orrick attorneys responsible for disrupting and disabling malicious computer botnets used disseminate billions of spam email messages, engage in unauthorized bitcoin mining, Internet advertising “click-fraud,” DDOS attacks, and to engage financial fraud. These include:

  • We are carrying out an action to disable 276 Internet domains that controlled 400,000 computers “Waledec” botnet that was capable of disseminating 1.5 billion spam email messages per day.  
  • We are handling an action to disable the “Rustock” botnet, which at the time was one the single largest source of spam in the world, capable of disseminating more than 30 billion spam email messages per day, the action which substantially dismantled this massive criminal infrastructure.
  • We are carrying out actions to disrupt the "Zeus," "IceIX," "SpyEye" and "Citadel" financial theft botnets, which were collectively responsible for hundreds of millions of dollars of online account theft.
  • Microsoft v. Sabelnikov We carried out this action to dismantle the "Kelihos" spam botnet and pursue the botnet's creators.
  • Microsoft v. Chupakhin We carried out this action to dismantle the "Bamital" botnet, which was engaged in online advertising "click" fraud, and pursue the botnet's creators.

Cybercrime, Fraud, and Abuse

  • We investigated and successfully pursued participants in an international criminal organization responsible for millions of fake pharmaceutical and adult spam emails in violation of CAN-SPAM Act.
  • We prosecuted action against parties fraudulently manipulating email spam filters and carrying out illegal automated creation of email accounts and spam email activity.
  • We investigated and initiated international civil litigation and law enforcement referrals against an "advance fee fraud ring."
  • We prosecuted action against website publisher and internet traffic provider in a novel Internet case related to "click fraud" and related fraudulent online advertising practices.
  • We investigated and advised regarding various malware and adware programs.

Posts by: Jacob M. Heath

A “Virtual” Home Is Not a Home: Court Sanctions Plaintiffs for “Reckless Disregard” in Deciding the Proper Forum for Their Litigation

Usually, one benefit of being a plaintiff is deciding in what forum to pursue litigation.  Generally, even a foreign-based plaintiff may pursue litigation in a U.S. forum where a defendant may be found or in which there is a substantial connection to the litigation.  There are, however, limits on a plaintiff’s choice of forum, and a recent decision in Tapgerine LLC v. 50Mango, Inc. demonstrates that pushing those limits may result in sanctions. READ MORE

A Day Late And A Dollar Short – Court Grants Summary Judgment On Laches Defense

Order Granting Summary Judgment On Dropbox Laches Claims, Dropbox, Inc. v. Thru Inc., Case No. 15-cv-01741-EMC (Judge Edward M. Chen)

The proverb “[e]quity aids the vigilant, not the sleeping ones” aptly describes the rationale behind the defense of laches-i.e., the legal doctrine which states that a plaintiff who unjustifiably delays pursuing a claim may forfeit it. Intended to encourage the timely resolution of disputes and to avoid prejudice to defendants, laches can have dire consequences for plaintiffs who unreasonably delay bringing their claims. READ MORE

Wise People Are Diligent

Johnstech Int. Corp. v. JF Microtechnology SDN BHD, Case No. 14-cv-02864-JD (Judge James Donato)

Buddha said, “To be idle is a short road to death and to be diligent is a way of life; foolish people are idle, wise people are diligent.” This is a lesson Judge James Donato bestowed on the parties in Johnstech Int. Corp. v. JF Microtechnology SDN BHD, when he denied, in part, JF Microtechnology SDN BHD’s (“JFM”) motion to amend its invalidity contentions after the close of fact discovery to correct a clerical error and to add a new prior art reference and invalidity theories. Judge Donato allowed the clerical correction but denied JFM’s remaining amendments as JFM “failed to manifest the required degree of diligence.” READ MORE

A BETTER WAY TO LITIGATE? – The December 1, 2015 Amendments To The Federal Rules Of Civil Procedure Aim For More Efficiency And Less Delay

Civil litigation can sometimes be less than civil or efficient.  Indeed, some parties have been found to engage in “abusive” discovery practices or dilatory tactics intended to prolong and increase the costs of litigation. This has not gone unnoticed by courts, parties, and commentators, including the Advisory Committee on Rules of Civil Procedure (the “Committee”). In August 2013, the Committee proposed amendments to the Federal Rules of Civil Procedure (“the Rules”) aimed at curbing certain abusive practices, amongst other things. The amendments include changes to Rules 1, 4, 16, 26, 30, 31, 33, 34, 36, and 37, and would impact numerous aspects of litigation including service of process, discovery (including electronically stored information (“ESI”)), default judgments, and possibly pleadings requirements.  READ MORE

Producing 500,000 Pages of Documents and Source Code Found to be Good Cause For Leave to Amend Infringement Contentions

Order Granting Motion For Leave To Amend Infringement Contentions, Delphix Corp. v. Actifio, Inc., Case No: 13-CV-04613 BLF-HRL(Judge Howard R. Lloyd)

The NorCal IP Blog has reported on multiple decisions granting or denying leave to amend infringement contentions. See http://blogs.orrick.com/iplandscape/?s=infringement+contentions. A constant theme throughout has been the Northern District’s strict adherence to the Patent Local Rules for guidance on allowing amendments. Magistrate Judge Howard R. Lloyd echoed that theme this week in Delphix Corp. v. Actifio, Inc., Case No. 13-cv-04613 BLF (HRL), when he granted defendant/counterclaim plaintiff Actifio, Inc.’s (“Actifio”) motion to amend its infringement contentions. Critical to his decision was plaintiff/counterclaim defendant Delphix Corp.’s (“Delphix”) production of source code and over 500,000 pages of new information about the accused product, not otherwise available to Actifio. READ MORE

Third Time’s A Charm? Court Denies Motion to Dismiss and Anti-SLAPP Motion

Order Denying Defendants’ Motion to Dismiss and Anti-SLAPP Motion to Strike, Sonus Networks, Inc. v. Inventegry, Inc., C-15-0322 EMC (Judge Edward Chen)

Patent licensing company Inventegry, Inc. recently suffered some setbacks when Judge Edward M. Chen denied its motion to dismiss and Anti-SLAPP motion to strike several claims that plaintiff Sonus brought as part of its declaratory judgment action. READ MORE

Uber Takes A Ride Back To State Court: Federal Court Dismisses Conversion Claim, Remands Trade Secret Misappropriation Case Back To State Court

Order on Motion to Remand, Kevin Halpern, et al., v. Uber Technologies, Inc., et al., 15-cv-02401-JSW (Judge Jeffrey White)

Uber has faced its share of challenges of late, from the established taxi community to cities considering bans on Uber’s ride-sharing service. Last week was more of the same, as Judge Jeffrey S. White handed Uber a loss in the Northern District in Halpern v. Uber Technologies, Inc., Case No. 15-cv-02401-JSW. Judge White remanded back to San Francisco Superior Court a trade secret misappropriation action brought by plaintiffs Kevin Halpern and Celluride Wireless READ MORE

March 2015 Recap

March 2015—like January and February—saw decisions on a variety of fronts from ND Cal judges.  ND Cal judges demonstrated their willingness to apply the Supreme Court’s decisions in Nautilus and Alice to invalidate patents on summary judgment.  Nautilus held claims invalid if they “failed to inform, with reasonable certainty, those skilled in the art….”  Judge Alsup applied that reasoning in Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931, where he found Aquatic’s asserted claims invalid, in part, because the its definition of “hermetically seals” lacked sufficient fixed meeting: “taking our patentee at its word that ‘hermetically seals’ has no fixed meaning.”  READ MORE

Inside Job – Judge Labson Freeman Applies the CFAA Restrictively

Koninklijke Phillips N.V., et. al. v. Elec-Tech Int’l Co., Ltd., et al.,, Case No. 14-cv-02737 (BLF) (March 20, 2015)

Plaintiff Koninklijke Phillips N.V. (Phillips) and its subsidiary Phillips Lumileds Lighting Company LLC sued Elec-Tech, a Chinese company, and a number of its subsidiaries and employees for the alleged theft of Phillips’ LED lighting technology.  The claim arose from the alleged theft of Phillips’ proprietary “epitaxy” technology and confidential business information by a former Phillips principal development engineer that Elec-Tech had hired, Dr. Gangyi Chen.  Phillips alleged that Dr. Chen had received up front compensation while he was still employed by Phillips and shortly before his departure to Elec-Tech. READ MORE

WHAT’S GOOD FOR THE GOOSE IS GOOD FOR THE GANDER – Parties Seeking To Depose Foreign-Based Witnesses In The U.S. Should Be Prepared To Have Their Own Witnesses Testify In The U.S.

Parties suing in the United States with foreign-based witnesses take heed, as you may find your foreign-based witnesses traveling to the United States for depositions.  On February 12, 2015, Magistrate Judge Paul Grewal issued an Order in Corning Optical Communications Wireless, Ltd. v. SOLiD, Inc., Case No. 5:14-cv-03750-PSG, in which he instructed the plaintiff, Corning Optical Communications Wireless, Ltd. (“Corning”), to produce its witnesses residing outside of the U.S. for depositions in the Northern District of California.  After weighing several factors, Judge Grewal concluded that having foreign-based witnesses deposed in the Northern District was the “most equitable solution.” READ MORE