Contrary to common perception, California employees who signed restrictive covenants prior to January 1, 2017 are not completely immune to enforcement of all restrictions on competition. For the second time in several years, a foreign corporation, Synthes, Inc., successfully enforced a non-competition agreement against former employees who were California residents. In the most recent case, the U.S. District Court for the Eastern District of California, enforced the company’s agreement against a Sacramento resident. READ MORE
Jason Yu is an associate in Orrick's Silicon Valley office and a member of the Intellectual Property Group. He is a litigator that focuses primarily on complex patent and trade secret litigation matters as well as inter partes proceedings before the Patent and Trademark office.
Jason has represented technology companies in multiple venues, including various state and federal courts, the International Trade Commission, and the Patent and Trademark office. His matters span different technological areas including, Information Technology, satellite communications, semiconductor manufacturing, circuit design and verification tools, image texture and graphics processing, gaming, and a variety of software products.
Trade Secret Litigation Matters
- Zynga, Inc. v. Scopely, Inc. et al (N.D. Cal) In competitor case, defended Scopely and individual defendants against Zynga’s complaint, request for Temporary Restraining Order, and Preliminary injunction. The Court denied the Zynga’s request for a temporary restraining order and a preliminary injunction against Scopely and the parties settled shortly thereafter.
- Corda Technologies, Inc. and Joshua G. James v. Adobe Systems, Inc. (California Superior; D. Utah) Represented the Founder of Omniture and his new venture Corda/Domo Technologies, Inc. in litigation involving allegations that he had breached his non-compete agreement with Adobe. After successfully moving to dismiss Adobe's federal case in Utah in favor of a state action that Mr. James filed in California, Mr. James moved to strike Adobe's claims under California's Anti-SLAPP statute. The California Court struck several of Adobe's claims pursuant to that motion and the case was immediately appealed. During the appeal, Adobe dismissed its claims and the parties settled.
- MGA Entertainment, Inc. v. Mattel Inc. (C.D. Cal) Assisted the trial team that tried various trade secret, copyright and trademark claims for MGA against Mattel. The trial resulted in an affirmative judgment of $309 Million against Mattel in 2011.
Patent Litigation Matters
- Dynetix Design Solutions, Inc. v. Synopsys, Inc. (N.D. Cal) Defended Synopsys, Inc., a market leader in design automation, in a patent infringement litigation. Helped manage a large portion of the case including discovery, expert reports, summary judgment motions, and trial prep. The summary judgment motions and motions limine that Synopsys filed eviscerated the Plaintiffs case and, days before trial, Plaintiff stipulated to judgment of non-infringement.
- Clouding IP, LLC v. EMC Corp. and VMware, Inc. (D. Del.) Defended clients EMC and VMware against Clouding, LLP (a non-practicing entity related to IP NAV) in a multi-patent infringement action. Clouding asserted 10 patents against EMC, VMware, and 10-15 other large technology companies. EMC and VMware led a joint defense group in filing a motion to dismiss based on Clouding's lack of standing and the district court granted that motion. Clouding re-filed the action after supposedly curing its defects, but, by that time, EMC and VMware had filed petitions for inter partes review of 9 of the 10 asserted patents, and the district court stayed the infringement action pending the completion of those IPRs. Jason drafted and managed three of the petitions, all of which have resulted in the Patent Office cancelling all challenged claims.
- PB&J Software, LLC v. Decho Corp. d/b/a Mozy (E.D. Mo.) Defended a subsidiary of EMC in a patent infringement litigation. Plaintiff stipulated to dismissal shortly after Infringement/Invalidity contentions were exchanged.
- Mosaid Technologies, Inc. v. Adobe Systems, Inc. et al. (D. Del.) Defended VMware, Inc. in a patent litigation filed by Mosaid, a large non-practicing entity, in the district of Delaware.
Patent Office Matters
- IPR2014-01304 (Inter Partes Review of U.S. Patent No. 7,065,637) Drafted petition for inter partes review of patent asserted against VMware, Inc. and assisted with discovery and trial proceedings. The Patent Office instituted review and cancelled all challenged claims.
- IPR2014-013045 (Inter Partes Review of U.S. Patent No. 7,272,708) Drafted petition for inter partes review of patent asserted against VMware, Inc. and assisted with discovery and trial proceedings. The Patent Office instituted review and cancelled all challenged claims.
- IPR2014-01292 (Inter Partes Review of U.S. Patent No. 7,032,089) Drafted petition for inter partes review of patent asserted against VMware, Inc. and assisted with discovery and trial proceedings. The Patent Office instituted review and cancelled all challenged claims.
- Inter Partes Reexamination of Certain Netlist Patents Represented SMART Modular in the Patent and Trademark office in seeking reexamination of multiple patents awarded to Netlist, Inc. All originally issued claims and most amended claims were rejected by the PTO.
Posts by: Jason K. Yu
Virgin Galactic expanded and continued its attack on its former VP of Propulsion, Thomas Markusic, and his new company, Firefly Space Systems, this month. Markusic co-founded Firefly around the time he left Virgin Galactic, and the two companies compete in the market for rockets capable of launching small and medium sized satellites into lower earth orbit. As the demand for services from such satellites increases steadily; the race to provide a more cost effective method for delivering those satellites into space is also growing and becoming more competitive. READ MORE
On April 30, 2015, Kolon Industries finally resolved two long-standing disputes regarding its alleged misappropriation of trade secrets related to DuPont Co.’s bullet-proof Kevlar Material. The settlement resolved a six-year civil dispute with competitor DuPont, as well as an Economic Espionage Act criminal indictment that had been pending for three years. According to the terms of the plea agreement filed with the court, Kolon will pay $275 million in restitution to DuPont and $85 million to the government in fines. READ MORE
Last week, New York attorney Douglas R. Dollinger asked the Honorable Vince Chhabria of the Northern District of California to reconsider an order sanctioning Dollinger and his client to the tune of $93,365.92 in monetary sanctions and dismissing all of the client’s claims with prejudice as terminating sanctions. The Court’s sanctions, and Dollinger’s request for reconsideration, are the result of a series of attempts by Plaintiff to manufacture standing for a company that didn’t exist. Plaintiff tried on numerous occasions to identify a company with standing, but was repeatedly countered by Defendants and eventually pounded with both monetary and terminating sanctions. READ MORE