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

Toy model house on pier by water A “Virtual” Home Is Not a Home: Court Sanctions Plaintiffs for “Reckless Disregard” in Deciding the Proper Forum for Their Litigation

The following blog post is courtesy of our sister blog, NorCal IP.

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

The Location of Old McDonald’s Beehives Are Trade Secrets: Database Showing “Realistically” Ascertainable Locations Entitled to Protection

To qualify as a trade secret under either the UTSA or the DTSA, the information in question must not be “readily ascertainable” through “proper means.” But what does “readily ascertainable” mean?  If information is ascertainable by the public, but it would take some work to compile it, does that qualify as “readily ascertainable”? READ MORE

Early Returns (Part 1 of 3): 3D Printing Company Sues under New Defend Trade Secrets Act

(Editorial Note: This is our first of a two-part series exploring recent litigation under the newly-enacted Defend Trade Secrets Act.)

In late May 2016, Magic Leap, Inc. became a pioneer in trade secrets litigation when it became one of the first to venture into the uncharted waters of the Defend Trade Secrets Act. Magic Leap—a developer of technologies used for 3D renderings in augmented reality—sued two of its former employees for trade secret misappropriation under the DTSA in federal court in the Northern District of California. As we recently reported, President Obama signed into law what some consider the “most significant” intellectual properly legislation since the Lanham Act. READ MORE

U.S. Considers Sanctions Against China For Cyber Hacking And Trade Secret Misappropriation

You may have missed it this past weekend, but reports indicate the United States is considering sanctioning Chinese companies and individuals who have benefited from their government’s alleged cyber hacking of U.S. trade secrets. The Washington Post, quoting unidentified officials, states the “unprecedented” package of sanctions is part of a larger strategy to expand the “administration’s public response to the rising wave of cyber-economic espionage initiated by Chinese hackers” and to confront malicious cyber actors. READ MORE

FLORIDA SUNSHINE? State High Court Orders Gerrymandering Documents Made Public, Justice Thomas Rejects Last-Minute Appeal

This past summer, we reported on an emergency petition to Justice Clarence Thomas of the United States Supreme Court to stay a Florida Supreme Court’s decision permitting disclosure of documents submitted under seal during a trial challenging Florida legislature’s redistricting process.  The emergency petition was filed by Patrick Bainter and Data Targeting, Inc., political consultants hired by the Republican Party of Florida to assist with the redistricting process in that state.  At issue in the petition were more than 500 pages of documents that purportedly contained confidential READ MORE

Ex-Citadel Employee Pleads Guilty To Wire Fraud And Theft Of Trade Secrets; Accomplice Left To Fight Trial Alone

Yihao “Ben” Pu is probably coming to grips with the phrases “crime doesn’t pay…” and “don’t do the crime unless you’re willing to do the time….”  In federal court in Chicago, on Thursday, August 7, 2014, Pu, a former quantitative engineer for Citadel LLC, plead guilty to stealing trade secrets and other private information from an unnamed “Company A” located in Red Bank, New Jersey, and financial firm Citadel, related to their high-frequency trading platforms. (See United States of America v. Yihao Pu et al., Case No. 1:11-cr-00699 (N.D. Ill.))

Company A developed “high-performance technology and computer source code” to support rapid stock trading—known as “high frequency trading” or “HFT.” READ MORE

Tattletales Beware: Whistleblowing May Result In Trade Secret Misappropriation Liability

In the Brady Bunch episode “Stop Tattling,” Mike Brady (the father) gives Cindy (youngest of the clan) a stern warning after her tattling lands Alice (the Brady caretaker) in hot water with Sam (the Brady’s butcher and Alice’s date to the dance).  Mike Brady explains the pitfalls of tattling during this scolding and warns: “You have to learn when to keep quiet.”

The case of J-M Manufacturing Co., Inc. v. Phillips & Cohen LLP, et al., Case No. L79214 (Superior Court of New Jersey, Middlesex County, filed Feb. 10), highlights the “when to keep quiet” dilemma facing modern-day tattletales—i.e., whistleblowers.  These individuals must decide whether to keep quiet about suspected corporate malfeasance or to come clean, disclose potential trade secrets in the name of public welfare, and face potential liability for doing so.  Last month, J-M sued John Hendrix, a former J-M engineer, and the law firm of Phillips & Cohen LLP (“P&C”), alleging trade secret misappropriation, breach of fiduciary duty, breach of contract, computer-related offenses, conspiracy, and racketeering stemming from Hendrix’s 2005 whistleblower False Claims Act lawsuit against J-M in a federal court in California. READ MORE