Johanna Jacob, an attorney in Orrick’s San Francisco office, is a member of the
Intellectual Property Group. Her practice focuses on patent infringement
litigation in federal district courts and the United States International Trade
Commission, trade secrets, copyright, and complex commercial disputes.
represented a broad range of technology companies in Federal and State Court,
with a primary focus on bio-technology, high-tech laboratory equipment, and the
healthcare industry. In addition, Johanna is a member of the firm's life
sciences working group.
Johanna is also a registered patent attorney.
Prior to law school, Johanna conducted neuro-physiological research in the
Vision Center Laboratory at the Salk Institute. During her time at Boston
University, Johanna researched cellular signaling in prostate cancer at the
Cancer Research Center in Boston University’s School of Medicine. Johanna also
externed at Macropore Biosurgery in San Diego and in the Aerospace and
Mechanical Engineering laboratory at Boston University.
Oregon recently enacted HB2992, further limiting its already restrictive non-compete law, which will apply to any agreements entered on or after January 1, 2020. The new law amends Oregon’s prior non-compete law by requiring the employer, as a condition of the non-compete’ s enforceability, to provide a signed, written copy of the terms of the non-compete agreement to the employee within thirty days of the termination of employment. This is effectively a mandatory reminder, as Oregon’s non-compete law already required the employer to inform the employee at the outset of employment of the non-compete agreement, either two weeks prior to the employee’s first day of employment or as part of a bona fide advancement of the employee. Oregon’s non-compete law also already required that the employee be in an “administrative, executive, or professional” position and have access to trade secrets, other competitively sensitive information, or be “on-air” talent subject to other restrictions.
Oregon’s state legislature thus created a new hoop for employers to jump through before it can subject a limited subset of employees to non-competes. Oregon’s mandatory reminder at the end of an employee’s employment, and not just at the beginning, further aligns its non-compete law with one of the Obama administration’s final mandates for state legislators to improve the transparency and fairness of non-competes.
On May 11, 2016, the U.S. Defend Trade Secrets Act (DTSA) created a federal remedy for trade secret misappropriation and added trade secret theft as an act that can form a predicate for Racketeering Influenced and Corrupt Organizations Act (RICO) violations. Since the DTSA’s enactment, a number of courts have held that the DTSA does not apply retroactively to misappropriation occurring prior to enactment unless there is continuing use (i.e., an act constituting misappropriation after the DTSA’s enactment despite the acquisition occurring pre-enactment). Recently, a court in the Northern District of California found the same to be true for RICO claims predicated upon misappropriation occurring prior to the DTSA’s enactment. In Eli Attia v. Google, the court dismissed with prejudice plaintiff’s fifth amended complaint alleging RICO violations based on criminal trade secret theft and misappropriation that occurred in 2011 and 2012. READ MORE
When Congress enacted the DTSA on May 11, 2016, it left open the issue of whether the DTSA would apply to misappropriation that occurred prior. As we previously reported, many federal district courts have since found that it does apply if there were continuing acts of misappropriation after enactment of the statute. Now, the 10th Circuit Court of Appeals has weighed in, upholding a district court’s dismissal of a DTSA claim where the plaintiff failed to allege a continued act of misappropriation after the date of enactment. READ MORE
On October 25, the U.S. District Court for the District of Massachusetts denied motions for injunctive relief in a case involving trade secrets allegedly stolen by a departing consultant using his personal computer to sync with the company’s Dropbox. This case established (1) Massachusetts’ newly enacted Uniform Trade Secrets Act (“UTSA”) does not apply retroactively even if the violation is continuing; and (2) intent to use a trade secret is a hurdle which Plaintiffs can struggle to show where there is not evidence of actual use and the defendant takes steps at remediation. READ MORE
In a testament to the wide breadth of potential trade secret protection to any number of industries, a court in the Western District of Washington denied a 12(b)(6) motion to dismiss Seattle Sperm Bank’s (SSB) DTSA and Washington Uniform Trade Secrets Act claims against its prior employees who set up a competing company, Cryobank America. Among other things, SSB alleged that in the months leading up to their departure, the employees copied 10 folders, including 67 Standard Operating Procedures (SOPs) and 149 forms, to a portable hard-drive that they took with them upon their departure from SSB. READ MORE
As widely reported, on April 20, the Democratic National Committee (“DNC”) kicked off a twelve count lawsuit against a number of entities and individuals, including the Russian Federation, General Staff of the Armed Forces of the Russian Federation (“GRU”), WikiLeaks, Julian Assange, Donald J. Trump, Jr., and other political foes. Amongst the wide swath of allegations, which include everything from computer fraud to RICO conspiracy, are allegations that the defendants misappropriated trade secrets in violation of both the DTSA and the Washington D.C. Uniform Trade Secrets Act. READ MORE
In January of this year, Chinese wind turbine manufacturer Sinovel Wind Group Co. Ltd. was convicted of stealing trade secrets from U.S. company AMSC Inc. The theft caused AMSC, more than $800 million in losses and forced the company to lay off more than half its global work force. Sinovel’s sentencing—which could include fines exceeding $1 billion and a multiyear probationary period—is scheduled for June 2018. READ MORE
The lawsuit between Swarmify and Cloudflare recently produced an Order in which U.S. District Court Judge William Alsup denied Swarmify’s motion for a preliminary injunction, and also offers a cautionary tale about what activities might result in bloggers being hauled into Court.
In 2016, Swarmify, a start-up focused on affordable video streaming, and Cloudflare, a corporation that uses a network of data centers for content delivery, entered into confidential negotiations regarding Cloudflare’s potential acquisition of Swarmify. During these discussions, Swarmify disclosed to Cloudflare some confidential information about the company’s proprietary streaming method, including a pending unpublished patent application, but notably did not disclose any computer code. While the discussions were ongoing, Cloudflare offered employment to Swarmify’s CEO and the senior developer of Swarmify’s proprietary streaming method. Both individuals declined, and informed Cloudflare any movement on their part would have to come through Cloudflare’s acquisition of their company. The companies ended negotiations and parted ways, but not for long. READ MORE
AFS, a company specializing in streamlining shipping costs and logistics, had its eight count amended complaint streamlined to only one—its Tennessee Uniform Trade Secrets Act (“TUSTA”) claim—primarily due to preemption and AFS’s lack of specificity as to its common law claims.
AFS filed suit in December 2016 against two prior employees, Christopher Cochran and Alessandro Rustioni, and their new competing company, Freightwise LLC. AFS’s complaint set forth the classic case of defecting employee trade secret theft. Among other things, AFS alleged that Cochran and Rustioni founded Freightwise in 2014 while still employed for AFS. Both continued to work for AFS in sales leadership positions until late 2015 and early 2016. And, they allegedly conspired to and secretly organized Freightwise by soliciting one of AFS’s major clients and maliciously interfering with its high-value contracts. READ MORE
In little under a year after its enactment, a Federal Court jury in the Eastern District of Pennsylvania issued the first verdict under the Defend Trade Secrets Act in favor of the Plaintiff Dalmatia Import Group, Inc. The jury awarded Dalmatia $2.5 Million in total damages for all claims, with $500,000 attributed to its DTSA and Pennsylvania Uniform Trade Secrets Act claim. Just this week, Dalmatia filed a motion for judgement on the verdict, seeking treble damages for its related trademark and counterfeiting claims. If the court awards treble damages, total damages could exceed $5 Million.