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.
of Johanna's representative engagements include the following:
- AllCells v. Cepheus Bio. Johanna represented
AllCells in trade secret litigation related to the commercial purification and
sale of primary cells. Johanna successfully obtained a preliminary injunction
for AllCells under the DTSA.
- Bio-Rad v. 10X Genomics. Johanna represented 10X
and its founders in trade secret litigation, brought by Bio-Rad, related to
single cell and genome sequencing.
- Oracle/State of
Oregon. Johanna is a member of a
team that represented Oracle in high stakes litigation arising from Oregon's
failure to launch its health insurance exchange under the Affordable Care Act.
- Fluidigm Corp. v.
NanoString Tech. Inc. Represented NanoString Technologies in a case
involving allegations of false advertising and unfair competition.
- Blue Spike LLC v. Audible Magic Corp. Johanna is a member of a team that successfully
defended Audible Magic Corporation in a patent infringement action brought by
Blue Spike LLC. Audible Magic obtained summary judgment of noninfringement for
all asserted patents.
- DISH Networks. Johanna is a member of a
team that represented DISH Networks and its related entities in various patent
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.
Over the last few weeks, TSW has reported extensively on the first few cases brought under the new Defend Trade Secrets Act. But, given our recent celebration of our nation’s birthday and the day Will Smith saved the planet from alien attack, TSW takes a brief look back at the foundation and birth of trade secret law in the United States. READ MORE
On August 28, 2015, TSW continued its coverage of the 2015 Defend Trade Secrets Act (“2015 DTSA”), introduced in both the House and Senate on July 28, 2015, with its comparison of the 2015 DTSA to last year’s failed 2014 House Bill. In today’s post, TSW continues with its extensive coverage of the 2015 DTSA, detailing both the criticisms it is facing and the progress it has made in Congress. READ MORE