JasonMcDonell

Of Counsel

San Francisco + 1.415.875.5820

Jason McDonell's practice focuses on complex commercial and intellectual property litigation, with an emphasis on disputes arising out of corporate business relationships. He has extensive experience with lawsuits involving trade secrets, patent royalty and licensing agreements, mergers and acquisitions, joint venture and partnership agreements, and commercial contracts. Jason regularly counsels clients in connection with internal investigations and with the innovative use of mediation and arbitration to minimize or avoid the cost of litigation.

Jason's recent matters include representations of an LED company in a cross-border trade secrets and unfair competition dispute, a major pharmaceutical company in a royalty dispute arising out of a collaboration agreement, a semiconductor company in connection with a criminal trade secrets prosecution, a global software company in a copyright action, an inventor in a patent royalties case, a leading semiconductor manufacturer in an action against a partner for trade secrets misappropriation, a multinational mass media company in defense of fraud and misrepresentation claims, and a leading consumer products company in defense of a consumer class action.

Jason is an active member of the State Bar of California (Intellectual Property Section and Trade Secrets Interest Group) and the Federal Bar Association, Northern District of California Chapter. He contributes his services to pro bono matters involving children's rights, including recent representation of Central American immigrant children.

Experience

  • Jones Day secures third-in-a-row victory defeating bankrupt law firms' claims over former clients' mattersOn February 13, 2020, the D.C. Court of Appeals unanimously ruled in favor of Jones Day in the years-long lawsuit brought by the bankruptcy estate of Howrey LLP asserting claims for so-called "unfinished business."
  • Adocia prevails in biopharma license agreement dispute in international arbitrationJones Day won a binding arbitration award for French biopharmaceutical company, Adocia S.A., in a license agreement dispute against Eli Lilly and Company.
  • TJPA defends Millennium Tower class action lawsuitJones Day represents one of the primary parties in the Millennium Tower litigation, one of the highest profile litigation matters in the United States.
  • GreatCall wins affirmance of IP defense verdict in trade secret and patent telecom disputeJones Day won in binding arbitration and on appeal for GreatCall, Inc. in IP litigation brought by the company's founders.
  • Jones Day prevails before California Supreme Court in Heller Ehrman "unfinished business" caseOn March 5, 2018, the California Supreme Court unanimously ruled in favor of Jones Day in the long-running suit brought by the bankruptcy estate of Heller Ehrman LLP asserting claims for so-called "unfinished business."
  • Multinational company releases web and cloud-connected video camera to U.S. marketJones Day is advising a multinational video surveillance company related to its U.S. release of an internet-connected audio/video recording device and associated cloud storage service.
  • Procter & Gamble successfully resolves class action claims after U.S. Supreme Court denies request for certiorari review by objectors to settlementJones Day defended The Procter & Gamble Company ("P&G") and its subsidiary The Gillette Company in two consumer class actions concerning advertising of Duracell AA & AAA Ultra Batteries.
  • Intematix obtains permanent injunction in cross-border trade secrets caseJones Day represented leading LED company Intematix Corporation in obtaining a permanent injunction against its former R&D head in a cross-border (China) trade secrets dispute.
  • SAP's district court victory affirmed by Ninth CircuitThree months after oral argument, the Ninth Circuit issued an order affirming federal district court judge Phyllis Hamilton's decision to overturn a $1.3 billion verdict against Jones Day client SAP AG in a long-running copyright dispute with Oracle.
  • Visa summary judgment win affirmed on appealOn behalf of Visa Inc., Jones Day successfully argued an appeal before the United States Court of Appeals for the Federal Circuit, which affirmed a grant of summary judgment from the U.S. District Court for the Central District of California that Visa does not infringe the patent claims asserted by SmartMetric, Inc.
  • Visa wins summary judgment motion in patent infringement action brought by SmartMetricJones Day successfully defended Visa Inc. against claims that the use of Visa-branded integrated circuit cards to conduct payment transactions infringed upon SmartMetric's patent directed to secure network access.
  • Shionogi obtains settlement entitling it to royalties on European Union sales of drug for treatment of fatal lung diseaseJones Day represented Shionogi & Co., Ltd. in a royalty dispute with InterMune, Inc. concerning sales of Esbriet® for treatment of Idiopathic Pulmonary Fibrosis ("IPF"), obtaining a settlement entitling Shionogi to royalties on InterMune's sales in the European Union.
  • Marvell obtains guilty verdict in theft of trade secrets actionJones Day represented Marvell Semiconductor, Inc. in connection with the criminal prosecution and felony conviction of an individual indicted for misappropriating Marvell's trade secrets.
  • SAP's $1.3 billion jury award vacatedIn November 2010, Jones Day defended SAP AG, SAP America, Inc. and TomorrowNow, Inc. in an Oakland federal trial that was limited to the amount of damages to be awarded on Oracle's copyright claims.
  • SAP uses cost-saving strategies to comply with overwhelming data requests seeking in excess of twenty terabytes of dataJones Day demonstrated significant e-discovery expertise in its representation of SAP AG, SAP America, and TomorrowNow, Inc. in a software copyright infringement matter.
  • AOL affiliate eVoice resolves civil actions alleging fraud and misrepresentationJones Day represented AOL affiliate eVoice, Inc. in defense of claims of fraud and misrepresentation in connection with stock sales.
  • The following represents experience prior to joining Jones Day:

    Trade Secrets Cases

    MicroGuild, Inc. v. Netscape Communications, Inc. (Santa Clara County Superior Court).  Lead counsel for Netscape in jury trial defending against $300 million claim of trade secrets misappropriation and business interference in connection with Internet search engine technology.

    Ajaxo, Inc. v. E*Trade Corporation and Everypath, Inc. (Santa Clara County Superior Court). Co-counsel for Everypath in four month jury and bench trial of trade secrets misappropriation claim involving wireless stock trading technology.

    Unfair Competition and False Advertising Cases

    Cbr Systems, Inc. v. Anthrogenisis Corporation (USDC, N.D. Cal.). Lead counsel for plaintiff in false advertising and unfair competition lawsuit against competitor in cord blood stem cell storage industry.

    O’Keeffe’s, Inc. v. NEC and TCP (USDC, N.D. Cal.). Co-counsel for plaintiff in false advertising case against competitors in fire and safety rated architectural glass industry.

    Stock Option Cases

    Kohler v. Netscape Communications Corporation (Santa Clara County Superior Court). Lead counsel for Netscape in defense of $80 million stock option lawsuit brought by alleged owner of founders stock.

    Matoza v. America Online, Inc. and Netscape Communications Corporation (Santa Clara County Superior Court). Lead counsel for AOL and Netscape in defense of $30 million stock option lawsuit brought by alleged owner of Netscape stock.

    Mergers and Acquisitions Cases

    Xerox Corporation v. Adaptive Products, Inc. (American Arbitration Association, San Francisco, California). Lead counsel for Xerox in binding arbitration arising out of sale of corporate subsidiary.

    Deloitte & Touche USA (Binding Arbitration). Legal adviser to Deloitte in connection with its service as arbitrator in post-closing adjustments dispute arising out of corporate acquisition.

    Xerox Corporation v. Telesensory Corporation (American Arbitration Association, San Francisco, California). Lead counsel for Xerox in binding arbitration of post-closing adjustments dispute arising out of sale of corporate subsidiary.

    Electronic Data Systems Corporation v. Shareholders of Varitel Video, Inc. (JAMS, San Francisco). Represented selling shareholders in binding arbitration in defense of claim of alleged misrepresentation in connection with sale of corporation.

    PRN Corporation v. Krautsack (USDC, N.D. Cal.). Lead counsel for PRN in federal court lawsuit relating to stock repurchase dispute and related trial before special master.

    Joint Venture and Partnership Cases

    United States Cellular Investment Company of Los Angeles, Inc. v. AirTouch Communications, Inc. (USDC, C.D. Cal.). Lead counsel for international wireless telecommunications company in main case and eight follow-on cases in four states arising out of alleged breaches of cellular telephone partnership agreements.

    United States Cellular Investment Company of Seattle, Inc. v. AirTouch Communications, Inc. (King County, Washington, Superior Court). Lead counsel for international wireless telecommunications company in lawsuit arising out of alleged breaches of cellular telephone partnership agreements.

    ePaperSign LLC v. Xerox Corporation (USDC. D. Mass.). Lead counsel for Xerox in defense of claims of breach of obligations in connection with joint venture to develop electronic paper product.

    Immune Response Corporation v. Rhone-Poulenc Rorer, Inc. (American Arbitration Association, Chicago). Represented biopharmaceutical company in binding arbitration relating to immune based therapy for HIV infected individuals designed by the company’s chief scientific advisor, the late Dr. Jonas Salk (inventor of the polio vaccine).

    Commercial Contract and Business Tort Cases

    Fujitsu USA, Inc. v. Xerox Corporation (USDC, N.D. Cal.). Lead counsel for Xerox in defense of claims arising out of development of color printer product.

    NationsBank Corporation v. California Federal (American Arbitration Association). Lead counsel for bank in binding arbitration for breach of contract arising out of acquisition of forty branch offices.

    Bank of the West v. Arthur Andersen (Los Angeles County Superior Court). Lead counsel for bank in prosecuting claims of professional negligence against auditors.

    Feamster v. Stanford University (Santa Clara County Superior Court). Lead counsel for Stanford University in defense of claims of fraud and breach of contract arising out of alleged consulting agreement for Stanford School of Medicine.

    ClickAction, Inc. v. Netscape Communications, Inc. (Santa Clara County Superior Court; JAMS, San Francisco). Lead counsel for Netscape in arbitration and related court action arising out of commercial agreement.

    Pro Bono Cases

    Represented Catholic chaplain in civil rights case arising out of revocation of rights to minister to minor inmates incarcerated in adult county jail.

    Represented California Youth Symphony in commercial dispute.

    Represented juvenile in civil rights claim after she was incarcerated in order to secure her availability to testify in criminal case in which she was the victim.

    Represented elderly homeowner in lawsuit attempting to condemn her home because of alleged uninvited use of the property by neighborhood drug dealers.

    Speaking Engagements

    • August 8, 2019
      American Bar Association CLE in the City - What to Do with the Boilerplate in Your Technology Agreements
    • May 18, 2017
      Jones Day "What to do When?" Series - Boilerplate Provisions in Commercial Contracts
    • January 26, 2017
      Ethical Blind Spots - Jones Day University
    • June 2016
      PLI's Pretrial Practice 2016
    • January 2016
      Test Your Ethics IQ, Jones Day University
    • June 2015
      PLI's Pretrial Practice 2015
    • July 2014
      Representing Victims of Trade Secrets Theft: Working with Prosecutors, State Bar of California, Intellectual Property Section
    • June 2014
      Pretrial Practice: Expert Witnesses, Practicing Law Institute (PLI)
    • January 2014
      Representing Victims of Trade Secrets Theft, Jones Day University
    • February 7, 2012
      Managing a Data Breach. JD CLE University
    • February 2012
      Privacy Law, Presentation to the Bay Area General Counsel Group
    • January 2012
      Current Topics in Trade Secrets Litigation, Jones Day University
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