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.
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.
Mobile Apps: Redefining the Virtual California Economy and the Laws that Govern It, COMPETITION: The Journal of the Antitrust, UCL and Privacy Section of the State Bar of California
- 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
- University of Wisconsin (J.D. cum laude 1982; Editor, Wisconsin Law Review); University of Arizona (B.S. in Business Administration)
- Law Clerk to Judge Norman C. Roettger Jr., former Chief Judge of the U.S. District Court for the Southern District of Florida