The U.S. Supreme Court heard arguments this week over whether to impose limits on the filings of patent lawsuits in a federal court in East Texas with a reputation for friendliness to plaintiffs, according to a New York Times article.

Reporter Adam Liptak writes that more than 40 percent of patent lawsuits are filed in the East Texas federal district.

“In recent years, a single judge based in Marshall, Tex., oversaw about a quarter of all patent cases nationwide, more than the number handled by all federal judges in California, Florida and New York combined,” Liptak writes.

Because the Texas court is a favorite venue of patent trolls, many tech companies filed supporting briefs in the case, TC Heartland v. Kraft Foods Group Brands, No. 16-341. Those companies urged the Supreme Court to limit the places where defendants in patent cases may be sued.

Read the NYT article.

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Valeant Pharmaceuticals International Inc.’s former chief executive officer accused the drugmaker of failing to deliver 3 million shares promised him as part of an exit package, reports Bloomberg.

Michael Pearson resigned in May as the value of Valeant’s shares dropped and it became the subject of U.S. Justice Department and congressional investigations, write David Voreacos and Cynthia Koons.

They report that Pearson is claiming the company promised him 580,676 restricted shares and 2.46 million performance shares. Those shares would have a market value of more than $30 million, although exhibits to the lawsuit suggest the value for Pearson could be higher.

Read the Bloomberg article.

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Julie Campanini has joined Magna Legal Services as a senior litigation consultant in its New York office.

The company provides a suite of in-house services in jury research, litigation graphics, language services, trial presentation and court reporting.

The company said Campanini more than 20 years of experience in a variety of complex matters in all areas of trial consulting and jury research. Her practice is focused on complex commercial litigation and includes intellectual property, antitrust, securities, fraud, contract, product liability, employment, and toxic tort.

She has been published on topics including the importance of witness preparation for depositions and trial; managing the media in high-profile and high-stakes litigation; and theme development in storytelling.

Prior to joining Magna, Campanini was the founder and principal of Trial Insights, LLC. Previously, she practiced with several other national firms, including Litigation Sciences, Inc. and FTI (Forensic Technologies).

“Julie’s tremendous expertise in jury consulting will greatly enhance our New York team’s capabilities,” said Dave Kurzman, Chief Operating Officer of Litigation Consulting. “We are proud to have her on board to continue to build on our award-winning staff.”

Campanini attended the University of Kansas for both her undergraduate and graduate degrees, where she earned her M.A. in Litigation Sciences with an emphasis in Legal Communication.

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Hogan Lovells announced that Lea Ann Fowler will join the firm’s Real Estate practice as a partner in the Denver office.

“Lea Ann has significant ties to the Denver real estate community and a notable reputation for representing prominent investors and lenders on highly complex matters,” said Mark Eagan, Hogan Lovells’ Head of Real Estate for the Americas. “Bringing Lea Ann on board deepens our national platform for our regional, national, and international real estate clients.”

Fowler represents a range of commercial lending institutions, developers, operators, and investors in real estate acquisitions and dispositions, joint ventures, development projects, asset-based lending involving loan origination, restructurings, loan participations, note purchases, and commercial mortgage-backed securitizations.

“I am excited about the opportunity to bring leadership to the Denver real estate team, mentor younger attorneys, and expand my client base nationally and internationally,” said Fowler.

In a release, the firm said:

Fowler has a highly regarded commercial real estate finance practice, representing clients in the origination of multimillion dollar senior and mezzanine structured financings secured by all sectors of commercial real estate, including hotel, mixed use condominium projects, retail, office and industrial portfolios. On the investor side, Fowler advises commercial real estate developers and private equity firms in the structuring and negotiation of large portfolio acquisitions and dispositions and multi-tiered construction and permanent loan transactions, including workouts and restructurings.

“Many of us at Hogan Lovells have known Lea Ann and worked with her for many years,” said Cole Finegan, Regional Managing Partner at Hogan Lovells. “We are very pleased that such a prominent real estate and finance lawyer will now be part of our local, national, and global efforts.”

Prior to joining Hogan Lovells, Fowler was a shareholder at Brownstein Hyatt Farber Schreck, LLP. She earned her J.D. from the University of Denver Sturm College of Law and her B.B.A. in Finance from Southern Methodist University.

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Greensfelder, Hemker & Gale, P.C., announces the expansion of its Chicago office with the addition of three attorneys across the firm’s Securities & Financial Services, Litigation and Intellectual Property groups.

Harris L. Kay joins the Securities & Financial Services industry group as an officer. Daniel C. McCabe is a new officer in the Litigation Practice Group. Ryan J. Yager joins as an associate in the Intellectual Property Practice Group.

“We are excited to welcome Harris, Dan and Ryan to our firm as we continue to expand and enhance the level of services in key practice areas for our clients throughout the Midwest and the nation,” said David B. Goodman, Managing Officer of Greensfelder’s Chicago office. “Together, they bring decades of legal experience and market-specific knowledge that will help us further expand the footprint for Greensfelder in Chicago.”

In a release, the firm said:

Kay counsels financial services firms and individuals regarding a variety of registration, compliance, regulatory and litigation matters. He represents futures commission merchants, introducing brokers, broker-dealers, forex firms, investment advisers, commodity pool operators and commodity trading advisors in regulatory inquiries, investigations and enforcement proceedings before CFTC, SEC, FINRA, NFA and various exchanges.

Kay most recently was a shareholder with Greenberg Traurig, LLP in Chicago. He earned his law degree from the University of Richmond School of Law and his Bachelor of Arts from the College of William and Mary.

McCabe focuses his practice on complex business and commercial litigation matters including insurance coverage, construction, real estate, energy, finance, manufacturing and pharmaceutical industries. He provides service to clients in all phases of commercial litigation and also provides risk management, transactional and general counsel representation. He has successfully litigated cases in state and federal venues throughout the United States, serving as lead trial counsel in multimillion-dollar matters, and has handled mass tort and class action cases nationally and internationally.

McCabe most recently was the managing partner with the former McCabe, Miller & Morrissey LLC in Chicago. He earned his law degree from Chicago-Kent College of Law and his Bachelor of Arts from Northwestern University.

Yager works with clients in a range of industries on matters related to trademark enforcement, trade secret litigation, defense of IP portfolios and other areas of concern for businesses. He also has experience with complex commercial litigation in federal and state courts, handling issues including contract disputes, as well as copyright, trademark and non-compete agreements.

Yager previously served as corporate counsel for a power company, providing legal counsel on the company’s development of power generation and electric transmission infrastructure throughout the United States, as well as managing outside counsel on litigation-related issues. He earned his law degree (magna cum laude) from Saint Louis University School of Law and his Bachelor of Arts (cum laude) from the University of Missouri.

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Thomas F. Bush has joined the Freeborn & Peters LLP’s Chicago office as a partner and member of the Litigation Practice Group and Insurance/Reinsurance Industry Group.

“We are enthusiastic about welcoming Tom to Freeborn and to our team serving the insurance and reinsurance industry,” said Freeborn’s Co-Managing Partner Michael A. Moynihan. “Tom brings to the firm decades of experience handling diverse litigation and other matters for insurers and reinsurers.”

In a release, the firm said Bush has experience in complex litigation involving antitrust, insurance and reinsurance matters. He has been involved in the representation of lawsuits and arbitrations for global reinsurers in disputes arising from large-scale losses. In addition, he represents and counsels insurance companies and investment firms on antitrust compliance and on competition issues arising in mergers and acquisitions.

Most recently, Bush was a partner and co-chair of the Antitrust Litigation Practice Group at Locke Lord LLP in Chicago. He served as a law clerk to Chief Judge Collins J. Seitz of the U.S. Court of Appeals for the Third Circuit. Mr. Bush earned his J.D. from the University of Chicago Law School and his Bachelor of Arts (magna cum laude) from Dartmouth College.

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Michael Best announced that John Sheehan has joined its Environmental & Natural Resources Practice Group as a partner in the firm’s Washington, D.C., office.

Sheehan, who joins from a national firm in Washington, previously served as a senior trial attorney at the U.S. Department of Justice in its Environmental and Natural Resources Division for more than 13 years, during which time he also served as a special counsel to the Assistant Attorney General for the Environment and as a special advisor in EPA’s Office of General Counsel.

“John has more than 30 years of experience in environmental law and corporate litigation – including involvement in some of the most high-profile environmental law cases during that time,” said David Krutz, Michael Best’s Firm Managing Partner. “The combination of his public sector experience at the United States Department of Justice and his private sector experience over the last decade gives him a valuable perspective which will be of great value to clients facing an ever-changing regulatory environment.”

In a news release, the firm said:

Among his cases, Sheehan represented a state government in its lawsuit against BP following the Deepwater Horizon disaster. He regularly counsels municipal and state governments, private corporations, and trade associations in actions brought by environmental regulatory agencies, helping clients navigate complex federal and state regulations.

Sheehan also advises clients in enforcement defense cases and transaction deals under key environmental statutes. He has extensive knowledge of the Clean Water Act, the Clean Air Act, and Superfund.

“Michael Best’s team of environmental lawyers understands the law and the science of regulations while balancing client needs – and the firm is also well known for strategically guiding clients through the entire business cycle,” Sheehan said. “Those are qualities that will be especially important in the months and years ahead, given the momentous changes and challenges in Washington and evolving environmental concerns around the world.”

Sheehan earned his J.D. from Georgetown University Law Center and his B.A. from Georgetown University. In 1994 and 1997, he was awarded the special achievement award from the U.S. Department of Justice. Sheehan also received a special merit award from the U.S. Environmental Protection Agency Office of General Counsel in 2001. In Sheehan’s spare time, he volunteers as a youth basketball coach.

Akerman LLP announced trusts and estates associate Dale Noll has been installed as president of the National LGBT Bar Association, the country’s largest organization of lesbian, gay, bisexual, transgender and allied legal professionals.

During the 2017-2018 term, Noll will preside over the 29th annual Lavender Law Conference and Career Fair, the legal sector’s leading event for lawyers, law students, law firms and government agencies to exchange insights about important issues for the LGBT community. Last year’s Lavender Law conference had more than 1,300 attendees. As president, Noll also will work with the board of directors to advance the National LGBT Bar Association’s mission to promote advocacy and equal access to justice for the diverse LGBT community.

In a news release, the firm said:

Noll has devoted his legal career to advancing the LGBT community. He began his efforts while attending the University of Miami Law School, where he served as co-president of the LGBT student advocacy group OUTlaw. He graduated magna cum laude in 2012 and joined the National LGBT Bar Association as a member of its finance committee for two years. He was later appointed to the board of directors as treasurer and most recently served as president-elect of the organization. Noll also is a former co-chair of the Miami Dade County Gay and Lesbian Lawyers Association and a previous gala committee member of the Broward County Gay and Lesbian Lawyers Network. He regularly speaks on marriage equality and estate planning issues for alternative families and same sex couples.

At Akerman, Noll represents trustees, personal representatives and beneficiaries in a wide variety of fiduciary issues and assists them in their roles as fiduciaries in administering estates and trusts. A particular focus of his practice is the representation of fiduciaries, beneficiaries and other interested parties in high-conflict, complex and high-profile guardianship, trust and probate matters.

Akerman is recognized as one of the nation’s most diverse and inclusive law firms. Advocacy for equal opportunity within the legal profession, as well as within the community at large, is a significant part of the firm’s history. Akerman received its third, perfect 100 percent rating in the 2017 Corporate Equality Index (CEI), the national benchmarking survey administered by the Human Rights Campaign Foundation for workplace inclusion and equality, earning recognition as a “Best Place to Work for LGBT Equality.”

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Dennis Garcia, Microsoft Corp, assistant general counsel, offers an insider’s perspective on how in-house counsel trying to “sell” themselves to their business clients and senior legal department leaders. His observations are published on the Bloomberg Law website.

He starts at the beginning: “Start Strong:”

“Make sure to capture the hearts and minds of in-house counsel at the  very beginning of your pitch. If you do not generate a high level of enthusiasm, energy and compelling reason for in-house counsel to focus on your message early on in your presentation, you will not command their attention and they will lose interest.”

Other observations come under headings such as: know your audience, keep it simple,differentiate, the technology factor, highlight client references, don’t forget cybersecurity, and post-pitch activity.

Read the Bloomberg article.

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The U.S. District Court for the District of Columbia recently dismissed plaintiffs’ complaint that the statutory requirement that the Federal Regulatory Energy Commission recover its annual operating costs directly from the entities it regulates results in perceived or actual bias against plaintiffs who contest applications for needed certificates from FERC.

Anthony B. Cavender and Amy Pierce wrote about the case in Pillsbury Winthrop Shaw Pittman LLP’s Gavel2Gavel blog.

The case is Delaware Riverkeeper Network, et al., v. FERC.

“Because of this bias, the plaintiff asked the District Court either to declare FERC’s reimbursement mechanism to be unconstitutional or declare its power of eminent domain or authority to preempt state and local laws to be unconstitutional,” the authors explain. “Holding that the plaintiffs have failed to state a claim because allegations of actual bias cannot create structural bias where the court determines there is none, and the law does not on its face create an unconstitutional funding mechanism, the District Court granted FERC’s motion to dismiss.”

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A recent ruling by a U.S. district court’s in New York is another example of a court using public policy reasons to override voluntarily entered into contractual choice-of-law provisions, according to an article published by Paul Hastings LLP.

The court ruled in the remand of Madden v. Midland Funding, LLC that New York’s fundamental public policy against usury overrode a credit card agreement’s Delaware choice-of-law provision, write Thomas P. Brown, Lawrence D. Kaplan, Gerald S. Sachs, Amanda M. Kowalski and Laura E. Bain.

“Madden is the latest decision to look past the contractual agreement of the parties to apply state usury and other consumer protection requirements to consumer credit and collections activity. Various courts have taken up some version of the issues presented in Madden, but none have held that bank originated loans sold are subject to interest rate determinations based on the location of collection (as opposed to the location of origination),” according to the article.

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Whether a mixed insurance contract (i.e., an insurance contract with maritime and non-maritime elements) permits the exercise of admiralty jurisdiction is a complicated question for parties and for the courts, writes Eric Chang in an alert for Montgomery McCracken Walker & Rhoads LLP.

He writes that admiralty jurisdiction can be the basis for subject matter jurisdiction for the federal courts.

“Historically, admiralty jurisdiction was limited to contracts that were purely maritime – involving rights and duties pertaining to ships, vessels, and the navigation thereof on the ocean or elsewhere,” he explains.

That changed, however, when the U.S. Supreme Court exercised admiralty jurisdiction in a “maritime case about a train wreck.”

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Amazon.com scored a big victory Thursday against the IRS in a case that the company says could have cost it about $1.5 billion, reports The Seattle Times.

The IRS contended that the e-commerce giant had inappropriately brought down its U.S. tax bill by grossly undervaluing the assets it transferred to its Luxembourg subsidiary, which the company created more than a decade ago.

“Judge Albert Lauber of the U.S. Tax Court ruled that the IRS’ determination of those assets’ worth was ‘arbitrary, capricious, and unreasonable.’ He also broadly sided with Amazon on the way the U.S. company calculates how it shares costs with its European subsidiary,” writes reporter Ángel González. “The ruling, in favor of Amazon, untangles part of the complex web of tax litigation the retailer faces as authorities in the U.S. and Europe review how they deal with global companies that straddle many jurisdictions seeking advantageous tax deals.”

Read the Seattle Times article.

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Employers who want to challenge their unfair labor practice complaints may want to delay their cases from being heard, if possible, until after November, recommends a labor lawyer, in light of a recent U.S. Supreme Court ruling that limits powers of acting presidential appointees.

Allen Smith, writing for the Society for Human Resource Management, explains implications of the ruling, which found that the acting National Labor Relations Board general counsel did not have the authority to continue in that role once the president nominated him to be confirmed by the Senate to be general counsel.

That means that companies that have objected to the authority of Acting GC Lafe Solomon after he was nominated can challenge any unfair labor practice charge issued against them following his nomination January 2011, according to Phil Wilson, president and general counsel with the Labor Relations Institute in Broken Arrow, Okla.

Read the SHRM article.

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With Democrats outnumbered in Congress, a coalition of blue state attorneys general has emerged as the strongest resistance to Donald Trump’s conservative agenda, according to an article published by Bloomberg Businessweek.

“Together they’ve notched back-to-back victories against Trump’s two attempts to instill a travel ban against several Muslim-majority nations. They now hope to build on that success to form a united front against Trump’s expected efforts to roll back financial and environmental regulation, plus the GOP’s planned repeal of Obamacare,” says the article, written by Erik Larson, Esmé E Deprez and Kartikay Mehrotra.

They quote Bob Shrum, a veteran Democratic strategist who teaches political science at the University of Southern California, who says that by notching wins against Trump, state AGs can help make up for Democrats being in the minority in Congress

Read the Bloomberg Businessweek article.

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Many legal battles in the construction industry revolve around contract interpretation disputes. Care in contract drafting is a valuable way to avoid disputes, writes Michael Wilson in Greensfelder, Hemker & Gale’s Construction Law Blog.

“A fundamental principle of contract interpretation is to ascertain and give effect to the parties’ objectively expressed intent. What a party was trying to say, without accurately expressing it, does not count. Contract terms are usually given their ordinary (i.e., dictionary) meaning unless the contract specially defines them or the industry has adopted a special meaning known to both parties,” Wilson writes.

In his article, he discusses at length the principle of identifying and interpreting ambiguity, and the tools that can be used to improve a contract.

Read the article.

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By Keli Johnson Swan
Scott & Scott LLP

Mergers and acquisitions typically require extensive financial and legal disclosures, due diligence, and complex contract language to protect buyers from legal issues that may arise from the purchase. Potential liability arising from intellectual property issues is a significant factor to consider in any M&A transaction.

There following are a few key considerations to negotiate during any corporate transaction.

(1) Transferring Ownership of Existing Trademarks, Copyrights, and Patents.

Often a purchaser will acquire a company that will continue to operate as it was, continuing to use its existing trademarks, copyrights, or patents. Each of these intellectual property rights must be evaluated carefully and negotiated as part of the transaction. The purchaser should investigate any existing infringement claims against the seller prior to acquiring ownership of any marks or IP rights. Additionally, the purchaser will be required to appropriately register the transfer, and continue enforcing these rights with take-down notices and any other necessary legal means or risk losing the ability to enforce them.

(2) Transferring Ownership of IT Assets, Including Copyrighted Software

Depending on the nature of the transaction, the purchasing company may choose to dissolve the target company and dispose of its assets. In some instances, the purchaser chooses to retain the assets.

If the purchaser chooses to retain the IT assets, it assumes the responsibility of ensuring that all software complies with the relevant licensing agreement or risks potential copyright infringement liability. There are a number of steps the purchaser should take to mitigate potential exposure, including conducting an internal audit of the new IT assets, evaluate any existing licenses, and determine whether any remediation is required in order to become compliant.

Some larger companies have Enterprise agreements with Microsoft and other software publishers that may include affiliates that are acquired after the agreement is signed. The purchaser will need to determine whether the software on its newly acquired assets fall within the scope of any Enterprise agreement and take the appropriate steps to ensure the software is included in the user counts for any true-ups required pursuant to the agreement.

Even if a diligent audit and assessment of the company’s network reflects no potential claims for copyright infringement, the purchasing company may still face hurdles to properly transferring ownership of the copyrighted software.

Many software publishers include a provision barring the transfer of ownership of a software license in the license agreement. Others allow the transfer, subject to written consent from the software publisher. This final step is key to ensuring the assets acquired during the transaction are properly licensed. In the event of a software audit, the purchasing company will be required to prove ownership of the software installed on all of its computers and servers. Therefore, it is important that the transfer of ownership is documented with the software publisher for recordkeeping.

Alternatively, some purchasing companies choose to avoid the time and expense of a full audit of the newly acquired assets, and instead reformat the computers and install a predetermined set of software. Although this method can be effective if properly managed, it is important to verify that there are sufficient licenses for all of the installations.

(3) Indemnification Against Existing Claims

In addition to various potential legal issues that may arise in a transaction, an M&A contract should contemplate any potential claims or include who will be responsible for any existing intellectual property claims. Depending on the size of the company and the scope of non-compliance, copyright infringement damages could soar into the 7 figures.

If a copyright (or trademark or patent) infringement claim is known at the time of the purchase, it is critical to obtain an independent valuation of the potential exposure by an expert. Correctly calculating estimated damages is incredibly complex. The most prudent approach is to engage an expert to conduct its own analysis of the raw data, licenses, or legal issues and prepare an independent estimate for resolving the claims.

(4) Escrow Accounts To Resolve Claims

Once the purchaser is aware of the estimated liability of any potential or existing claims, it may choose to require that a specific sum of money be placed in escrow in order to resolve the matter. Escrow contracts may be a valuable tool for a purchaser seeking to mitigate risk and liability from intellectual property liability or any unforeseen risks arising from the sale.

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iManage has announced open registration and a preliminary agenda for its second annual user conference, ConnectLive 2017, scheduled to take place in Chicago, May 24-25, 2017 at the Marriott Magnificent Mile and in London, June 27-28, 2017 at the InterContinental London – The O2 hotel.

Across four days and two continents, ConnectLive 2017 will bring together more than 1,000 iManage customers including CIOs, IT professionals, lawyers, technical architects, legal administrators, professional services firm executives to learn and share ideas on how professional work is changing and how the management of work product is adapting in response to those changes.

The conference will feature four dynamic tracks of educational sessions (business, technical, developer, and industry) focusing on how cloud, AI, mobile and other technologies can be used to securely organize, efficiently share and comprehensively govern high-stakes documents and communications. The agenda is packed with deep dive knowledge tracks and networking opportunities that will enable users to learn about iManage Work to streamline operations, extend work product access to mobile devices, enhance collaboration and secure insights that help them to create new sources of value for their firms.

“ConnectLive is the world’s leading forum for professionals who wish to improve the creation, sharing, and security of work product,” said Neil Araujo, CEO of iManage. “ConnectLive 2017 will deliver iManage’s users actionable intelligence that will allow them to serve their organizations and clients more effectively by enhancing work product productivity and governance.”

“It’s not every conference you get to walk away every day feeling like you’ve really gained something out of it,” said Avi Solomon, CIO, Rumberger, Kirk & Caldwell. “With ConnectLive, you have the iManage personnel on the floor, you’ve got the technical people, you’ve got the administrative people, you’ve got the leaders of the company just mingling with everybody and listening.”

All iManage users are encouraged to register to attend ConnectLive 2017. Click here to learn more about ConnectLive and to register for the upcoming conferences in Chicago and London: https://imanage.com/connectlive/

Exterro has published a new e-discovery case law report titled “The Importance of Proportionality under the New FRCP Rules” that is now available for downloading at no charge.

On its website, Exterro says the main goal of the recent FRCP amendments is to support Rule 1’s demand for a just, speedy, and inexpensive resolution to the dispute at hand. Proportionality is at the core of that notion.

This paper’s four cases cover rulings that push parties to be more proactive in finding ways to reach that resolution while avoiding over-burdensome and expensive production requests.

Included are:

• Brief case law recaps which get to heart of the e-discovery issues quickly
• Expert analysis on what these influential court rulings mean for your
  litigation process
• Tips for meeting updated e-discovery court requirements under the the new FRCP rules

Download the report.

Zapproved has published a free summary of “The Perfect Preservation Notice” session at the 2016 PREX, the premier conference for in-house e-discovery professionals. That summary is available for downloading.

• Craig Ball, Craig D. Ball, P.C.
• Dawn Radcliffe, Legal Operations Manager at TransCanada, Ltd.
• Kelly Lack, Litigation Counsel at Pacific Gas and Electric Company

Download the summary.