The U.S. Supreme Court recently found that a party licensing or selling its patent rights cannot receive royalties after a patent expires, regardless of whether or not the contract allows for the payment of such royalties. But an article published by Womble Carlyle Sandridge & Rice says that contract drafters can still achieve payment deferral and risk allocation without a long-term royalty distribution using creative and strategic provisions.

“Expiration of a patent also terminates the rights to collect royalties on that patent – even if a license contract says otherwise,” Theodore Claypoole writes in the article. “All businesses are reminded to check the termination date of any patent licensed to the business for use of underlying technology. While the license may remain valid, the licensor’s right to collect royalties may be invalid. While it is only natural for patent holders to want to profit from their patents as long as possible, according to the Supreme Court patent holders can only earn royalties for sales made before their patents expire. Royalty-bearing licenses like the one in Kimble should be careful in how payments are allocated, or risk partial or total invalidation.”

Read the article.

Compliancy Group will present a complimentary webinar designed to help participants and their clients be compliant with healthcare regulations. The event will be Tuesday, August 18, at 2 p.m. Eastern time.

“According to HHS, 70 percent of the market is not HIPAA compliant, while CMS states that 79 percent of Meaningful Use Audits result in failure.” Compliancy Group says on its website. “The two biggest factors: incomplete risk assessments and the lack of understanding between the difference of HIPAA and HITECH compliance. With massive breaches, like Anthem, and mandatory 5% Meaningful Use Audits, Covered Entities are looking to their MSPs to provide a solution.”

The webinar will cover:

• Be confident about compliance
• Increase profits
• Retain clients
• Acquire new clients

Register for the webinar.

Kat Gallagher, partner in Beck Redden’s Houston office, has been invited to become a Fellow of the International Academy of Trial Lawyers (IATL).

“With more than 25 years practicing law, Kat has distinguished herself as an elite trial lawyer with outstanding instincts for how to best tell her client’s story in the most persuasive and compelling manner,” the firm said in a release. “Her invitation to become an IATL Fellow is well deserved.”

The news release continues:

“I am truly honored and grateful to become an IATL Fellow” said Kat. “I am humbled to have received this recognition from the judges before whom I have appeared and from my peers.”

Kat will officially be inducted as an IATL Fellow during a ceremony to be held on July 25, 2015.

Membership in the Academy is limited to only 500 Fellows in the U.S. under the age of 70.  Standards for admission are high and the process is extremely thorough. Imperative qualities for every nominee include outstanding skills and extensive experience as a trial lawyer, unimpeachable personal and professional character, and integrity and honesty, among others.

The purposes of the IATL are to promote the rule of law, promote reforms in the law, facilitate the administration of justice, and elevate the standards of integrity, honor, and courtesy in the legal profession globally.

The National Association of Corporate Directors is offering a complimentary consultation to discuss a customized program for your board designed to help your organization’s board collaborate with management in setting the company’s cyber-risk strategy.

The program concludes with directors and executives agreeing on a clear set of cyber-risk priorities — along with milestones and responsibilities for making them happen.

The program is designed to help:

• provide the board with context around cyber risk
• lead constructive discussions with management
• produce a concrete roadmap for allocating resources to cyber-risk initiatives

Board and C-Suite Cyber-Risk Alignment is an in-boardroom customized program led by active directors with experience in the appropriate industry. It covers such topics as

• identifying vulnerabilities and ranking their importance
• determining which assets must be protected
• challenging flaws in the enterprise risk map
• understanding materiality and liability related to cyber risk
• defining appropriate cyber-risk and ERM indicators for your dashboard

Prospective participants may call 202-572-2081 or email Steve_Walker@NACDonline.org.

A young woman who was allegedly sexually assaulted in 2011 by the owner of a pizza restaurant in Addison, Texas, has been awarded $21.43 million following a four-day bench trial heard in the 193rd District Court in Dallas.

Judge Carl Ginsberg issued the award after hearing evidence that Ajredin “Danny” Deari, owner of co-defendant Pastazios Pizza in Addison, served the then-18-year-old victim multiple rounds of beer and whiskey at the restaurant under the pretext of a job interview.

According to a release issued by the plaintiff’s law firm, the victim eventually passed out and awoke in a nearby hotel room while she was being sexually assaulted by Mr. Deari, who then fled the scene. Subsequent physical examinations determined that Deari had infected her with herpes during the assault.

The woman, who is identified as “Jane Doe” due to the nature of the assault and her age at that time, was in Judge Ginsberg’s courtroom throughout the trial.

“The judge called this the most offensive set of facts he had ever seen during his time on the bench,” says Dallas attorney Trey Crawford of Gruber Hurst Elrod Johansen Hail Shank, who represented the woman at trial with co-counsel Royce West of Dallas’ West & Associates L.L.P. and Gruber Hurst Elrod co-founder Michael Gruber.

Deari pleaded no contest to criminal charges and the next day filed for personal and business bankruptcy protection. Pastazios continues to operate under Chapter 11 status.

“This is certainly one of the largest bench trial judgments in Dallas County in recent memory,” says Mr. West. “This young woman has been waiting for justice for four long years, and she’s fought very hard to make sure that every business owner is aware of the consequences of their actions.”

Gruber Hurst Elrod attorney Brian Mason also represented the woman at trial.

The case is Jane Doe v. Pastazios Pizza, Inc.; and Ajredin “Danny” Deari, No. 13-04564.

The 8th Annual Law Department Operations (LDO) Survey, now known as the ILDE-Blickstein Group Annual Law Department Operations Survey, in cooperation with Huron Legal, is specifically designed for professionals who manage complex legal department operations for their companies.

The LDO survey was created in 2008 to give legal departments a consistent platform to benchmark themselves and shed light on the emerging profession of law department management. In addition to being the original of its kind, the LDO survey has proven it’s the most respected in the industry over the last eight years.

A survey spokesman said the survey will take less than 20 minutes to fill out and is the only way to get insight into industry trends and a copy of the valuable proprietary results.

The survey covers such topics as:

• Cyber Security
• Metrics and Analytics
• Offshore Legal Process Outsourcing

Last year’s survey supplement is available, with an analysis of results, here.

Take the 2015 survey.

Exigis LLC, a minority-owned company, is suing the city of Dallas in federal court for violating its own policy about awarding points for involving minority-owned businesses seeking city contracts, reports The Dallas Morning News.

The issue is whether businesses like Exigis, which lost out to a white-owned company, should get credit just for being owned by minorities and women.

“The Exigis lawsuit could settle the differences of opinion as to whether it’s legal for local governments to consider race in awarding contracts,” The News report says.

Read the article.

When you first enter a business deal, no one ever expects things to go poorly, writes Joe Covelli of Covelli Law Offices in Pittsburgh.

But many of these types of situations often go awry, and contract disputes are becoming a more common concern for businesses throughout the country.

“While each party enters a contract agreement after carefully reviewing a contract and determining its pros and cons, no contract is perfect,” he writes. “Some business deals even require the intervention of an experienced contract attorney to help guide the proceedings.”

The article discusses potential issues, performance under a contract, and the litigation process.

Read the article.

In recent years, many software publishers began using software audits as a means to increase revenue by penalizing customers for perceived compliance issues, writes Keli Johnson Swan, an associate at Scott & Scott.

The text of her post on the firm’s Software Audit Blog follows:

Software publishers often conduct direct audits, or audit through companies such as the BSA| The Software Alliance (“BSA”), or the Software & Information Industry Association (“SIIA”). Although many software users take advice about their audits from software vendors, authorized resellers, or other purported experts, the practice is not always recommended. Unfortunately, often these “certified partners” offer poor advice, costing businesses precious time and money. A growing number of businesses have learned the hard way to trust only an expert specializing in software copyright infringement to assist with software licensing and resolve software audits.

The following is a list of some of the worst advice we have heard for a company facing a software audit.

1. Immediately purchase all of the software necessary to remediate any compliance gaps, as it will be a sign of good faith.

Except for very particular circumstances, this might be the worst advice to a company facing an audit. The auditing entity typically sends the company a letter placing the company on notice that it must preserve all evidence of potential copyright infringement claims should litigation ensue and make no changes to its network. Purchasing the software can jeopardize a company’s ability to resolve the matter.

2. Uninstall all unlicensed software and ignore the audit.

Auditing publishers and third parties argue that failure to preserve all the evidence could constitute spoliation and entitle the publisher to damages for destruction of the evidence. Furthermore, it is rare for a company to be able to resolve an audit without a response. Once an audit is initiated, an auditor typically will not disengage absent a valid pre-existing release or overriding audit provision.

3. Purchase retail licenses for software that will ultimately be used for commercial hosting.

License agreements for software products vary widely, but typically retail license agreements specifically prohibit commercial hosting, which requires a specific type of license. Depending on the commercial hosting setup, the potential copyright infringement damages for purchasing the wrong license could be in excess of several hundred thousand dollars. Saving money on the front end by purchasing a cheaper license is not worth the potential copyright infringement penalties resulting from an audit.

4. Install all of the software you need and true up at the end of the year when you do not have an Enterprise Agreement.

Some software publishers offer license agreements that outline specific rights and obligations, including the right to audit, and an obligation to true up at the end of a specified period, such as a quarter or a year. However, these Agreements do not always cover all of the products a customer may have installed. The software products that are covered by the agreement are specifically listed as part of the agreement and any addenda. The Agreement outlines the terms by which a customer may true up and pay the difference between the number of users last reported and the number of new users on a pro-rated basis at an agreed rate. If it is not explicitly stated in a license agreement, end users do not have the right to true up.

Some software vendors have mistakenly led companies to believe that they had true up rights where none existed. Based on this erroneous advice, companies downloaded the necessary software as staff continued to grow, with the assumption that they could pay the difference during the true up period. Instead, the companies were faced with an audit, a significant compliance gap, and costly copyright infringement penalties.

Despite receiving such poor advice, a company may be held liable for copyright infringement pursuant to The Copyright Act regardless of whether management was aware of the infringement. It is critical to seek advice from a legal expert with experience in software licensing in order understand all of the risks involved with various strategies when faced with a software audit.

Pillsbury Winthrop Shaw Pittman has posted an article about the American Arbitration Association’s revised Construction Industry Arbitration Rules and Mediation Procedures which became effective July 1, 2015.

George Haley, John Heisse, Clark Thiel and Robert Thum write that, although some changes are relatively modest, others expand the powers of the arbitrator and may alter traditional assumptions underlying the selection of arbitration as a dispute resolution process for construction projects.

“For example, the Rules now provide a procedure for emergency relief that may result in more mid-project disputes being taken to arbitration or court, as the new Rule R-39 provides a party can seek emergency relief from either the AAA or a court, without violating the agreement to arbitrate,” they write.

Read the article.

Legal issues that most often come to mind when a company is closing a facility are terminating a lease or selling the asset(s), but those are just the tip of the iceberg, says Foley & Lardner in a Lexology.com article written by Nicholas Williams, an associate and litigator. He writes that potential problems may arise out of contracts seemingly outside the facility closure’s scope.

“Regardless of the reason, myriad legal considerations accompany a decision to close a facility. For example, we previously addressed the HR considerations. But, in many cases, issues can arise from provisions in unseen depths of contracts,” he writes.

The article offers five tips designed to help manufacturers avoid unwanted contractual surprises in the facility-closing process.

Read the article.

Two attorneys and a paralegal from the Law Offices of John W. Giblin, Jr., P.C. have joined Farrell Fritz. The Melville-based, Martindale-Hubbell AV-rated firm concentrated in estate planning, business succession planning, estate management and estate litigation.

John W. Giblin, Jr., a Lloyd Harbor, NY resident, is counsel to the firm, concentrating in trusts and estates law. He earned his Juris Doctor degree from Fordham University School of Law and his undergraduate degree from Fairfield University. He is admitted to practice before all courts in New York State, as well as the United States Tax Court and the Supreme Court of the United States.

Yeshim E. O’Donnell, a Lloyd Harbor, NY resident, is also trusts and estates counsel. She earned her Juris Doctor degree from Fordham University School of Law and her Bachelor of Arts degree from The Johns Hopkins University. She is admitted to practice in New York.

JoAnn Jostlin, a Jericho, NY resident, is a paralegal.

Jennie D.G. Azoulai

Jennie D.G. Azoulai, General Counsel News Chief Marketing and Business Development Consultant, was quoted in the Everlaw Blog about her impressions at Legal Tech West in San Francisco July 13-14.

Everlaw builds e-discovery and litigation cloud platforms used by law firms, corporate counsel and government attorneys. LegalTech is part of ALM Conferences and Trade Shows, a producer of educational and networking events for business leaders and professionals.

She responded to two questions: “What are you liking about Legaltech West Coast?” and “How has your experience here been, compared to previous conferences you attended?”

Read the blog post.

Verdantix will present data from interviews with 300 heads of energy and facilities in 15 countries around the world in a complimentary webinar scheduled for Thursday, August 6 at noon Eastern time.

The event will provide senior managers responsible for business planning, strategy, marketing and sales in energy services and equipment suppliers with the hard data needed to align your 2016 plans with the realities of market demand, the company says on its website.

“The Verdantix global survey data also provides insight into country-specific and industry-specific trends across segments such as decentralized energy, energy performance contracts, energy storage and energy software. You will hear from Verdantix analysts about the hot segments to target in 2016 based on our analysis of corporate spending priorities.”

Register for the webinar.

An article posted on the website of Neal, Gerber & Eisenberg discusses the adoption of the estoppel principle as a remedy for policyholders who have been wrongfully denied a defense by their liability insurers, as covered in the American Law Institute’s Preliminary Draft No. 1 of the Restatement on Liability Insurance.

“The rule that the duty to defend is triggered by unproven allegations, referred to as the ‘potentiality standard,’ recognizes the reality that the insured has no control over how the allegations are plead in liability matters,” writes Jill Berkeley.

“Estoppel, or forfeiture of defenses against coverage, in the end, is the penalty for a wrongful breach of the duty to defend. If there were no estoppel or additional risk to the insurer, there would be no downside to the insurer for wrongfully denying the policyholder the benefit of its bargain,” she writes.

Read the article.

Seyfarth Shaw reports on a contract case in which a California court found that an arbitration agreement between Texas-based Neiman Marcus and a California-based employee was unconscionable because the agreement designated Texas law as the law to apply.

“Many companies doing business in California have implemented arbitration agreements for resolving disputes with their employees,” the article says. “Companies headquartered in states other than California often prefer to use the law of their own state as the law to govern their contracts. In the context of arbitration, a valid choice of law can tell the arbitrator what law to apply.”

The case is Pinela v. Neiman Marcus Group, Inc.

“This holding should cause non-California employers pause prior to implementing an arbitration agreement that chooses a law other than California’s for disputes involving California employees,” the article says.

Read the article.

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) has issued a final written decision confirming the patentability of five patent claims covering card-reader technology invented and owned by Washington University Professor Dr. Robert E. Morley Jr. In its decision, the PTAB rejected a series of challenges to U.S. Patent No. 8,584,946 filed by San Francisco-based mobile credit card processing company Square Inc.

The patent claims upheld by the PTAB in the July 7 decision also are being asserted by Morley against Square in a separate patent infringement lawsuit filed in the United States District Court for the Eastern District of Missouri.

Attorneys Brad Caldwell, Jason Cassady and Austin Curry of Dallas’ Caldwell Cassady & Curry represent Morley in the Missouri court proceedings. Caldwell also defended the ’946 patent at the PTAB trial heard in March in Washington, D.C.

Since the America Invents Act was signed into law in 2011, more and more companies have challenged patents in inter partes review trials before the PTAB, which largely has ruled in favor of patent challengers. Recent statistics show that only 18 percent of claims instituted in PTAB proceedings are confirmed.

“We’re very glad that the Board found in our client’s favor on five separate claims,” says Caldwell. “Square built its company around Dr. Morley’s inventions. We continue to believe that Square should take responsibility for its flagrant infringement of Dr. Morley’s patents, and we are honored to help him make sure that happens.”

Dallas-based Caldwell Cassady & Curry represents clients in intellectual property disputes and commercial litigation claims. The firm is home to trial lawyers who have tried and won some of the biggest verdicts of the past decade against some of the largest companies in the world.

AlixPartners, the global advisory firm, has announced that Kathryn Koorenny has joined the firm as Managing Director and General Counsel. Ms. Koorenny will join the firm’s senior leadership team and be based in AlixPartners’ New York office.

Ms. Koorenny succeeds John Collins, who is stepping down after eight years of service to pursue a career in academia.

Ms. Koorenny joins AlixPartners from American Airlines, where she spent 20 years, most recently as Associate General Counsel, Litigation and Compliance. There, she was responsible for global commercial litigation and corporate compliance.

“Kathryn is an accomplished attorney who brings exceptional experience, passion and energy to her work,” said Fred Crawford, CEO of AlixPartners. “I look forward to working with her and believe she will bring a unique perspective to the senior leadership team. It is a pleasure to welcome her to the firm.”

Ms. Koorenny’s background also includes considerable experience in legal and business ethics leadership, litigation, and mergers and integration on both sides of Chapter 11 bankruptcies. As such, she has a deep understanding of the sensitive situations AlixPartners’ clients often face and a demonstrated track record of providing highly responsive and effective counsel.

“AlixPartners consultants work under extreme pressure to deliver exceptional results – and our legal team works just as hard to support them,” said Kathryn Koorenny, General Counsel of AlixPartners. “I am excited to join the team and will be a passionate advocate for our business, our clients, and our people.”

Prior to joining American Airlines, Ms. Koorenny worked as an attorney in the litigation practice of Gibson, Dunn & Crutcher, where she represented secured creditors, lessors, and Chapter 11 debtors.

Ms. Koorenny holds a J.D. from the University of Southern California Law Center and a B.A. from Loma Linda University.

About AlixPartners
AlixPartners is a leading global business advisory firm of results-oriented professionals who specialize in creating value and restoring performance at every stage of the business life cycle. We thrive on our ability to make a difference in high-impact situations and to deliver sustainable, bottom-line results. The firm’s expertise covers a wide range of businesses and industries whether they are healthy, challenged or distressed. Since 1981, we have taken a unique, small-team, action-oriented approach to helping corporate boards and management, law firms, investment banks, and investors to respond to crucial business issues. For more information, visit www.alixpartners.com.

The Expert Institute is working on a comprehensive ranking of legal blogs as a part of its 2015 Best Legal Blog Contest.

“You’ve written hundreds of posts, scored thousands of pageviews, and won diehard fans and subscribers,” the Institute says on its website. “Whether you offer insightful analysis of a niche legal topic or light hearted commentary on life as a lawyer, your legal blog deserves some recognition.

“From medical malpractice to intellectual property and criminal law, we’re creating the largest and most comprehensive ranking of legal blogs online today as chosen by thousands of voters – and we want your blog to earn a spot on the list.”

The Institute says each blog will compete for rank, as well as exposure to our monthly readership of more than 200,000 legal professionals. The three blogs that receive the most votes overall will win cash prizes.

Enter the contest.

The 5th U.S. Circuit Court of Appeals has further addressed the area of contract and insurance interplay with its decision in Ironshore Specialty Insurance Co. v. Aspen Underwriting Ltd. et al., No. 13-51027, (5th Cir. June 10, 2015), reports Liskow & Lewis in an article posted on Lexology.com.

“The appellate court was asked to determine whether, under Texas law, contractual requirements in a master service agreement obligating the contractor to name the oil company as an additional insured and provide $5 million in additional insured coverage served to limit the amount of insurance provided to $5 million notwithstanding that the liability limit of the contractor’s insurance program was significantly greater ($50 million),” the article says.

The Court ultimately concluded that the “Insured Contract” provision discussed in Deepwater Horizon was sufficient to incorporate the limitations of the MSA.

Read the article.