Law Firm News

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Law Firm News

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Davis Wright Tremaine LLP

DAVIS WRIGHT TREMAINE PARTNER TO JOIN AIG CORPORATION WHILE ON ONE-YEAR LEAVE OF ABSENCE FROM FIRM
The law firm of Davis Wright Tremaine LLP announced today partner Milton R. Stewart has been engaged as special counsel to Stasia Kelly, executive vice president and general counsel of New York-based AIG Corporation. Stewart will head up a major project for AIG, which was ranked by Forbes magazine as the fourth largest corporation in the world. He will take a one-year leave of absence from Davis Wright Tremaine.

Stewart has been with Davis Wright Tremaine since 1986, serving for the past five years as the firm’s business development and client relations partner. His legal practice, which he has actively maintained for more than 35 years, has focused on corporate finance transactions.

“Milt was one of the first business development/client relations partners in a major law firm. In this role he has provided invaluable assistance to our lawyers and practice groups,” said Richard D. Ellingsen, Davis Wright Tremaine’s managing partner. “Although we will miss Milt for this year, it’s a unique opportunity for him to use his many talents. We wish him the best in this endeavor and look forward to his return to the firm after its completion.”

“While I have greatly enjoyed my transactional and business development work at DWT, I am very excited about becoming part of AIG’s business/legal team for a year and look forward to the challenges this new opportunity presents,” said Stewart.

01-10-2007

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Covington & Burling, P.C.

Covington Advises New York Times on Sale of Broadcast Media Group
Covington & Burling LLP recently advised The New York Times Company on the sale of its broadcast media group.

01-10-2007

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Womble Carlyle Sandridge & Rice, PLLC

NC Legal Elite Includes 28 Womble Carlyle Lawyers
Womble Carlyle Sandridge & Rice, PLLC today announced that 28 of the firm's lawyers in North Carolina have been named among the state's best in the Sixth Annual Legal Elite listing -- more than tripling the number of attorneys who appeared on the inaugural list in 2001.

The Womble Carlyle lawyers named to the list, the practice area for which each was nominated and a link to each lawyer's bio is below:

Charlotte
Neil Coghill, Tax/Estate Planning
Jim Cooney, Criminal and Litigation
Jeff Hay, Business
Bobby Hinson, Real Estate
Mark Horoschak, Antitrust
Cy Johnson, Business
* Ric Morton, Environmental
Richard Rainey, Employment
James Witherspoon, Patents/Intellectual Property

Raleigh
Press Millen, Antitrust and Litigation
Maury Tepper, Intellectual Property

Research Triangle Park
*Christopher Bolen, Patents/Intellectual Property
Ken Carroll, Business
Gene Jones, Young Guns Under 40

Winston-Salem
Jean T. Adams, Tax/Estate Planning
Jimmy Barnhill, Family Law
Andy Copenhaver, Antitrust and Litigation
Andrew Fitzgerald, Young Guns Under 40
Lucretia Guia, Employment
Howard Grubbs, Environmental
Lori Hinnant, Environmental
Trent Jernigan, Real Estate
Jeff McFadden, Patents/Intellectual Property
Ken Michael, Construction
Mark Poovey, Antitrust
George Ragland, Tax/Estate Planning
Michael Ray, Patents/Intellectual Property
Bill Sullivan, Bankruptcy

*denotes those lawyers who have appeared on every list since its 2001 inception

The list, published by Business North Carolina magazine, is compiled from peer-completed ballots that were sent to nearly 18,000 members of the North Carolina State Bar. The ballots called on each recipient to vote for whom they thought was the best practitioner in 12 business-related legal specialty fields. This year, the magazine added a specialty, family law, and for the first time, voters picked the best lawyers under 40, regardless of specialty. Lawyers were not allowed to nominate themselves and had to nominate one attorney outside of their own law firm for every attorney nominated within their own firm. Votes received from outside of a nominee's firm were weighted more heavily than those received from within the same firm. Attorneys who received only nominations from within their own firm did not make the list.

01-10-2007

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Meyer, Unkovic & Scott, L.L.P.

Yu and King Appointed to PBA Minority Bar Committee
The downtown law firm of Meyer, Unkovic & Scott LLP is pleased to announce that Jun H. Yu and Nicole H. King were recently appointed to the Minority Bar Committee of the Pennsylvania Bar Association. The Minority Bar Committee works to assure full and equal participation of minorities in the PBA, the legal profession, and the justice system in general.

Yu, a partner in the firm’s Corporate & Business Law Group, is a resident of Bridgeville. He previously served on the Board of Directors of the Rosa Parks Scholarship Fund in Detroit and as a mentor for the Asian Law Student Association at the University of Pittsburgh School of Law.

King, an associate in the firm’s Corporate & Business Law and Real Estate & Lending Groups, is a City of Pittsburgh resident. She earned her Juris Doctor Degree from the University of Pittsburgh School of Law, where she served as a Judicial Advocate for the University of Pittsburgh Student Judicial System. King, a Helen Faison scholarship recipient, graduated from the University of Pittsburgh, magna cum laude, in 2002. She is a member of Phi Beta Kappa. King is Treasurer of the Homer S. Brown Law Association.

01-09-2007

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Fraser Milner Casgrain LLP

Neil Bass Joins Fraser Milner Casgrain Partnership to Head National Sales and Commodity Tax Group
Fraser Milner Casgrain LLP (FMC), one of Canada’s leading business law firms, announced today that Neil Bass, a highly acclaimed practitioner in the area of sales and commodity tax, will join the firm on February 1, 2007 as National Leader of its Sales and Commodity Tax Group. Mr. Bass leaves his current position as a partner with Wilson & Partners LLP, a law firm affiliated with Pricewaterhouse Coopers LLP, to join FMC as a partner in its Toronto office.

"As a Canadian leader in sales and commodity taxation, Neil is the ideal candidate to head up this national group," says Michel Brunet, FMC’s Chair and Chief Executive Officer. "He will provide sage counsel to our clients and other practice groups, develop mutual synergies with our international trade group, and ensure the best commodity tax resources are in place to address our clients’ needs across the country."

As an active member of the National Sales and Commodity Tax Section of the Canadian Bar Association and a previous member of its CICA Joint Legislation Review Committee, Mr. Bass played a strategic role in the amendment of the Canadian Excise Tax Act.

A recipient of the 1999 Normand Guerin Award for his outstanding contribution to the study of commodity taxation, Mr. Bass has been recognized by legal and other professional directories as a leading practitioner in this area. He regularly addresses audiences on various commodity tax matters, has authored numerous articles on the GST and co-edited Canadian GST and Commodity Tax Cases, published by CCH Canadian Limited.

"Neil’s depth of expertise in commodity taxation, tax litigation, and international customs duties, as well as his role as an active participant in the ongoing evolution of Canada’s tax laws will be invaluable for our clients," explains Chris Pinnington, Managing Partner, FMC Toronto.

01-09-2007

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Fish & Richardson, P.C.

Changing The Balance Of Power Between Patent Licensors and Patent Licensees
The U.S. Supreme Court issued a decision that changes the balance of power between patent holders (as potential licensors) and third parties (as potential licensees). In MedImmune, Inc. v. Genentech, Inc., __ U.S. __ (Jan. 9, 2007) (SCALIA, Roberts, Stevens, Kennedy, Souter, Ginsburg, Breyer, Alito, Thomas (dissent)), the Supreme Court reversed a Federal Circuit decision (see summary at http://www.fr.com/news/articledetail.cfm?articleid=540. ) that had held, consistent with its prior decision in Gen-Probe v. Vysis, that a patent licensee must terminate or breach the license in order to create a case or controversy to support an action for declaratory judgment.

Genentech, as licensor of the relevant patent (which did not issue until after the patent license was in effect), had sent MedImmune, the licensee under agreement of the patent, a letter expressing "[Genentech's] belief that [MedImmune's product] was covered by [the relevant patent] and [Genentech's] expectation that [MedImmune] would pay royalties beginning March 1, 2002." Despite believing that the patent was invalid and unenforceable, and that its product was not covered by (i.e., not infringing) the patent and therefore not licensed under the agreement, MedImmune also believed that the letter constituted a threat of treble damages and of a loss of 80% of its business. To mitigate that threat, MedImmune opted to concurrently pay the royalties, thereby keeping the license in effect and Genentech's threat at bay, and pursue an action for a declaratory judgment that the patent was invalid and unenforceable, and that its product was not covered by (i.e., not infringing) the patent, thereby keeping open the possibility of not having to pay royalties (and getting reimbursement for royalties paid during the pendency of the suit).

The eight Justice majority found that the letter by Genentech supported the existence of a threatened harm to MedImmune. The Court further found that MedImmune's actions (i.e., MedImmune's election to pay royalties and to not terminate the license agreement) to eliminate Genentech's threat had been "effectively coerced" by Genentech's letter. Applying the principle first articulated, and then extended, by the Court in the previous cases of Steffel v. Thompson and Altvater v. Freeman, namely that an action by a party seeking relief (i.e., MedImmune) that eliminates a threatened harm but that is coerced by the party against whom relief is sought (i.e., Genentech) does not preclude Federal court subject matter jurisdiction, the Court found that MedImmune need not stop paying royalties under the license agreement or terminate the license agreement to create a case or controversy to support an action for declaratory judgment.

Intriguingly, the Court's finding, and its discussion especially in a footnote regarding a third party not having to "bet the farm" or break the law before filing a declaratory judgment action, also may serve to call into question the viability of the Federal Circuit's existing standard for the requirements to file a declaratory judgment action.

The Court's decision effectively changes the balance of power between licensees (and other third parties) and patent holders.

Historically, pursuant to Gen-Probe v. Vysis, there would have to be an actual case or controversy between a third party and some patent holder prior to the declaratory judgment relief pathway becoming available to the third party. Thus, in the patent licensing context, the licensee of a patent would have to terminate or breach the license in order to adjudicate whether its product(s) were subject to payment of additional royalties under the patent license agreement; its product(s) would not be subject to additional royalty payments if a court found that the licensed patent was invalid or unenforceable, or that its product(s) would notbe covered by (i.e., would not infringe) the relevant licensed patent). This prior view subjected licensees to risk of loss of the licensed business and to treble damages via a patent infringement suit, yet permitted patent holders to recognize the revenue received under the license agreement. Also, due to this prior view's requirement for the existence of an actual case or controversy, a third party planning to engage in potentially infringing activities was generally precluded from utilizing the declaratory judgment relief path offered by the federal courts as a means of seeking what would amount to an advisory opinion of whether the third party's planned activities were infringing a valid, enforceable patent.

Now, in view of MedImmune, a third party can file an action for declaratory relief without taking a significant risk (i.e., without engaging in potentially patent-infringing activities). Thus, in the patent licensing context, the licensee, by continuing to pay royalties and otherwise not breaching the relevant license agreement, can concurrently get the protection from suit under a relevant licensor patent that is afforded by the license agreement, and seek a court's adjudication of the validity and/or enforceability and/or applicability of the license agreement (and the underlying licensor patents licensed pursuant to that agreement) to licensee's product(s). Absent mitigating provisions in the license agreement, this new view eliminates the licensee's risks of loss of the licensed business and of treble damages via a patent infringement suit, and also creates uncertainty during the pendency of licensee's suit with respect to the licensor's ability to recognize the revenue received under the license agreement and/or to collect treble damages based on licensee's activities. And, consistent with this new view, any third party (or a flood of third parties) may be able to seek in Federal court, without needing to engage in potentially infringing activities and the associated risk from patent holders of treble damages and loss of business, what would amount to advisory opinion(s) regarding the third party's planned (not actual) activities.

How this new view plays out in the patent licensor/licensee context remains to be seen. From a policy standpoint, although this new view is consistent with the policy of weeding out unenforceable and/or invalid and/or inapplicable patents from the stream of commerce, it is inconsistent (at least to the extent that it applies to patent licenses entered into in connection with a settlement of a pending dispute, so-called "post-litigation" licenses) with the policy of treating settlements of "litigation" as final and binding on the parties (i.e., res judicata). See, e.g., Lear v. Adkins, as opposed to Flex-Foot v. CRP. But, it is unclear from existing caselaw whether there is a distinction between the enforceability of pre- and post- litigation express covenants not to challenge patent validity. At a minimum, what can be safely said is that if there is such a distinction, the issue remains of drawing the line between what constitutes "litigation" and what does not. Although on policy grounds, this new view articulated in MedImmune may be more applicable to situations where a patent license is entered into outside of the context of "litigation" and less applicable to situations where a patent license is entered into in connection with the settlement of "litigation," it remains unclear how the distinction between the enforceability of pre- and post- litigation express covenants not to challenge patent validity will be resolved by the courts.

Without either endorsing, or otherwise advising any reader hereof as to a particular course of action, a number of implications with regard to behavior going forward for patent licensors and/or patent licensees exist because of this shift in the balance of power between licensees and licensors caused by the Court's MedImmune decision.

A licensee, for example, may wish to engage in a cost-benefit analysis with respect to its in-licensed patents: is the cost of litigating the validity and/or enforceability and/or applicability of the patent license agreement (which cost includes both the litigation costs and the costs of making payments under the license agreement to keep it in force during the litigation), as tempered by the chance of finding the patent license agreement to be invalid, unenforceable or inapplicable, less than the projected payments to be made under the patent license agreement for its remaining term? For patent license agreements for which the answer to this question is "yes", the licensee may wish to always continue making payments (and satisfying all of its other obligations) under the relevant patent license agreement in connection with any challenge to the validity and/or enforceability and/or applicability of the patent license agreement. And, more generally, a third party who is planning on engaging in potentially infringing activity(ies) with respect to a particular patent may wish to test the waters prior to engaging in any potentially infringing activity early in its planning stage by filing a declaratory judgment action with respect to the validity, enforceability, and/or applicability of the particular patent.

Countervailing potential behavior(s) exist for the licensor to defend itself against challenges to the patent license agreement and/or its underlying licensed patents (e.g., via declaratory judgment action and request for reexamination). A licensor, for example, may wish to file suit prior to engaging in licensing negotiations (i.e., to take advantage of the policy encouraging finality of judgments, and settlement agreements incorporated in such judgments (res judicata)). In addition, a licensor may wish to take steps with respect to its patent license agreements (i) that reduce or eliminate the licensee's perception of a threat, (ii) that raise barriers to the licensee's ability to challenge the patent license agreement or its underlying licensed patents, and/or (iii) that increase the cost (or reduce the benefit) to the licensee of challenging the patent license agreement or its underlying licensed patents. Key to all of these steps, in addition to well-drafted, relevant language which may or may not be enforceable depending on the law of the applicable jurisdiction, may be a well-drafted severability clause in the patent license agreement, which may permit each of these steps to act as an independent layer of protection for the licensor unaffected by the validity and/or enforceability and/or applicability of other(s) of these steps.

License agreement provisions that may serve to reduce or eliminate the licensee's perception of a threat include without limitation an agreement-codified, administrative process for automatic addition of licensed patents to the portfolio (and payment of royalties thereunder) combined with a long-duration process whereby the licensee bears the burden of removing the licensed patent from the portfolio. To be effective in view of MedImmune, this type of provision must remove a licensee's perception of a threat.

Analogously, license agreement provisions that may serve to raise barriers to the licensee's ability to challenge the patent license agreement or its underlying licensed patents include without limitation:

* Specific express covenants by the licensee (e.g., covenant(s) not to sue to invalidate and/or to find unenforceable and/or to find not infringed the licensed patent(s); and/or covenant not to file a request for reexamination with respect to the licensed patent(s)); and/or
* Specific express admissions/representations by the licensee (e.g., admission/representation that the licensed patent(s) are valid; and/or admission/representation that the licensed patent(s) are enforceable; and/or admission/representation that the licensed patent(s) are infringed by the licensed product(s); and/or admission/representation that filing suit challenging license agreement, or filing suit or request for reexamination challenging underlying patent(s), breaches or terminates the license agreement); and/or
* Specific express pre-conditions for the existence/grant of the license (e.g., filing of infringement suit and/or entry of consent judgment from the licensee as a condition of settlement); and/or
* Specific licensee-onerous express payment terms (e.g., pre-payment by the licensee of royalties (prepaid or other) and/or milestones and/or other payments, and/or payment by the licensee of a liquidated damage amount in the event licensee files suit, and/or acceleration of all payments payable by the licensee, each in the event licensee files suit
* Specific continuing, legally permissible express royalty payments based on different regime of intellectual property protection (e.g., payment of royalty at reduced level based only on an applicable trade secret license, in event underlying licensed patent found invalid and/or unenforceable and/or inapplicable); and/or
* Specific express powers to the licensor in the event licensee files suit and/or request for reexamination (e.g., power to terminate license agreement for convenience and/or breach).

Finally, in addition to those license agreement provisions that may serve to raise barriers to licensee, license agreement provisions that may serve to increase the cost (or reduce the benefit) to the licensee of challenging the patent license agreement or its underlying licensed patents include without limitation:

* provisions that increase the cost to licensee (e.g., automatic percentage ramp-up of royalty rates, and/or payment of licensor's ongoing related attorneys' fees and costs, each being triggered in the event of licensee filing suit and/or requesting reexamination); and/or
* provisions that reduce the benefit to licensee (e.g., extension of statute of limitations for patent infringement damages to entire term of patent if licensee files suit and/or requests reexamination; payment of royalties during pendency of challenging suit and/or reexamination is irrevocable and non-reimbursable)

Where a party fills the roles of both licensor and licensee (e.g., in the patent cross-licensing context), that party may wish to give consideration to both the licensee-specific points and the licensor-specific points described above.

To summarize, the Court's MedImmune decision has shifted the balance of power between patent holders and third party(ies) potential infringers (and licensee(s)) of the patent(s) in the drafting, negotiation, and enforcement of patent license agreements. This shift has behavior and incentive implications for patent holders, as well as for prospective licensees and/or infringers of the patent(s). How these implications will resolve themselves in a particular case will depend, in large part, on the knowledge base possessed by the patent holders and/or prospective licensees and/or infringers of the patent(s), and by their respective representatives.

This analysis is brought to you by the Fish & Richardson Licensing Group, counseling and advising clients on a broad spectrum of complex transactional matters. We have negotiated and drafted licenses involving every type of intellectual property and intangible asset, as well as development agreements, joint ventures, collaborative research agreements, clinical trial agreements, as well as media and entertainment and copyright and trademark-related licensing. We also have experience in technology transfer, confidentiality, business, and consulting contracts. We call upon resources of our corporate, IP, and transactional lawyers to inform our licensing technical expertise with solid trade custom knowledge and experience.

01-09-2007

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Wiley, Rein & Fielding, L.L.P.

WRF Partner Comments on New House Travel Rules
WRF Partner Jan Witold Baran was quoted in The Washington Post on recent changes to the U.S. House of Representative’s rules on paying for travel. The House’s new ban on travel is “being hyped as broader than it is," Baran said.

Lobbyists can still take lawmakers and staffers on short trips, and institutions of higher education can still provide travel without restrictions. Lawmakers can also use campaign funds to visit lobbyists’ meeting and then hold a fundraiser there to offset the costs.

"It's a partial ban," said Baran. "But it doesn't have as many holes as the gift ban, which has 23 exceptions.

01-09-2007

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