Technology in Manufacturing

Our national cross-practice team has the experience and knowledge to assist manufacturers in all sectors engaged in the tidal wave of change fueled by new processes, materials and technologies. We counsel companies facing challenges stemming from the explosive growth of automation and robotics, 3D printing and the Industrial Internet of Things. Our attorneys have the technical credentials to understand the issues and the legal experience to provide practical, collaborative guidance.

Automation

We are well-versed in the evolving landscape of automation and other transformative technology as it affects mergers and acquisitions, labor issues and the necessity of protecting intellectual property. In addition, we are adept at guiding companies as they incorporate cloud-based technologies into their operations.

We advise on intellectual property matters, product liability, labor, tax and regulatory issues. We provide counsel on the collection, use and management of big data, and we have deep experience in privacy and cybersecurity issues. Dozens of our attorneys have technical degrees in electrical, mechanical and computer sciences. Many are highly ranked by Chambers, Best Lawyers and other legal directories.

We have decades of experience serving leading companies implementing and managing technology in manufacturing and we work with clients across a broad range of sectors, including:

  • Aerospace and aviation
  • Automotive
  • Communications
  • Energy
  • Environmental
  • Healthcare
  • Housing
  • Machinery
  • Technology
  • Transportation

Select Experience

Business
  • Advised a global manufacturer of welding products in an acquisition of a privately held manufacturer and integrator of industrial automation products and robotic systems.
  • Represented a measurement and instrument company in a sale process that culminated in the acquisition of the company in a $300 million cash merger.
Intellectual Property
  • Managed the patent portfolio of a leading heavy equipment manufacturer and Fortune 50-ranked company. We filed more than 65 patent applications and handled all forms of counseling related to patents and technology, including the purchase, sale and licensing of technology, as well as mergers and acquisitions related to same. The portfolio management included monitoring competitor products and patents and providing advice regarding clearance and cohesiveness of protection, maintenance and enforcement.
  • Manage a Fortune 500 metal packaging company’s patent portfolio, including U.S. and foreign patent prosecution, freedom to operate analysis, IP strategy, inter partes review, and district court and Court of Appeals for the Federal Circuit litigation.
  • Manage a patent portfolio for a manufacturer of oil drilling equipment, including measurement-while-drilling tools.
Labor and Employment
  • Secured victory for a Fortune 500 company in the general building materials industry in a Fair Credit Reporting Act (FCRA) class action. An Ohio District Court judge granted our motion to dismiss, finding the plaintiff was an independent contractor, not an employee, and that the “for employment purposes” sections of the FCRA did not apply. The ruling is believed to be the first decision to grant a motion to dismiss an FCRA claim on the dual grounds that the plaintiff was an independent contractor (without the need for any discovery on the issue) and that the FCRA provisions at issue did not apply to independent contractors. 
  • Represented a Germany-based engineering firm in a multicount gender discrimination and retaliatory discharge case, obtaining summary judgment and defeating collateral claims. Plaintiff later abandoned appeal.
Tax
  • Served as lead U.S. federal tax adviser for a welding supply company regarding foreign tax credit implications associated with restructuring its operations in Canada and Luxembourg.
  • Advised a U.S.-based manufacturer in connection with the structure of a multinational group based in Latin America. Advised on post-acquisition integration, as well as with respect to U.S. and non-U.S. tax considerations, elections, loss planning, subchapter C issues and international tax issues.
Litigation
  • Served as lead counsel for a global manufacturer of advanced materials in a private multiparty, multimillion-dollar cost recovery action relating to regional groundwater contamination. The team was successful in obtaining a stay pending resolution with the EPA of a remedy on the grounds that any judicial decision may conflict with the negotiations and final resolution of the litigation with the EPA.
  • Defended a farming equipment manufacturer in a statewide class action alleging violations of the Texas Consumer Credit Code and seeking $1 billion in statutory penalties.
Data Privacy
  • Advised a major automotive manufacturer on the application of financial privacy laws to new technologies.
  • Represented clients in assessing guidelines on cloud computing risks, including indemnification and limits of liability.
More »

Experience

Business

  • Advised a global manufacturer of welding products in an acquisition of a privately held manufacturer and integrator of industrial automation products and robotic systems.
  • Represented a measurement and instrument company in a sale process that culminated in the acquisition of the company in a $300 million cash merger.
  • Represented a large aerospace component manufacturer in several of its acquisitions, including a $1.27 billion acquisition, a $750 million acquisition and a $150 million acquisition.
  • Prepared product representation and distribution agreements across the world for technology-based clients, including the automotive, medical, life sciences, machinery, gearing, software, housing, plumbing supply, aviation and numerous other industries.
  • Represented a major manufacturing company with the drafting and negotiation of an outsourcing agreement and multiple statements of work relating to business process outsourcing and IT outsourcing services. The agreement advanced the company’s value creation strategy and is a key element in its efforts to significantly improve business process efficiencies and reach cumulative operational cost savings of millions of dollars over a period of three years. The project included counseling the client with respect to the request for proposal process, assessing service provider responses and proposals, and drafting and negotiating master agreements and statements of work with service providers for the outsourced processes.

Intellectual Property
  • Managed the patent portfolio of a leading heavy equipment manufacturer and Fortune 50-ranked company. We filed more than 65 patent applications and handled all forms of counseling related to patents and technology, including the purchase, sale and licensing of technology, as well as mergers and acquisitions related to same. The portfolio management included monitoring competitor products and patents and providing advice regarding clearance and cohesiveness of protection, maintenance and enforcement.
  • Manage a Fortune 500 metal packaging company’s patent portfolio, including U.S. and foreign patent prosecution, freedom to operate analysis, IP strategy, inter partes review, and district court and Court of Appeals for the Federal Circuit litigation.
  • Manage a patent portfolio for a manufacturer of oil drilling equipment, including measurement-while-drilling tools.
  • Represented a global welding equipment manufacturer in its U.S. patent prosecution matters, including arranging a demonstration of a virtual welding product at the U.S. patent office to gain allowance of eight pending applications. During the demonstration, patent examiners (60 present and 120 via conference) were able to observe and operate the virtual welding simulator.
  • Represented an equipment manufacturing company in patent litigation involving semiconductor processing tools.

Labor and Employment
  • Secured victory for a Fortune 500 company in the general building materials industryin a Fair Credit Reporting Act (FCRA) class action. An Ohio District Court judge granted our motion to dismiss, finding the plaintiff was an independent contractor, not an employee, and that the “for employment purposes” sections of the FCRA did not apply. The ruling is believed to be the first decision to grant a motion to dismiss an FCRA claim on the dual grounds that the plaintiff was an independent contractor (without the need for any discovery on the issue) and that the FCRA provisions at issue did not apply to independent contractors. 
  • Represented a Germany-based engineering firm in a multicount gender discrimination and retaliatory discharge case, obtaining summary judgment and defeating collateral claims. Plaintiff later abandoned appeal.
  • Represented an electronics maker in a class action with several hundred former employees who sought to recover lifetime retiree health insurance benefits under their last collective bargaining agreement before the time that the company was sold. We managed the case through numerous difficult discovery issues and ultimately obtained summary judgment as to the class claims. On remand, we successfully tried the case and received a judgment in favor of the defense. Later, the U.S. Court of Appeals for the Sixth Circuit affirmed the judgment.
Tax
  • Served as lead U.S. federal tax adviser for a welding supply company regarding foreign tax credit implications associated with restructuring its operations in Canada and Luxembourg.
  • Advised a U.S.-based manufacturer in connection with the structure of a multinational group based in Latin America. Advised on post-acquisition integration, as well as with respect to U.S. and non-U.S. tax considerations, elections, loss planning, subchapter C issues and international tax issues.
  • Advised a Fortune 100 company in connection with the U.S. tax issues associated with the acquisition of manufacturing operations in Belgium and the Netherlands.

Litigation
  • Served as lead counsel for a global manufacturer of advanced materials in a private multiparty, multimillion-dollar cost recovery action relating to regional groundwater contamination. The team was successful in obtaining a stay pending resolution with the EPA of a remedy on the grounds that any judicial decision may conflict with the negotiations and final resolution of the litigation with the EPA.
  • Defended a farming equipment manufacturer in a statewide class action alleging violations of the Texas Consumer Credit Code and seeking $1 billion in statutory penalties.
Data Privacy
  • Advised a major automotive manufacturer on the application of financial privacy laws to new technologies.
  • Represented clients in assessing guidelines on cloud computing risks, including indemnification and limits of liability.
  • Assisted a client with analyzing internal information governance requirements to mitigate cloud computing risks.

Key Contacts