Technology in Manufacturing

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.

• Chambers USA
  • Intellectual Property ‒ Ohio (2011 to 2020)
  • Intellectual Property ‒ Georgia (2017 to 2020)
  • Intellectual Property ‒ Pennsylvania (2007 to 2020)
  • Intellectual Property: Litigation ‒ District of Columbia (2015 to 2019)
  • Intellectual Property: Patent Prosecution ‒ District of Columbia (2015 to 2019)
  • Intellectual Property: Trademark & Copyright ‒ New York (2014 to 2020)
• The Legal 500 United States
  • Intellectual Property – Copyright (2015 to 2020)
  • Intellectual Property – Patent Litigation: Full Coverage (2015 to 2020)
  • Intellectual Property – Patents: Prosecution (Including Re-Examination and Post-Grant Proceedings) (2015 to 2020)
  • Intellectual property – Trade Secrets (Litigation and Non-Contentious Matters) (2017 to 2020)
  • Intellectual property – Trademarks: Non-Contentious (Including Prosecution, Portfolio Management and Licensing) (2019, 2020)
• Daily Report Intellectual Property Litigation Department of the Year (2017)
• IAM Patent 1000 ‒ DC Metro Area (2015 to 2020); Georgia (2019, 2020); Illinois (2019, 2020); Pennsylvania (2015 to 2020); Washington (2015 to 2020)
• WTR 1000 – The World's Leading Trademark Professionals ‒ Firm and attorney rankings (2013 to 2019)
• U.S. News – Best Lawyers “Best Law Firms”
  • Copyright Law: National (2012 to 2020); Atlanta (2019, 2020); New York (2018 to 2020); Philadelphia (2014 to 2020)
  • Intellectual Property Law – Orlando (2011 to 2020)
  • Litigation – Intellectual Property: National (2012 to 2020); Chicago (2019, 2020); Cincinnati (2012 to 2020); Cleveland (2012 to 2020); Columbus (2017 to 2020); Houston (2018 to 2020); New York (2012 to 2020); Costa Mesa (2013 to 2020); Orlando (2012 to 2020); Philadelphia (2014 to 2020); Washington, D.C. (2017 to 2020)
  • Litigation – Patent: National (2014 to 2020); Chicago (2019, 2020); Cincinnati (2012 to 2020); Cleveland (2014 to 2020); Houston (2018, 2019); Philadelphia (2014 to 2020); Washington, D.C. (2014 to 2020)
  • Patent Law: National (2012 to 2020); Atlanta (2016 to 2020); Chicago (2020); Cincinnati (2012 to 2020); Philadelphia (2014 to 2020); Seattle (2017 to 2020); Washington, D.C. (2013 to 2020)
  • Trademark Law: National (2015 to 2020); Cleveland (2017 to 2020); New York (2017 to 2020); Philadelphia (2014 to 2020); Washington, D.C. (2017 to 2020)
• Recognized as one of the top law firms for client service, BakerHostetler was named to the 2020 BTI Client Service 30 for the sixth consecutive year.