Litigation Management Accomplishments*
Improved Litigation Management Processes for Large Insurance Carrier
CorpLaw was engaged by one of the world’s largest property and casualty insurance carriers to review and improve the overall methods used by this company to handle its entire United States litigation portfolio. We were hired to review the overall methods by which its claims function selected, managed, and used outside legal services, including the management and conduct of litigation. CorpLaw interviewed its outside counsel, claims personnel, and senior management. We also reviewed sample cases and every policy, procedure, and method which touched or affected its extensive U.S. litigation.
We provided detailed, actionable steps to improve their litigation process. The recommendations were designed to lower costs, improve litigation results, and enhance and increase the information upon which management decisions were based. We met the budget and time deadlines, completing this complex project in just nine weeks. While this company was adequately handling its litigation, our 58 page, detailed report contained a full range of numerous opportunities to improve their litigation handling methods and to become best in class.
Created New Legal Fees Management Policy
This policy required that legal expenses be budgeted at the beginning of the lawsuit and that outside counsel report all incurred expenses (i) by category and (ii) in comparison to the budget. As a result, the company and outside counsel could then see how the incurred fees compared to the lawsuit budget. This lowered the company’s fees; counsel could now review their budget performance, control outside expenses better, and understand the importance of meeting budget expectations.
Multi-Jurisdiction Lawsuits
Managed related lawsuits against parties in New Jersey, Phoenix, and Chicago, in federal and state court. After the client’s offensive claims for misappropriation of IP and breach of contract were filed in Illinois, one of the opponents filed antitrust, tortious interference and libel offensive claims in Arizona against us. Handled the efforts of private counsel and insurance counsel in 2 cities. Developed a Litigation Plan including discovery strategy, reviewing and revising motions, attending key hearings and created a settlement strategy. One of the parties filed bankruptcy and we became a creditor for two separate bankruptcy claims. In bankruptcy, we achieved a 100 cents on the dollar settlement of both bankruptcy claims -and a permanent injunction- ending the litigation. We appropriately publicized our victory to deter future similar activity.
Offensive Patent Litigation
Filed three patent infringement lawsuits in multiple U.S. federal courts against our top three competitors who accounted for 90% of the sales of our patented product. Pursued litigation including an interlocutory (interim) appeal. Participated in development of the Litigation Plan, discovery, motion practice, and settlement meetings. Sued German company successfully in related matter.
Co-authored U.S. Supreme Court Appellant’s Brief
Brought federal suit against two key competitors’ flagship products to enforce the patent of Wilson Sporting Goods’ highly profitable ULTRA® golf ball. Aggressively pursued pre-trial discovery and brought the case to trial in thirteen months. Obtained jury verdict for maximum damages, which included lost profits and opportunity for triple damages. Ten days later, we obtained a Permanent Injunction against both competitors. The matter was appealed to the Appeals Court (the CAFC) and to the United States Supreme Court. Co-authored the brief to the United States Supreme Court.
Defended Major Tennis Racquet Patent Suit
Defended federal patent suit against primary competitor. Suit asked for over $100 million in damages. Catalogued and measured the characteristics of the allegedly infringing products. Worked with management to respond to the suit. Suit was settled with minimal possible damage.
Worldwide Trade Dress Infringement Enforcement
Identified approximately 60 worldwide trade dress (product look and feel) infringers for a key product. Attended industry trade convention and gathered samples of each infringing product and information on each infringer. Catalogued the infringers and systematically pursued each infringer. Achieved 100 percent compliance over 6 months.
Successfully Avoided Patent Infringement Claim
We received a cease and desist claim relating the dampening characteristics of inserts in golf club cavities. We studied the patent claims and measured the effect of the dampening device on our products. Met with the patent owner and demonstrated that the frequency of vibration with the insert was not related to within the claims of the patent. The patent owner agreed and the cease and desist demand was withdrawn. There were no negative consequences to our company.
Defended Against Patent Suit for Entire Product Line
The entire industry was sued for a particular use of a surlyn polymer in golf ball covers. We saved expenses by delaying our suit until a prior defensive suit was tried. When the competing product was found to be infringing, we asserted defenses that our product was not within the patent claims. We minimized our damages and successfully settled the case for minimal damages.
Defended Against Patent Suit
Investigated prior art defenses to the use of colorant in the polymers in golf ball covers. By understanding and asserting these defenses, we were able to drastically reduce our exposure.
Took Golf Glove Patent Suit to Trial
A golf glove patent included prior art designs, but the patent owner alleged the combination was novel and patentable. We tried to settle the case, but were unable to come to terms. The case went to trial. We mounted the best possible trial defense using advisable litigation cost management techniques.
IRS Audit Adverse Determination Reversed
IRS levied employment tax underpayment fine of $600,000 for alleged improper handling of Independent Contractors. Became involved late in process, studied recent pronouncements of the IRS and compared our facts to IRS guidelines regarding independent contractor factors. Persuaded IRS to reverse its position IN FULL- no payment of any kind required.
Race Discrimination Suit
Defused dangerous, racially-motivated personnel problem at Tennessee factory with aggressive management intervention and pre-trial settlement management. Tactical settlement, at minimal cost, eliminated risk of significant, adverse outcome. Addressed discrimination allegations thereafter.
Enforced Covenant Not To Compete
Successfully enforced the company’s Covenant Not to Compete and Confidentiality Agreement against a senior departing manager and a major competitor (Titleist Company). A temporary restraining order (TRO) was obtained in 8 days, preventing the employee’s move to Titleist absent compliance with our Agreement. A Permanent Injunction and Judgment were issued one month later. We prevented significant losses and transfer of critical golf ball technology trade secrets.
Successfully Defended Against Dealer Product and Sales Misrepresentation Claim
Defended against sales and product misrepresentation claims by customer under the Texas Uniform Deceptive Trade Practices Act. Successfully brought other liable parties to table, reducing client’s share of liability. Participated in creating Mediation strategy including witness preparation and case presentation.
Prosecuted Europe-wide Patent Infringement Cases
As exclusive licensee with the right to sue, brought lawsuits against all European and worldwide infringers of the Profile® tennis racquet patent. Was 100% successful and achieved Permanent Injunctions against all infringers. Worked with European counsel to manage all steps of the litigation. Reviewed and revised European court filings.
Settled Baseball Glove Patent Suit
Investigated prior art defenses by talking to retired Major League Baseball players including Jeff Torborg and Hall of Famer Al Kaline. Used these prior art references to reduce the settlement cost of this suit.
Defended Against Putter Insert Patent
After receiving a cease and desist letter from a large competitor, worked with the club designers to hastily design around this patent. We successfully resolved the case without any cost to us.
Trade Convention Cease and Desist
We received a cease and desist for a trade dress infringement during a trade show. We immediately acquired a product sample. With aggressive negotiation, we asserted there were not enough similar components to amount to theft of trade dress. The other party relented in their claims and no cost was incurred.
200 Workers’ Compensation Claims Defended
Managed the administration and settlement of a group of 200 factory toxic inhalation cases. Needed to use the same defenses and legal theory for all claims so that inconsistent defense did not create opportunities for other claimants. Ranked the claims according to risk and successfully minimized the most damaging claims; settled the nuisance claims.
Worldwide trademark and counterfeit goods infringements issues
Worked with local distributors, manufacturers, subsidiaries, agents, attorneys, and national governments to halt infringing activities in Europe, Asia, Japan, South America, Eastern Europe, and Asia Pacific region in numerous counterfeit and gray market importation cases.
Managed Litigation of Patent Infringement for ULTRA® Golf Ball Patent
Sued the number 2 and 5 marketplace competitors for infringement of a groundbreaking golf ball dimple patent. Selected fast-moving federal docket to move case to trial in 13 months. Jury granted verdict to us and found willful infringement, allowing us to ask for triple monetary damages and attorneys fees. For this high profit margin product and in light of our market share, this was a significant marketplace victory for us. Aggressive case management resulted in expedited permanent injunction against key competitors. Later in process, co-authored United States Supreme Court brief.
Created Litigation Database
Created nationwide litigation database. Facilitated board and senior level decision-making on cases which impacted the policy-making of the bank. Advised bank board on nationwide litigation matters.
Defended Temporary Restraining Order (TRO)
A TRO was brought against the company which sought to stop sales of our product in 10 days. In this emergency situation, investigated sales of the product and analyzed legal claims of the claimant- the Adidas Company. Negotiated a mutually agreeable settlement which avoided interruption of product sales.
Defended US Executives Against Taiwan Criminal Copying Charges
The Taiwan government sued our executives in an apparently politically motivated criminal case of patent copying (infringement). The case prevented us from doing business in this country which manufactured much of our product. Defended these executives and was closely involved in this critical case, at all stages. Created strategy where we tied the criminal case to the resolution of a separate U.S. civil patent infringement case against a leading Taiwanese industry vendor. Obtained dismissal of the case; there were no negative results.
Negotiated Patent License Successfully to Achieve Business Objectives
Managed defense of patent cease and desist demand from competitor. Client had an opportune time to obtain a license to beat the competitor with its own technology. We negotiated the license in rapid back-to-back negotiations in New York City and returned with the necessary license to allow the client to achieve its business objectives.
Toxic Groundwater Claim by Landlord Deflected
Landlord sought reimbursement from client (the current factory operator) for toxic releases caused by predecessor factory operator. My prior lease renegotiations successfully prevented Landlord from filing a contract-based reimbursement claim. Positioned investigative findings by State EPA to persuade State not to bring enforcement action. Used groundwater data to create contamination pathway theory and convinced prior parent company that its subsidiary was responsible for the contamination. Forced prior parent to pay majority share for clean-up and leveraged contract and statutory defenses to persuade Landlord to pay 10%. All these actions significantly minimized the client’s costs.
Business Failure Litigation; Use of Mediation
Trademark licensee sued client licensor in federal court alleging the licensor misrepresented the ability of the licensee to succeed with the trademark license. The licensee’s business failed. Aggressively and thoroughly defended allegations. Created overall defense strategy to prevail in case and to prevent future similar claims. Met with a potentially adverse witness and secured his allegiance to our side, thereby significantly strengthening our case. Attended key depositions, developed a cost-efficient discovery strategy, co-authored motions, and found an economics expert to fight their business failure causation theory. Case was mediated and settled to our advantage. Result maintained the integrity of the client’s license policies.
Superfund (Environmental) Cost Recovery Action
In federal lawsuit, a company sought multimillion dollar recovery against our client and 25 other (PRP) parties for alleged past environmental law violations. Simultaneously, the Environmental Protection Agency (EPA) brought a civil enforcement action against us for the same alleged violations. We fought this suit on multiple fronts. We entered into a Joint Defense Agreement with other potentially liable parties in the EPA action. We searched for, and found, additional responsible parties and joined them in the lawsuit. This strategy distributed the costs among a greater number of companies. This effort was successful and minimized our overall settlement costs. Managed our group defense participation involvement carefully, resulting in 50% lower costs than other group participants.
* All matters involve case management, not trial representation.
