Chris Wilson has been with FisherBroyles for four years and serves as head of the firm’s opinion committee.  Chris is a corporate and finance attorney with an active practice assisting clients with debt structurings, mergers and acquisitions, and general corporate needs.

FisherBroyles’ Co-Founding Partner Kevin Broyles stated, “Chris will bring tremendous energy and leadership to the managing partner position as we continue our growth in the Atlanta market.”  “I’m excited about the opportunity to continue building on the strong foundation of our Atlanta office,” said Wilson, “And I look forward to expanding our presence even more in the coming years.”

Lisa Carroll joined FisherBroyles last year after servicing as Vice President and General Counsel for BigMachines, Inc.  Lisa concentrates her practice in the area of intellectual property law and regularly counsels technology companies about how to enforce and maximize their IP portfolios both domestically and internationally.

Co-Founding Partner James Fisher said, “Since joining our partnership, Lisa has demonstrated her deep understanding of our innovative business model.  She is the ideal leader to help grow our presence in the Chicago marketplace.”

Michael Cone has only been with FisherBroyles since February 2012.  Michael concentrates his practice in the areas of administrative, customs, and international trade law and counsels clients on a wide array of regulatory compliance issues, with administrative expertise that includes matters falling under the various bodies that regulate the importation, marketing and sale of merchandise.

Broyles stated “Michael has shown excellent initiative in his practice area and in partnership matters.  We believe he will be a key part of our growth in New York”.

Kimberly Booher concentrates her legal practice on domestic and international corporate transactions, joint ventures and strategic alliances, and technology licensing.  She has been with FisherBroyles since January 2012.

Fisher stated “Kim made an immediate impact after joining FisherBroyles in Palo Alto.  Her understanding of our business vision has been key to an aggressive early expansion of the Palo Alto office”.

About FisherBroyles, LLP.  Founded in 2002, FisherBroyles is a full-service national law firm with approximately 70 partners in New York, Atlanta, Charlotte, Chicago, Dallas, Houston, Palo Alto, and Austin. FisherBroyles is the first national, cloud-based law firm that has integrated the concepts of “cloud computing” and “cloud commuting” to create unparalleled economy and efficiency in the practice of law. FisherBroyles offers cost-effective legal solutions to brand-name clients such as American Express, BB&T, and Porsche of North America, among others. FisherBroyles has been recognized as a Tier 1 Atlanta firm the last two years by Best Lawyers and U.S. News & World Report and as one of the top law firms in Atlanta by the Atlanta Business Chronicle.

• E: mmermall@fisherbroyles.com
• T: (312) 789-4664
• F: (312) 789-4390
• Chicago Office

Practice Areas:

• Real Estate

Bar Admissions:

• Illinois

Education:

• Washington University School of Law, J.D., Order of the Coif, 1986
• The University of Chicago,  M.A., 1983
•  Miami University, Oxford, Ohio, B.A., 1982

Large Law Firm Experience:

• Sidley & Austin (now Sidley Austin)
• Drinker Biddle & Reath LLP

Mr. Mermall concentrates his practice on real estate finance and has extensive experience in other aspects of real estate transactions, including acquisitions and dispositions, development and leasing of office, industrial, residential and retail properties.

Mr. Mermall’s practice is highlighted by work that includes representation of both lenders and borrowers in commercial real estate transactions, including highly structured finance transactions, loan workouts and deed in lieu of foreclosure arrangements, construction, term and bridge loan transactions, CMBS, permanent, mezzanine and participating loan transactions and other structured real estate finance transactions. He represents owners, users and lending institutions in all aspects of real estate matters. Additionally, Mr. Mermall has experience in the formation of real estate joint ventures, representing investors of preferred and pari passu equity and the formation of private real estate investment funds.

Previously, Mr. Mermall was General Counsel of Wrightwood Capital and Cohen Financial, where he oversaw their legal affairs, including all legal compliance, risk control and corporate governance matters. He was also responsible for managing the legal and closing functions associated with their investment activities.

Prior to joining Cohen Financial and Wrightwood Capital, Mr. Mermall served as the Assistant General Counsel of CMD Realty Investors, Inc., where he was responsible for negotiating and drafting documents relating to real estate development, leasing, acquisitions, financing and asset disposition.

After earning his master’s degree from The University of Chicago, Mr. Mermall graduated from the Washington University School of Law, where he was an editor of the Washington University Law Quarterly and elected to the Order of the Coif.

Representative Matters

• A U.S. subsidiary of a publicly traded international financial services company in the structuring, documenting and negotiating of a $165.3 million financing for the construction and equipping of a proton therapy treatment center in San Diego, California;

• An institutional lender in the negotiation and documentation of a deed in lieu of foreclosure transaction relating to a $51 million loan secured by a hotel facility;
• A privately held real estate firm and fund manager in a $129 million financing secured by a multistate portfolio of 14 industrial and office buildings;
• A national provider of real estate debt and equity capital in a $34.7 million financing for the acquisition and development of a 60 acre parcel into a multiphased office and industrial complex; and,
• A national real estate finance and investment company in a $22 million acquisition of a 350,000 square foot industrial building and the assumption of $11.5 million of existing debt.

Speaking Engagements

• February, 2013 – ACI’s 3rd Annual Planning, Building and Operating Successful Proton Therapy Centers Conference; Financing the Development of a Proton Therapy Center
• February, 2012 – ACI’s 2nd Annual Planning, Building and Operating Successful Proton Therapy Centers Conference; Financing the Development of a Proton Therapy Center
• July, 2009 – Real Estate Briefing
• January, 2009 – CLE Roundtable
• April, 2008 – 2008 Midwest Capital Markets Conference

The long-delayed arrival of spring has not stopped several major intellectual property developments, at least some of which will be relevant to all readers.  In this issue, we focus on:

• Copyrights on Digital Material … YouTube case
• Copyrights and Antitrust
• Patent Corner … Numerous developments in the life sciences area and opportunities for small entities
• Importance of the distinction between information security and privacy

Copyrights on Digital Material

The well publicized case involving alleged infringement by YouTube of copyrighted materials owned by Viacom took another turn last month when the Federal District Court for the Southern District of New York again decided in favor of You Tube in a move which raises the bar for copyright holders to establish contributory infringement by intermediaries. While the Second Circuit appellate court felt that Viacom may have established the requisite specific knowledge of infringement and directed the lower court to reconsider its earlier holding in favor of YouTube, the result was the same this time around as the lower court determined that YouTube had satisfied the requirements for protection under the Digital Millennium Copyright Act.

This case will undoubtedly be back in the appellate court and may well be resolved by the Supreme Court. In the meantime, based upon our reading of the two lower court and one appellate court decisions, we do not suggest any change in approach by anyone. Both courts have made clear that copyright holders should continue to be vigilant in identifying infringements and pursuing takedown notices. Both courts have also made clear that, at a minimum, anyone inviting public submissions to their website should ensure their procedural and substantive compliance with the law by designating agents for receipt of takedown notices, promptly complying (absent a counter-notice) and posting appropriate repeat offender policies and terms of use making clear that infringing material (and obscene, defamatory, racist or violent material) will not be tolerated.

While it is still not clear if the courts will require site monitoring to screen out infringing material, we strongly advise against discontinuation of any monitoring which is currently conducted.

Our Intellectual Property and Technology attorneys are able to discuss what you need to do with your website to facilitate compliance with applicable laws, including the DMCA.

Copyrights and Antitrust

In its widely followed opinion in the Kirtsaeng case, the Supreme Court applied the so-called ‘first sale’ doctrine to allow the free transferability of copyrighted materials by the initial owner. In this case, the issue was transferability of copyrighted textbooks originating with U.S. publishers and first sold outside the US, but then imported into the U.S. The Court concluded that the books were freely transferable, notwithstanding their copyright and associated license terms. Many believe, with significant justification, that this ruling facilitates transferability of ‘hard goods’ such as computers with significant embedded firmware or software. Those seeking to deal in such items should take heed, but note that that while the case probably does greatly reduce direct barriers to transfer, it does not necessarily address indirect barriers such as restrictive procurement standard setting or refusal to provide spare parts or maintenance for goods containing copyrighted material. We anticipate that new legislation and/or court cases will provide further guidance on these unanswered questions.

In the meantime, our trade regulation and technology lawyers will be happy to address the specific implications of the case for you.

Patent Corner: Life Sciences, Software and Micro-entities … Oh My!

Whither Gene Patents… ?

On April 15, the U.S. Supreme Court heard oral arguments in Association for Molecular Pathology v. Myriad Genetics, a case that has broad implications for the patentability of isolated genetic material.  The Court considered only one question:  Are human genes patentable?

Myriad Genetics holds patents that claim “isolated” DNA molecules that encode the human “BRCA1” and “BRCA2” genes.  Women who possess certain mutations of these genes have been found to have an enhanced risk of developing breast and ovarian cancer.   By leveraging their right to exclude others from making or using the sequences in their patent claims, Myriad Genetics has established itself as the sole provider of genetic testing for breast or ovarian cancers that are linked to the genes.  The issue before the Supreme Court is whether the isolated DNA molecules in Myriad’s patent claims constitute patentable subject matter. Arguments against treating them as patentable involve not only interpretation of the patent statute as written, but also public policy considerations concerning the impact of patents on the availability of these potentially life-saving technologies.

In oral arguments before the Supreme Court, some of the discussion focused on whether Myriad’s isolated DNA has a different function than the native DNA from which it is derived, for example suitability for genetic testing, which would distinguish it from a product of nature, which is not patentable.  The Court was also interested in the incentives for innovation that are provided by the patent system and asked how companies like Myriad would be rewarded for their investment in research that leads to beneficial discoveries, if they cannot obtain patent protection for those discoveries.  The U.S. government proposed permitting patent claims for “cDNA,” which is created in a laboratory with human intervention instead of in nature, rather than all isolated DNA.

The implications for this case are far reaching and will affect a large number of innovation programs in life sciences fields such as diagnostics, personalized medicine, and therapeutics, to name just a few.  A decision is expected in June.  We will follow up with an update in a future newsletter.

Patented Seeds?!!

Those in the agricultural field should take note of the very recent case of Bowman v. Monsanto Company, in which the issue before the Supreme Court was whether a farmer who buys patented seeds may reproduce them through planting and harvesting without the patent holder’s permission.   A unanimous Supreme Court held that the doctrine of patent exhaustion does not so permit a farmer to reproduce patented seeds without the patent holder’s permission.  Under the equitable doctrine of patent exhaustion the initial authorized sale of a patented item terminates all patent rights to that item; however the doctrine prevents the purchaser from making copies of that patented item.  Bowman was not a mere passive observer of the seed’s replicating process but a “maker of copies” through his repeated harvesting and replanting of seeds with the patented herbicide resistant genes.  The narrow decision written by Justice Kagan was limited to the issue before the Court and specifically disclaimed applicability to other self-replicating technologies in the biotechnology or software arts, leaving open future challenges in those technologies.  Our patent attorneys can discuss with you the potential implications of these developments for your IP program.

… Whither Software Patents?

In a confusing series of opinions, in a case known as CLS, a deadlocked Federal Circuit panel very recently refused to uphold the issuance of patents on certain software, and in so doing, created some uncertainty as to business method patents.  While the Supreme Court in its Bilski decision and Congress in the America Invents Act made clear that business method patents are not categorically prohibited, this decision is grounds for head scratching as to the extent to which they will be allowed. Perhaps the outcome of each case (and application) of this kind is more a function of the panel’s (or examiner’s) identity than anything else.

Those confronted with infringement claims involving such patents now have additional ammunition, while those seeking to pursue them must ensure that the applications are drafted more tightly to maximize the connection to a machine or other tangible item.  Hopefully, the Federal Circuit will provide some clarification in a new case in the near future.

Patent Applicants With “Micro Entity” Status Get a 75% Discount on Fees.

Inventors who work for small businesses (fewer than 500 employees) and otherwise qualify as a “Small Entity” have long enjoyed a 50% discount on the fees charged by the USPTO.  Under the recently enacted America Invents Act, patent applicants who qualify for Micro Entity status will get an additional 50% off – for a total discount of 75% on most fees.

Micro Entity status is available to two types of applicants:  (1) inventors with an adjusted gross income below a certain threshold (currently approximately $150,000, but adjusted each year), and (2) many persons connected with institutions of higher education.

To qualify as a Micro Entity based on gross income, (1) the applicant must qualify as a Small Entity,   and (2) every inventor must have been named as an inventor on fewer than four previously-filed U.S. patent applications (whether issued or not), and (3) the inventors have not assigned or granted a license to a person or party who does not also qualify as a Micro Entity.

To qualify as a Micro Entity based on the rule for educational institutions, each applicant can certify that either (1) he or she is employed by, and obtains the majority of his or her income from, an institution of higher education as defined by the Higher Education Act of 1965, OR (2) he or she has conveyed, or is legally obligated to convey, a license or other ownership interest in the application to an institution of higher education.Micro Entity status must be supported by filing and, in certain cases, updating, a Certification of Micro Entity Status.  Either the inventors or their patent attorney or agent can sign the Certification.

Information Security and Privacy

In order to comply with one’s obligations in information privacy and security, it is essential to properly distinguish them, as they involve very different considerations and legal obligations. Both are quite important, but depending on the context different approaches must be taken to facilitate compliance.

In the context of the Internet, privacy often refers to monitoring of one’s Internet activity, particularly web browsing, and sale or internal use of the resulting data. For example, a company may tailor a marketing “pitch” to consumers based upon their Internet click-through to the ads or sites of competitors or complementary product sellers – e.g. car company A will send solicitations (such as pop-up ads) to persons whom it knows have visited the site of car company B, as an indication that they are in the market for a vehicle. Search engine providers, website operators and others may compile and sell such data.  Even large mobile phone carriers are harvesting data on their customers’ smartphone uses and selling that data as anonymous data.  Such practice is not inherently unlawful or inappropriate (unless it involves tracking web usage of children), and may provide web users with an enhanced, more efficient experience. However, it must be clearly disclosed to users in a readily accessible and understandable privacy policy, reflecting the website’s specific practice to be used in each case, and frequently supported by user “opt-in” or affirmative authorization.

In the context of the Internet, information security pertains to prevention of fraud resulting from unauthorized access – usually through 3rd party ‘hacking’ – to an Internet user’s personal information. Such information can include SSN, driver’s license number, credit card number, health care information or items as basic as users’ names and physical or e-mail addresses. Companies often get into trouble with “one size fits all” privacy policies promising security, when they are not taking real steps to deliver it. However, even absent false declarations, it is increasingly likely that a security breach will lead to regulatory claims against the company involved.

These considerations dictate both technical steps to secure information and contractual steps to ensure that third party vendors commit to taking steps to the extent a company relies on their efforts, for example in hosting a transactional website. These considerations apply in both the mobile app and desktop computing arenas, but often involve different technical issues.

Your website privacy policy needs to reflect your actual and intended practices; not someone else’s!  Major problems can be caused when using someone else’s privacy policy, or a generic policy found on the Internet, which fails to reflect appropriate and actual practice.

Our privacy and technology attorneys can discuss with you your unique needs regarding both security and privacy obligations.

Contributors:  

Marty Robins
Direct:  (847) 277.2580
mrobins@fisherbroyles.com

Alan Wernick
Direct:  (847) 786.1005
awernick@fisherbroyles.com

Jill Jacobson
Direct: (408) 345.6635
jjacobson@fisherbroyles.com

José J. Aparicio
Direct: (650) 455.7830
japaricio@fisherbroyles.com

Founded in 2002, FisherBroyles, LLP is a full-service, cloud-based national law firm with attorneys across the country.  Conceived as the “Next Generation Law Firm™”, FisherBroyles eliminates unnecessary overhead that does not add value to clients and instead offers a more cost-effective solution to clients across all industries such as AGL Resources, American Express, BB&T, Porsche, and Suniva.   Visit our website at www.fisherbroyles.com to learn more about our firm’s unique approach and how we can best meet your needs.

This newsletter has been prepared for the general information of clients and friends of FisherBroyles.  It is not intended to provide legal advice for a specific situation or create an attorney-client relationship.  Under rules applicable to the professional conduct of attorneys in various jurisdictions, it may be considered advertising material.  The choice of a lawyer is an important decision and should not be based solely upon advertisements.

• T: (917) 518-3320
• E: lbriggs@fisherbroyles.com
• New York Office

Practice Areas:

• General Corporate
• International
• Tax
• Trusts and Estates

Bar Admissions:

• Connecticut
• Florida
• New York

Education:

• New York University School of Law, LL.M., Taxation, 1993
• Boston University School of Law, J.D., 1986
• Colby College, B.A., English Literature, 1982

In-House Firm Experience:

• Cybertrust Holdings, Inc. General Counsel and Secretary

Lincoln has extensive experience as corporate counsel advising senior management with respect to mergers and acquisitions, international transactions, financing and securities, SEC compliance, intellectual property development, licensing and protection, e-commerce issues, risk management, corporate governance, and executive compensation.  He also has sophisticated tax experience representing individuals, corporations, partnerships, limited liability companies, trusts and estates, and foundations in all aspects of income, estate, gift, and generation-skipping transfer taxation.  He has broad knowledge of worldwide citizenship, residence, domicile, entity, and investment options available to high net worth individuals, families, and entities.

Lincoln also has international in-house experience as General Counsel and Secretary of the entity which in 2004 became Cybertrust Holdings, Inc., at that time the largest private provider of information security products and services in the world with offices and data centers in the US, UK, Ireland, Germany, Belgium, Luxemburg, Australia and Japan and annual revenues approaching $200 million.

In January 2003, Lincoln became outside counsel when One Equity Partners, the private equity group of Bank One, acquired Betrusted.  Between then and November 2004, Lincoln managed investments by OEP of almost $200 million in connection with 12 separate acquisitions, and revenues grew from approximately $10 million to over $100 million annually.  In December 2003, Lincoln joined the company full time as General Counsel and Secretary reporting directly to the CEO as a member of the global management team.

In November 2004, Betrusted merged with TruSecure to form Cybertrust, and while virtually all of the legacy management team from Betrusted was replaced, Lincoln was made General Counsel of the combined entity.  As Cybertrust’s chief lawyer, he supervised six in-house counsels in the US, UK, Belgium, Germany and Australia and outside counsel worldwide.  He was in charge of the post-merger integration process as well as the effort to comply with Sarbanes-Oxley.  As corporate Secretary, he was involved in determining the strategic direction of the company and was responsible for structuring and negotiating numerous acquisitions as well as the post-closing business integrations

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PEACHTREE CITY, GA – The partners of FisherBroyles, LLP assembled together for the firm’s annual partner retreat April 25-27 at the Wyndham Peachtree Conference Center. During the retreat, co-managing partners James M. Fisher II and Kevin E. Broyles hosted an award dinner to bestow the following honors and recognitions:

• T. J. DoVale, National Partner of the Year

• Deborah L. Fletcher, Charlotte Partner of the Year

• Lisa A. Carroll, Chicago Partner of the Year

• Michael T. Cone, New York Partner of the Year

• Kimberly D. Booher, Palo Alto Partner of the Year

• Julia L. Stommes, Texas Partner of the Year

Partners used the retreat to participate in numerous business and strategy sessions focused on the firm’s continued growth and expansion, together with seminars designed to facilitate discussions on best practices within each practice group. Additionally, the retreat included social and recreational activities such as a group hike around Lake Peachtree, lounging by the swimming pool, and a morning Fun Run.

About FisherBroyles, LLP. Founded in 2002, FisherBroyles is a full-service national law firm with approximately 85 partners in Atlanta, Austin, Charlotte, Chicago, Dallas, Houston, New York City and Palo Alto. FisherBroyles is the first national, full-service, cloud-based law firm that has integrated the concepts of “cloud computing” and “cloud commuting” to create unparalleled economy and efficiency in the practice of law. FisherBroyles offers cost-effective legal solutions to businesses of all sizes, including brand-name clients such as American Express®, BB&T®, Suniva® and Porsche®, among others. FisherBroyles has been recognized repeatedly by Best Lawyers, U.S. News & World Report, and the Atlanta Business Chronicle as a top-tier law firm.

© 2013 FisherBroyles, LLP. These materials have been prepared for informational purposes only and are not legal advice. This information is not intended to create an attorney-client or similar relationship. Please do not send us confidential information. Whether you need legal services and which lawyer you select are important decisions that should not be based on these materials alone. 

• T:  (214) 210-2929
• F:  (214) 224-0198
• E:  rgrant@fisherbroyles.com
• vCard
• Dallas Office 

Practice Areas:

• Chapter 11 Bankruptcy & Restructuring
• Commercial Transactions
• General Corporate

Bar Admissions:

• Texas
• U.S. Court of Appeals, 5^th Circuit
• U.S. Court of Appeals, 9^th Circuit
• U.S. Supreme Court
• U.S. District and Bankruptcy Courts – Northern, Eastern, Western, Southern Districts, TX

Education:

• University of Houston Law Center - J.D., 1991
• University of Texas, Austin - B.B.S., Finance, 1988

Large Law Firm Experience:

• Sheinfeld, Maley & Kay, P.C.

Corporate Experience:

• AirStream Data Corporation, Wireless PtP Communication - General Counsel 2001-2004

 Rating:

• AV® Preeminent™ by Martindale Hubbell®

Mr. Grant concentrates his practice on Chapter 11 bankruptcy, business restructurings and recoveries, official unsecured creditor committee representations, secured lender representation, 363 asset sales/purchases, mergers and acquisitions and other processes benefited by the United States Bankruptcy Code.  Mr. Grant spent almost a decade at the boutique Chapter 11 bankruptcy firm Sheinfeld, Maley & Kay, P.C., known for representing Continental Airlines, Dow Corning Corporation, CompuAdd Corporation, and the Zale Credit Corporation committee.  Mr. Grant developed his bankruptcy practice and trained under Myron Sheinfeld, co-editor of Collier on Bankruptcy and co-author of Collier on Bankruptcy Taxation, and a member of the Collier Editorial Board. Mr. Grant also practiced at Sheinfeld, Maley & Kay with the Honorable Barbara J. Houser, Chief Judge, United States Bankruptcy Court, Northern District of Texas from 1991-2000 (see publications below). Mr. Grant has continued to develop his Chapter 11 bankruptcy practice, served as outsourced general counsel, and formed Roberts & Grant, P.C. with the late Honorable T. Glover Roberts (former United States Bankruptcy Judge).

His 22+ years of transactional, restructuring and acquisition experience covers the gamut of business transactions and industries including Construction, Oil & Gas, Securities, Hospitality (Hotels), Medical Facilities Acquisition, Acquisition/Divestitures, Real Estate, Aerospace/Aviation, Pharmaceutical Technology, Intellectual Property, International Business, Joint Ventures/Strategic Alliances, and Mergers and Acquisitions.  Mr. Grant has represented numerous debtors, creditor committees, secured and unsecured creditors, trustees, equity holders, and strategic asset purchasers.

A 1991 graduate of the University of Houston Law Center, Mr. Grant served as Research Editor of the University of Houston Law Review. During law school, Mr. Grant also served as an Intern to the Honorable William Greendyke in 1990-1991. He received a B. B. A., Finance, degree from the University of Texas in 1988.

Publications

Co-Author with Honorable Barbara J. Houser, United States Bankruptcy Judge, of the following articles:

• Co-Author | “Significant Fifth Circuit Bankruptcy Decisions During 1999,” Norton Bankruptcy Law Advisor (March 2000)
• Co-Author | “Significant Fifth Circuit Bankruptcy Decisions During 1998,” Norton Bankruptcy Law Advisor (March 1999)
• Co-Author | “Significant Fifth Circuit Bankruptcy Decisions During 1997,” Norton Bankruptcy Law Advisor (March 1998)
• Co-Author | “Significant Fifth Circuit Bankruptcy Decisions During 1996,” Norton Bankruptcy Law Advisor (March 1997)
• Co-Author | “Recent Developments in Commercial and Consumer Cases,” 22nd Annual Southeastern Bankruptcy Law Institute Seminar (April 3-5, 1997)
• Co-Author | “Significant Fifth Circuit Bankruptcy Decisions During 1995,” Bankruptcy Law Advisor (March 1996)

• T:  (404) 513-7511
• E:  tgiles@fisherbroyles.com
• Atlanta Office

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