Practice/Industry Group Overview
For every stage of the business cycle, Duane Morris can provide the legal services manufacturers need. From the client's interest in finding initial financing, securing a facility, protecting intellectual property and proprietary manufacturing processes, employment and immigration, negotiating contracts with suppliers and distributors, addressing domestic and international taxation issues, products liability defense, environmental law, mergers and acquisitions to possible reorganization, Duane Morris attorneys understand the complex and intertwined issues manufacturers encounter in today's challenging environment.
Duane Morris represents manufacturers in almost every industry, including aerospace and defense, automotive, chemicals and gases, electronics, semiconductor, pharmaceuticals, retail products, heavy machinery, telecommunications, and more. With 700 attorneys in offices in major markets throughout the United States, Duane Morris has the national footprint to serve manufacturers across the country. Through our London office and our relationship with a network of international law firms, Duane Morris also has the capabilities to assist manufacturers with their international needs.
- Acted as Special U.S. Gaming Regulatory Counsel to UBS AG in connection with a $1.3 billion syndicated loan to a gaming equipment manufacturer to fund an acquisition.
- Represented Joh. A. Benckiser, the 80-plus percent stockholder of cosmetics manufacturer Coty, Inc., in Coty’s $1 billion IPO.
- Represented Sancoa International Company and TubeDec, LLC, family owned affiliated companies that manufacture and supply products to Home & Personal Care customers in North America, in their $71 million sale to CCL Industries, a Canadian public company.
- Represented Popeyes Louisiana Kitchen, Inc. in connection with the purchase from Diversified Food and Seasonings Inc. (“Diversified”) for $43 million of the recipes and formulas for Popeyes’ core products and a long term supply agreement for Diversified to manufacture and supply these core products and certain other products to Popeyes.
- Closed on behalf of HPI Direct, Inc., a company specializing in the design, manufacture and distribution of uniforms and corporate apparel, the sale of substantially all of its assets to Superior Uniform Group, Inc. (NASDAQ: SGC), for aggregate consideration in excess of $32.5 million.
- Represented Nanotherapeutics, Inc. in closing a $28.5 million senior credit facility with White Oak Global Advisors, LLC as agent for the lenders. Nanotherapeutics will use the proceeds of the credit facility to complete the construction of 30-acre manufacturing facility located in Alachua, Florida which, under a contract with the Department of Defense, is intended to enable faster and more effective development of medical countermeasures designed to protect and treat military populations against chemical, biological, radiological and nuclear attacks and outbreaks of naturally occurring, emerging and genetically engineered infectious diseases.
- Represented private equity firm Clarion Capital Partners and its portfolio company Lenox Corporation in Lenox’s successful $22.2 million bid in the U.S. Bankruptcy Court for the District of Massachusetts to acquire, in a Chapter 363 sale, substantially all of the assets of Reed and Barton Corporation, a prominent American silversmith manufacturer.
- Represented National Securities Corporation in a private placement of approximately $22 million of Series D Preferred Stock of Solexel, Inc., a solar panel manufacturer.
- Represented Banco do Estado do Rio Grande do Sul, S.A. in closing a $2 million Secured Export Prepayment Loan Agreement with DHB Global, a Brazilian auto parts manufacturer, as borrower.
- Represented Calumet Armature & Electric, LLC, an Illinois-based provider of design, manufacturing, assembly, and repair services of electric motors for the industrial and mass transit markets, in the sale of all its membership interests to a wholly-owned subsidiary of Integrated Electrical Services, Inc. (NASDAQ: IESC).
- Representing Pharos Group Indonesia, a leading pharmaceutical company, in establishing a manufacturing entity engaging in pharmaceutical, cosmetics and functional food production in Vietnam.
- Performed due diligence on behalf of Middleby Corp., a global leader in the industry of foodservice equipment, for the acquisition of the Mexican subsidiary of Cozzini LLC, a manufacturer of food processing equipment with more than $30 million in annual sales.
- Represented MJSI, Inc., a plumbing repair supply manufacturer, in its acquisition by industry leader Danco Inc.
- Advised concerning multiple agreements with TIRO Industries, manufacturer for Graham Webb International. Issues included ownership of formulas, terms of exclusive rights to manufacture, minimum purchase requirements, QA issues, labeling requirements and related terms.
- Represented a private equity fund in the purchase of the assets of MSA, Inc, and the stock of FCL, Inc, related companies engaged in the manufacture and sale of aircraft windows.
- Advised Tata Motors on obtaining regulatory consents (type approvals) for the manufacture in the UK of electric vehicles.
- Represented R&D Circuits, a portfolio company of Guardian Capital Partners, in the acquisition of Altanova Corporation, a manufacturer and distributor of ATE circuit boards.
- Represented Penrith Corporation, a manufacturer of integrated ultrasound imaging systems, in its financing transactions and its disposition to Siemens Healthcare.
- Counsel to Fujirebio Diagnostics, Inc. in connection with its product development and manufacturing agreements with Becton Dickinson.
- Counsel to Fujirebio Diagnostics, Inc. in connection with its product development and manufacturing agreements with Abbott Laboratories.
- Represented Penion Group, LLC, an investment company focusing on small to mid-size business in the Boston area, in its acquisition of the assets of Lynn Manufacturing, Inc. and its affiliates.
- Advised Trade Oceans Holding on the disposal of its majority stake in Vietnam-listed soft-drink manufacturing company.
- Represented Guardian Capital Partners in its acquisition of majority interest in R&D Circuits, Inc., a New Jersey-based manufacturer of printed circuit boards, for an undisclosed sum.
- Represented hearing-aid distributor Widex Hearing Aid Co., Inc. in the sale of assets to its Danish manufacturer, Widex A/S, for an undisclosed cash sum plus the assumption of debt.
- Completed the sale of Crissair, Inc., a privately held maker of hydraulic, fuel and pneumatic system components for the aerospace industry, to Esco Technologies, a publicly traded industrial products manufacturer, in an all-stock deal.
- Represented a subsidiary of Safran, SA in its acquisition of a U.S. manufacturer of optical devices. Safran is a large French aerospace/defense company with more than 10 billion Euros in annual sales and 50,000 employees worldwide.
- Obtained confidential settlement on behalf of Johnson Matthey, Inc. an international designer and manufacturer of environmental controls, against British Petroleum (“BP”), in a contract dispute in federal court in California. The dispute involved over $5 million in damages stemming from the design and supply of a pollution control system for BP’s largest domestic refinery located in Indiana. The matter involved very technical issues of computerized modeling and combustion.
- O.S. Security LLC v. Alarm Lock Systems, Inc., et al.; Case No. 8:14-cv-00312 (C.D. Cal.) Obtained settlements client found favorable against electronic lock manufacturers.
- MemTech LLC v. Analog Device, Inc., et al.; Case No. 6:11-cv-00025 (E.D. Tex.) Obtained settlements client found favorable against micro-electro-mechanical accelerometer manufacturers.
- DRAM Memory Technologies LLC v. Hynix Semiconductor America, Inc., et al.; Case No. 8:11-cv-332 (C.D. Cal.) Obtained multi-million dollar license on behalf of client against dynamic RAM manufacturers.
- Won an appeal for Ford Motor Company in the Superior Court of Pennsylvania, affirming summary judgment in a product liability case in which the plaintiff contended that Ford was liable for its English subsidiary’s products under the “apparent manufacturer” doctrine and the “piercing the corporate veil” theory.
- Representing a leading manufacturer of orthopedic devices in the defense of a number of product liability cases involving metal-on-metal prosthetic hip implants. Wright Hip System Cases, JCCP No. 4710 (Los Angeles Superior Court).
- ACH Enters. 1 LLC v. Viking Yacht Co., 817 F. Supp. 2d 465, 466 (D.N.J. 2011); Cauble v. Viking Yacht Co., 10-cv-61892 (S.D. Fla. 2011). Defeated two putative class actions against a leading yacht manufacturer based on alleged product defects.
- Wilson-Vick v. Western Grinding, Inc. (San Mateo Superior Court, 2009-2010); Represented a manufacturer of precision metal parts for use in the medical, aerospace, defense and communication industries and the majority of its officers and directors in an action for fraud and breach of contract brought by one of the officers and directors of the closely held company. Following extended mediation, settled the case on terms the clients found favorable.
- Copley’s R.V. Center v. Textron Financial Corp., Case No. 09-14271-civ-Martinez/Lynch (S.D. Fla. 2010). Defended Textron Financial Corp. in a class action suit brought by recreational vehicle dealers asserting breach of contract, breach of implied covenant of good faith and fair dealing, and unjust enrichment claims arising from Textron’s charging of interest on floor-plan financing for the manufacture of recreational vehicles. Obtained judgment on the pleadings that the unambiguous language of the parties' agreement permitted Textron to charge interest on funds not yet advanced to recreational vehicle manufacturers.
- Barnes v. Ontario Drive and Gear Ltd., 2010 WL 311648 (D.Md. 2010) - Defended a large manufacturer of recreational vehicles against litigation brought by a distributor whose agreement was terminated for violating the parties’ contract, first by removing the matter to federal court. The federal court granted the manufacturer’s motion to dismiss the court case and to compel arbitration.
- Obtained a multimillion-dollar judgment against Prince, the artist, on behalf of a fragrance manufacturer for fraud in connection with the development of Prince’s fragrance 3121.
- CertainTeed Corp. v. Seattle Roof Brokers, No. 09-cv-00563 (RAJ) (W.D. Wash.) Obtained a summary judgment ruling in favor of a major manufacturer of building materials on its false advertising claims against an entity that billed itself as providing unbiased information about roofing products sold in Washington state. A federal court determined that the entity’s statements about the client’s roofing shingles were false and misleading in violation of the Lanham Act and the Washington Consumer Protection Act and permanently enjoined it from making such statements in the future.
- Obtained on behalf of Ranbaxy, Inc., manufacturer of a significant generic acne pharmaceutical, a complete dismissal of all claims in New Jersey state court because plaintiffs could not evade the U.S. Supreme Court’s Pliva Inc. v. Mensing ruling, which barred failure-to-warn claims against generic drug makers, and the Court’s recent Mutual Pharmaceutical Co. v. Bartlett ruling, which barred design defect claims against these companies.
- China Nat’l Bldg. Material Inv. Co., Ltd. v. BNK Int’l LLC, No. 09-CA-488-SS, 2009 U.S. Dist. LEXIS 113194 (W.D. Tex. Dec. 4, 2009) (Sparks, J.) - Obtained a $3.15 million judgment in the U.S. District Court for the Western District of Texas, Austin Division, confirming two arbitration awards entered by a Hong Kong arbitral tribunal in favor of a Chinese manufacturer.
- Roxane Laboratories, Inc. v. Novel Laboratories, Inc., et al., 2:15-cv-5618 (D.N.J. 2015) Representing defendant Gavis Pharmaceuticals, LLC in a patent infringement matter relating to formulation and manufacturing process for calcium acetate capsules.
- Acrox Technologies Co., Ltd. v. Best Buy Co., Inc., et al., 3:14-cv-4956 (N.D. Cal. 2014) Representing defendant Belkin International, Inc. in a patent infringement matter relating to a protector for portable electronic device and method for manufacturing the same.
- VStream Technologies LLC v. LG Electronics, Inc., et al., 6:14-cv-296 (E.D. Tex. 2014) Represented defendant ION America LLC in a patent infringement matter relating to the method and apparatus for diagonal processing of video data, the method and apparatus for video data compression, and the system, method and article of manufacture for decompressing digital camera sensor data.
- Inter Partes Review Nos. 2014-00781, 2014-00782, 2014-00799, 2014-00800, 2014-00802, 2014-00803, 2014-00805, 2014-00807, 2014-00808, 2014-00818, 2014-00819, 2014-00821, 2014-00827, 2014-00828, 2014-00829, 2014-00861 and 2014-00917. Representing Petitioner Taiwan Semiconductor Manufacturing Company, Ltd. in IPR of U.S. Patent Nos. 6,805,779, 6,806,652, 6,853,142, 7,147,759, 7,604,716, 7,808,184 and 7,811,421, concerning a two-stage sputtering technique in which a so-called strongly-ionized plasma is generated from a weakly-ionized plasma in a manner that avoids arcing.
- Wright Medical Technology, Inc. v. Arthrex, Inc., Civil Action No. 1:13-cv-00716 (D. Delaware). Represented Plaintiff manufacturer of orthopedic and surgical implants and products in trademark infringement suit concerning compression plates and compression screws used to treat midfoot regions.
- Elegant Moments, Inc. v. Elegant Moments Boutique LLC, 3:12-cv-1786 (MD Pennsylvania). Represented Plaintiff lingerie manufacturer and distributor in trademark infringement suit concerning a website name.
- Exclusive Supplements, Inc. v. Abdelgawad, et al., 2:12-cv-01652 (WD Pennsylvania). Represented Plaintiff manufacturer and distributor of nutritional supplements in trademark infringement suit concerning the marks “DEPLETE RAPID WEIGHT LOSS,” “COMPLETE MASS 600,” and “OPTIMUM HEALTH NUTRITION,” and corresponding cancellation actions before the USPTO Trademark Trial and Appeal Board.
- Kovatch Mobile Equipment Corp. v. Spartan Motors Chassis, Inc., et al., No. 11-cv-2465 (E.D. Pa.) Represented a manufacturer of customized specialty trucks and vehicles in action alleging infringement of its trademark by a competitor.
- Daniel Huang v. GC Technology, LLC d/b/a/ Phonesuit, Hali-Power Inc. and Case-Ari, LLC, d/b/a Case-Mate (C.D. Cal.) and Hali-Power, Inc. v. mStation Corporation, a/k/a mStation Inc. (N.D. N.Y.). Successfully enforced design patent rights for smartphone battery case manufacturer.
- Case-Ari, LLC, d/b/a Case-Mate v. mStation (N.D. Ga.). Successfully enforced design patent rights for smartphone battery case manufacturer.
- Obtained US $145 million settlement on behalf of Nikon in a patent infringement suit involving photolithography systems used in semiconductor manufacturing processes.
- Represented Kyocera Communications, a Japanese manufacturer of mobile phones, in a patent infringement suit brought in the Eastern District of Texas, Tyler Division, involving multi-band antenna technologies.
- Zoltek v. Lockheed Martin Corp. and United States, Case Nos. 96-166C (EJD) (Fed. Cl.) and 09-0096 (JOF) (N.D. Ga.); on appeal, Case No. 2009-5135 (Fed. Cir.) Represented Lockheed Martin Corp. in opposing an effort by Zoltek Corp. to substitute it as a defendant in a patent infringement action Zoltek had originally brought against the United States stemming from the U.S.’s alleged use of Zoltek’s patent in the manufacture of the F-22 fighter plane. Obtained a decision in an interlocutory appeal to the U.S. Court of Appeal for the Federal Circuit that reversed en banc a prior panel decision and a Court of Federal Claims decision that allowed Zoltek's claim against Lockheed. The Federal Circuit decision ruled that federal law protects contractors from infringement suits arising from work they perform for the government.
- Motorola, Inc. v. Amkor Technology, Inc., 958 A.2d 852 (Del. 2008). Counsel for semiconductor manufacturer in dispute concerning the interpretation of conflicting provisions in a patent license agreement. After two month bench trial, trial court found in favor of client manufacturer, resulting in client saving millions on patent royalty payments. The trial court’s ruling was affirmed by the Delaware Supreme Court.
- Aktieselskabet AF 21 v. Fame Jeans, Inc., 525 F.3d 8 (D.C. Cir. 2008). Represented a Canadian clothing manufacturer in an appeal to the U.S. Court of Appeals for the District of Columbia Circuit from the dismissal of a competing Danish clothing manufacturer action opposing our client’s registration of the trademark “Jack & Jones.” The D.C. Circuit determined that under Section 2(d) of the Lanham Act, an applicant who registered on the basis of intent to use has priority over a subsequent applicant that attempts to register a foreign mark that was in actual use before the filing of the intent-to-use application, where the foreign user did not attempt to register the mark in the United States within six months of actual use.
- CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 84 U.S.P.Q.2d 1737 (Fed. Cir. 2007), cert. denied, 2008 WL 206981 (Apr. 28, 2008). Obtained summary judgment of non-infringement for a major gaming equipment manufacturer in a patent infringement action seeking more than $150 million in damages, and successfully defended the judgment on appeal.
Employment, Labor, Benefits and Immigration
- Obtained on behalf of Fresenius USA Manufacturing Inc. a ruling from the National Labor Relations Board (NLRB) that it lawfully fired a warehouse worker after the man scribbled vulgar pro-union statements on union newsletters before a decertification election and then lied about it when questioned.
Business Reorganizations and Financial Restructuring
- Representing Sifco S.A., a Brazilian axle manufacturer, in its U.S. chapter 15 bankruptcy proceedings.