Tech Bankruptcy
October 28, 2006
Draft Interim Rules on BAPCPA - Consumer Privacy Ombudsman
First published August 10, 2005
The Draft Interim Business Rules on BAPCPA include a new Rule 6004(g), governing the sale or lease of personally identifiable information. The rule provides that a motion seeking to sell or lease personally identifiable information in a manner that does not conform with the relevant privacy policy (a non-conforming sale) shall include a request for an order instructing the U.S. Trustee to appoint a consumer privacy ombudsman. This will be treated as a contested proceeding.
The CPO will have to file a certificate with the Court disclosing his or her connections with the debtor, creditors, other professionals and the U.S. Trustee's office. ¶ 3:48 PM 0 comments
The Draft Interim Business Rules on BAPCPA include a new Rule 6004(g), governing the sale or lease of personally identifiable information. The rule provides that a motion seeking to sell or lease personally identifiable information in a manner that does not conform with the relevant privacy policy (a non-conforming sale) shall include a request for an order instructing the U.S. Trustee to appoint a consumer privacy ombudsman. This will be treated as a contested proceeding.
The CPO will have to file a certificate with the Court disclosing his or her connections with the debtor, creditors, other professionals and the U.S. Trustee's office. ¶ 3:48 PM 0 comments
Patent license assumption allowed
First published June 27, 2005
In In re Quantegy, Inc., Judge Williams, Jr. held that the debtor could assume its patent licenses with Sony Corporation because the licenses explicitly allowed assignment to a business successor. Thus, taking the assignment language into account, applicable law did not prohibit assignment of the licenses and the debtor could assume. Faced with the concept raised in Sunterra that the contractual consent required is a consent to assumption or free assignment, Judge Williams declined to follow Sunterra. Good for Judge Williams. The Westlaw citation is 2005 WL 1389078 (March 23, 2005). ¶ 3:46 PM 0 comments
In In re Quantegy, Inc., Judge Williams, Jr. held that the debtor could assume its patent licenses with Sony Corporation because the licenses explicitly allowed assignment to a business successor. Thus, taking the assignment language into account, applicable law did not prohibit assignment of the licenses and the debtor could assume. Faced with the concept raised in Sunterra that the contractual consent required is a consent to assumption or free assignment, Judge Williams declined to follow Sunterra. Good for Judge Williams. The Westlaw citation is 2005 WL 1389078 (March 23, 2005). ¶ 3:46 PM 0 comments
Discharging Post-petition License Obligations
First published February 13, 2005
Lots of chapter 11 plans purport to discharge all pre-confirmation claims. Can these provisions discharge a post-petition, pre-confirmation claim incurred as a result of a post-petition IP license entered into in the ordinary course of business?
In Monster Content, LLC v. Homes.com, 2005 WL 43466, the US District Court for the Northern District of California said no - at least not without formal notice of the administrative claims bar date and chapter 11 plan. When Homes.com, a chapter 11 debtor, entered into and breached a post-confirmation data license with Monster Content, it had to provide formal notice of the administrative bar date before using the chapter 11 plan process to discharge the debt. ¶ 3:44 PM 0 comments
Lots of chapter 11 plans purport to discharge all pre-confirmation claims. Can these provisions discharge a post-petition, pre-confirmation claim incurred as a result of a post-petition IP license entered into in the ordinary course of business?
In Monster Content, LLC v. Homes.com, 2005 WL 43466, the US District Court for the Northern District of California said no - at least not without formal notice of the administrative claims bar date and chapter 11 plan. When Homes.com, a chapter 11 debtor, entered into and breached a post-confirmation data license with Monster Content, it had to provide formal notice of the administrative bar date before using the chapter 11 plan process to discharge the debt. ¶ 3:44 PM 0 comments
Is Everex Dead?
First published December 22, 2004
Its been a while since I have posted anything. Sorry about that. Turns out the Westlaw searches I set up to monitor the subject all died a couple of months ago. But I am getting back on track now.
Pretty much everyone who might read this blog knows about the Everex case. Its a 9th Circuit decision that limits a debtor's ability to assign an interest in a patent license due to Federal common law restricting patent license assignability.
Superbrace, Inc. v. Tidwell, 21 Cal. Reporter 3d 404 (Nov. 23, 2004) might just change all that. Relying on a 1957 California Supreme Court decision, the Superbrace decision states that under California state law, patent licenses are assignable, and it's this state law, not the Federal law doctrine espoused by Everex, that controls patent license assignment. The Superbrace decision analyzes Everex at great length and, in the end, disagrees with its results.
Could we have a regime where California state courts hold that patent licenses are assignable under state law and the Federal courts hold they are non-assignable under Federal law? How do you possibly resolve the conflict without taking the matter to the Supreme Court? I don't have the answers. ¶ 3:42 PM 0 comments
Its been a while since I have posted anything. Sorry about that. Turns out the Westlaw searches I set up to monitor the subject all died a couple of months ago. But I am getting back on track now.
Pretty much everyone who might read this blog knows about the Everex case. Its a 9th Circuit decision that limits a debtor's ability to assign an interest in a patent license due to Federal common law restricting patent license assignability.
Superbrace, Inc. v. Tidwell, 21 Cal. Reporter 3d 404 (Nov. 23, 2004) might just change all that. Relying on a 1957 California Supreme Court decision, the Superbrace decision states that under California state law, patent licenses are assignable, and it's this state law, not the Federal law doctrine espoused by Everex, that controls patent license assignment. The Superbrace decision analyzes Everex at great length and, in the end, disagrees with its results.
Could we have a regime where California state courts hold that patent licenses are assignable under state law and the Federal courts hold they are non-assignable under Federal law? How do you possibly resolve the conflict without taking the matter to the Supreme Court? I don't have the answers. ¶ 3:42 PM 0 comments
Must patent counsel be paid in a chapter 11 case?
First published October 14, 2004
Can patent counsel assert a state law charging lien against a patent?
In the Engage, Inc. chapter 11 case, pre-petition patent counsel was owed fees for its prosecution of patents. In an attempt to get paid in full, it claimed that it had a charging lien under a Massachusetts chargin lien statute.
Charging liens are state law liens attorneys can assert against the proceeds of a litigation case. The Court, unfortunately for patent counsel, didn't bite. First, the Court held that the appropriate law was Virginia law. This is because patent prosecution cases are before the US Patent & Trademark Office, located in Virginia. Second, the Court held the Virginia charging lien was too narrow to allow a lien for patent prosecution (in dicta, the Court held the Mass. charging lien suffered the same problem). ¶ 3:40 PM 0 comments
Can patent counsel assert a state law charging lien against a patent?
In the Engage, Inc. chapter 11 case, pre-petition patent counsel was owed fees for its prosecution of patents. In an attempt to get paid in full, it claimed that it had a charging lien under a Massachusetts chargin lien statute.
Charging liens are state law liens attorneys can assert against the proceeds of a litigation case. The Court, unfortunately for patent counsel, didn't bite. First, the Court held that the appropriate law was Virginia law. This is because patent prosecution cases are before the US Patent & Trademark Office, located in Virginia. Second, the Court held the Virginia charging lien was too narrow to allow a lien for patent prosecution (in dicta, the Court held the Mass. charging lien suffered the same problem). ¶ 3:40 PM 0 comments
New Proposed Rules will affect electronic noticing and service
First published September 20, 2004
The Judicial Conference has circulated a couple of new proposed Rules which will affect electronic service and notice of bankruptcy pleadings. In summary:
Rule 9036: Current Rule 9036 allows electronic service of notices, but requires that the receipient be able to confirm receipt. The amended rule will provide that the notice is received on transmission, thus expanding the ability to provide notice by e-mail.
Rule 2002: A new 2002(g)(4) allows "notice providers" and other entities to agree on a method of providing notices required by Rule 2002, notwithstanding anything else in Rule 2002(g) to the contrary. A new Rule 9001(9) defines a notice provider as any entity authorized by the AO of the US Courts to give notices to creditors. This would allow notice by e-mail, or possibly even by posting on an on-line database.
Comments on the proposed amendments are due February 15, 2005. In addition, anyone wishing to comment orally may do so by requesting, at least 30 days before, the two scheduled hearings: February 3, 2005, in Washington, D.C., and February 7, 2005, in San Francisco. Those wishing to testify should contact the secretary at least 30 days before the hearing. ¶ 3:37 PM 0 comments
The Judicial Conference has circulated a couple of new proposed Rules which will affect electronic service and notice of bankruptcy pleadings. In summary:
Rule 9036: Current Rule 9036 allows electronic service of notices, but requires that the receipient be able to confirm receipt. The amended rule will provide that the notice is received on transmission, thus expanding the ability to provide notice by e-mail.
Rule 2002: A new 2002(g)(4) allows "notice providers" and other entities to agree on a method of providing notices required by Rule 2002, notwithstanding anything else in Rule 2002(g) to the contrary. A new Rule 9001(9) defines a notice provider as any entity authorized by the AO of the US Courts to give notices to creditors. This would allow notice by e-mail, or possibly even by posting on an on-line database.
Comments on the proposed amendments are due February 15, 2005. In addition, anyone wishing to comment orally may do so by requesting, at least 30 days before, the two scheduled hearings: February 3, 2005, in Washington, D.C., and February 7, 2005, in San Francisco. Those wishing to testify should contact the secretary at least 30 days before the hearing. ¶ 3:37 PM 0 comments
An Article on Bankruptcy Code 365(n)
First published September 8, 2004
The Andrews Bankruptcy Litigation Reporter just published an article I wrote called HERE TODAY AND GONE TOMORROW: SECTION 365 AND THE UNFORTUNATE INTELLECTUAL PROPERTY LICENSEE. ¶ 3:35 PM 0 comments
The Andrews Bankruptcy Litigation Reporter just published an article I wrote called HERE TODAY AND GONE TOMORROW: SECTION 365 AND THE UNFORTUNATE INTELLECTUAL PROPERTY LICENSEE. ¶ 3:35 PM 0 comments
Creating Electronic Briefs
First published August 19, 2004
From Brian Peterson's West Virginia Legal Weblog. Just the thing for new ECF users. ¶ 3:33 PM 0 comments
From Brian Peterson's West Virginia Legal Weblog. Just the thing for new ECF users. ¶ 3:33 PM 0 comments
Using a chapter 11 plan to circumvent the Patent Act
First published August 18, 2004.
The U.S. District Court for the N. District of California recently held that a chapter 11 plan can separate a patent from the right to sue for infringement of the patent. Morrow v. Microsoft Corporation, 2004 WL 1781010 (Aug. 10, 2004). The debtor's chapter 11 plan had established three liquidating trusts. One received the patent and another the right to bring infringement claims. When one trust sued Microsoft for patent infringment, Microsoft claimed the trustee (Morrow) lacked standing. Despite circuit law that only the title or equitable holder of the patent can bring an infringement claim, the court held the trustee had standing under the terms of the confirmed plan and general trust principles. ¶ 3:28 PM 0 comments
The U.S. District Court for the N. District of California recently held that a chapter 11 plan can separate a patent from the right to sue for infringement of the patent. Morrow v. Microsoft Corporation, 2004 WL 1781010 (Aug. 10, 2004). The debtor's chapter 11 plan had established three liquidating trusts. One received the patent and another the right to bring infringement claims. When one trust sued Microsoft for patent infringment, Microsoft claimed the trustee (Morrow) lacked standing. Despite circuit law that only the title or equitable holder of the patent can bring an infringement claim, the court held the trustee had standing under the terms of the confirmed plan and general trust principles. ¶ 3:28 PM 0 comments
How to serve a plan without killing trees
First posted August 16, 2004.
Michael Baum of Schafer & Weiner has a great article in the most recent ABI Journal about how his firm used the Internet to distribute a plan and disclosure statement in the Polar Maintenance chapter 11 case.
They obtained a court order allowing them to post the documents on-line, and distribute a one page notice to creditors to comply with rule 2004. Parties could also order a paper copy of the plan and disclosure statement. ¶ 3:26 PM 0 comments
Michael Baum of Schafer & Weiner has a great article in the most recent ABI Journal about how his firm used the Internet to distribute a plan and disclosure statement in the Polar Maintenance chapter 11 case.
They obtained a court order allowing them to post the documents on-line, and distribute a one page notice to creditors to comply with rule 2004. Parties could also order a paper copy of the plan and disclosure statement. ¶ 3:26 PM 0 comments
