Editor: Bob, please describe your role in the New York City office.
Perry: I am the office managing partner and a partner in the intellectual property practice specializing in patent litigation. My role as office managing partner is to ensure that the New York office runs smoothly and effectively, especially from the standpoint of cost-control and staffing. I am the management interface to the New York Partners and I act as a facilitator to the various practice groups that are in the New York Office whenever necessary.
Editor: Why did the firm decide to open an office in the city?
Perry: The firm decided to open an office in the city in 1990. We already had a strong transactional practice here that was handled primarily out of Atlanta. A lot of the firm’s connections, contacts and clients were in New York, and the firm felt it was important to establish corporate, finance and real estate practices here.
At the time, we grew through a series of acquisitions of small firms with roots in the city. The idea was to expand our presence here in a way that included a number of experienced lawyers who had already practiced here.
Editor: How many lawyers does the firm have in the city, and how was the firm able to staff it with so many great lawyers?
Perry: There are 120 lawyers in nine practice groups. The largest group is intellectual property, which predominately consists of patent litigators and patent prosecution experts, along with some trademark and copyright lawyers.
Another large practice is the commercial litigation group. Included in that group is an international arbitration practice, which has grown tremendously in the past five years. The finance group also has a very large presence in the office. The New York office differs from our other offices in that we export a significant amount of work to other offices. This permits our clients to access legal talent in lower cost markets that is available in our other offices.
Editor: I noticed that the firm’s German practice is handled out of your office.
Perry: We have a very significant German practice here, as well as in our office in Frankfurt. The primary focus of that office is real estate. Some of the larger real estate matters that we’ve handled out of the New York Office have been for German-based real estate investment firms. Our New York office has German speaking attorneys and staff who can interface with our German clients.
Editor: Why did the firm select the city as the center of operations for its well-known real estate capital markets transactions practice?
Perry: Having an Office in New York City permits us to operate in a geographic area that not only offers great real estate opportunities, but also provides ready access to financing expertise and resources. So, we combined two related practices to create the “real estate capital markets practice.” The decision to move the focus of that practice to the city has proven to be very successful.
Editor: Do you wish to describe some of the real estate capital markets transactions in which your office has been involved?
Perry: I mentioned the German connection. We do a fair amount of work for Jamestown, a German real estate investment firm. We recently assisted it in forming an open-end real estate fund that acquired over a billion dollars in seed assets, including properties in New York City such as the Chelsea Market and One Times Square. We also represented Union Investment Real Estate, another German organization, in a several-hundred-million-dollar acquisition of an office building in San Francisco.
We have a very strong Shari’ah-compliant finance practice. New York partner Isam Salah is one of the leading experts in the world on Islamic finance. We represented Hines, a large real estate developer, and The First Investor in forming a Shari’ah-compliant fund for investing in Brazilian income-producing assets.
Editor: I understand that the firm’s city office also enjoys an outstanding reputation for its litigation practice. Did you wish to mention some of its achievements?
Perry: King & Spalding has a nationwide reputation for its litigation practice. As a whole, the firm’s work is roughly a 50/50 mix of litigation and transactional work. New York is no different.
Our commercial litigation group in New York is headed up by Ed Kehoe and consists of a group of accomplished partners such as Mike Malone and Rich Marooney, who with other lawyers have helped make this a very strong practice.
Two years ago, we acquired a team of professional liability litigators -- including Jim Capra, Jim Cusick and David Fine -- who have strong connections with the Big Four accounting firms. We also presently fold our international arbitration lawyers into our commercial litigation groups across all our offices. Ed Kehoe is the firm-wide strategic initiative leader for the international arbitration group.
King & Spalding is representing The Renco Group in an UNCITRAL arbitration against Peru in an $800 million dispute. The long-running dispute involves a metallurgical smelter Renco purchased in 1997 from the government of Peru through a stock transfer agreement and allegations that Peru violated provisions of the United States-Peru Trade Promotion Agreement. Our New York team of lawyers in this matter is led by Ed Kehoe, with assistance from partner Caline Mouawad and associate Kana Ellis Caplan.
Before 1992, Texaco Petroleum Company (TexPet) operated as the minority owner of an oil consortium with Ecuador’s state-owned oil company. When TexPet left the country, it spent approximately $40 million remediating its share of consortium sites, and in exchange the government of Ecuador released TexPet from all liability for public environmental harm. Since then, U.S. plaintiffs’ lawyers, with the overt support of the government of Ecuador, have pursued a massive public environmental litigation against Chevron in Ecuador - a case marred by judicial bias, fraud and severe due process issues.
Another major arbitration matter we are involved in is an arbitration against Ecuador we filed in 2009 on behalf of Chevron, alleging breaches of the settlement and release agreements and the U.S.-Ecuador bilateral investment treaty. In March 2010, King & Spalding and its co-counsel obtained dismissals in U.S. federal court of Ecuador’s and the plaintiffs’ attempts to stay the arbitration. In February 2011, the arbitral tribunal granted Chevron’s interim request that Ecuador be ordered to take all measures at its disposal to prevent enforcement of an Ecuadorian court judgment inside or outside of Ecuador. Days later, the Ecuadorian court issued a multi-billion-dollar judgment against Chevron, which the company has appealed. In February 2012, in a second interim award, the arbitral tribunal ordered Ecuador to take all measures necessary to prevent enforcement of the judgment inside or outside of Ecuador. Shortly thereafter, the arbitral tribunal issued its Interim Award on Jurisdiction and Admissibility upholding jurisdiction. A procedural schedule has been issued for the proceeding on the merits. The lead partners on this matter are Doak Bishop (Houston), Ed Kehoe (New York) and Wade Coriell (Houston). They are assisted by a number of partners and associates in other offices, as well as New York-based lawyers Caline Mouawad, Guillermo Aguilar-Alvarez and Kristi Jacques.
Editor: King & Spalding has built up a substantial IP practice in New York as well. What types of work has the group been handling of late?
Perry: We have well over 30 lawyers in New York who handle IP, with a primary focus on patent litigation. Our group here also does biotech and biopharma patent prosecution, as well as trademark litigation and trademark prosecution. We have come a long way in a relatively short period of time. We started our IP practice in New York in 2001 with a trademark practice, and in 2004 we brought in a group of patent litigators to boost that practice. I was part of that group. We now represent companies that are household names, such as Google, Nokia, and Alcatel-Lucent.
We also do litigation throughout the country for a variety of clients involving patent trolls. We typically have technically trained lawyers handle these cases.
King & Spalding, with co-counsel Keker & Van Nest and Greenberg Traurig, earned a significant trial victory on behalf of Google Inc. in its landmark intellectual property dispute with Oracle Corp. In addition, U.S. District Judge William Alsup dismissed Oracle’s copyright claim dealing with Java application programming interfaces (APIs), ruling that the Java API elements used by Google in its Android mobile device software were not protectable by copyright. The decision follows a unanimous May 23, 2012, jury verdict finding that Google’s Android mobile device software did not infringe two patents held by Oracle. The King & Spalding lawyers on the team advising Google were led by intellectual property partners Scott Weingaertner (New York) and Bruce Baber (Atlanta/ New York).
King & Spalding successfully defended Brookwood Companies, Inc., in a patent litigation brought by its competitor Nextec Applications, Inc., involving high-performance fabrics used by the United States Military in the Extreme Cold Weather Combat System (ECWCS) of clothing used by troops in Iraq and Afghanistan. The two patents at issue related to a machine and a method to shear thin a polymer into a cloth to create breathable, water-resistant, germ-resistant fabric. Nextec was seeking damages of approximately $30 million and asked that those damages be trebled for willful infringement. King & Spalding developed a trial strategy focused on the scientific evidence, and brought on board some of the world's leading scientists in both polymer physics and textiles to prove that its fabric coating equipment could not shear thin. The trial team was led by New York lawyers Ethan Horwitz and Jonathan Ball.
King & Spalding's New York-based IP group successfully defended a generator manufacturer in a trademark infringement action in the Eastern District of New York. The client was charged with trademark infringement and faced demands for injunctive relief that would have required global rebranding costing more than $10 million. Plaintiff also asserted damages claims of $2 million in actual damages, trebled, for a total of $6 million. The jury found no infringement and granted the client's counterclaims to cancel the registration and declare the mark invalid. Katie McCarthy (New York) handled the case during the discovery phase and was assisted by Bruce Baber (Atlanta/New York) during the trial.
Editor: What plans does the office have for the future?
Perry: We plan to double down on the strengths of the firm and this office and look to grow. Our most significant practices are in great demand in the city, including litigation, energy, healthcare, real estate, litigation, intellectual property and financial services.
Published August 16, 2012.
