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Virginia LawyerVOL. 67/NO. 6 • April 2019 VIRGINIA LAWYER REGISTER The Official Publication of the Virginia State Bar

Todd A. Pilot The Trademark Institute

Intellectual Property Virginia Is for Inventors Beyond Trademark Registration Applying IPR Estoppel in District Court Trade Secrets Law Plus, A 1970s Virginia Law Student’s View of the Watergate Hearings

Virginia Lawyer The Official Publication of the Virginia State Bar April 2019 Volume 67/Number 6

Features Noteworthy INTELLECTUAL PROPERTY LAW VSB NEWS 18 Virginia is for Inventors 46 Highlights of the February 23, 2019, 19 Intellectual Property Law Section: Active and Welcoming Virginia State Bar Council Meeting by Timothy J. Lockhart, chair, and Robert M. Tyler, chair-elect 20 How Inter Partes Review Estoppel Applies (or Does Not Apply) in District Court by P. Andrew Riley 24 Virginia Tech’s Innovation Campus to Spawn New 46 Annual Criminal Law Seminar Patent Ecosystem in Northern Virginia Addresses Reforms and Issues by Philippe Signore 47 Vote in 2019 Bar Council Elections 26 A Fresh Look: The Defend Trade Secrets Act and Recent Developments 47 Bar Welcomes by Charles B. Molster III and Mary C. Zinsner Cameron Rountree as Deputy Executive 30 Beyond Trademark Registration: What Companies Need to Know About Director Protecting Their Trademark Rights 48 The Bar’s Special by Robin Cooke Vance Committee on the 34 Always in Style: Intellectual Property in Clothing and Fashion Brands Future of Law Practice Releases by Joan Bellefield Davis Final Report 48 Conference of Local and Specialty Bar Associations GENERAL INTEREST 49 In Memoriam 37 Todd Pilot: Java Jackets, Physics, and the Meat Department by Deirdre Norman 39 The Watergate Scandal: What a Law Student Learned About Departments the Rule of Law by Frederick M. Bruner 6 Forum 42 Renters and Landlords Benefit from Virginia Reforms 58 CLE Calendar by Helen Hardiman and Clarence Dunnaville 63 81st Annual Meeting 67 Professional Notices VIRGINIA LAWYER REGISTER 69 Classified Ads 70 Advertiser’s Index 60 Disciplinary Summaries 61 VSB Disciplinary Board to 61 Disciplinary Proceedings Hear Ann Bridgeforth Tribbey’s Reinstatement Petition on June 61 Supreme Court of Virginia Seeks 28, 2019 Comment on Proposed Change to Columns Rule 3.8 61 Peter W. Buchbauer Receives Family Law Section’s 2019 Lifetime 12 President’s Message 61 Supreme Court of Virginia Achievement Award Amends Rules on File Formats for 14 Executive Director’s Message Documents 61 Annual Meeting 16 Bar Counsel’s Message 61 MCLE Board Seeks Comments on 61 Indigent Criminal Defense Seminar 50 Law Libraries Amendments to MCLE Regulations 62 Clients’ Protection Fund Board 51 Risk Management 61 The Bar’s Special Committee on Pays $51,123 to Petitioners the Future of Law Practice Releases 52 Technology and the Practice of Law Final Report

Cover: Intellectual property attorney Todd A. Pilot stands in front of a statue of President George Washington, who signed the U.S. Patent Act into law in 1790. Photo by Deirdre Norman. Post production by Sky Noir Photography. Virginia Lawyer Virginia State Bar The Official Publication of the Virginia State Bar 2018–19 OFFICERS 15th Circuit Leonard C. Heath Jr., President Jennifer L. Parrish, Fredericksburg www.vsb.org Marni E. Byrum, President-elect Doris Henderson Causey, Immediate Past 16th Circuit R. Lee Livingston, Charlottesville Editor: President Palma E. Pustilnik, Charlottesville Deirdre Norman Karen A. Gould, Executive Director and Chief ([email protected]) Operating Officer 17th Circuit EXECUTIVE COMMITTEE John H. Crouch, Arlington Creative Director: Leonard C. Heath Jr., President Adam D. Elfenbein, Arlington Caryn B. Persinger Marni E. Byrum, President-elect Jennifer S. Golden, Arlington ([email protected]) Doris Henderson Causey, Immediate Past Gregory T. Hunter, Arlington President William H. Miller, Arlington Assistant Editor: Brian L. Buniva, Richmond 18th Circuit Jackie Kruszewski Joseph M. Bowen, Tazewell Barbara S. Anderson, Alexandria ([email protected]) Eugene M. Elliott, Roanoke Stacey Rose Harris, Alexandria William E. Glover, Fredericksburg John K. Zwerling, Alexandria Advertising: LLM Publications Beverly P. Leatherbury, Eastville Ben Oerther Jay B. Myerson, Reston 19th Circuit ([email protected]) Brian C. Drummond, Fairfax CONFERENCE CHAIRS AND PRESIDENT David J. Gogal, Fairfax Conference of Local and Specialty Bar Richard A. Gray, Tysons Corner Associations – Charles M. Lollar Chidi I. James, Fairfax VIRGINIA LAWYER (USPS 660-120, ISSN 0899-9473) Diversity Conference – Luis A. Perez Douglas R. Kay, Tysons Corner is published six times a year by the Virginia State Bar, Senior Lawyers Conference – Carrollyn C. Cox Daniel B. Krisky, Fairfax Young Lawyers Conference – Brian T. Wesley 1111 East Main Street, Suite 700, Richmond, Virginia David L. Marks, Fairfax Gary H. Moliken, Fairfax COUNCIL 23219-0026; Telephone: (804) 775-0500. Subscription Jay B. Myerson, Reston Rates: $18.00 per year for non-members. This material 1st Circuit Nathan J. Olson, Fairfax is presented with the understanding that the publisher Andrew D. Kubovcik, Chesapeake Dennis J. Quinn, Tysons Wayne G. Travell, Tysons and the authors do not render any legal, accounting, 2nd Circuit Edward L. Weiner, Fairfax or other professional service. It is intended for use by Ryan G. Ferguson, Virginia Beach Michael M. York, Reston attorneys licensed to practice law in Virginia. Because of Steven G. Owen, Virginia Beach Daniel M. Schieble, Virginia Beach 20th Circuit the rapidly changing nature of the law, information Christine H. Mougin-Boal, Leesburg contained in this publication may become outdated. As 3rd Circuit Susan F. Pierce, Warrenton Nicholas D. Renninger, Portsmouth a result, an attorney using this material must always 21st Circuit research original sources of authority and update 4th Circuit G. Andrew Hall, Martinsville information to ensure accuracy when dealing with Ann B. Brogan, Norfolk Gary A. Bryant, Norfolk 22nd Circuit a specific client’s legal matters. In no event will the Neil S. Lowenstein, Norfolk Lee H. Turpin, Chatham authors, the reviewers, or the publisher be liable for 23rd Circuit any direct, indirect, or consequential damages resulting 5th Circuit Carl Phillips “Phil” Ferguson, Suffolk Eugene M. Elliott Jr., Roanoke from the use of this material. The views expressed herein K. Brett Marston, Roanoke 6th Circuit are not necessarily those of the Virginia State Bar. The 24th Circuit J. Daniel Vinson, Emporia inclusion of an advertisement herein does not include David B. Neumeyer, Lynchburg an endorsement by the Virginia State Bar of the goods 7th Circuit 25th Circuit or services of the advertiser, unless explicitly stated Benjamin M. Mason, Newport News William T. Wilson, Covington otherwise. Periodical postage paid at Richmond, 8th Circuit 26th Circuit Virginia, and other offices. Marqueta N. Tyson, Hampton Nancy M. Reed, Luray 9th Circuit 27th Circuit W. Hunter Old, Williamsburg R. Cord Hall, Christiansburg POSTMASTER: 10th Circuit 28th Circuit Send address changes to Charles H. Crowder III, South Hill William M. Moffet, Abingdon VIRGINIA LAWYER 11th Circuit 29th Circuit MEMBERSHIP DEPARTMENT Dale W. Pittman, Petersburg Joseph M. Bowen, Tazewell 1111 E MAIN ST STE 700 12th Circuit 30th Circuit RICHMOND VA 23219-0026 P. George Eliades II, Chester Greg D. Edwards, Jonesville 13th Circuit 31st Circuit Brian L. Buniva, Richmond Maryse C. Allen, Prince William Dabney J. Carr IV, Richmond Leah A. Darron, Richmond MEMBERS AT LARGE Christy E. Kiely, Richmond Nancy C. Dickenson, Abindgon Susheela Varky, Richmond Afshin Farashahi, Virginia Beach J. Tracy Walker IV, Richmond William E. Glover, Fredericksburg Henry I. Willett III, Richmond Eva N. Juncker, Falls Church Virginia State Bar Staff Directory Beverly P. Leatherbury, Eastville Frequently requested bar contact 14th Circuit B. Alan McGraw, Tazewell Craig B. Davis, Richmond Lenard T. Myers Jr., Norfolk information is available online at Stephanie E. Grana, Richmond Lonnie Dayton Nunley III, Richmond www.vsb.org/site/about/bar-staff. Marissa D. Mitchell, Henrico A. Benjamin Spencer, Charlottesville

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Forum

Letters Send your letter to the editor to: [email protected] or Virginia State Bar, Virginia Lawyer Magazine, 1111 E Main St., Suite 700, Richmond VA 23219-0026 Confidential help for substance abuse problems and mental health issues.

Letters published in Virginia Lawyer For more information, call our may be edited for length and clarity toll free number: and are subject to guidelines available at www.vsb.org/site/ (877) LHL-INVA publications/valawyer/. or visit www.valhl.org.

Correction On page 40 of the February issue caption 7 mistakenly identified lawyer Laura Bladow’s mother as Angela. Her name is Sandra. We regret the error.

Jest Is For All by Arnie Glick

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A Landlord’s Point of View landlord can send out a “Five Day The February article, “A Tale of Two Delinquent Notice” is the sixth of the Evictions,” by Helen Hardiman and month. That is the statutory required Clarence M. Dunnaville Jr., begs for a notice to the delinquent tenant that response. After 41 years in the general the tenant must pay the rent within practice of law, I am now what a former five days of receipt of the notice or partner calls “a recovering lawyer,” vacate the premises. That day is also which means retired. Having acquired the point when the landlord can several residential rental properties, file, in the General District Court, a being a landlord now occupies my Summons for Unlawful Detainer to time. So, this missive is from that ask for the unpaid rent and possession standpoint. of the property. The minimum court First of all, owning/managing cost is $54. My experience is that a residential rental properties, whether court date is set for about 30 to 45 days they be apartment units or houses, hence. Keep in mind the tenant is still is a business with the goal of making in the premises. On that court date, a profit — it is not a social service the tenant may appear and ask for a continuance to get representation, or benefit to tenants. In both of the cases Lawyer Well-Being mentioned in the article, each of the due to illness, or a number of other Newport News attorney Ed Sarfan tenants failed to pay their rent in a reasons. That next court date can often and Williamsburg attorney Steve be as much as 30 more days. When the timely fashion, which puts the landlord/ Roberts demonstrate just one of owner in a bind. If no rent money is case is finally heard, and assuming the many ways Virginia lawyers may coming in then how will the taxes, landlord prevails, the court will enter implement the Supreme Court insurance, debt service, repairs and, judgment for the arrears and possession. of Virginia’s wellness initiative by in some cases, utilities be paid? No As a conservative example with no taking the time to relax in nature other business is expected to provide continuance, say the tenant did not and fly fish in the Blue Ridge products or services to those who fail pay January’s rent of $500, the 5-day Mountains. In this photo, Sarfan to pay. If you do not make your car Notice and the Unlawful Detainer were has the fish, because Roberts payments, the vehicle is repossessed. If sent and filed respectively on February “advised and counseled him on you fail to make utility payments, your 6th, and judgment was entered for the details of fly fishing,” according electricity, gas, water, cable, etc. are the landlord on the first court date of to Sarfan. eventually cut off. The only way a rental March 6th. The tenant has now been property owner can stay in business is in the premises about 66 days while for the properties to bring in the rents. paying no rent. happens, as the tenant usually moves So, if a tenant is not paying, then the Does the landlord then have the out before then. This Writ process landlord has to go through the onerous right to enter the property and take generally takes about two weeks. So now and sometimes continuous process possession? No, the tenant has a 10- add 10 days, plus 14 days to the 66 days of having that tenant removed so the day appeal period. Only after that has noted above, and the tenant may have property can hopefully be re-rented to expired may the landlord file a Writ been in the premises for 90 days with no someone who pays. of Possession (another $25.00) with rent having been paid. A second bone of contention with the court. The clerk sends the Writ to Again, generally speaking, a tenant the article is that it seems to gloss over the Sheriff who then serves the tenant who has been evicted is unlikely to the time frame required for a landlord a copy of the Writ and at the same leave the premises in a broom clean to actually regain possession of a rental time notifies the tenant when it will condition, resulting in the landlord property. Generally, a residential lease be executed. The Sheriff also notifies having to toss out items not taken, while provides for monthly payments to the landlord of the date and time. The further cleaning the stove, refrigerator, be made on the first of each month, landlord must have manpower on hand and bathroom before repairing damages in advance, with the payment being to move the tenant’s furniture and in order to re-rent: another day and late if not received by the fifth of other items to the curb, if the tenant the month. Therefore, the earliest a has not vacated by that time. This rarely Forum continued on page 10

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Forum continued from page 8 LEGAL SERVICES CORPORATION another expense and/or aggravation Notice of Availability of Grant Funds for Calendar Year 2020 incurred. All of the above gyrations have The Legal Services Corporation (LSC) announces the availability of grant funds to been to merely regain possession of provide civil legal services to eligible clients during calendar year 2020. The Request the rental property in order to make it for Proposals (RFP), which includes instructions for preparing the grant proposal, will income producing. Now the landlord be available at http://www.lsc.gov/grants-grantee-resources/grantee-login during has the additional tribulation of trying the week of April 8, 2019. In accordance with LSC’s multiyear funding policy, grants to recover the three months lost income are available for only specified service areas. On or around the week of March 11, and expenses. 2019, LSC will publish the list of service areas for which grants are available and the Ah! Garnishment proceedings, service area descriptions at https://www.lsc.gov/grants-grantee-resources/our-grant -programs/basic-field-grant/lsc-service-areas. Applicants must file a Notice of Intent another journey of frustration. to Compete (NIC) and the grant proposal through LSC’s online application system

in order to participate in the grants process. The online application system will be Michael S. Ferguson available at https://lscgrants.lsc.gov/EasyGrants_Web_LSC/Implementation/Modules/ Roanoke Login/LoginModuleContent.aspx?Config=LoginModuleConfig&Page=Login during the week of April 8, 2019. Editor’s note: Part 2 of the article, “A Tale of Two Evictions,” by Helen Hardiman Please visit https://www.lsc.gov/grants-grantee-resources/our-grant-programs/ and Clarence Dunnaville is on page 42 basic-field-grant for filing dates, applicant eligibility, submission requirements, and in this issue. See “Renters and Landlords updates regarding the LSC grants process. Please email inquiries pertaining to the Benefit from Virginia Reforms.” LSC grants process to [email protected].

Letters Send your letter to the editor to: [email protected] or Virginia State Bar, Virginia Lawyer Magazine, 1111 E Main Ste 700, Richmond VA 23219-0026 Letters published in Virginia Lawyer may be edited for length and clarity and are subject to guidelines available at www.vsb.org/site /publications/valawyer/.

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President’s Message by Leonard C. Heath Jr. Virginia Lawyer Well-Being: “We keep moving forward. . .”

It may be hard to envision, made not because of my position as program has been expanded to include but I used to run long distances. My president, but because of what Virginia judges and Virginia law students. hometown of Newport News has a has achieved. So here is our year (or wonderful municipal park that has so) in review: Virginia Board of Bar Examiners over 30 miles of trails. You can start at changes mental health question the park, run to the back of the park, Changes to rules and procedures As of January 1, 2019, a more “well- pick up the Yorktown Victory tour, within the VSB ness-friendly” question will be asked and go all the way to the Yorktown We have added a new comment 7 to on the bar application. Before the Battlefield Visitor’s Center. Decades Rule 1.1 of the Rules of Professional January 1, 2019, change, students were ago, I would run this round-trip route Conduct, that calls attention to the required to report any “condition or several times a year. There were times fact that maintaining well-being is an impairment” related to substance or when I would hit the proverbial wall aspect of maintaining competence alcohol abuse, or mental, emotional, and have to look down and tell myself to represent clients. We have further or nervous disorder or condition. That “just take one step at a time.” And, I modified rules in our disciplinary pro- question has now been removed, and always had a strong belief that I should cess to facilitate retirement for lawyers the current question asks only the not stop or let up until I crossed the suffering from a permanent impair- following: “Within the past five years finish line (even though I was not ment, such as an irreversible cognitive have you exhibited any conduct or competing against others but simply decline, by allowing retirement with behavior that could call into question against my previous times). Later in dignity rather than suspending law- your ability to perform any of the life, after my children were born, I yers’ licenses on impairment grounds. obligations and responsibilities of a would tell them that there are some Further, when information of men- practicing lawyer in a competent, ethi- days where you have to just look down tal health or substance abuse issues cal and professional manner?” and put one foot in front of the other. are discovered during investigation But at all times, you keep moving or prosecution of lawyer regulation Revision of MCLE Opinion 19 forward. As I write this article, I have matters, we now allow sharing of such While Virginia’s MCLE Board had come to the realization that these are information with lawyer assistance previously granted credit for wellness my last few months as president. As I programs. topics, the MCLE Board re-wrote used to do in my running days, I plan and expanded Opinion 19 to make to sprint across the finish line. So, with Report of the Committee on Lawyer it abundantly clear to providers and this column, let’s start with what we Well-Being of the Supreme Court of participants that wellness topics will began in June — lawyer well-being. Virginia receive MCLE credit, so long as other I am pleased to report that This Supreme Court Committee issued requirements of Virginia’s MCLE Rule Virginia has made historic strides in a report entitled A Profession at Risk are met. the lawyer well-being initiative. In fact, on September 17, 2018. The result of I just returned from a conference in the committee’s work is that Lawyers First Annual Law Student Wellness Miami where Virginia was invited to Helping Lawyers will now have a con- Summit give a presentation on our initiative tract to provide services as a result of a On February 5, 2019, at the University to a group of federal and state judges. new Supreme Court of Virginia well- of Virginia School of Law, deans and Of all the trips I have taken over the ness fee to be paid by Virginia’s lawyers representatives of all eight of Virginia’s last two years, I am particularly proud on a permanent basis. In addition, law schools convened for the First of this one because the invitation was the mission of the lawyer assistance Annual Law Student Wellness Summit.

12 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org President’s Message

Also in attendance were our Chief The Virginia State Bar President’s system of justice, and for the Justice and four other members of the Special Committee on Lawyer Well- public trust.1 Supreme Court, as well as leaders from Being the VSB, The Virginia Bar Association, This committee will submit its final I would like to tell you that we are the Virginia Board of Bar Examiners, report at the Annual Meeting of the nearing the finish line on the lawyer and Lawyers Helping Lawyers. Next Virginia State Bar in Virginia Beach on well-being journey. However, lawyer year’s summit will be conducted at the June 14, 2019. The committee’s report well-being remains a marathon, not a University of Richmond Law School. will address the occupational risks to the sprint. While we have made great strides practice of law. In addition, the report forward, we still need to remember to Inclusion of wellness topics in the will describe each risk, provide practice look down and put one foot in front of Harry L. Carrico Professionalism pointers for individuals and law firms, the other . . . and always, always keep Course and identify resources available to learn moving forward. I promise you that I We have added wellness materials more about each risk. The committee will continue to be an advocate for you and hypotheticals in the professional- has identified 20 separate occupational and your well-being. ism course that new admittees to the risks to the practice of law. The tar- Being allowed to serve as the pres- Virginia State Bar must attend during get market for the report are lawyers, ident of the Virginia State Bar has been their first year of practice. judges, law students, and those who one of the great honors and privileges in care about them. This landmark report my life. There are far too many people Legal Talk Network Podcast should change the way that law students to thank for the opportunity so I will On July 31, 2018, I took part in my first prepare for, and lawyers and judges simply leave you with my sincerest, podcast with Sharon Nelson, the 75th participate in, the practice of law. heart-felt “Thank you.” president of the VSB, and Jim Calloway, the director of the Oklahoma Bar When I was sworn in as president And always remember to keep mov- Association Management Assistance on June 15, 2018, I ended my acceptance ing forward. q Program, entitled Addressing Lawyer speech with the following: Mental Health Wellness at the Virginia 1 Leonard C. Heath Jr., Why Lawyer Well- Being is Important to Society, 31 Regent Bar. This podcast can be found at As we move forward this year, Univ. L. Rev. 1, 9 (2018) https://legaltalknetwork.com/podcasts/ the “experts” on lawyer well-be- digital-edge/. ing are the attorneys across this great commonwealth who, day Speeches and presentations in, day out, actually practice Members of the Court and the VSB, law. We are the ones who must along with staff from the VSB and mem- participate in critical self-evalu- bers of VSB conferences and sections, ation, not only for ourselves, but have given, and continue to give, speech- for our families, and for those es, CLEs, and presentations across the attorneys yet to come. But, most Commonwealth of Virginia on lawyer importantly, we are compelled well-being topics. to do this for our clients, for our

More Resources

Find information on staying healthy — in your practice and out — on the bar’s website at bit.ly/lawyer-well.

www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 13 Executive Director’s Message by Karen A. Gould Simplification of Legal Advertising Regulation Means Less Headaches for Virginia’s Lawyers

by Karen A. Gould and Seth Guggenheim, ethics counsel

Virginia’s advertising rules the rules apply to paying for market- trict court. When the correspondence for lawyers have been simplified, ing services, including paying for lead is misdirected to the wrong person, it thanks to the foresight of the Supreme generation. alarms the recipient and sometimes his Court of Virginia and the Virginia Just as the advertising rules were or her family members. The com- State Bar’s Standing Committee on simplified, the handling of adver- plaints in these instances often express Legal Ethics. Legal advertising is tising complaints by the Office of dissatisfaction with the lawyer’s governed by the false and misleading Bar Counsel has been changed and nonchalance when the recipient of the standard, due to rule changes made in simplified. Advertising complaints are misdirected correspondence brings the 2013 and 2017. no longer handled through the Office matter to the lawyer’s attention. of Bar Counsel, the bar prosecutors. When the bar receives complaints Rule of Professional Conduct Instead, they are handled by one of related to direct-mail solicitations, the 7.1 has been amended to state: the ethics counsel, whose job it is to lawyer is contacted, and a suggestion advise Virginia’s attorneys how to is made to him or her that the infor- Communications Concerning comply with the Rules of Professional mation aggregator exercise a greater A Lawyer’s Services Conduct. degree of diligence in determining a defendant’s address. The lawyer is A lawyer shall not make a false Advertising complaints are invited to apologize to the aggrieved or misleading communication recipient. The lawyer risks an adverse about the lawyer or the lawyer’s no longer handled through internet review in the absence of great- services. A communication is er care. false or misleading if it contains the Office of Bar Counsel, Most advertising complaints come a material misrepresentation from other lawyers. Prior to the change of fact or law or omits a fact the bar prosecutors. Instead, in the advertising rules, complaints by necessary to make the statement other lawyers were common regarding considered as a whole not mate- they are handled by one of the absence of mandatory disclaim- rially misleading. ers associated with advertised case the ethics counsel ... results. The complainants resented the The amendments, effective July 1, allegedly offending lawyer’s failure to 2017, significantly rewrote the rule, de- In FY2018, a total of five advertis- follow the rules, when the complaining leting sections (b) through (d) and in- ing complaints were lodged with the lawyer had taken pains to do so in his corporating them, along with much of VSB, which were resolved through the or her own advertising. When man- Rules 7.4 and 7.5, in the comments to proactive measures discussed below. datory disclaimers following certain Rule 7.1.1 Rules 7.2, 7.4, and 7.5 were Very few advertising complaints placement and format were eliminated deleted. Rule 7.3, regarding solicitation are received from the public. Those from Rule 7.1, effective July 1, 2017, of clients, remains intact, with the complaints are usually related to there was no longer a basis for such exception that it was amended effective direct-mail solicitations. For example, complaints. July 1, 2017, to more clearly define the a person receives a solicitation offering Complaints from other lawyers, term “solicitation” and to expand the legal services respecting a criminal or however, remain focused on alleged- comments to more clearly explain how traffic charge pending in a general dis- ly false or misleading statements in

14 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org Executive Director’s Message advertising or on websites regarding the specificity as would lead a reasonable person to conclude that the comparison can be substantiat- lawyer’s experience and/or membership ed. The inclusion of an appropriate disclaimer or in or ratings given by certain organiza- qualifying language may preclude a finding that a statement is likely to create unjustified expecta- tions. tions or otherwise mislead the public. Advertising review is now conducted by ethics counsel of the Virginia [3] In communications about a lawyer’s services, as in all other contexts, it is professional miscon- State Bar (referred to as “ad review”). duct for a lawyer to engage in conduct involving Reasons YOU Ad review urges the allegedly offending dishonesty, fraud, deceit or misrepresentation Should Use the which reflects adversely on the lawyer’s fitness lawyer to modify his or her websites and to practice law. Rule 8.4(c). See also Rule 8.4(d) VSB Fee Dispute ads to remove or revise content that is for the prohibition against stating or implying an ability to influence improperly a government Resolution Program false or misleading. Ad review is satisfied agency or official or to achieve results by means if the lawyer responding to a complaint that violate the Rules of Professional Conduct or 1. It’s cheap – $20. presents information that suggests or other law. 2. It’s quick – mediation is sched- establishes that the allegedly offending Areas of Expertise/Specialization uled within 30 days of the mediator’s appointment, and statements are not in fact false or mis- [4] A lawyer may communicate the fact that the lawyer does or does not practice in particular arbitration is scheduled within leading. Most often, lawyers voluntarily fields of law. A lawyer who is a specialist in a 45 days of the arbitrator’s remediate offending content on their particular field of law by experience, specialized appointment. training, or education, or is certified by a named websites and in other advertising. 3. It’s smart – many legal malprac- professional entity, may communicate such tice claims arise from disputes Should you have questions about specialty or certification so long as the statement is not false or misleading. over legal fees. your responsibilities under Virginia 4. It’s informal. Rules of Professional Conduct related to Firm Names 5. It’s conducted by Supreme Court [5] A firm may be designated by the names of all advertising or other subjects, please con- certified mediators and VSB or some of its members, by the names of deceased trained arbitrators. sult with one of the VSB ethics counsel members where there has been a continuing 6. It’s confidential – mediation and through the ethics hotline — either succession in the firm’s identity or by a trade name such as the “ABC Legal Clinic.” A lawyer arbitration are confidential, un- via email or phone. Both services are or law firm may also be designated by a distinc- less both parties agree otherwise accessible through this link on the VSB tive website address or comparable professional in writing. Attorney arbitrators designation. Although the United States Supreme website: www.vsb.org/site/regulation/ are subject to Rule 8.3 reporting Court has held that legislation may prohibit the obligations. ethics. This is one of the many services use of trade names in professional practice, use of such names in law practice is acceptable so long as 7. It’s fair and convenient. provided to you by the Virginia State it is not misleading. If a private firm uses a trade 8. It’s good for you. Bar. name such as “clinic” that also includes a geo- 9. It’s good for the client. q graphical name such as “Springfield Legal Clinic,” an express disclaimer that it is not a public legal 10. It’s good for the profession. Endnotes: aid agency may be required to avoid a misleading 1 The comments to RPC 7.1 read as follows: It’s one of the VSB’s best kept implication. It may be observed that any firm secrets. Let’s change this! name including the name of a deceased partner For information on the program, Comment is, strictly speaking, a trade name. The use of such names to designate law firms has proven a useful go to our website at www.vsb.org [1] Truthful statements that are misleading are means of identification. However, it is misleading /site/members/fee_dispute_ also prohibited by this Rule. A truthful statement to use the name of a lawyer not associated with the resolution or contact Stephanie is misleading if it omits a fact necessary to make firm or a predecessor of the firm, or the name of Blanton at (804) 775-0576 the lawyer’s communication considered as a whole a nonlawyer. not materially misleading. A truthful statement is also misleading if there is a substantial likelihood [6] Lawyers may state or imply that they practice Danny Burk, attorney/mediator: that it will lead a reasonable person to formulate in a partnership or other organization only when a specific conclusion about the lawyer or the that is the fact. Lawyers sharing office facilities, but “The entire lawyer’s services for which there is no reasonable who are not in fact associated with each other in a factual foundation. law firm, may not denominate themselves as, for program is a example, “Smith and Jones,” for that title suggests solid example of [2] A communication that truthfully reports that they are practicing law together in a firm. the bar help- a lawyer’s achievements on behalf of clients or ing maintain its former clients may be misleading if presented relationship with so as to lead a reasonable person to form an clients. Lawyers unjustified expectation that the same results could be obtained for other clients in similar matters who participate without reference to the specific factual and legal give their clients circumstances of each client’s case. Similarly, a chance to present their views in a an unsubstantiated comparison of the lawyer’s safe and comfortable environment. services or fees with the services or fees of other I can say that, at least to date, each lawyers may be misleading if presented with such case that I’ve mediated ended with a resolution and closure.” Bar Counsel’s Message by Renu M. Brennan Ethical Duties in Representing Criminal Defendants on Appeal

by Catherine French Zagurskie (right) and Renu M. Brennan (left)*

The Sixth Amendment right guilty plea. When a defendant pleads not bar a (federal) criminal defendant to counsel, a cornerstone of our legal guilty, including a plea of nolo conten- from challenging the constitutionality system, applies at all critical stages of dere, Legal Ethics Opinion (LEO) 1880 of the statute of conviction on direct a criminal proceeding and extends to (Committee Opinion July 23, 2015) appeal. Defendants who plead guilty state prosecutions via the Due Process explains that while a defendant always but call into question the government’s Clause of the Fourteenth Amendment. retains the right to appeal, the guilty power to criminalize (admitted) con- In Virginia, counsel appointed to plea necessarily waives certain grounds duct may have a good faith basis under represent a defendant in the trial court for appeal. Counsel’s duty of compe- Class to raise the constitutionality of continues that representation for any tence (RPC 1.14) and duty to provide the statute on appeal.8 No Virginia appeal to the Court of Appeals and adequate communication (RPC 1.45) published appellate cases have yet Supreme Court of Virginia.1 As such, require counsel to understand and addressed Class.9 court-appointed counsel must handle explain to the client the available and As explained in LEO 1880, both trials and appeals diligently and waived grounds for appeal. court-appointed counsel must advise competently. To understand available and the client of the potentially adverse As court-appointed counsel play waived grounds for an appeal fol- consequences of prevailing on appeal, a vital role in our criminal justice sys- lowing a guilty plea, counsel must including exposure to a more severe tem, the legal community, in turn, has stay current with developing law. The outcome on retrial or resentencing. a responsibility to provide meaningful Supreme Court of the United States While pursuing an appeal may result support to counsel who take on this recognized in Garza v. Idaho, 586 U.S. in the government’s attempt to treat important work. At the same time, the __ (2019) that even a guilty plea with the appeal as a breach of a plea agree- Virginia State Bar (VSB) also is tasked an appeal waiver cannot serve “as an ment — and this should be explained with ensuring protection for those absolute bar to all appellate claims.”6 to the client10 — “simply filing a notice represented. This article will provide Virginia law presently holds that, of appeal does not necessarily breach guidance on how counsel can fulfill because a guilty plea is a “self-sup- a plea agreement, given the possibility ethical duties to defendants on appeal. plied conviction,” pleading guilty that the defendant will end up raising waives defenses and claims, including claims beyond the waiver’s scope.”11 Right to Appeal Following A Guilty constitutional ones, which arise prior Under RPC 2.1,12 counsel has Plea to the entry of the guilty plea — with a duty to “render candid advice” A criminal defendant — not counsel the exception of jurisdictional defects.7 including an opinion that it is not — has the right to decide whether to Available grounds of appeal follow- in the client’s best interest to appeal. appeal a final conviction.2 This is true ing a guilty plea include whether the Regardless of this advice, if the client even if the defendant pleaded guilty defendant knowingly and voluntarily adheres to his or her desire to appeal, and signed an appeal waiver.3 Where waived his constitutional rights at the counsel must timely note an appeal.13 the right to appeal exists, counsel must time of the guilty plea and whether adequately communicate that right an error occurred after the plea was Right to Appeal Non-Meritorious to the client so the client can make an accepted, such as with regard to the Issues informed decision whether to exercise adjudication or sentencing. A misunderstanding that can result in that right. Recent jurisprudence suggests an ethical quandary is the belief that Consultation with a defendant another exception. In Class v. United “it is unethical to pursue a frivolous about his or her appellate rights will States, 138 S. Ct. 798 (2018), the appeal on behalf of a client.” Attorneys be different depending on whether the Supreme Court of the United States mistakenly cite RPC 3.1, meritorious finding of guilt follows a guilty or not held that a guilty plea by itself does claims and contentions, to support this

16 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org Bar Counsel’s Message position. RPC 3.1 states “[a] lawyer shall the client’s position ultimately will not Similarly, while timely filing transcripts not bring . . . a proceeding, or assert prevail.” If there was a trial, generally, is not a jurisdictional requirement, or controvert an issue therein, unless an Anders petition should not be filed. an appellate court will not consider there is a basis for doing so which is not Every trial should include a motion an appeal on the merits if a necessary frivolous.”14 to strike after the close of all evidence transcript is not timely filed.25 Missing But, only a court, not counsel, to raise and preserve sufficiency of deadlines in appeals implicates RPC 1.1, may decide if an appeal is frivolous.15 the evidence claims. Challenging the competence, and RPC 1.3,26 diligence. The “role as advocate requires that he sufficiency of the evidence to support a The handling of a case after a missed support his client’s appeal to the best conviction on appeal is in line with RPC deadline can make a huge difference for of his ability.”16 Only if defense counsel 3.1’s directive that “[a] lawyer for the both the client and counsel. believes an appeal is “wholly frivolous, defendant in a criminal proceeding . . . When an appellate deadline has after a conscientious examination of it,” may nevertheless so defend the proceed- been missed, counsel should first con- (emphasis added) should counsel follow ing as to require that every element of sider whether to seek an extension of the procedure set forth in Anders v. the case be established.” Additionally, a time from the court to file the pleading California, 386 U.S. 738 (1967).17 Before comment to RPC 3.1 states that a claim or transcript(s). The Rules allow for ex- filing an Anders petition, however, coun- is not frivolous if there is “a good faith tensions of time to file appellate papers sel should have a candid discussion with argument for an extension, modifica- after the original deadline has passed, if the client about the merits of the appeal tion or reversal of existing law,” and, there is good cause.27 However, the time and determine whether the client wishes therefore, any appeal based on this claim period to file and obtain an extension to proceed with the appeal or with- should not be Anders. Finally, Anders is not indefinite. For a notice of appeal, draw.18 If the client still desires to appeal, should not be used simply because an petition for appeal, and transcripts, an counsel must file: issue is unpreserved. Instead, counsel extension of time may be obtained from should consider raising the unpreserved the appropriate appellate court with- (1) a petition for appeal that refers issue under the good cause or ends of in 30 days following the original due to anything in the record that justice exceptions to Rules 5A:18 and date.28 Keep in mind that if a motion might arguably support the 5:25 in the petition for appeal. for an extension of time is filed after appeal, demonstrates to the By contrast, Anders may be ap- the original deadline, counsel must also respective court counsel’s con- propriate in appeals where the de- file the appellate papers at issue within scientious examination of the fendant pleaded guilty or the court that same extension period. When at all merits of the appeal, and cites to revoked a suspended sentence. But, possible, counsel should concurrently Anders; do not just assume these appeals will file the late document with the motion (2) a motion for leave to with- always be Anders. For example, Cox v. for the extension. If the appellate court draw as counsel, which cites to Commonwealth22 began as an Anders grants the motion for the extension and Anders; and petition but, after new counsel was the document is timely filed under the (3) a motion for an extension of appointed, resulted in the Court of new deadline, all is well — any mistake time to allow the appellant’s Appeals finding that a probationer’s has been remedied. supplemental petition for due process right to confrontation was appeal. 19 violated. Additionally, in Garza, the Delayed Appeals Supreme Court cautions that “a defen- As explained in LEO 1817 (Committee Counsel must send copies of the peti- dant who has signed an appeal waiver Opinion, August 17, 2005), when coun- tion and motions to the client and the does not, in directing counsel to file a sel is notified by the court of a dismissal government.20 Only after the appellate notice of appeal, necessarily undertake a of the client’s appeal, and counsel knows court considers the Anders petition and quixotic or frivolous quest.”23 or is informed that the dismissal was any supplemental petition filed by the caused by counsel’s failure to timely file client will the court rule on the mo- Mandatory Deadlines in the Perfection or perfect the appeal, Rule 1.4 requires tion to withdraw and the merits of the of An Appeal counsel to notify the client of the appeal.21 A timely filed notice of appeal and peti- dismissal, the reasons for the dismissal, While Anders appeals can be tion for appeal are among the necessary and the client’s right or recourse. If, appropriate in some circumstances, elements for an appellate court to ac- through no fault of the client, an appeal court-appointed counsel should guard quire active jurisdiction over a case.24 An is dismissed for failure to timely file a against overuse. The standard is “wholly appellate court will dismiss an appeal pleading, or denied for failure to timely frivolous.” A comment to RPC 3.1 if the notice of appeal or petition is not file a necessary transcript, or is never explains that an “action is not frivolous timely filed. These types of dismissals even though the lawyer believes that result in bar complaints against counsel. Bar Counsel continued on page 56 www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 17 Virginia is for Inventors

Virginians’ legacy of invention began in 1790, when President that made vaccine administration more precise, and the laxa- George Washington signed and issued the first patent in tive and over-the-counter enemas (thank you, Lynchburg Dr. America — for a process of making potash, an ingredient in Charles Fleet). fertilizer. Another Virginian, and himself an inventor, Thomas In honor of the Intellectual Property Section’s issue, we’ve Jefferson, acted as the primary patent examiner during that pulled some intriguing, recent Virginia patents found in the time, when he was secretary of state. files of the United States Patent and Trademark Office — oh Virginians invented the swivel chair, the mechanical yeah, that’s in the commonwealth, too. reaper, lip balm, camouflage, microphones, bifurcated needles

Patent No. 10,154,663 Two employees of a wildlife removal service based in Christiansburg earned a patent in December for a humane and adjustable bird capture net for use in large buildings like ware- houses and malls that tend to attract unwanted nesters.

Patent No. 10,160,298 Surely promising to many lawyers, three men in Virginia Beach were granted a patent for a rain and sun shield for golf carts in December. “Golf carts, even covered golf carts, do not provide adequate protection to their occupants against sun and rain. … [M]ost of [the existing] devices are hard to install, interfere with the parking profile of the golf cart when it is stored and cannot be easily used in standard golf cart paths that wind through trees and large shrubbery.”

Patent No. 10,159,288 It might not be surprising to learn that a lot of Virginia-based patents are related to tobacco products — namely, the relatively new tobacco vehicle of electronic cigarettes. For example, a man in Richmond, working for Altria, patented a carto- mizer for an e-cig “capable of providing a smoking experience without combusting tobacco.”

Patents continued on page 33 Intellectual Property Law Section: Active and Welcoming

by Timothy J. Lockhart, chair, and Robert M. Tyler, chair-elect

With over 1,500 members, the Intellectual Property Law Section practice in one or more of the four classic areas of IP law: is one of the Virginia State Bar’s larger sections, and it is also one copyrights, patents, trade secrets, and trademarks. Some mem- of the most active. The section’s showcase event is its Annual bers are primarily litigators, some are primarily transactional Intellectual Property Seminar, which is held on a Friday after- lawyers, and still others handle both types of matters. In carry- noon and Saturday morning every fall, usually in September or ing out its various activities, the section works closely with the October, either in Northern Virginia or some other destination leadership and staff of the Virginia State Bar. area such as Charlottesville or Williamsburg. The 2018 event was The section’s key goals are to create networking oppor- the 30th such seminar, featured nationally known speakers, and, tunities, to provide interesting, high-quality CLEs to IP and with the valuable assistance and co-sponsorship of Virginia CLE, non-IP attorneys, and to keep our members informed about attracted close to 100 attendees. developments in IP practice in Virginia. A nine-member Board The annual fall CLE includes announcing the winners of of Governors, diverse geographically as well as in areas of prac- the section’s Annual Law Student Writing Competition, with tice and other ways, manages the section. We are always look- the first-place winner receiving an award of $5,000, and the ing for volunteers to join the section and to participate in and runner-up receiving $2,500. The competition is open to any help coordinate its activities. Such participation often leads to law student from Virginia and to any student in any Virginia a volunteer’s being elected to serve on the Board and eventually law school, and many of the winners have gone on to become assume a senior leadership position within the section. Visit successful IP lawyers. our website at http://bit.ly/vsbip. The IP Section also holds an annual Spring Ethics CLE, which is usually available by webcast and has been presented at various locations, including at the United States Patent and Trademark Office. In addition, the section’s members regularly contribute articles to an “IP issue” of Virginia Lawyer such as the issue you are reading now. The section often presents a CLE session during the bar’s Annual Meeting in Virginia Beach, either by itself or in conjunction with other sections. This year the IP Section is Timothy J. Lockhart is a partner at Willcox Savage in Norfolk and heads partnering with the Business Law Section and the Corporate the firm’s Intellectual Property Group. He concentrates his practice on trademark and copyright counseling, registration, and enforcement; Counsel Section to present a 1.5-hour CLE: Why Go to Europe software licensing; and intellectual property litigation. The U.S. Secretary When Europe Comes to You? U.S. Data Protection in a GDPR of Commerce appointed Lockhart to serve two terms (2008–2011 and World. The joint seminar will be held from 8:30 to 10:00 a.m. 2014–2017) on the Trademark Public Advisory Committee of the U.S. Patent and Trademark Office. A retired Navy Reserve captain, he received a at the Sheraton Hotel’s Henry Ballroom and will feature speak- J.D. degree, cum laude, from the Georgetown University Law Center, M.A. ers Corina San-Marina of Willcox Savage, Gerard M. Steamier and B.A. degrees from Auburn University, and has published two novels: of Reed Smith, and Michael Bihar of Eversheds Sutherland. Smith (2017) and Pirates (2019). This CLE seminar will help attendees advise clients about their compliance obligations under the European Union’s General Data Protection Regulation (GDPR). The seminar will explain the critical elements of the GDPR, identify the steps that clients can take to ensure compliance with the GDPR, and provide information about how to reduce risk of non-compliance with the regulation. The seminar will also cover the compliance challenges associated with the California Consumer Rob M. Tyler is associate university counsel at the University of Virginia. Privacy Act of 2018 (CCPA) and highlight the similarities and He joined the University Counsel’s office in 2015 after 20 years in private differences between the GDPR and the CCPA. practice as an intellectual property lawyer. At UVA he is responsible for Founded in 1970, the IP Section seeks to advance the qual- a wide spectrum of legal issues, including intellectual property, research administration, library/museum/art law, information technology, privacy, ity of intellectual property law practice in the Commonwealth communications/marketing/promotion law, First Amendment and speech of Virginia. Most of the lawyers who belong to the section issues, and Freedom of Information Act. www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 19 How Inter Partes Review Estoppel Applies (or Does Not Apply) in District Court

by P. Andrew Riley photo by Mikael Stenberg unsplash.com

The America Invents Act gave Section 315(e)(2) of title 35 of the U.S. Code alleged infringers new post-grant contains the estoppel provision: Civil Actions and Other Proceedings. review procedures to challenge the

validity of a patent before the Patent The petitioner in an inter partes review Trial and Appeal Board (PTAB) at the of a claim in a patent . . . may not U.S. Patent and Trademark Office.1 assert either in a civil action . . . or in One such procedure — inter partes a proceeding before the International review (IPR) — gave alleged infring- Trade Commission under section ers a cheaper alternative to litigating 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the in federal district court, among other petitioner raised or reasonably could benefits. But what concessions did have raised during that inter partes Congress give to patent holders in review.2 return? Congress included an estoppel provision meant to limit an alleged Using the same language — “raised or infringer’s ability to pursue certain reasonably could have raised” — section invalidity arguments in district court 315(e)(1) prohibits a petitioner from asserting the same invalidity grounds in a second (or in another post-grant proceeding) inter partes review petition.3 The Federal after petitioning for an IPR proceed- Circuit addressed this language twice in 2016; ing on the patent-at-issue. The courts, first in Shaw Indus. Group, Inc. v. Automated however, are still defining the scope of Creel Systems, Inc.4 and again in HP Inc. v. this estoppel provision. MPHJ Tech. Inv., LLC.5

20 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org INTER PARTES REVIEW ESTOPPEL

Federal Circuit Precedent from these interpretations by the Federal In Shaw Indus., the Federal Circuit addressed Circuit that Section 315(e) would not estop an appeal from the PTAB’s final written deci- an IPR petitioner from asserting prior art the sion in IPR2013-00132 and IPR2013-00584. PTAB did not review, or institute, in a future Shaw, the IPR petitioner, sought review of district court or IPR proceeding. the PTAB’s final written decision, including the PTAB’s decision not to institute some of Split Decisions Among District Courts Shaw’s proposed grounds of unpatentability Makes IPR Estoppel Unpredictable on redundancy grounds.6 Rejecting this argu- Despite the precedent set by the Federal ment, the Federal Circuit found that it lacked Circuit in Shaw Indus. and HP Inc. on the jurisdiction to review the PTAB’s institution meaning of “raised or reasonably could decision under 37 C.F.R. § 42.108(b).7 have raised,” district courts have applied the Shaw also sought a writ of mandamus estoppel provision of § 315(e)(2) different- from the appeals court. Specifically, Shaw ly. For example, in Cobalt Boats, LLC v. Sea wanted the Federal Circuit to order the PTAB Ray Boats, Inc., Judge Henry Coke Morgan to reevaluate its redundancy decision.8 Shaw Jr. in the Eastern District of Virginia ad- sought the writ because it feared the estoppel opted what he characterized as a “narrow provision of § 315(e) would prevent it from reading of Shaw” — namely, “that estoppel asserting the prior art rejected by the PTAB as applies to grounds that the petitioner raised redundant in a later IPR or in district court.9 at the IPR itself and could have raised in the The Federal Circuit denied Shaw’s request for IPR petition or at the IPR itself.”18 In Judge a writ. The Court found estoppel would not Morgan’s view, “the broad reading of Shaw apply because the PTAB never instituted the renders the IPR estoppel provisions essentially grounds it found redundant.10 “Shaw did not meaningless because parties may pursue two raise — nor could it have reasonably raised— rounds of invalidity arguments as long as the Payne-based ground during the IPR.”11 they carefully craft their IPR petition.”19 Here, A few months after Shaw Indus., the Judge Morgan’s concern centered on judicial Federal Circuit again addressed estoppel economy and efficiency: “It would waste this under § 315(e). Like Shaw Indus., the appeal Court’s time to allow a stay for a year during in HP Inc. originated from an IPR proceeding IPR proceedings and then review invalidity before the PTAB.12 In the IPR proceeding, the PTAB’s final written decision ruled in the petitioner’s favor on all but one claim — claim 13.13 HP, the petitioner, challenged the PTAB’s decision not to institute an IPR is now an all-or-nothing proposition and there will be no obviousness ground asserted grounds raised but not instituted. against claim 13.14 The Federal Circuit found that it lacked jurisdiction to review the PTAB’s decision not to institute the obviousness ground asserted against claim 13 under 35 U.S.C. § 314(d). Under that section, institu- arguments that Defendants could (and per- tion decisions are “final and nonappealable.”15 haps should) have raised in their IPR peti- Like Shaw, HP raised the estoppel pro- tion.”20 As of this writing, no other decision in vision of § 315(e) as another reason why the the Eastern District of Virginia addresses IPR appeals court should reevaluate the PTAB’s estoppel. This leaves alleged infringers in the institution decision.16 According to the Eastern District of Virginia with an either/or Federal Circuit, however, estoppel would not proposition — pursuing an IPR or pursuing apply because “noninstituted grounds were invalidity based on prior art in district court not raised and, as review was denied, could — that alleged infringers in other districts do not be raised in the IPR.”17 It would appear not face. www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 21 INTER PARTES REVIEW ESTOPPEL

Other district courts define the bound- In the underlying PTAB proceedings, aries of Section 315 estoppel differently than IBM successfully used the PTAB’s joinder Judge Morgan. For example, the District of rule (37 C.F.R. § 42.122(b)) to join IPRs filed Delaware—a district that hears a dispropor- earlier and already instituted by the PTAB. tionately large number of patent cases every Under § 42.122, a petitioner can request year—has conflicting intra-district decisions joinder within one month after institution on IPR estoppel.21 of an earlier-filed IPR by filing a new peti- Judge Sue Robinson addressed estoppel tion against the same patent and a motion in January 2017 in what she characterized for joinder.29 IBM opposed estoppel before as an issue of first impression in Intellectual the district court by arguing that joinder Ventures I LLC v. Toshiba Corp.22 Specifically, practice before the PTAB required it, as the does Section 315 bar an IPR petitioner, here second (joinder) petitioner, to assert the same Toshiba, from asserting an invalidity argu- grounds of unpatentability (same prior art) as ment it never raised, but reasonably could those asserted in the IPRs that IBM sought to have raised, in the IPR? After considering join.30 The court disagreed stating that “there arguments from both the patent owner and is no ‘mirror image’ rule for joinder.”31 Toshiba, as well as the Federal Circuit’s deci- In the same opinion, Judge Jordan sion in Shaw Indus., Judge Robinson conclud- granted partial summary judgment of no ed that Section 315 did not estop Toshiba. infringement.32 The parties later entered a “That outcome appears to be inconsistent stipulation addressing the remaining issues in with all of the limitations imposed by the the case and appealed. On appeal, the Federal PTAB on IPR proceedings (e.g., page limits Circuit affirmed under Rule 36.33 The Federal for petitions, 14 point type, and portrait-view Circuit’s Rule 36 affirmance did not resolve claim charts) and leaves for trial only those the conflicting estoppel decisions within the references initially rejected by the PTAB.”23 District of Delaware, leaving parties litigating She noted that her options were based on in this forum without clear guidance. different policy considerations with very dif- Alleged infringers in the Northern ferent consequences. Judge Robinson allowed District of California — another district with Toshiba to present its invalidity arguments a large docket of patent cases—also face some at trial because it was not her place to make uncertainty on the meaning of Section 315 policy decisions. But she specifically noted estoppel. In Verinata Health v. Ariosa, the that “an appeal may clarify the issue for future patent owner moved to strike the defendants’ judges in future cases.”24 The parties later invalidity contentions based on IPR estop- stipulated to dismiss all claims with preju- pel.34 Judge Susan Illston granted-in-part and dice.25 Therefore, no party appealed Judge denied-in-part plaintiff’s motion. The Judge Robinson’s estoppel decision. denied the motion for any prior art combina- But in another Delaware decision that tions asserted by defendant, and IPR petition- issued one month after Toshiba Corp., Circuit er, Ariosa where “the PTAB did not institute Judge Kent Jordan from the Court of Appeals on this ground.”35 But she granted the motion for the Third Circuit, sitting by designation, to strike Ariosa’s prior art combination of took a narrow view of Section 315 in Parallel Bhallan and Binladen because this combi- Networks Licensing, LLC v. Int’l Bus. Machs. nation “is simply a subset of the instituted Corp.26 “Allowing [IPR petitioner] IBM to grounds.”36 In the underlying IPR, the PTAB raise arguments here that it elected not to reached a Final Written Decision on the com- raise during the IPR would give it a second bination of Bhallan, Binladen, plus another bite at the apple and allow it to reap the reference.37 Judge Illston applied estoppel to benefits of the IPR without the downside of the combination of Bhallan and Binladen meaningful estoppel.”27 For this reason, Judge even though that combination differed from Jordan held that Section 315 estopped IBM the ground presented to the PTAB. Judge from asserting “prior art references and com- Illston also applied estoppel to bar Ariosa’s binations that it reasonably could have raised anticipation by the Fan prior art reference before the PTAB.”28 because the PTAB addressed the Fan reference in its Final Written Decision.38 A jury

22 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org INTER PARTES REVIEW ESTOPPEL ruled in favor of the patent owner and against a Final Written Decision in an IPR), may need Ariosa, and Judge Illston entered Judgement to reexamine their opinions after the Supreme on January 29, 2018.39 Both parties appealed Court ordered the PTAB to institute on all the decision to the Federal Circuit, and as of grounds presented in an IPR petition if the this writing, briefing is underway.40 It does not PTAB deems any ground worthy of review.48 appear, however, that Ariosa appealed Judge This new directive will remove the uncertain- Illston’s order applying Section 315 estoppel.41 ty regarding grounds raised but not instituted In a second decision in 2017, Judge by the PTAB. IPR is now an all-or-nothing Illston added another wrinkle to Section 315 proposition and there will be no grounds estoppel in Advanced Micro v. LG. Defendant, raised but not instituted. and IPR petitioner, LG moved the court for Some of the nuances examined above, leave to amend its invalidity contentions to however, will continue to cause uncertainty. add two new prior art references.42 Judge For example, Judge Illston in Advance Mirco Illston denied in part LG’s motion. In an un- declined to estop a prior art combination derlying IPR petition, LG asserted one of the that included one reference that the PTAB two references it sought to add to its district considered during IPR. The strong language court contentions — Kurihara. Specifically, and judicial economy arguments raised by LG’s IPR petition asserted the combination of Judge Morgan in Cobalt Boats suggest he prior art reference Rich in view of Kurihara would not allow a similar situation. Until the and reference Lindholm in view of Kurihara.43 Federal Circuit provides clarity on these and The PTAB found against both combinations other uncertainties surrounding Section 315 in its Final Written Decision.44 Applying estoppel, alleged infringers must consider Section 315, Judge Illston estopped LG from these various estoppel decisions as they weigh asserting those two specific combinations LG whether to file an IPR petition and what asserted in the IPR “as well as the assertion of grounds to assert if they do file an IPR.q obviousness over Lindholm or Rich as stand- alone references.”45 But, this decision left Endnotes: 1 Leahy–Smith America Invents Act, Pub. L. No. 112- LG free to amend its contentions to include 29, 125 Stat. 284 (codified at 35 U.S.C. §§ 1–390 other prior art combinations that included (2012)). 2 35 U.S.C. § 315(e)(2). Kurihara. The parties in this case later stipu- 3 35 U.S.C. § 315(e)(1). lated to dismissal of all claims with prejudice, 4 Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc., leaving this estoppel decision unreviewed by 817 F.3d 1293, 1299-1300 (Fed. Cir. 2016) (hereafter “Shaw Indus.”) 46 the Federal Circuit. 5 HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347-48 (Fed. Cir. 2016) (hereafter “HP Inc.”). 6 Shaw Indus. at 1298. Looking Ahead 7 Id. at 1299. A handful of decisions in other district courts 8 Id. also examine the boundaries of estoppel 9 Id. at 1300. 10 Id. under Section 315.47 District courts that 11 Id. viewed estoppel narrowly (meaning an alleged 12 HP Inc. at 1341. 13 Id. infringer can assert prior art not addressed in 14 Id. at 1344-47. 15 35 U.S.C. § 314(d); HP Inc. at 1344-45. 16 HP Inc. at 1347. 17 Id. 18 Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 2-15- cv-21, at *5 (E.D. Va. June 5, 2017). 19 Id. at *5-6. 20 Id. at *6. 21 See, e.g., https://portal.unifiedpatents.com/litigation/analytics?filed_date=2018-01-01 --2018-12-31&flag=DC (2018: Delaware – 24.0%; P. Andrew Riley heads Mei & Mark LLP’s litigation N.D. California – 9.2%) (last accessed Jan. 21, 2019). practice based in Washington, D.C. A patent attorney 22 Intellectual Ventures I LLC v. Toshiba Corp., Civ. with more than 15 years of intellectual property No. 13-453, at *2 (D. Del., Jan. 11, 2017) (hereafter litigation experience, he helps clients achieve their “Toshiba Corp.”). business and legal objectives as lead counsel in 23 Toshiba Corp. at 3. U.S. district court, the ITC, inter partes review 24 Id. proceedings, and appeals. He can be reached at [email protected]. IPR continued on page 53 www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 23 Virginia Tech’s Innovation Campus to Spawn New Patent Ecosystem in Northern Virginia by Philippe Signore

Innovation Campus conceptual rendering courtesy of Virginia Tech

In mid-November 2018, Amazon commitment to build a one million-square- foot, technology-focused campus just down grabbed headlines when it announced the road in Alexandria.2 The $1 billion project it will build part of its new headquar- is part of a comprehensive higher-education ters in Northern Virginia.1 The site package, called the Virginia Tech Innovation Campus, that will significantly bolster the for HQ2 had been long-awaited after technological talent pool in the area. As U.S. a national “beauty contest.” Amazon Sen. Mark Warner (D-VA) stated, “[it] will decided to place major new office transform Virginia’s high-tech economy while also providing a pipeline of talent to industry complexes in the Crystal City section all over Virginia, including Amazon. Once of Arlington, which is being renamed fully launched, it will benefit educational National Landing. This will rejuvenate institutions and regions across the commonwealth.” an area filled with office buildings that This technological development will were developed in the 1970s, and once not start from scratch, but will benefit from housed the U.S. Patent and Trademark Virginia Tech’s long-standing excellence in computer science, engineering, data analytics, Office and various patent law firms and technology. The University ranks No. 8 in that have now relocated to Alexandria. the nation for engineering research expen- ditures, according to the National Science The HQ2 announcement almost entirely Foundation Higher Education Research and overshadowed another major report that Development Survey, and the College of Virginia Tech would be making a historic Engineering ranks No. 13 for its undergradu-

24 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org VIRGINIA TECH’S INNOVATION CAMPUS ate program, according to U.S. News & World the Campus itself will need to secure patent Report’s 2019 rankings. rights. The Campus’ mix of research, business, The vision for the Alexandria Innovation and industry partners will create an entirely Campus is to “offer leading programs in new patent ecosystem. computer science and software engineering. It According to the Association of is expected to be a global center of technology University Technology Managers, academic excellence and talent production, supporting research fuels impressive economic gains. For graduate education, attracting top-tier faculty, example, in 2017, a record 1,080 start-ups sparking research and partnerships, and were formed, and a record 7,459 US patents igniting the region’s innovation economy.”3 issued as research institutions invest and The program is part of Virginia’s “promise protect their IP from academic research.5 to Amazon that it would double the num- Combining such innovative energy with in- ber of graduates with degrees in computer dustry engines creates jobs, economic growth, science and related fields, ensuring the tech and innovative new products and services. giant will have a steady pipeline of talent for Such collaborations between academia and the 25,000-plus jobs it plans to bring to the industry have repeatedly happened around area.” 4 Virginia is also investing $375 million the country and the world. Understanding for new master’s programs at George Mason the advantages, companies have placed R&D University’s Arlington campus. centers near major research universities for In 2019, we can expect to see the first 100 decades. Most famously, Silicon Valley, with master’s degree students enroll at Virginia its proximity to Stanford and University of Tech’s Alexandria campus and 50 tenure-line California, Berkeley, has long been a prime and research faculty will join initially. Within model for an innovation ecosystem. Another five years, the campus will host about 500 example is the large medical-technology master’s students and eventually enroll 750 clusters in Minneapolis, with the University master’s candidates, in addition to doctoral of Minnesota and its dedicated Medical students and postdoctoral fellows. Devices Center for research. Greater Boston, Some of the largest IP law firms in home to several world-class institutions of the U.S. are located just minutes from the higher education, has attracted many health Innovation Campus and are prepared to assist care companies and other industries. These with these developments. The new gradu- various centers have grown to become patent ate school, which will focus on academics, generators. research, and industry, will create an entire- As reported in the Harvard Business ly new industrial eco-system in the area. It Review by Kenneth Lutchen, the dean of will provide a new talent pool of top-notch Boston University’s College of Engineering, graduates who may want to enter the patent one key to success in the collaborations be- profession; business development opportuni- tween companies and universities is a flexible ties for protecting the innovations emanating Innovation Campus continued on page 53 from this high-tech hub; and increased value in local real-estate assets. In fact, leasing rates are already increasing. Of the countless benefits Virginia Tech’s Innovation Campus will bring to the greater Alexandria area, the one the intellectual property community is most excited about is the potential influx of new patent work for protecting inventions generated from this high-tech, industrial hub. Philippe Signore, Ph.D., is the managing partner of Oblon, one of the largest law firms in the United States The Campus should energize the local focused exclusively on intellectual property law. For start-up culture and create a spawn of spin- more than 50 years, Oblon has provided a full range of intellectual property services from IP transactions and off start-up companies that will require litigation to trademark and design for industries, such robust IP protection for their inventions. as chemicals, electronics and software, heavy industry, Since the institution is focused on research consumer products, life sciences, and energy and renewables. Signore can be reached at psignore@oblon. and development, it’s also very likely that com or (703) 412-6389. www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 25 A Fresh Look: The Defend Trade Secrets Act and Recent Developments by Charles B. Molster III and Mary C. Zinsner

Trade secrets litigation in the U.S. amount-in-controversy requirement.1 The act changed significantly in May 2016 did not preempt state trade secrets statutes, most of which are versions of the Uniform with the passage of the Defense of Trade Secrets Act (UTSA), such as the Virginia Trade Secrets Act (DTSA or Act) of Trade Secret Statute.2 2016. The Act was broadly supported To state a claim under the Defense of by corporate America and had bipar- Trade Secrets Act, a plaintiff must allege tisan support in Congress (a rarity trade-secret misappropriation as follows: • Plaintiff has information subject to even then). “reasonable measures” of secrecy3; • That information has or had competitive, Now, almost three years later, some of the economic value from “not being readily dust is settling and the law is developing. The ascertainable through proper means”4; and purpose of this article is to provide back- • The Defendant acquired, used or ground regarding the act, identify develop- disclosed that information through “im- ments in the trade secret world that have 5 occurred since the passage of the act, and proper means.” highlight litigation strategies. These elements are very similar to the USTA.

BACKGROUND Interstate Commerce Requirement The DTSA contains an interstate commerce New Federal Cause of Action requirement that the trade secret must be The DTSA created a new federal private right “related to a product or service used in, or of action, and conferred federal question intended for use in, interstate or foreign jurisdiction in U.S. District Courts, with no commerce.”6

26 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org THE DEFEND TRADE SECRETS ACT

Remedies Under the Act outweighs the interests of the defendant and/ The DTSA includes a number of remedies for or third parties; that a Rule 65 injunction misappropriation of trade secrets, including would not be sufficient; likelihood of success injunctive relief; monetary damages; double on the merits; the person against whom the or punitive damages for willful and malicious order is sought has actual possession of the misappropriation; and the provision for ex trade secret or property to be seized; and such parte seizures. person “or persons acting in concert with such person, would destroy, move, hide, or Injunctions otherwise make such matter inaccessible to Regarding injunctions, the DTSA provides the court, . . .”12 that an injunction may be granted “to prevent The court must make certain findings any actual or threatened misappropriation,”7 (i.e., narrowest seizure possible, require secu- and that a court may require affirmative ac- rity by applicant), and a neutral law enforce- tion to protect the trade secret, bar disclosure ment official serves the seizure order (along of the trade secret, or condition future use of with the papers that the applicant submitted the trade secret upon payment of a reasonable to obtain the order).13 royalty.8 Any materials seized are retained in the The Act also provides for certain restric- custody of the court; the court must hold a tions on injunctive relief, including that the seizure hearing within seven days; and the injunction may not prevent anyone from court must protect the seized materials from entering into an employment relationship being disclosed to the public or destroyed or (seemingly attempting to eradicate the “inevi- damaged while in the custody of the court.14 table disclosure” doctrine), and the injunction A motion to dissolve or modify the seizure may not conflict with applicable state laws order may be filed at any time by the person regarding restraints on trade.9 harmed, and if a seizure order is wrongful or excessive, the person harmed may bring a Monetary Damages cause of action to recover damages, including The DTSA provides that damages are avail- punitive damages and attorney fees.15 able under the Act for the recovery of actual losses; any unjust enrichment that is not Whistleblower Protections compensated by the actual losses; a reasonable The Act also includes protections for whis- royalty for unauthorized disclosure or use of tleblowers, including circumstances where an the trade secret; and exemplary damages of individual has disclosed the trade secret “in up to double the compensatory award in the confidence,” directly or indirectly, to federal, case of willful or malicious appropriation, as state, and local government officials; or to a well as attorney’s fees for willful or malicious lawyer and did so “solely for the purpose of misappropriation.10 reporting or investigating a suspected violation of law;” or in a document filed in court Ex Parte Seizures under seal; or in anti-retaliation lawsuits, pro- Upon a showing of “extraordinary circum- vided that the information is disclosed only to stances,” the Act provides that an ex parte sei- an individual’s lawyer, is filed under seal, and zure order may be requested to seize “proper- is not disclosed except by court order.16 ty necessary to preserve evidence or to prevent The DTSA also requires an employer to the propagation or dissemination of the trade “provide notice of the immunity . . . in any secret” at issue. The legislative history reflects contract or agreement with an employee that that the drafters of the DTSA specifically governs the use of a trade secret or other contemplated the use of the ex parte seizure confidential information.”17 This provision order in cases where “a defendant is seeking applies to all contracts entered into or updat- to flee the country or planning to disclose the ed after the date of enactment (May 11, 2016) trade secret to a third party immediately or is and applies to employees, contractors, and otherwise not amenable to the enforcement of consultants.18 If an employer fails to provide the court’s orders.”11 such notice, the employer “may not be award- To seek relief, an applicant must make a ed exemplary damages or attorney fees under proper showing based on an affidavit or veri- subparagraph (C) or (D) of section 1836(b) fied complaint of immediate and irreparable (3) in an action against an employee to whom injury; that the potential harm to the plaintiff notice was not provided.”19 www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 27 THE DEFEND TRADE SECRETS ACT

DEVELOPMENTS SINCE THE PASSAGE Pleading Trade Secrets with Specificity and OF THE ACT “Reasonable Measures” Litigation Many trade secret claims have been dismissed With that background, and as we approach where a plaintiff has pleaded trade secrets the DTSA’s third birthday, where are we now? claims in conclusory fashion without iden- Some observations follow. tifying specific trade secrets stolen. Notably, the Act does not require pleading trade secret Increase in Federal Court Filings claims with particularity, while many state Not surprisingly, federal court filings of trade trade secret laws contain such a predicate.25 secret cases have increased since the Act was Pleading trade secrets with particularity can passed. In July 2018, the legal data analytics be problematic given that disclosure in a pub- firm Lex Machina released its first ever Trade licly-filed complaint eliminates the secrecy Secret Litigation Report.20 The report found and can destroy the status as secret intellec- that, between 2009 and 2016, trade secret suit tual property. A careful balance is therefore filings generally remained within a range of necessary, and more recent decisions have 860 to 930 cases per year. In 2017, however, rejected a “reasonable particularity” standard there was an increase to 1,134, and through in favor of the standards articulated by the the first half of 2018, 581 federal trade secret Supreme Court in Twombley and Iqbal.26 cases had been filed (in general, about a 25 A body of caselaw has also developed percent increase in federal filings since the act over the “reasonable measures” to protect se- was passed). Those numbers appear to be the crecy that a trade secret plaintiff is required to most recent data available. prove for recovery. In Yellowfin Yachts, Inc. v. Barker Boatworks, LLC,27 the Eleventh Circuit affirmed a district court’s grant of summary judgment in favor of the former employee/de- ... the Act does not require pleading trade secret claims fendant because the plaintiff had failed to in- with particularity, while many state trade secret laws struct the defendant how to secure company information on his personal devices, allowed contain such a predicate. the defendant to access information after he refused to sign a confidentiality agreement, and failed to mark supposedly trade secret Interstate Commerce Requirement information as confidential. To support federal jurisdiction, the Act only Similarly, in Call One, Inc. v. Anzine,28 applies to trade secrets that are related to the court granted summary judgment in “interstate or foreign commerce” through favor of the former employee/defendant after an actual or intended product or service. concluding that a reasonable jury could not As anticipated, most courts have found this find that the defendant misappropriated requirement to be satisfied.21 the plaintiff’s trade secrets in violation of Some courts have questioned whether the the act, because the plaintiff failed to label interstate commerce requirement is jurisdic- the supposedly trade secret information as tional,22 and some courts have raised the issue confidential. The court held that even though of the trade secret’s relationship to interstate the customer report at issue was not known commerce sua sponte.23 Another interesting to the public, and the plaintiff’s corporate issue raised by a defendant is whether the policies prohibited employees from disclos- trade secret must itself relate to interstate ing confidential information, the plaintiff’s commerce, or whether the misappropriation written policies required employees to label must also relate to interstate commerce.24 all confidential information and trade secrets as such. Because the customer report was Practice Pointer: Plaintiff’s counsel should not labeled as such, the court found that the be sure to include sufficient allegations of the plaintiff had not taken sufficient reasonable relationship of the trade secret to interstate measures to protect the secrecy of the asserted commerce — and that the trade secret is trade secrets. a “product or service” if that is accurate. Defense counsel should be on the lookout Practice Pointer: Counsel should plead for infirmities in the complaint regarding the trade secret claims with as much specificity allegations of interstate commerce. as possible, without destroying secrecy by

28 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org THE DEFEND TRADE SECRETS ACT identifying each specific trade secret taken. the precise relief sought, taking care not to Companies must take appropriate steps prohibit employment and instead define the to ensure that their employees follow the prohibited conduct and limit the scope and requirements outlined in corporate policies, geographic areas. including the policies that govern access to, and dissemination of, confidential informa- Monetary Damages and Disgorgement tion and trade secrets. Companies must also While monetary damages are at issue in every ensure that access to trade secrets is immedi- civil case, the DTSA provides an additional ately and automatically terminated for every remedy known as disgorgement of profits departing employee. arising from unjust enrichment. A plaintiff bringing a claim under the federal act can Injunctions recover actual loss caused by the misappro- Injunctions under the DTSA may not be priation, plus any unjust enrichment gained entered if they would “prevent a person from by the defendant to the extent this unjust en- entering into an employment relationship.” richment is not included in computing actual Thus far, courts have taken different positions loss. Disgorgement is an equitable remedy on the meaning of this clause. A Colorado dis- to prevent a defendant from being unjustly trict court enjoined the former employee/de- enriched from illegal actions. fendant from obtaining employment with the In Texas Advanced Optoelectronic plaintiff’s competitor because, in part, there Solutions Inc. v. Renesas Electronics America was other “employment for which Defendant Inc., f/k/a Intersil Corporation U.S.37, the appears qualified.”29 A Louisiana district court Federal Circuit addressed the issue of appor- vacated a temporary restraining order to the tionment relating to claims for damages in extent that it restricted the former employee/ cases involving trade secrets. While the trade defendant from obtaining employment with secret claims in that case were brought under a competitor, determining that an injunction Texas common law (along with patent claims under the Act cannot “effectively prevent under federal law), the issues regarding dam- him from competing as an employee” of the ages and apportionment are also applicable to plaintiff’s competitor.30 A South Carolina damages claims brought under the DTSA. district court entered a preliminary injunc- The jury in the underlying case returned tion because it did not constitute a “blanket a verdict for the plaintiff on all claims and prohibition preventing Defendants from awarded $48,783,007 in disgorgement of entering into any employment relationships,” Intersil’s profits and $10 million in exemplary but rather enjoined employment relationships damages for trade secret misappropriation, as only within a particular industry.31 well as additional damages for patent in- The Act does not eliminate the require- fringement and several other state law claims. ment of pleading and proving irreparable in- In an opinion written by Judge Richard jury when an injunction is sought. The Tenth Tarranto, the Federal Circuit reversed the Circuit has held that a federal court may not finding of liability based on two out of three presume irreparable harm under the Act or of the alleged trade secrets but affirmed the its UTSA analogs.32 Those statutes “merely defendant’s liability for trade secret misappro- authorize and do not mandate injunctive priation. However, the plaintiff’s calculation relief,” and “thus do not allow a presumption of monetary relief did not distinguish among of irreparable harm.”33 Some courts have the three grounds for misappropriation. required the plaintiff to show that the irrep- Moreover, the plaintiff’s damages expert arable harm will occur “during the pendency did not explain which of the trade secrets of the litigation.”34 However, some courts contributed to what amount of the defen- have presumed irreparable harm from trade dant’s profits that should be disgorged, and secret misappropriation itself.35 Some courts instead the expert assigned all profits to the have also found that loss of market share and misappropriation of all trade secrets. “On this goodwill constitute irreparable injury.36 record, we have no basis to conclude that the remaining ground for liability — the photo- Practitioners should provide a proposed diode structure trade secret — supports the order when they file for injunctive relief and entire award.” The court therefore vacated the order should specifically describe the trade secrets to be protected and set forth DTSA continued on page 54 www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 29 Beyond Trademark Registration: What Companies Need to Know About Protecting Their Trademark Rights by Robin Cooke Vance

A Certificate of Registration another.2 In the U.S., trademark use, which must be bona fide and not made merely to re- issued by the United States Patent serve rights in a trademark, is required to gain and Trademark Office often feels like rights in a trademark nationwide.3 The senior a “golden ticket” that, once obtained, user of a trademark generally enjoys rights in that trademark until it ceases use with no fully secures an owner’s rights in its intent to resume use, at which time the mark trademark. However, obtaining a fed- is abandoned.4 eral trademark registration is only the Although U.S. trademark law recognizes first step in protecting a trademark. a set rule on abandonment (i.e., a mark is abandoned when the mark owner ceases use Owners are still responsible for dili- with no intent to resume), there are several gently monitoring, maintaining and caveats. A trademark owner that reduces its enforcing rights in their trademark use of a mark, even significantly, will not lose its rights provided that the new level of use is after registration in order to prevent not de minimis. Furthermore, an owner may constructive abandonment. Knowing cease use all together without abandoning how such abandonment might occur its rights so long as it intends to resume use within a reasonable period of time. Finally, a is therefore key to maintaining trade- trademark owner that makes modifications to mark rights. “update” a trademark may still retain its rights in the old version. The Lifecycle of a Trademark A trademark (a brand) is any “word, name, Maintaining Rights in a Mark symbol, or device” that is used to identify It is axiomatic under U.S. trademark law the source of a particular good or service.1 that a company’s trademark rights hinge on Trademarks thus provide consumers with a familiar concept: “use it or lose it.”5 For a helpful information — they can quickly locate registered trademark, such use must satisfy products by identifying the trademark that the “use in commerce” requirement of the distinguishes one sought-after product from Lanham Act, which requires a “bona fide use”

30 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org BEYOND TRADEMARK REGISTRATION where the trademark is placed on the goods, Maintaining adequate use of legacy the product packaging, or a display associated brands can be quite important. There are therewith, and the goods are sold or trans- multiple businesses in the United States today ported in commerce.6 For service marks, use who search for evidence of “abandonment” in commerce is satisfied when the mark is of brands, and then claim ownership of the “used or displayed in the sale or advertising allegedly “zombie” brand and attempt to cap- of services” and the services are “rendered in italize on the brand’s remaining goodwill.16 commerce.”7 While several courts have indicated that con- Use of the trademark must also meet a tinuing goodwill in a legacy trademark should certain threshold, that is, use must be more bar use by a third party17, that may not deter than de minimis. Although there is no set an opportunistic infringer from attempting to level of what constitutes de minimis use, cases capitalize on a company’s hard-earned good- considering the question demonstrate that will by arguing abandonment, thus forcing minimal use often qualifies, including by way the mark owner to litigate to protect its brand. of example: a single sale of a luggage set in a two year period,8 two sales of goods bear- Tacking of Trademark Rights ing the mark in a period of two years,9 and Trademark owners frequently modify and eighty-nine sales of perfume bottles over a update brands to reflect market trends and twenty year period.10 Thus, trademark owners consumer preferences. One example is the typically retain rights in their trademarks KFC Colonel Sanders logo, which has under- given the low threshold on use. gone multiple iterations in the last century.18 Furthermore, trademark owners inter- Another is the Starbucks “siren” logo, which ested in maintaining rights without using the the company has modified several times since trademark directly can avoid abandonment its founding in 1971.19 These modifications through third-party trademark licensing as and updates do not automatically cause a use of a trademark by a licensee inures to loss of rights in the original trademarks, even the benefit of the licensor.11 Licensing could when the original trademark is no longer in eliminate the financial output of producing use. Instead, in determining whether or not a product or providing a service and still such an update results in the loss of trade- maintain rights in the brand. Licensors must mark rights in the older version, courts con- be mindful, however, of the need to engage sider whether the newer version “retains its in quality control of licensed products and impact and symbolizes a continuing commer- services — a lack of quality control may itself result in an abandonment of trademark rights through a process known as “naked licensing.”12 There are multiple businesses in the United States today Finally, a trademark owner may cease who search for evidence of “abandonment” of brands, use of a mark without abandoning its rights provided the owner intends to resume use and then claim ownership of the allegedly “zombie” within a reasonable period of time. The length brand and attempt to capitalize on the brand’s remain- of time, even if significant, may not result in abandonment if sufficient evidence exists of ing goodwill. the owner’s intent to resume use. For example, in Adolphe Lafont, the Trademark Trial and Appeal Board held that evidence of the cial impression.”20 If the newer version creates petitioner’s attempts to find an acceptable a “continuing commercial impression,” then distributor for its products during seven years the owner can “tack” its rights in the newer of non-use was sufficient to defeat a presump- version to its rights in the older version to tion of abandonment.13 Indeed, even attempts keep the rights uninterrupted.21 by an owner to sell the trademark and its The issue of tacking often arises in associated goodwill have been found sufficient infringement disputes whereby the defendant to avoid abandonment.14 However, it typi- argues that the trademark owner has aban- cally takes more than mere testimony on an doned its rights, thereby allowing the defen- owner’s intent to resume use to overcome a dant to take over the trademark. Consider the finding of abandonment.15 fact pattern in Reynolds Consumer Products www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 31 BEYOND TRADEMARK REGISTRATION

Inc. v. Handi-Foil Corp.22 Reynolds is a defendant introduced evidence of more than well-known manufacturer of aluminum foil seventy trademark registrations for marks products found “in a strikingly large number identical or highly similar to the plaintiff’s of United States households.”23 Reynolds uses trademark, many of which registered in a distinctive look for its product packaging, connection with related goods.29 As a result, initially protecting such rights through federal the Fifth Circuit held that the plaintiff’s lack trademark registrations in 1977. Reynolds has of enforcement significantly narrowed its since then updated and revised its product rights in the trademark.30 In another case, the packaging at least three times. Handi-Foil Supreme Court held a trademark had become claimed that due to these various updates generic as the result of the trademark owner’s Reynolds abandoned its rights in the original failure for twenty years to prevent use of the product packaging elements protected by the trademark as the dictionary term for the good 1977 registrations issued.24 The district court, identified.31 however, held the new packaging created a continuing commercial impression, and thus Conclusion Reynolds had not abandoned its rights.25 Trademark registration alone is insufficient to Because tacking is a fact-intensive preserve trademark rights. Instead, trademark and subjective inquiry, rights owners must owners must monitor, maintain and protect exercise caution when updating or rebrand- their rights and properly use their marks ing. In many cases, the most appropriate in commerce. Trademark owners must also strategy from a rights protection standpoint actively enforce their rights against suspected will involve overlapping use and overlapping trademark infringers. These efforts will help trademark registrations for new and old ver- ensure trademark owners reap the long-term sions of a brand. This type of strategy requires benefits of a commercially distinctive brand. careful coordination between business units q so that a company’s legal strategy matches its marketing and sales strategy. However, with Endnotes: 1 15 U.S.C. § 1127. careful planning companies can rebrand or 2 Jake Linford, Valuing Residual Goodwill After update without risking existing brand equity, Trademark Forfeiture, 93:2 Notre Dame L. Rev. and without allowing any periods where their 811, 819 (2017). 3 B. Gilpin, Note, Trademarks in Cyberspace: Fulfilling rights are vulnerable. the “Use” Requirement Through the Internet, 78 J. Pat. & Trademark Off. Soc’y 830, 831 (1996). Maintaining Rights through Brand 4 15 U.S.C. § 1127. 5 See Krystil McDowall, A Critical Look at “Use” Enforcement Maintaining trademark rights also requires policing the marketplace for infringing use. Infringing use does not only mean use of an identical trademark for identical goods or services — instead, trademark owners should also consider use of even similar trademarks in the same or related commercial spaces.26 While there is no requirement for owners to Robin Vance is a partner at McGuireWoods LLP, handling international intellectual property and enforce their rights against every potential technology development, protection, enforcement, infringer (owners have leeway to consider licensing, and commercialization matters for clients in the needs of their business); they should the entertainment, energy, biotechnology, life sciences, consumer products, and retail industries. She manages not adopt a “lackadaisical and laissez-faire” worldwide intellectual property portfolios for a variety attitude towards enforcement.27 A failure to of clients, including those having famous trademark rights, and regularly advises on IP transactional and enforce rights can result in a weakened and insolvency matters. Robin has extensive experience potentially unenforceable brand.28 with intellectual property licensing and development Trademark owners failing to enforce agreements and related transactions, domain name management and dispute resolution, e-commerce their rights can face severe repercussions, issues, data analytics, advertising law, trademark law, including significantly narrowed rights, or and copyright matters. Robin’s licensing experience in- even an entire loss of rights. For example, the cludes both for-profit and non-profit parties as well as universities and other educational institutions covering Fifth Circuit found that a plaintiff failed to a wide array of goods and services found in numerous adequately police the marketplace after the industries.

32 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org BEYOND TRADEMARK REGISTRATION

Under the Lanham Act, 4:2 N.Y.U. J. of 11 15 U.S.C. § 1055; 15 U.S.C. § 1127. Angeles Times (Jan. 5, 2013). Intell. Prop. & Ent. Law 226, 227 (2015) 12 See Linford, supra note 2, at 830. 17 McCarthy, supra note 6, at § 17:15. (citing Menashe v. V. Secret Catalogue, Inc., 13 Adolphe Lafont, S.A. v. S.A.C.S.E. Societa 18 KFC, Logopedia (last visited Jan. 27, 2019 No 05 Civ. 239 (HB), 2005 U.S. Dist. LEXIS Azioni Confezioni Sportive Ellera, S.p.A., 10:42AM), http://logos.wikia.com/wiki/KFC. 13324, at *18 (S.D.N.Y. July 7, 2005) (“‘Use 228 U.S.P.Q. 589, 1985 WL 71974 (T.T.A.B. 19 Starbucks, Logopedia (last visited Jan. 27, it or lose it’ is a fundamental precept of 1985). 2019 11:22AM), http://logos.wikia.com/ trademark law.”)). 14 See, e.g., Saratoga Vichy Spring Co. v. Lehman, wiki/Starbucks. 6 15 U.S.C. § 1127. “Commerce” is defined 625 F.2d 1037, 1044, 208 U.S.P.Q. 175 (2d 20 Thomas J. McCarthy, supra note 6, at § 17:26. as “all commerce which may lawfully be Cir. 1980) (non-use for seven years, with the 21 Berkley Technology Law Journal, Survey regulated by Congress.” What constitutes intent to sell the trademark and associ- of Additional IP and Technology Law “use in commerce” for trademark purposes ated business and goodwill, found to be Developments, 31 Berkeley Tech. L.J. 1169, has broadened over time, as the scope of “completely inconsistent with an intent to 1191 (2016). the commerce clause of the Constitution abandon the mark”). 22 Reynolds Consumer Products, Inc. v. Handi- has broadened. See Thomas J. McCarthy, 15 See, e.g., Rivard v. Linville, 133 F.3d 1446, Foil Corp., No. 13-cv-214, 2014 WL 794277 McCarthy on Trademarks, § 19:105 (5th 1449 (Fed. Cir. 1998) (finding that a trade- (E.D. Va. Feb. 27, 2014). ed. Nov. 2018 update). mark owner’s self-serving, after-the-fact 23 Id. at *1. 7 15 U.S.C. § 1127. “proclamations of his intent to resume or 24 Id. at *2. 8 Momentum Luggage & Leisure Bags v. commence use in United States commerce 25 Id. at *4. Jansport, Inc., No. 00 CIV. 7909 (DLC), 2001 during the period of nonuse are awarded lit- 26 See 15 U.S.C. §§ 1114, 1125. U.S. Dist. LEXIS 10253 (S.D.N.Y. July 23, tle, if any, weight.”) (citing Imperial Tobacco 27 McCarthy, supra note 6, at § 11:91. 2001). Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 28 Id. 9 United Plywoods Corp. v. Congoleum-Nairn, 1581, 14 U.S.P.Q.2d 1390 (Fed. Cir. 1990)). 29 Amstar Corporation v. Domino’s Pizza, Inc., Inc., 121 U.S.P.Q. 102 (T.T.A.B. 1959). 16 Timothy J. Lockhart, Did You Know…There 615 F.2d 252 (5th Cir. 1980). 10 La Societe Anonyme des Parfums Le Galion v. are Zombie Brands?, INTA Bulletin, Vol. 30 Id. Jean Patou, Inc., 495 F.2d 1265, 1272 (2d Cir. 63, No. 14 (2008); Ken Bensinger, Reviving 31 Saxlehner v. Eisner & Mendelson Co., 179 U.S. 1974). Brands That Aren’t Quite Forgotten, Los 19, 37, 21 S. Ct. 7 (1900).

Patents continued from page 18

Patent No. 10,125,969 Direct your holiday cheer only to the outside world. A woman in Lynchburg has invented a holiday window light that attaches to the inside surface of the glass. It seals against the window to prevent light leaks or reflected light into the room.

Patent No. D830,074 Out of Winchester comes this reconfigurable rocking chair patent, granted in October, that will swivel and rock whichever way its user decides.

Sources: uspto.gov and patents.google.com

www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 33 Always in Style: Intellectual Property in Clothing and Fashion Brands by Joan Bellefield Davis

Two red purses, one authentic (left) and one counterfeit, show the difficulty in verifying that luxury goods are real.

Americans spend over $250 products are placed into commerce, both the consumer and brand owner suffer. billion a year on fashion in the United Perhaps the most famous trademark case States.1 The legal issues that consti- involving fashion law is Christian Louboutin tute “fashion law” take many forms, S.A. v. Yves Saint Laurent Am. Holding, Inc.3 Christian Louboutin, a designer of high-fash- particularly in an evolving economy ion women’s footwear and accessories, where innovative start-ups are often has, since 1992, painted the outsoles of his replacing traditional fashion retailers.2 women’s high-heeled shoes with a high- gloss red lacquer. In 2008, he registered the Intellectual property law has played a red lacquered outsole as a trademark with huge role in fashion law over the past the United States Patent and Trademark decade, allowing designers protection Office (USPTO). In 2011, Yves Saint Laurent (YSL), another high-end fashion designer, of their name, stylized logos, colors, prepared to market a monochromatic red and packaging. A fashion designer’s shoe. This meant that the entire shoe was brand remains the most important red — including the insole, heel, upper, and outsole. Louboutin sued YSL alleging that piece of intellectual property they will YSL infringed upon Louboutin’s trademark ever own. by using red soles on the bottom of their red pumps. The district court denied Louboutin’s Trademarks, for one, protect the public from preliminary injunction holding that a single less than honorable merchants who put an- color can never serve as a trademark in the other company’s well-known brand name on fashion industry.4 Louboutin appealed. counterfeit products as a way to increase prof- The question before the appeals court its. When consumers hear the brand name was whether a single color could serve as a Chanel, or see the interlocked Cs, they imme- legally protected trademark in the fashion diately identify the products associated with industry and, in particular, as the mark for Chanel as luxury products. When counterfeit a particular style of high-fashion women’s

34 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org INTELLECTUAL PROPERTY IN CLOTHING AND FASHION BRANDS footwear. The second circuit assessed the registered with the U.S. Copyright Office each case by analyzing the doctrines of aesthetic of the five designs that Varsity alleged Star in- functionality and acquired distinctiveness fringed. Registering with the Copyright Office asking the following question: Does the red gives the registrant a rebuttable presumption sole mark merit protection as a distinctive of validity, and the Sixth Circuit found that mark? After considering a number of factors, the district court had erred by failing to give the court concluded that by placing the color greater deference to the Copyright Office’s red in a context that seems unusual, and registration determinations. Thus, the court deliberately tying that color to the product, held that Varsity successfully demonstrated Louboutin had created an identifying mark the first factor — that it owned a valid copy- firmly associated with his brand and was right in the designs. therefore a distinctive symbol that qualified Secondly, in order to prevail, Varsity had for trademark protection. The court further to demonstrate that Star copied the protect- held, however, that the secondary meaning able elements of the uniform’s designs. A of the red sole mark extended only to the use cheerleader uniform is a useful article, pos- of a lacquered red outsole that contrasts with sessing both useful functions and expressive the adjoining portion of the shoe. Therefore, features. When it comes to useful articles, only though the red sole mark qualified for trade- the expressive pictorial, graphic, or sculptural mark protection, YSL’s use of a red sole on a features that can be identified separately from, monochromatic red shoe did not constitute and are capable of existing independently trademark infringement. of, the utilitarian aspects of the article can Copyright law also offers designers be protected. Star asserted that the pictorial, another form of protection. In the U.S., a graphic, or sculptural features of Varsity’s fashion designer can register prints that are uniforms are inextricably intertwined with displayed on fabric used in their designs but the utilitarian aspects of the cheerleading uni- in most circumstances will not be able to form because they serve a decorative function register the actual design of the garment. In to the useful article. The court rejected this ar- 2017, the U.S. Supreme Court affirmed a Sixth gument, reasoning that such a holding would Circuit decision that considered copyright render “all fabric designs, which serve no protection involving graphics on a cheerlead- other function than to make a garment more ing uniform in Star Athletica, L.L.C. v. Varsity attractive, ineligible for copyright protection.” Brands, Inc.5 Because the court concluded that the graphic The plaintiff, Varsity Brands, is a leading features of Varsity’s designs could be identi- retailer of cheerleading uniforms and regis- fied separately from, and are capable of exist- tered copyrights for multiple graphic designs ing independently of, the utilitarian aspects that appear on their cheerleading uniforms. of the cheerleading uniforms, it held that Defendant Star Athletica also sells cheerlead- Varsity’s uniform designs were copyrightable ing uniforms bearing graphic designs that, pictorial, graphic, or sculptural works. Star according to Varsity, are substantially similar Athletica appealed to the U.S. Supreme court. to the designs for which Varsity held valid In a vote of 6–2, the United States Supreme copyrights. Star argued that Varsity’s copy- Court affirmed the Sixth Circuit’s decision on rights were invalid because the designs at issue March 22, 2017. were unprotectable designs of useful articles. Another area of law often cited in fashion The district court agreed. Varsity appealed. law disputes is trade and commercial secrets The question before the Sixth Circuit was regarding confidentiality, non-compete and whether the “pictorial, graphic, or sculptural non-disclosure agreements signed by employ- features” that are incorporated into the design ees. In Nike, Inc v Denis Dekovic, Marc Dolce, of a “useful article,” a cheerleader uniform, and Mark Miner,6 Nike sued three former can be identified separately from, and are employees, employed as shoe designers, for at capable of existing independently of, the least $10 million in damages. Nike’s complaint utilitarian aspects of the article. In order to alleged that the designers misappropriated prevail, Varsity had to demonstrate (1) that it Nike’s trade secrets and conspired with Adidas owned a valid copyright in the designs, and to start a new, competing business venture. In (2) that Star copied the protectable elements the complaint, Nike alleged that defendants of the work. In regard to the first question, knowingly violated several agreements signed the court found that Varsity had successfully with Nike at the outset of their employment. www.vsb.org INTELLECTUAL PROPERTY LAW | Vol. 67 | April 2019 | VIRGINIA LAWYER 35 INTELLECTUAL PROPERTY IN CLOTHING AND FASHION BRANDS

All three defendants signed non-competition involving fashion designs is rare, so this case agreements pursuant to which they agreed could have been a game changer in the fash- to: (1) not to compete with Nike during ion industry. We do not know how the courts and for a period of one year following their would have ruled, because the parties reached employment; (2) not to use or disclose any of a confidential out of court settlement. Nike’s confidential information and to return The fashion industry also intersects with all copies of such information upon leaving criminal law when it involves the prosecution Nike’s employment; and (3) not to solicit of those buying and selling counterfeit goods. other Nike employees away from Nike to a Counterfeit or “knock off” luxury goods cost competitor. the U.S. economy up to $250 billion in lost In addition, the complaint alleges that revenue every year. Most illegal distributors defendants also signed employee invention are caught selling online. Online retailing and secrecy agreements, by which each of giant Amazon now provides a brand registry them “assign[ed] to Nike all…inventions… which provides a streamlined process for conceived” during his employment term brand owners to find and report IP rights with Nike relating “in any way” to Nike’s violations. “business…or products.” Defendants further A significant case involving the coun- agreed to “disclose promptly and in writing terfeiting of fake purses is United States v. to Nike all [such] inventions … conceived or Smatsorabudh8, that was handled in the made by me during the term of my employ- Alexandria Division of the Eastern District ment with Nike whether or not such inven- of Virginia. For two years, the defendant, tions are assignable under this Agreement.” Praepitcha Smatsorabudh, an Arlington Nike claims the three designers stole a “trea- resident, ran an elaborate scheme to defraud sure trove of Nike products designs, research U.S. department stores in 12 or more states. information and business plans” in an effort Smatsorabudh would purchase authentic to market themselves to Adidas, and that Nike brand name luxury handbags from various will suffer irreparable harm in the form of department stores at their retail price, and lost market share, lost sales, and lost goodwill then return to the stores later with counterfeit due to the actions of its former employees. bags she had purchased from overseas. Ultimately, the parties came to a confiden- After “returning” the counterfeit bag, tial settlement agreement. However, this Smatsorabudh would then sell the authentic case demonstrates the measures that fashion bags online for thousands of dollars. The companies take when protecting against the Department of Homeland Security suspected exposure of confidential information consid- Smatsorabudh was importing counterfeit bags ered valuable to the company’s success. from Hong Kong and China after discovering Patent law, and in particular, design pat- that she received 32 inbound express ship- ents, is another area of intellectual property ments from Hong Kong between October law that offer some protection to fashion 2014 and November 2015. DHS searched designers. According to the USPTO, “a design Smatsorabudh’s email address pursuant to consists of the visual ornamental character- a warrant and found several emails between istics embodied in, or applied to, an article Smatsorabudh and individuals in China of manufacture. Since a design is manifested discussing the sale of counterfeit purses, in appearance, the subject matter of a design and a search of Smatsorabudh’s Arlington patent application may relate to the config- apartment produced multiple authentic and uration or shape of an article, to the surface counterfeit designer handbags. A criminal ornamentation applied to an article, or to the complaint was filed in May 2016, alleging that combination of configuration and surface or- Smatsorabudh violated 18 U.S.C. §1343 (Wire namentation.” In the last few years design pat- Fraud). The complaint alleged Smatsorabudh ents have become more popular as a method defrauded more than 60 department stores of protecting fashion designs. In Lululemon in 12 states out of a total of more than Athletica Canada v. Calvin Klein, Inc.,7 certain $400,000, according to the U.S. Attorney’s design patents were at issue, specifically pat- office. Further, Smatsorabudh flaunted the ents protecting the elastic waistband around stolen purses on an Instagram account named Lululemon’s best selling yoga pant named the RichGirlsCollection and sold goods on an Astro Pant. Lululemon alleged Calvin Klein had copied its design patent. Patent case law Fashion IP continued on page 53

36 VIRGINIA LAWYER | April 2019 | Vol. 67 | INTELLECTUAL PROPERTY LAW www.vsb.org Todd Pilot: Java Jackets, Physics, and the Meat Department by Deirdre Norman

Todd Pilot went into engineering because he was told that’s where the jobs were. And he started out teaching physics and working for IBM before making the leap into the law, because, he says, “As corny as it may sound, I saw lawyers as the protectors of the people: The wrongly evicted, the falsely arrested, the consumer taken advantage of, the person injured at the hand of another, that guy cheated in a business deal, the inventor whose invention was stolen by some big company — the only one who could help them was the lawyer.”

Pilot has now spent over 25 years working in the intellectual property arena, converting his childhood love of science and math into a flourishing legal career that began at NASA’s How did a kid from Akron, Ohio, grow Langley Research Center Patent Office, up to be a Virginia physicist and lawyer with wound through clerkships in the District of a roster of clients that has included Missy Columbia Superior Court, passed through Elliott, D’Angelo, writers and producers for a stint at the United States Department of artists such as Ludacris and Destiny’s Child, Commerce Patent and Trademark Office, that and a wide range of actors, athletes and enter- lead to a general counsel role for a satellite tainers? The equation is simple: A lot of hard communications provider, and culminat- work, a little luck, and an enormous amount ed in his boutique law firm in Old Town of support from friends and mentors. Pilot Alexandria called The Trademark Institute. states that “all of his clients have been referrals Since 1997, his firm has handled a variety of or introduced to him by friends, attorneys or litigation matters, with a specialty in patents, former clients.” trademarks, counterfeit enforcement, music Pilot is not only the first lawyer in his licensing, book licensing, and entertainment family, he is the first person to graduate from contracts of all kinds. college. His family, which includs two sisters Says Pilot of his time at NASA, “Suffice and a brother, moved to Virginia when he was it to say that drafting a patent application for in middle school after the well-paying jobs a hydraulic stress monitor was not the most generated by the Ohio rubber industry dried exciting work in the world.” He began to rep- up and went overseas. Pilot’s stepfather died resent athletes, then music artists in Virginia shortly after his family came to Virginia, and Beach, before expanding to representing to help his mother out he went to work at a entertainers all over the country. grocery store, stocking shelves all night and www.vsb.org GENERAL INTEREST FEATURES | Vol. 67 | April 2019 | VIRGINIA LAWYER 37 GENERAL INTEREST

VCU to science and math majors while he did so. But law school still loomed in the back of his mind. “It seemed crazy to throw away all of that technical training,” he says. “But patent law benefits from a degree in the sciences. I learned that many patent lawyers had master’s and PhDs in fields such as chemistry, physics, mathematics, and engineering.” In law school at William & Mary, Pilot wrote a 3L paper arguing for the patentability of software at a time when the copyright laws provided the primary protection for software. Today, a large number of his firm’s clients involve people looking to get an app patented. Despite the tech focus of his work, Pilot keeps Pilot, with his wife Dr. Sonia Pilot, a clinical psychologist and a small, folded-up piece of cardboard in his educator in the District of Columbia school system, who received office — the sort that comes on a hot takeout her doctorate from the University of Virginia. beverage. Sometimes called a “java jacket,” its sole purpose is to keep people who are hold- then often sleeping through class during the ing hot beverages from burning their hands, day — while still making As. “That grocery and, of course, it is patented. store should have been shut down for violat- “We use that simple device to remind ing child labor laws,” Pilot laughs. “But I was us that we are not the judge of marketability, happy to have that job. It seemed like every- only of patentability,” says Pilot. “We should one was trying to get a job there.” assume that no idea is too simple or too silly His work ethic at the grocery store got to patent.” him promoted to the meat department Pilot has also found the time to serve on (“They saw a real future in me as a butcher,” the Virginia State Bar’s Executive Committee he chuckles), where he no longer worked all and in leadership in a number of other night. But the job involved bagging chickens, bar associations, including the Alexandria cutting up beef loins, and cleaning the entire department long after the counter butchers Bar Association, the Old Dominion Bar had gone home at 5 p.m. Still, it was better Association, the American Bar Association, than the all-night stocking job. the Black Entertainment & Sports Law Association, and the Washington Area Lawyers for the Arts. It seemed crazy to throw away all of that technical train- At his heart, Pilot remains a science geek ing,” he says. “But patent law benefits from a degree in and is quick with an answer when asked where physics and the law intersect. “Physics the sciences. I learned that many patent lawyers had is very analytical. We conduct due diligence for clients considering the purchase of busi- master’s and PhDs in fields such as chemistry, physics, nesses with technology assets and patents. We mathematics, and engineering.” are never intimidated by the technology. It also helps to understand technology when Pilot’s math and science scores were reviewing and drafting teaming and joint ven- good enough in high school for him to enter ture agreements for our government contrac- into a dual degree program in physics and tor clients. Of course, it can be pretty difficult engineering at Virginia Commonwealth trying to get through a patent application University (VCU), run in conjunction with without the scientific and technical back- the University of Michigan. At VCU he also ground.” wrestled for the school in the 126-lb. weight Whether it’s a hydraulic stress monitor or class, and his uniform remains a source of the world’s next java jacket, Pilot, like all good endless amusement to his son. intellectual property attorneys, knows the Pilot went on to obtain his master’s in science behind the law, and the law behind the physics at Hampton University, teaching science. Todd Pilot may be reached at (703) 200-level physics classes at Hampton and 299-9500 or [email protected]. q

38 VIRGINIA LAWYER | April 2019 | Vol. 67 | GENERAL INTEREST FEATURES www.vsb.org The Watergate Scandal: What a Law Student Learned About the Rule of Law by Frederick M. Bruner

Watergate has become synony- mous with scandal. The 1972 break-in spawned one of the darkest periods in our country’s history, but for me, when I think of Watergate, I recall how it enriched my law school experience and taught me the essential role lawyers must play to preserve our system of government.

Watergate was the backdrop during my years at the University of Virginia’s School of Law from 1972 to 1975. The burglary and wiretapping of the Democratic National Committee headquarters at the Watergate Complex in Washington, D.C., took place on June 17, John W. Dean III and wife Maureen Dean in the Senate Watergate Committee Hearing Room during Dean’s 1972, less than three months before my first second day of testimony. Photo credit Everett Collection Historical / Alamy Stock Photo year. Throughout that year, the front pages of The Washington Post regularly provided new information about the break-in and those had been revealed through testimony before arrested for the crime, but there was little or the Senate Watergate Committee. Cox and no discussion in my first-year classes about Congress issued subpoenas for those tapes, the unfolding scandal. President Nixon was but Nixon resisted turning them over. On re-elected by a landslide in November 1972, October 19, 1973, Nixon directed Cox to and the Watergate burglars were convicted withdraw his subpoenas. In a televised news of conspiracy, burglary, and wiretapping in conference, Cox responded that he would January 1973. Then, in April 1973, White continue to pursue the tapes. House Counsel John Dean began cooper- These events set the stage for what be- ating with federal prosecutors. By the end came known as the Saturday Night Massacre, of that month, Dean had been fired by the which occurred on Saturday, October 20, White House, and the acting FBI Director, as 1973. That evening, President Nixon ordered well as the White House Chief of Staff and his new attorney general, Elliot Richardson, the Attorney General, had resigned. Before to fire Special Prosecutor Cox. Richardson re- my first year of law school ended, the Senate fused to comply with the order and resigned. Watergate Committee hearings were being Nixon then ordered the deputy attorney televised and an independent special pros- general, William Ruckelshaus, to fire Cox. He, ecutor, Archibald Cox, had been appointed too, refused the order and resigned. Robert to investigate whether there had been any Bork, the solicitor general, then became the presidential impropriety. During the summer acting attorney general and he discharged Mr. of 1973, between my first and second years, Cox. That evening, Archibald Cox issued the Nixon’s Oval Office tape recording system following statement: www.vsb.org GENERAL INTEREST FEATURES | Vol. 67 | April 2019 | VIRGINIA LAWYER 39 GENERAL INTEREST

Whether ours shall continue to be a That those alone may be servants of the government of laws and not of men is now law who labor with learning, courage and for Congress and ultimately the American devotion to preserve liberty and promote people [to decide.] justice. My first class on Monday, October 22, 1973, was an ethics class taught by the law That lecture by Dean Turnbull has helped me school’s dean of admissions, Albert Turnbull, to understand and remember that a lawyer’s a soft-spoken Virginia gentleman who fre- duty to stand up for the rule of law is essential quently kept our attention by sharing stories for the preservation of liberty and justice. from his own legal experience related to the Following the Saturday Night Massacre, ethical issues being discussed in class. It was Leon Jaworski was appointed to be the new not uncommon to laugh a bit in his class, but independent prosecutor on November 1, on that day in October, Dean Turnbull’s de- 1973. Then, in March of 1974, seven men meanor as he started class was very unusual. with direct ties to the White House were There was no smile on his face as he closed indicted. That group, known as the Watergate his textbook and in a stern voice, spoke about Seven, included former Attorney General the firing of Cox. Finally, for the first time John Mitchell, White House Chief of Staff since I had been in law school, the events in H. R. Haldeman and John Ehrlichman. Impeachment hearings started in May and the Supreme Court ordered Nixon’s tapes to be None of the defendants appeared to be looking at Dean released on July 24, 1974. Nixon resigned on August 9, 1974. while he testified. It struck me that all these men had risen I returned for my third year of law school in September 1974 and signed up for a crim- to great power in our government. It also struck me that inal process seminar which was taught that fall by a practicing attorney from Washington, nearly all of them had done so because of their successful D.C., who traveled to Charlottesville to conduct weekend classes. Our professor was a legal careers. friend of Judge John Sirica who was presiding over the trial of the Watergate Seven and, as a result, he was able to get us in to see the Washington were going to be the topic of the trial on an afternoon when John Dean was day. I will never forget the passion with which testifying for the prosecution. I was seated on Dean Turnbull described what he referred to the front row of this small courtroom. In the as a constitutional crisis. At that moment, I re- aisle next to me was the courtroom artist who alized how fortunate I was to be in that class- was busy drawing John Dean as he faced the room at that time. Dean Turnbull did not use defendants, who were all within arms-reach the Socratic method that morning. Instead, of me. None of the defendants appeared to be he delivered a lecture which he obviously looking at Dean while he testified. It struck had prepared over the weekend about the me that all these men had risen to great power events on Saturday night in Washington. The in our government. It also struck me that classroom was silent while he spoke. Everyone nearly all of them had done so because of was leaning forward with eyes riveted on their successful legal careers. I wondered how Dean Turnbull as he described in heroic terms their lives had gone so wrong. Although I was the actions of Elliot Richardson, William disheartened by the notion that these success- Ruckelshaus, and Archibald Cox. Suddenly, ful lawyers had engaged in criminal conduct for what probably was the first time, I felt a that could have undermined our democracy, deep sense of pride for my chosen profession it was inspiring to observe, from my front row because of the principled actions of these seat, this critical moment in American history attorneys. Their actions gave meaning to the as our legal system brought these men to words I read every morning as I entered the justice. law school building. There, above the door- My law school class graduated on May way, was the following inscription: 26, 1975. Our commencement speaker was

40 VIRGINIA LAWYER | April 2019 | Vol. 67 | GENERAL INTEREST FEATURES www.vsb.org GENERAL INTEREST my first-year property law professor, Thomas Bergin, who used that opportunity to challenge us to take responsibility for making work what he called “our country’s new experiment in democracy.” To explain why he considered our Constitution to be a “new experiment,” he pointed out that his grand- Frederick M. Bruner graduated from Hampden- mother had been born in the same year that Sydney College in 1972 and from the University Thomas Jefferson and John Adams had died, a of Virginia School of Law in 1975. After 20 years in private practice as a trial attorney in period which consisted, in his case, of just two Norfolk and Richmond, he joined the Virginia long generations. Professor Bergin warned us Workers’ Compensation Commission as a Deputy Commissioner in the Alexandria office in 1995 and that the roots for our democratic system did moved to the Richmond office in 1997. He presided not run deep and could be destroyed if we over Workers’ Compensation hearings throughout the commonwealth until 2016. He now manages the com- neglected our duty and allowed to erode the mission’s Compromise Settlement Department. constitutional guarantees of liberty, justice, and equality. He stressed the important part we should play as lawyers in determining the fate of our system of government. Politics and lawyers have always been inextricably intertwined, a Venn So now, when I think of Watergate, I diagram with much intersection. As early as 1875 when Ulysses S. Grant think of Dean Turnbull’s passionate lecture appointed John Henderson to investigate alcohol tax revenue corruption, about the heroism of the men who stood up for the rule of law. Although I am also re- numerous Presidents have appointed or been investigated by lawyers minded of the shame on the faces of the men known as special counsel. In all, 29 men and women have filled that legal who attempted to undermine our democracy, role, with President Clinton being the subject of the most investigations I am proud to have witnessed how our legal (12), and President Reagan coming in second with six, according to the system dealt with their conduct. Most im- Saturday Evening Post. The position is rarely a popular one, and Kenneth portantly, Watergate reminds me of Professor Starr, who investigated the Clintons, once referred to himself as a “skunk Bergin’s challenge to take responsibility for at a garden party” as he was being escorted from the White House. making this new experiment in democracy succeed. q

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www.vsb.org GENERAL INTEREST FEATURES | Vol. 67 | April 2019 | VIRGINIA LAWYER 41 Renters and Landlords Benefit from Virginia Reforms by Helen Hardiman and Clarence Dunnaville

Helen Hardiman (right) and Clarence Dunnaville

There is no more effective way Our last article in the February 2019 issue of Virginia Lawyer shared stories of two real-life to reduce evictions than for a tenant evictions suffered by James and Carolyn.1 You to have a lawyer in court. While we may remember that James was evicted after applaud the Virginia legislature for only a few months because his utility bills quickly mounted and forced him to choose passing reform bills that make the between heat and rent. Carolyn was evicted Virginia Residential Landlord Tenant after she withheld rent from her absentee Act (VRLTA) fairer to tenants, our call landlord who refused to perform necessary maintenance. In both cases, families with for lawyers to participate more fully minor children were rendered homeless. Such in these cases remains clarion. Better stories are too common in Virginia, where laws enforced by competent coun- our landlord-tenant laws seem correlated with higher-than-average eviction court filings.2 sel are a winning combination for Fortunately, the VRLTA has undergone Virginia renters and property man- essential renovations this General Assembly session. agers. We hope our colleagues across the state will learn and enforce the The Virginia Legislature Responds letter of the new laws in order to help Our previous article detailed six proposed legislative solutions that were introduced in the tenants avoid eviction and maintain 2019 Virginia General Assembly session. We stable housing. are happy to report that most of the legislative

42 VIRGINIA LAWYER | April 2019 | Vol. 67 | GENERAL INTEREST FEATURES www.vsb.org GENERAL INTEREST efforts to reduce evictions, including all six These companion bills attracted unan- Housing Commission-endorsed bills, were imous support. Requiring landlords to successful this session, passing both chambers amend an existing unlawful detainer rather with extensive bipartisan support and signed than filing a subsequent action streamlines into law by Governor Northam. As these stat- the judicial process and protects tenants’ utory improvements become effective across credit records. Moreover, this newly enacted the state, we hope to hear happier endings to language strengthens the evidentiary basis for eviction tales. unlawful detainers — the court must receive Del. Lashrecse Aird had this to say of the landlord’s proper notice to a tenant of the the legislative package: “Too many of my impending lease termination before order- constituents have faced eviction even after ing possession to the landlord. Tenants need they’ve paid the landlord. I was proud to such information in order to mount possible patron one of the six policy recommendations defenses to the eviction action. by the Virginia Housing Commission, a bill to Del. Bourne said of his bill, “As a lawyer help families remain in their homes, because and landlord, I know that evidence and accu- safe, stable, and affordable housing is the racy matter. When a tenant is late paying rent, foundation of success for all of us.” the landlord should have to prove they gave Del. Betsy Carr echoed these sentiments: proper notice to evict before proceeding to do “Five cities in the Commonwealth of Virginia so. And if additional rent becomes due after rank in the top ten of all cities in the nation in the landlord files for eviction, amendment of terms of eviction filings. Given the number of the existing lawsuit is the proper procedure, our cities experiencing high rates of eviction, not another filing that can cost that tenant we clearly have a systemic challenge rooted in more fees and credit hits.” state code. Accordingly, we have an obligation as the state legislature to address this situa- 3. Pay and Stay – SB1445 sponsored by tion. The City of Richmond, that I am proud Sen. Mamie Locke (D-Hampton); HB1898 to represent in the House of Delegates, unfor- sponsored by Del. Jennifer Carroll Foy tunately ranks second in the entire country. (D-Prince William) The reasons for our high rate of evictions When this bill becomes law July 1, 2019, are many and varied; we have a high rate of tenants will have significantly more time to poverty and we have a substantial number repay all of their debt to a landlord to avoid of rental properties. Evictions take their toll eviction. If a tenant can pay rent, fees, and — on the families experiencing eviction, the court costs at least two days before the sched- landlords who pay the price for vacancy and uled eviction, they get to stay! For low- and turnover, and the taxpayers who pay for all moderate-income Virginians, an unforeseen the residual costs associated with evictions.” expense can ruin a carefully balanced budget. With more time to come current, tenants can 1. Written Leases – HB2054 sponsored by Del. wait to receive another paycheck or secure Betsy Carr (D-Richmond); SB1676 sponsored a loan in order to save their housing. This by Sen. William M. Stanley Jr. (R-Franklin “redemption” also assures landlords are made County) completely whole. Unfortunately, this right Perhaps more than any other profession, of redemption is only allowed once every 12 lawyers appreciate a written contract and months, 3 but that one chance can make all consistent rules that govern all contracts. As the difference for a family living paycheck to of July 1, 2019, the VRLTA will require written paycheck. leases for residential tenancies. If no written lease is provided, seven default provisions will 4. Use Writ or Lose Writ – HB2007 spon- apply, including the explicit application of the sored by Del. Lashrecse Aird (D-Petersburg); VRLTA to oral leases. This improvement will SB1448 sponsored by Sen. Mamie clarify the rights and responsibilities of both Locke (D-Hampton) landlords and tenants. An important parallel to the elongated “pay and stay” provision is the new require- 2. One Case at a Time and Required Evidence ment that a landlord either use their writ – HB1922 sponsored by Del. Jeff Bourne or lose their writ. Under this legislation, (D-Richmond); SB1627 sponsored by Sen. landlords have only 180 days, down from 12 George Barker (D-Alexandria) months in the prior law, to transform the www.vsb.org GENERAL INTEREST FEATURES | Vol. 67 | April 2019 | VIRGINIA LAWYER 43 GENERAL INTEREST

court order granting them possession into a Based on feedback from additional writ of eviction. So, if a tenant is able to catch stakeholders, the eviction diversion pilot up after an order of possession is entered programs were substantially amended. As against them, they can rest easier knowing passed, the bills create eviction diversion that the order of possession against them will pilot projects in the General District Courts expire in half a year. of Danville, Hampton, Petersburg, and The bill also modifies what happens Richmond. Perhaps most importantly polit- when landlords do use the order of possession ically, the substitute bills are not expected to to get a writ of eviction. As of July 1, 2019, if have a material fiscal impact on court system the landlord and tenant work out an arrange- resources. The upshot of the pilot programs is ment and the landlord cancels the scheduled that qualifying tenants enter into a court-or- sheriff eviction, the writ of eviction “shall be dered rent re-payment plan. If the payments vacated as a matter of law.” This automatic are made on time, the court will dismiss the designation will work wonders on tenants’ unlawful detainer. If not, the landlord will get credit reports, which will now show that the a judgment for everything owed by the tenant landlord and tenant resolved any past due (unless the tenant files an affidavit stating that rental payments. Housing providers should the payment was in fact made). The stated look more favorably on applicants whose purpose of these programs “shall be to reduce the number of evictions of low-income persons.” Qualifying criteria for a tenant include: 1) appearing at the return date and asking to This session, the Virginia General Assembly has taken be referred to the program; 2) paying to the landlord 25 percent of the amount due at the a giant step forward in balancing the scales of power in return date; 3) demonstrating sufficient funds to make payments; 4) proffering a reason for these cases. Legislators in both chambers or both parties being late; 5) having not consistently paid rent late (more than twice in six months or three supported all six bills recommended by the Virginia times in the past 12 months); 6) having not exercised the right of redemption in the past Housing Commission. six months; and 7) having not participated in the eviction diversion program in the last 12 months. The list to qualify for the program may seem long, but tenants who are sidelined records — where the writ of eviction was va- by an unexpected expense will benefit most, cated — demonstrate eventual and complete because the program gives them time to catch compliance. In these situations, tenants are up — tenants pay the remaining balance in not technically evicted and can represent as equal installments over the course of three much to future landlords. months after the return date. As in the other legislation, protections exist to assure land- 5. Access to Appeal – SB1626 sponsored by lords are made whole. After the initial court Sen. George Barker (D-Alexandria) date, if the tenant pays three equal month- When this bill becomes law, tenants with ly installments equal to 25 percent of the meritorious defenses will have meaningful amount owed to the landlord, the case is access to Circuit Court to appeal their evic- dismissed. tion as ordered by the General District Court. These pilot programs will be in effect in Instead of paying up to a year’s rent in ad- the above-named jurisdictions from July 2020 vance, now in order to perfect an appeal, the through July 2023. The Office of the Executive tenant must pay the amount of the judgment Secretary, relevant General District Courts, into the court as well as rent to the landlord as and the Virginia Housing Commission will it becomes due. collaborate on data collection and analysis, culminating in a report to the General 6. Pilot Eviction Diversion Program – Assembly in July 2022 with suggestions for HB2655 sponsored by Del. Chris Collins future legislation aimed at reducing evictions. (R-Winchester); SB1450 sponsored by The authors look forward to expanded Sen. Mamie Locke (D-Hampton) eviction-diversion programs around the

44 VIRGINIA LAWYER | April 2019 | Vol. 67 | GENERAL INTEREST FEATURES www.vsb.org GENERAL INTEREST commonwealth modeled on the successful ants understand their rights, navigate disputes components of the pilot projects. with landlords, and prepare for court. The engagement is limited in scope, no con- 7. Additional legislation flicts check is required to engage, and ABA/ Though not part of the Virginia Housing NLADA Malpractice insurance is provided by Commission package, HB1923, sponsored by the ABA for the legal guidance that volunteer Del. Jeff Bourne (D-Richmond), passed unan- attorneys provide through website. To register imously. Once it takes effect, tenants who win visit www.virginia.freelegalanswers.org or certain cases against their landlord in court contact Cris Gantz at [email protected] to get can be awarded reasonable attorney fees. Fees more information. are available in cases where the tenant proves 3. Contact your local legal aid office and that the landlord failed to remedy in a rea- sign up to take a housing case. Many have sonable time a fire hazard, a serious life/safety well-established pro bono partnerships and threat, or a condition that constitutes material clinics to refer and assist in landlord-tenant noncompliance on the part of the landlord. matters. Find the nearest legal aid at www. valegalaid.org/find-legal-help/directory or call How Can a Lawyer Help? 1-866-LEGLAID (1-866-534-5243). A lawyer can make all the difference in a land- 4. Add tenant representation to your lord-tenant dispute. This session, the Virginia Virginia Lawyer Referral Service practice General Assembly has taken a giant step for- areas. The category of “tenant” is in the “Real ward in balancing the scales of power in these Estate” section of categories. VLRS can be cases. Legislators in both chambers or both reached at (804) 775-0591. parties supported all six bills recommended 5. For pro bono partners, encourage new by the Virginia Housing Commission. Now associates to represent tenants facing eviction we need lawyers like you to put the new laws — it’s a great way to get court time! into action. Here are six ways that you can 6. Observe an unlawful detainer docket provide meaningful representation to families at your local General District Court. It’s easy attempting to save their homes. to check for unlawful actions online before planning your visit. It is not uncommon for 1. Established in late 2018 by the Virginia dozens of cases to be set for a single hour, Poverty Law Center (VPLC), the Eviction where lawyers for several housing providers Legal Helpline provides free legal infor- are seeking judgments for money and posses- mation, advice, and referrals to tenants in sion. Seeing which tenants show up, hearing Virginia facing eviction or unwanted lease their stories, and understanding who is most termination. Attorneys can volunteer in small impacted by eviction can be very powerful. q increments as their schedules allow, accessing case records online and making calls from Endnotes: 1 Names have been changed to protect privacy. their office or home. Participating attorneys 2 Matthew Desmond, Ashley Gromis, Lavar are covered by VPLC’s malpractice insur- Edmonds, James Hendrickson, Katie Krywokulski, ance and receive training, robust reference Lillian Leung, and Adam Porton. Eviction Lab National Database: Version 1.0. Princeton: Princeton materials, and on-call support from VPLC. University, 2018, www.evictionlab.org. Engagement with individual clients is limited 3 Va Code § 55-248.34:1. to a single phone call and, under Rule 6.5 of the Virginia Rules of Professional Conduct, does not require a conflicts check. Contact: Phil Storey, [email protected] or (415) 388-0396. 2. Virginia Free Legal Answers is part of an ABA initiative to provide online pro bono Helen Hardiman is a solo practitioner working to assistance to low-income citizens across the prevent and end housing discrimination in Virginia. nation. To date more than 2,000 Virginians She is humbled to have her name appear in this article have been approved for assistance; 15 per- alongside Mr. Dunnaville’s. cent of the questions posted on the Virginia Clarence M. Dunnaville Jr. is a well-known attorney, website are housing related, many of which civil rights veteran, legal reformer, author, and activist for justice. He was the first black attorney at AT&T, come from tenants facing eviction. Licensed and has fought segregation, discrimination, and social Virginia attorneys can provide anonymous inequities in the justice system, labor, and housing his online advice through the portal to help ten- entire career. www.vsb.org GENERAL INTEREST FEATURES | Vol. 67 | April 2019 | VIRGINIA LAWYER 45 Noteworthy > VSB NEWS Highlights of the February 23, 2019, Virginia State Bar Council Meeting

At its meeting on February 23, 2019, will be presented to the Supreme Court Appointment of Renu M. Brennan as in Richmond, the Virginia State Bar of Virginia for approval. Bar Counsel Council heard the following significant Council approved by unanimous vote reports and took the following actions. Rule of Professional Conduct 4.4(b) the appointment of Renu M. Brennan as A motion was made and seconded to Bar Counsel. Unauthorized Practice of Law Rules refer the proposed rule changes to Rule Council approved by unanimous vote of Professional Conduct 4.4(b) to the Budget the proposed rewrite of the Unautho- Standing Committee on Legal Ethics Council unanimously approved a rized Practice of Law Rules. Prior to ap- for reconsideration, which motion was $16 million proposed budget for the proval, Council unanimously approved passed by affirmation. FY2020, which will be presented to the amending the proposed amendments in Supreme Court of Virginia for approval. two regards: (1) Paragraph 3.A. Excep- Rule of Professional Conduct 3.8 This is an increase of $1.9 million over tions, was amended by the addition Council approved 47 to 13 the proposed the current operating budget, primarily at the end of the paragraph to include revisions to Rule of Professional Con- due to a proposed salary increase, as well non-lawyers or paralegals employed by duct 3.8 with the addition of Comment as anticipated technology costs. legal aid societies; and (2) Paragraph [5]. Prior to approval, Council amended 5.D, Comments, was amended to correct the proposed comment. The proposed ALPS Agreement the reference to Paragraph 3(Q) to Para- comment will be presented to the Su- Council approved the proposed amend- graph 3(R). The proposed rule changes preme Court of Virginia for approval. ment to the ALPS endorsement agreement. Annual Criminal Law Seminar Addresses Reforms and Issues

Over 350 defense lawyers, commonwealth’s attorneys, and judges convened in Williamsburg for the annual Criminal Law Seminar. Twelve speakers covered topics ranging from new discovery rules to juvenile criminal law to the admissibility of witness memories on the witness stand. Popular topics included recent developments in criminal law and ethics updates during the full day seminar. The Hon. M. Hannah Lauck, U.S. District Judge for the Eastern District of Virginia, received the Harry L. Carrico Maria D. Jankowski, the Hon. M. Hannah Lauck, Nancy G. Parr, chair of the Criminal Law section, and the Hon. Rossie Professionalism Award, and the Hon. D. Alston Jr. Rossie D. Alston Jr., Judge of the Court along behind his blistering pace. olent federal inmates. Judge Alston of Appeals of Virginia, gave the key- Judge Alston spoke on issues in concluded with a quote by Reverend note luncheon address. In accepting criminal law, including Fourth, Fifth, Doctor Martin Luther King Jr.: “Hu- her award, Judge Lauck fondly recalled and Sixth Amendment cases, before man progress is neither automatic nor her days as a clerk for former Supreme turning to bipartisan federal criminal inevitable… Every step toward the goal Court of Virginia Chief Justice Carrico, reform legislation — the First Step Act of justice requires sacrifice, suffering, including the time he asked his clerks to — recently signed by President Trump. and struggle; the tireless exertions and go rollerblading with him, before zoom- The act may result in the release of any- passionate concern of dedicated indi- ing off and leaving them to flounder where from 53,000 to 181,000 non-vi- viduals.”

46 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org VSB NEWS < Noteworthy

Vote in 2019 Bar Council Elections Participate in the mini-democracy that is your Virginia State Bar by voting for the council member that will represent your circuit for the next three years, beginning July 1. Council is the bar’s 81-person governing body and oversees all bar functions. Circuits 1, 13, 17 and 20 are open for voting. All active lawyers in good standing in those circuits should have received an email with the subject “Vote in the Virginia State Bar Council Election” on April 8. Follow the instructions in that email to vote — the process only takes a Help decide who gets to join this winsome crew of outgoing Bar Council members few minutes once you’ve decided who to vote for. being honored at the 2017 Annual Meeting. For links to candidate statements, what to do if you didn’t receive your email, and to see who won in the uncontested circuits, go to http://bit.ly/2019council. Bar Welcomes Cameron Rountree as Deputy Executive Director

Cameron Rountree joined the Virginia for lawyer misconduct in the bar. State Bar as deputy executive director in “Cameron is a welcome addition to March, bringing a variety of legal expe- the bar’s management team,” said Exec- rience and knowledge from his career in utive Director Karen Gould. “He brings private practice and government service. significant expertise from a variety of Rountree comes to the bar from jobs that will lend itself to this position.” the Norfolk office of Williams Mullen, Before attending law school at where he handled a broad range of William & Mary, Rountree was a surface civil matters and commercial litigation, warfare officer in the United States as well as white collar and criminal Navy, deploying from east and west defense. In particular, he represented coast-based ships. He remains an active clients in business ownership disputes, member of the United States Navy Re- the University of Virginia. He traces construction litigation, business tort serve. From March 2016 to March 2017, his initial interest in Spanish back to a and contract litigation, federal criminal Rountree was called to serve as part sixth-grade crush on a classmate but defense and firearms industry practice. of a joint task force based in Djibouti, says the degree and language skill has Prior to private practice, Rountree where his command contributed to served him well through his career — worked as a special assistant U.S. diplomatic security assistance in South and now again at the bar, providing attorney, a law clerk to the Honorable Sudan, among other missions. His ef- public protection and education. Tommy E. Miller, U.S. Magistrate Judge, forts earned him the Defense Meritori- The deputy executive director posi- and a military officer with the United ous Service Medal and the Joint Service tion oversees legal services and commu- States Navy. Achievement Medal, among other unit nication work at the VSB, including the Much of his substantial trial expe- and campaign awards. clerk’s office, lawyer referral services, the rience comes from his work in the U.S. “I’m excited to transition to public Clients’ Protection Fund, access to legal Attorney’s Office for the Eastern District service,” Rountree says. “I was looking services, the bar’s event planners, and of Virginia. He tried several jury trials for something that could help meld my bar publications. in the federal courts of Hampton Roads legal experience and leadership expe- Rountree relocated from Norfolk to and investigated cases with federal agen- rience, which I have trained for since I Richmond with his wife, Susie, and their cies like the FBI, the DEA, and the Bu- joined ROTC at 18. And this does that.” two children, aged 4 months and 16 reau of Alcohol, Tobacco, Firearms and In addition to a master’s degree months. They welcomed their third son Explosives. Rountree cites his experience from the United States Naval War earlier this month. Along with spending as a prosecutor in informing his grasp College in national security and strate- time with them, Rountree enjoys vegeta- of VSB’s core mission of professional gic studies, Rountree holds a bachelor’s ble gardening, sailing, and brewing beer. regulation and the similar procedures degree in government and Spanish from www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 47 Noteworthy > VSB NEWS The Bar’s Special Committee on the Future of Law Practice Releases Final Report

Artificial intelligence. Blockchain. accelerated globalization and multiju- Cryptocurrencies. Globalization. Alter- risdictional trends of legal services, and native legal service providers. more. Virginia lawyers struggling to un- “We feel the anxiety of lawyers fac- derstand how these forces might shape ing a digital world that is often foreign their practice have a new resource. to them — hence our emphasis on the The Special Committee on the Future need to educate lawyers and identify of Law Practice released its final 2019 developments so they can find their report in March — a follow-up to its place in that world, be competitive, and 2016 version. provide high quality legal advice and Via regular meetings where professional services,” it reads. “This re- members compiled studies and reports port is meant to be easily read, enhance from other bars, and with input from lawyers’ practices and advise them of guests outside the legal profession, the probable changes they will see in the committee presents a range and depth near and long term.” of information on external, technological energies changing the practice of The report concludes by offering law. That includes increasing competi- a series of ten recommendations to the tion from nonlawyer service providers, bar, its committees and boards, law generational pressures that are likely to schools, and all Virginia lawyers. impact law firm business models, the The bar encourages lawyers to read future of billable hours, the insourcing the committee’s report in full at http:// and unbundling of legal services, the bit.ly/futurelawreport.

Conference of Local and Specialty Bar Associations Local and Specialty Bar Solo & Small-Firm Practitioner Elections Forum The Solo & Small-Firm Practitioner Forum focuses on issues that con- The Prince William County Bar Association, Inc. front attorneys who practice alone or in small firms. Law office man- Kristina Keech Spitler, President agement and ethics are among several topics covered at these CLEs. Tracey Alma Lenox, President-elect These CLEs are free, include lunch, and are available on a first-come, Anna Brigman Bristle, Secretary first-served basis. Registration and an agenda will be posted at Justin Michael Hargrove, Treasurer http://bit.ly/CLSBAcalendar Kathleen Latham Farrell, Director Jessica Harbeson Foster, Director May 8, 2019 William Deckel Wides, Director Fredericksburg Hospitality House & Conference Center

48 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org VSB NEWS < Noteworthy In Memoriam

Ralph L. Axselle Jr. Susie S.C. Drake Kevin Joseph McIntyre Richmond Lynchburg Arlington February 1943 – January 2019 June 1929 – February 2019 December 1960 – January 2019

Michael J. Barrett Jr. Thomas Patrick Dulany Cecil G. Moore Alexandria Tysons Corner Saluda January 1930 – January 2019 October 1957 – January 2019 April 1929 – January 2018

Scott James Coonan Renay Melitta Fariss John Rutledge Raleigh, North Carolina Chesterfield Longboat Key, Florida June 1963 – January 2019 November 1959 – November 2018 April 1925 – September 2018

George Fuller Cridlin Fred M. Haden Hon. Kenneth N. Whitehurst Jr. Jonesville Fairfax Virginia Beach March 1947 – December 2018 October 1926 – June 2018 June 1938 – November 2018

William E. Cumberland Patrick John Link Barbara Bracey Wiggs Bethesda, Maryland Long Grove, Illinois Alexandria September 1938 – November 2018 July 1933 – December 2018 July 1941 – December 2018

J.T. Cutler Archibald Carter Magee George Paul Williams Newport News Roanoke Fredericksburg July 1931 – October 2018 October 1954 – February 2019 April 1944 – February 2019

Dale Warren Dover Louis J. Marin Alexandria Heathsville August 1949 – January 2019 October 1934 – November 2017

You’re retiring, but your law degree doesn’t have to.

Transition into emeritus status and practice only pro bono.

For questions about the program, contact the VSB Pro Bono / Access to Legal Services department at (804) 775-0522. To start the application process toward emeritus status, call the membership department at (804) 775-0530.

www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 49 Law Libraries Researching Intellectual Property Law in Virginia with 2020 Vision by Audrey Lynn

Virginia. Old Dominion. Land of section also sponsors a Student Writing Finally, resources published by law Jefferson. Mother of Presidents. Competition, posting each year’s win- firms may be of interest to those seeking Headquarters of Amazon. Wait, what? ning article on its webpage. These arti- a practitioner’s perspective. Wilcox & Yes, it’s true. Amazon has selected cles, incentivized by a $5,000 first-place Savage’s Tech Law Letter is published on Virginia as the location of its second prize (law professors and mentors take the firm’s website quarterly and fre- headquarters.1 At the same time, Apple notice!), feature excellent research and quently features contributions from the is expanding its presence in NoVA,2 and analysis of open questions and emerg- firm’s leading IP lawyer and current VSB Virginia Tech is set to build a million- ing issues in IP law. Finally, the section IP Section Chair Timothy Lockhart.9 square-foot, billion-dollar campus in hosts annual events in Alexandria, Pender & Coward’s regular publications Alexandria dedicated to technological Williamsburg, and Virginia Beach to cover numerous practice areas, includ- innovation.3 Four hundred years after foster networking and keep members up ing patent, trademark, and intellectual the establishment of the first repre- to speed on developments in the field.5 property.10 sentative government in America at Currently, both the Virginia Now more than ever, Virginia’s Jamestown marked the official success State Bar and Thomson-Reuters’ IP attorneys can expect to confront of that primitive colony, it looks as Westlaw Edge feature the University of head-on some of the main challenges though Virginia will soon cement its sta- Richmond’s Richmond Journal of Law facing their field. Staying up-to-date on tus as a national leader in the high-tech & Technology and the Virginia Journal the latest developments in not only the industry, arguably second only to Silicon of Law and Technology as Virginia’s two law, but in industry and resources, will Valley, for the foreseeable future. leading journals on intellectual property be critical to successfully navigating the Virginia’s legal community may law. The Richmond “JOLT” touts itself ever-shifting ground of modern IP law. be best known for the rich history and as the first exclusively online law review.6 Researchers and professionals looking to traditions that shape its ethos, but these The journal, which publishes quarterly, maintain familiarity with late-breaking have not prevented it from adapting to also hosts symposia and has run a suc- developments should cast a wide net. the commonwealth’s changing economy. cessful blog since 2012. Its University of Meeting the demands of both existing Virginia counterpart, “VJoLT,” publishes Research continued on page 57 and emerging industry, Virginia has three issues per year in print and online, more intellectual property lawyers than and recently started a blog. 7 These are six of the eleven more populous states.4 outstanding publications, but they are We can reasonably expect that number far from the only Virginia journals that to increase in light of recent develop- publish in the field. The law reviews of ments. Today, IP practitioners are well- George Mason, Washington & Lee, and served by the almost one-stop shopping William & Mary as well as Virginia Law

Intellectual Property Law resources pro- Review Online have published many Audrey Lynn is the head of electronic resourc- vided by Lexis and Thomson-Reuters, articles concerning patents, copyrights, es & digital initiatives at Regent University Law but of course, these are not available and trade secrets in the past decade. Library. She holds a JD from Regent University School of Law (’18, cum laude) and a BS in or appropriate in every situation. This Even the smaller, mission-focused Mathematics from Georgia Gwinnett College article seeks to highlight a number of Regent University Law Review has (’15, summa cum laude). At Regent, she was a Virginia-based intellectual property law highlighted issues in IP law, such during member of Regent University Law Review and the recipient of the National Association of resources freely available on the inter- its 2017 Symposium, The Expansion of Women Lawyers Outstanding Female Graduate net. For example, the Virginia State Bar’s Technology in the 21st Century, where Award. She was a judicial intern for the Hon. Glenn A. Huff, Chief Judge of the Court of Intellectual Property Section provides Judge Robert Humphreys’ keynote Appeals of Virginia, and the Hon. Nels S.D. basic information about protecting speech included an effects-focused dis- Peterson, Associate Justice of the Supreme intellectual property, and regularly cussion of Intellectual Property Law and Court of Georgia. She is an active member of the State Bar of Georgia, VALL, SEAALL, and 8 publishes in the Virginia Lawyer. The the Digital Millennium Copyright Act. the Federalist Society.

50 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org Risk Management Metadata Mistakes: Not Inadvertant, But Incompetent by Mark Bassingthwaighte

I have been writing and lecturing about above mentioned problem attorneys were not inadvertent. A number of years metadata for years. (And in case you practice have such a rule in place. ago, I might have called the disclosures have forgotten, metadata is the “hid- The second issue concerns the view- innocent or naive, but not today. Today, den” information about the electronic ing of metadata. If an attorney receives I would label the attorneys who con- documents we create). I guess for some electronic documents with associated tinue to routinely send out documents of late, I’ve run on with the topic long metadata intact, may the attorney view with the associated metadata intact enough because a few have started to say it? Suffice it to say that the issued ethics incompetent. Yes, that may seem harsh, “enough already.” Then this happened. opinions on the subject run the gamut. but it is true nonetheless. Earlier this year I was on the road Some opinions state it’s fine to take If you aren’t already responsibly visiting a dozen or so law firms and your advantages where you find them. addressing the issues surrounding learned that several attorneys at two At the other extreme you will find ones metadata on a daily basis, all I can say is: different firms were routinely email- that say, “Nope, can’t do it.” But here’s now is the time. There are firms that are ing documents out to other attorneys where it gets interesting. If you read the using software tools that literally mine without first removing the associated opinions that come down on the side for metadata and sometimes they hit metadata. Making matters worse, in of saying an attorney should not view real pay dirt. Should opposing counsel many instances the attorneys who were metadata, you often find an analysis that ever do that to you, do you really want in receipt of these documents didn’t mirrors the analysis used with opinions to try to argue that your routine delivery have to do anything to view the metada- issued over misdirected faxes back in the of the metadata was an unintentional ta. In other words, there was no metada- day with terms including “inadvertent act? I suspect that any impacted client ta mining going on, no digging for it. All disclosure” driving the analysis. would be less than impressed with that they had to do was open the document In the above example, the fact that approach. In fact, I think they would call and they would find interesting and use- no attorney was willing to do the right it what it is: incompetent. q ful information staring them in the face. thing and speak up seems unfair. After Think “tracked changes” as an example. all, the attorneys who sent the docu- Now here’s the kicker: No one was say- ments were simply unaware. Apparently ing anything to anyone in order to keep they didn’t understand what metadata the information coming. After all, this was all about, let alone what to do about is a gift that keeps on giving. “Enough it. Well I beg to differ. The attorneys already?” I don’t think so. receiving the useful information didn’t Let’s talk ethics for a minute. There speak up because they understood there are basically two issues in play when it was nothing inadvertent about the ac- comes to metadata. The first is an attor- tions of the attorneys who were sending ney’s obligation to maintain client confi- out the documents. dences, some of which can be metadata Again, the Rules of Professional based. There is no exception in the Conduct are in play. As attorneys, we confidentiality rule that says an attorney are to maintain client confidences. And needn’t worry about maintaining client in today’s world, professional compe- confidences if an electronic document tency means having an understanding is in use. This is why firms routinely about what computers and applications Mark Bassingthwaighte, ALPS risk manager, has conducted over 1,000 law firm risk man- require that all electronic documents like word processing programs do and agement assessment visits, presented numerous be either scrubbed clean of metadata don’t do. This isn’t optional. You see, I continuing legal education seminars, and written extensively on risk management and or converted to a pdf format prior to understand why the attorneys receiving technology. Check out Mark’s recent seminars sending. Our professional conduct rules the documents kept their mouths shut. I to assist you with your solo practice by visiting our on-demand CLE library at alps.inreachce. mandate this outcome. In fact, I can actually think they made the correct de- com. Mark can be contacted at mbass@alpsnet assure you that the two firms where the cision because the ongoing disclosures .com. www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 51 Technology and the Practice of Law Cut the Custodian: Using the Business Records Statute to Save Time and Money by Brandon K. Fellers

Trial attorneys routinely rely on busi- an expense incident to prosecution. to subpoena subscriber information. ness records to substantiate their cases; What if the proponent’s records are Facebook, for example, explains that however, the testimony of the custodi- from a small business that does not have their records can only be authenticated ans of record required to authenticate a formal custodian of record? The stat- by the account owner or any person the record can be both time-consuming ute allows for any “qualified witness” to with knowledge of the contents of the and financially burdensome. What if the authenticate the record, which could be account, but will not provide a live wit- proponent of the record knows it will be anyone who has knowledge of how the ness to come to court.2 virtually impossible to get a live custodi- business records are compiled, stored, In the criminal system, records are an to come to court? and maintained.1 A “qualified witness” obtained by law enforcement through In that case, the proponent could could be an employee that one wouldn’t search warrants to search a defendant’s seek a certificate of authenticity from think of as a formal custodian, such as a electronic media or through govern- the business and follow the steps in gas station clerk or a waitress at a restau- ment-issued subpoenas to third parties Virginia Code § 8.01-390.3. Under that rant. For example, the proponent wants pursuant to the Stored Communications statute, the authentication and foun- to admit a 7-Eleven receipt into evi- Act. State prosecutors use court orders dation necessary for the admission of dence and the store does not have form pursuant to Virginia Code § 19.2-70.3 a business record under the business affidavits/certificates. The proponent to get records from electronic commu- records exception to the hearsay rule should take advantage of this statute and nications providers, and the affidavit may be laid by (1) witness testimony; or draft a form certificate of authenticity to from the custodian alone is sufficient (2) a certificate of authenticity of, and use in those situations using foundation for admissibility under section H of that foundation for, the record made by the language that tracks Virginia Supreme code section, without having to resort to record’s custodian or another qualified Court Rule 2:803(6). The statute allows the business record statute. witness; or (3) a combination of testi- for a declaration pursuant to Virginia It is well-settled that properly au- mony and a certification. The statute Code § 8.01-4.3 instead of an affida- thenticated business records are reliable was first enacted in 2014 and only ap- vit. A notary is not required. Once the evidence that serves as an exception plied to civil cases. As of July 1, 2017, the qualified witness signs the certificate, the to the hearsay rule. Trial attorneys can statute was amended to include criminal proponent should send it to opposing save an extra step, and save time and cases. counsel giving notice of intent to admit money, by routinely using the notice While the statute is a step in the at the trial. If no objection is filed within provision as set forth in Virginia Code § right direction in facilitating admission 5 days of the notice, the receipt is admis- 8.01-390.3 in order to get these records of records through an affidavit/certifi- sible. admitted in their cases. cate, the main pitfall is that the statute Before trial attorneys turn to doesn’t allow a judge to overrule the the business record statute for au- Technology continued on page 57 opposing counsel’s objection. Perhaps thentication, they may face hurdles in the future the General Assembly will in retrieving the records, especially follow the approach taken by Federal records from businesses associated with Rule of Evidence 902(11), where the electronic communications, whether certification can be used in lieu of live it is emails, telephone conversations, testimony unless the court, in its discre- or data stored on computers. Civil tion, requires live testimony. In criminal litigators will face problems trying to practice in state courts, many defense subpoena content-based records for attorneys will not object to the affidavit/ Facebook, Google, or Yahoo email due certificate because if they do object and to certain provisions of the Stored Brandon K. Fellers is an assistant commonwealth’s attorney in the City of Chesapeake and their client is found guilty, the common- Communications Act in 18 U.S.C. § also serves on the Virginia State Bar’s Special wealth can assess the costs of travel for 2701. Courts generally quash civil sub- Committee on Technology and the Practice the custodian of record to the defendant poenas issued to third-party ISPs that of Law. He is a graduate of Virginia Military Institute and the University of Richmond pursuant to Virginia Code § 19.2-336 as seek content. They are, however, able School of Law.

52 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org IPR continued from page 23

25 Intellectual Ventures I LLC v. Toshiba Corp., 35 Verinata Health at * 7 (declining to strike 46 See Advanced Micro v. LG, No. 14-CV- Civ. No. 13-453, Stipulation of Dismissal the combination of Quake and Craig), *8-9 01012 (Oct. 16, 2017) (Dkt. 246, 247). and Order (Aug. 28, 2017) (Dkt. 695). (declining to strike the combination of Fan 47 See, e.g., American Technical Ceramics 26 Parallel Networks Licensing, LLC v. Int’l Bus. and Lizardi and the combination of Straus, Corp. et al v. Presidio Components, Inc., Machs. Corp., Civil Action No. 13-2072 Rothberg, and Walt). 2-14-cv-06544, Order (E.D. NY, Jan. (Feb. 22, 2017). 36 Id. at *7-8. 30, 2019); Koninklijke Philips N.V. et al. 27 Id. at *26. 37 Id. v. Wang Alliance Corp., No. 14-12298, 28 Id. 38 Id. at *9-10. Memorandum and Order (D. Mass. Jan. 2, 29 See 37 C.F.R. § 42.122(b). 39 Verinata Health v. Ariosa, No. 12-cv-5501, 2018) (Dkt. 226); Network-1 Techs., Inc. v. 30 Parallel Networks at *26. Judgment (N.D. Cal. Jan. 28, 2018) (Dkt. Alcatel-Lucent USA, Inc., No. 6:11-CV-492 31 Id. 642). (E.D. Tex. Sept. 26, 2017) (Dkt. 978), Order 32 Id. at *9-10. 40 See Verinata Health, Inc. v. Ariosa Adopting Report and Recommendation, 33 Parallel Networks Licensing, LLC v. Int’l Bus. Diagnostics, Inc., No. 18-2198 (Fed. Cir.). No. 6:11-CV-00492-RWS, 2017 WL Machs. Corp., No. 2017-2042 (Fed. Cir., 41 Verinata Health v. Ariosa, No. 12-cv-5501, 4856473 (E.D. Tex. Oct. 27, 2017) (Dkt. May 11, 2018) (Rule 36 affirmance). Amended Notice of Appeal by Ariosa 1061); Biscotti Inc. v. Microsoft Corp., No. 34 Verinata Health v. Ariosa, No. 12-cv- (N.D. Cal. Oct. 10, 2018) (Dkt. 723). 2-13-cv-01015 (E.D. Tex. May 11, 2017) 5501, Order on Plaintiff’s Motion to 42 Advanced Micro v. LG, No. 14-CV-01012- (Dkt. 191); and Douglas Dynamics, LLC Strike Portions of Defendants’ Invalidity SI, at *9-10 (N.D. Cal. June 26, 2017). v. Meyer Prods. LLC, No. 14-cv-886-JPD Contentions, at *1-2 (N.D. Cal. Jan. 19, 43 Id. at *10. (W.D. Wis. Apr. 18, 2017) (Dkt. 69). 2017) (Dkt. 319). 44 Id. 48 SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 45 Id. (2018).

Innovation Campus continued from page 25

patent licensing program.6 Thus, each Endnotes: -virginia-techs-planned-1b-potomac-yard 1 www.washingtonpost.com/local/amazon -campus-94963 entity of the new industrial eco-system -hq2-decision-amazon-splits-hq2-prize 5 https://autm.net/AUTM/media/About in Alexandria will need patent drafting -between-crystal-city-and-new-york/2018 -AUTM/Documents/AUTM_2017_US and procuring services, advice regard- /11/12/316d2a32-e2c9-11e8-8f5f- -Licensing_Survey_PR.pdf a55347f48762 6 https://hbr.org/2018/01/why-companies ing the scope and validity of patents, 2 https://vt.edu/innovationcampus/for-the -and-universities-should-forge-long-term counseling on patent licensing and -media/release.html -collaborations enforcement. The local IP law firms 3 https://vtnews.vt.edu/articles/2019/01/ univrel-deliveryteam.html will be perfectly positioned to provide 4 www.bisnow.com/washington-dc/news/ such services to these entities. q economic-development/a-look-at

Fashion IP continued from page 36

eBay account named Loukpeach, Endnotes: 1 www.statista.com/topics/965/apparel which was registered to her. On August -market-in-the-us/ 3, 2016, Smatsorabudh entered into 2 www.businessoffashion.com/articles/ intelligence/top-industry-trends-2018 a plea agreement with the United -10-startup-thinking States, pleading guilty to committing 3 696 F.3d 206 (2d Cir. N.Y. 2012) Joan Bellefield Davis is an entertainment wire fraud. On December 21, 2016, a 4 Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, and intellectual property attorney with federal judge sentenced Smatsorabudh 451, 457 (S.D.N.Y. 2011) Schroder Brooks Law Firm PLC in Richmond. Prior to private practice, Joan to 30 months in a prison, followed by 5 137 S. Ct. 1002 (2017) 6 Nike, Inc v Denis Dekovic, Marc Dolce, and was a law clerk to the Virginia’s former three years of supervised release and Mark Miner Circuit Court of the State of Chief Justice Harry L. Carrico. She has over twenty years’ experience in the fashion and $403,250.81 in restitution.9 Oregon for the County of Multnomah, No. 14-cv-18876 modeling industries. Joan’s diverse fashion In conclusion, a lawyer repre- 7 Lululemon Athletica Canada Inc. v. Calvin clients include fashion designers, jewelry Klein Inc., 12-01034, U.S. District Court, artisans, boutiques, modeling agencies, senting a creator, designer, or fashion photographers, fashion models, and District of Delaware (Wilmington) parents of child entertainers. Licensed to marketer must remember that one of 8 United States v. Smatsorabudh, 1:16cr168 practice law in both Virginia and New York, (GBL) the most valuable things that the client she has an advanced degree in criminal jus- 9 Ibid. (Doc. No. 34, sentencing order) (Dec. owns are the visual elements that de- tice and is a registered private investigator 21, 2016) specializing in counterfeit goods. She can fine its brand — and protecting those be reached at [email protected] elements can take many forms. q or (804) 510-0700 ext. 2.

www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 53 DTSA continued from page 29 the damages award. Additionally, the In Magnesita Refractories Co. v. defense. The court stated that it was not court determined that Intersil was not Mishra,39 the court held that a seizure ascertainable whether the defendant had entitled to a jury trial on the issue of order was not necessary because the turned over all of Unum’s documents to the amount of disgorgement damages, existing ex parte temporary restrain- his attorney, which documents he took because disgorgement is an equitable ing order authorized the seizure of the and what information they contained, remedy for the district judge – not the defendant’s personal laptop computer, or whether he used, is using, or plans to jury. The court remanded the case back which was adequate. Under the act, in- use, those documents for any purpose to the Eastern District of Texas and or- adequacy exists where the party bound other than investigating a potential dered that the damages be recalculated by the order “would evade, avoid, or violation of law. by the trial court, “with findings of fact otherwise not comply” with the order. Conversely, and apparently for the and conclusions of law duly entered in The court noted, “Obviously, in this first time, a whistleblower was granted accordance with Rule 52.” case, Rule 65 did the trick.”40 protection under the immunity provi- One federal court did grant a sions of the act in Christian v. Lannett 44 Practice Pointers: Counsel need to request for the seizure remedy, but Co., Inc. There, the plaintiff sued her be very specific as to which damage only after the defendant first violated a former employer for gender and disabil- amounts relate to which specific trade temporary restraining order and falsely ity discrimination. The defendant filed secrets, and ensure that admissible and stated that he had deleted the data at a counterclaim that included a claim 41 specific expert testimony is adduced on issue. under the Act based on the plaintiff’s those issues as well. Moreover, disgorge- retention of the defendant’s trade ment awards are for the trial judge, Practice Pointer: The federal courts are secrets, and disclosure of some of not the jury, which presumably only very hesitant to pull the trigger on the those secrets to her attorney, through a finds liability for misappropriation in Act’s ex parte seizure order provisions, company laptop. The plaintiff moved to almost invariably concluding that a dismiss the counterclaim, based on the disgorgement cases, and not damages Rule 65 injunction is adequate. Counsel whistleblower protections of the Act. as well. are best advised not to lose credibility The court dismissed the counterclaim, by demanding such relief, unless they finding that plaintiff’s disclosure of the Ex Parte Civil Seizures are able to satisfy the specific circum- documents, which was made pursuant The provisions regarding ex par- stances identified in the legislative to a court order, was consistent with te civil seizure orders were some of history, i.e., where “a defendant is the act’s immunity provisions, which the most widely anticipated aspects seeking to flee the country or planning permit a whistleblower to disclose trade of the Act. Thus far, however, courts to disclose the trade secret to a third secrets “in confidence… to an attorney have generally limited relief under the party immediately or is otherwise not … solely for the purpose of reporting act to the remedies that were already amenable to the enforcement of the or investigating a suspected violation of available under the Federal Rules of court’s orders.”42 law.” 45 Civil Procedure (Rule 65 injunctions). In OOO Brunswick Rail Mgmt. v. Whistleblower Protection Practice Pointer: When asserting the 38 Sultanov, the court declined to issue a Unum Group v. Loftus43 was one of the Act’s immunity provisions regarding requested seizure order against a former first cases to address the whistleblower former employees, counsel should en- employee/defendant to seize the com- protections embodied in the DTSA. sure that the court is provided specific pany-issued laptop and mobile phone Unum brought an action against the information as to the materials at issue, in his possession, despite finding that defendant, a former Unum employee, and how they were directly related to the plaintiff had satisfied the require- for trade secret misappropriation under “reporting or investigating a suspected ments for a temporary restraining order, both the act and Massachusetts state law, violation of law.” including a likelihood of success on the asserting that the defendant improperly merits and irreparable harm. The court removed numerous company docu- Be Ready for the Unexpected: Lessons noted the Act’s requirement that seizure ments from Unum’s facility. The defen- learned from Waymo LLC v. Uber orders may only be permitted if a Rule dant moved to dismiss the suit, asserting Technologies Inc. 65 injunction would be inadequate. The that he was immune from liability No article regarding the Defense of court determined that the seizure order pursuant to the act’s whistleblower pro- Trade Secrets Act would be complete was unnecessary because the court was tections because he gave the documents without at least some discussion of ordering the former employee to deliver to his attorney to “report and investigate Waymo LLC v. Uber Technologies Inc.46, the devices to the court at the time of a violation of law.” The court rejected so here is the executive summary. the show cause hearing for a prelimi- that argument, finding that the defen- Waymo (a spin-off from Google) nary injunction, without accessing or dant had not presented sufficient facts was in the business of developing modifying the devices in the interim. to support the whistleblower affirmative self-driving technology. Anthony

54 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org Levandowski was involved in that development. He then resigned and started Ottomotto, his own self-driving startup. Uber bought Ottomoto in February 2016. In the summer of 2016, Waymo discovered that Levandowski had downloaded approximately 14,000 Charles B. Molster III has been a practicing Mary C. Zinsner is a partner at Troutman trial lawyer in state and federal courts in Sanders LLP in Washington, D.C. She focuses files shortly before he left Waymo. In Virginia (and around the country) for the her practice on business and financial services February 2017, Waymo filed suit against past 34 years, beginning his legal career as a litigation and regularly represents clients in Uber and Ottomotto, including claims law clerk in the Eastern District of Virginia. defense of litigation involving allegations of Mr. Molster has practiced law with both small trade secret theft and business tort matters. under the act. Waymo only filed suit firms and large, including 20 years with the Ms. Zinsner practices extensively in the federal against Uber and Ottomotto because global law firm Winston & Strawn LLP, and and state courts in Virginia, Maryland, and Levandowski’s contract included an opened his own law firm in 2016. the District of Columbia and has extensive appellate experience. Having clerked for the arbitration clause. Waymo initially Hon. Claude M. Hilton, United States District Judge for the Eastern District of Virginia, she is alleged that Levandowski had taken 121 protection. of Waymo’s trade secrets to Uber, but by very familiar with local federal court practices Before trial, Waymo had sought and frequently lectures on litigation practices the time of trial, the claim was down to $1.85 billion in damages. During settle- in the “Rocket Docket.” only eight trade secrets. ment talks in 2017, Waymo sought at After only four days of testimony, least $1 billion. During the trial, Uber’s the case settled. The public portions board of directors rejected a settlement attorney’s office to investigate criminal of the trial provided little evidence agreement for $500 million. The parties charges against him. that Uber had actually used any of finally settled for Waymo acquiring a the information taken from Waymo, .34 percent stake in Uber, valued at $245 Practice Pointer: Trade secret litigation and the court (Judge William Alsop of million (plus Uber’s promise not to use can be complex, lengthy, high stakes, the Northern District of California) the materials that Levandowski took and full of twists and turns, including appeared to question the value of the from Waymo). Waymo is still pursuing what are actually protectable trade trade secrets. Moreover, it appeared that private arbitration against Levandowski secrets — and what are not. q Waymo risked losing its trade secret and is reportedly working with the U.S.

Endnotes: for lack of interstate commerce because the No. CV 6:16-03687-MGL, 2017 WL 1734362, 1 See 18 U.S.C. 1836(b). “requirement is jurisdictional.” at *13 (D.S.C. May 4, 2017) 2 Va. Code Sections 59.1 – 336 et. seq. 23 E.g., Progressive Sols., Inc. v. Stanley, No. 32 First W. Capital Mgmt. Co. v. Malamed, 874 3 18 U.S.C. § 1839(3)(A) (2018) 16-CV-04805-SK, 2018 WL 2585374, at *2 F.3d 1136, 1143 (10th Cir. 2017) 4 18 U.S.C. § 1839(3)(B) (2018) (N.D. Cal. Apr. 24, 2018) 33 Id. 5 18 U.S.C. § 1839(5) (2018) 24 See Yager v. Vignieri, No. 16CV9367 (DLC), 34 JJ Plank Co., LLC v. Bowman, No. CV 18- 6 18 U.S.C. § 1836(b) 2017 WL 4574487, at *2 (S.D.N.Y. Oct. 12, 0798, 2018 WL 4291751, at *9 (W.D. La. 7 18 U.S.C. § 1836(b)(3)(A)(i) 2017), where the court rejected the assertion Sept. 7, 2018) 8 18 U.S.C. § 1836 (b)(3)(A)(iii) of no jurisdiction and noted that “Congress 35 See G.W. Henssler & Assocs., Ltd. v. Marietta 9 18 U.S.C. § 1836(b)(3)(A)(i) specifically crafted the commerce language Wealth Mgmt., LLC, No. 1:17-CV-2188-TCB, 10 18 U.S.C. § 1836(b)(3)(B) in the DTSA to reach broadly in protecting 2017 WL 6996372, at *6 (N.D. Ga. Oct. 23, 11 S. Rep. No. 114-220 (2016) against the theft of trade secrets.” 2017): loss of confidential and proprietary 12 18 U.S.C. § 1836(A) 25 See, e.g., Cal. Civ. Proc. Code § 2019.210 information is per se irreparable harm. 13 18 U.S.C. § 1836(B) (2018): “In any action alleging the mis- 36 Id. at 6. 14 18 U.S.C. § 1836(D) appropriation of a trade secret…, before 37 895 F.3d 1304 (Fed. Cir. 2018) 15 18 U.S.C. § 1836(F) commencing discovery relating to the trade 38 No. 5:17-cv-00017, 2017 WL 67119, *2–3 16 18 U.S.C. § 1833(b) secret, the party alleging the misappropri- (N.D. Cal., Jan. 6, 2017) 17 18 U.S.C. § 1833(b)(3) ation shall identify the trade secret with 39 No. 2:16-CV-524-PPS JEM,2017 WL 365619 18 Id. reasonable particularity subject to any orders (N.D. Ind. Jan. 25, 2017) 19 18 U.S.C. § 1833(b)(3)(C) that may be appropriate under Section 40 Id. at *2. 20 http://pages.lexmachina.com/Email_Trade 3426.5 of the Civil Code.” 41 See Mission Capital Advisors, LLC v. Romaka, -Secret-Report-2018_LP-Banner.html 26 See Physicians Surrogacy, Inc. v. German, No. 16-civ-5878 (S.D.N.Y. July 29, 2016) 21 See Revolution FMO, LLC v. Mitchell, No. 17CV0718-MMA (WVG), 2017 WL 42 S. Rep. No. 114-220 (2016). 4:17CV2220 HEA, 2018 WL 2163651, at *5 3622329, at *9 (S.D. Cal. Aug. 23, 2017), 43 220 F. Supp. 3d 143 (D. Mass 2016) (E.D. Mo. May 10, 2018), inferring inter- using plausibility as the standard instead of 44 No. CV 16-963, 2018 WL 1532849 (E.D. Pa. state commerce from allegations that the particularity. Mar. 29, 2018) California plaintiff licensed materials to the 27 898 F.3d 1279 (11th Cir. 2018) 45 See 18 U.S.C. §1833(b). Missouri Defendant. But see Search Partners, 28 Case No. 18 C 124 (June 6, 2018) 2018 WL 46 3:17-CV-00939 (N.D. Cal.) Inc. v. MyAlerts, Inc., No. 17-1034 (DSD/ 2735089 (N.D. Ill. June 7, 2018) TNL), 2017 WO 2838126 at *1-2 (D. Minn. 29 Exec. Consulting Grp., LLC v. Baggot, No. June 30, 2017), where district court found no 118-CV-00231CMAMJW, 2018 WL 1942762, relationship to interstate commerce because at *8 (D. Colo. Apr. 25, 2018) the information was not embodied in a 30 JJ Plank Co., LLC v. Bowman, No. CV 18- product or service. 0798, 2018 WL 3579475, at *4 (W.D. La. July 22 See Gov’t Employees Ins. Co. v. Nealey, 262 F. 25, 2018) Supp. 3d 153, 172 (E.D. Pa. 2017), dismissed 31 T&S Brass & Bronze Works, Inc. v. Slanina,

www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 55 Bar Counsel continued from page 17 Conclusion Catherine French Zagurskie is chief Both the VSB and the Virginia Indigent appellate counsel for the Virginia Indigent initiated—all situations discussed above Defense Commission (VIDC) offer Defense Commission. Prior to her current — counsel must discuss a delayed appeal resources to court-appointed counsel. position at the VIDC, she was a super- with the client.29 While counsel’s first Counsel should contact the VSB Ethics vising public defender at the Richmond thought may be to file the delayed ap- Hotline, (804) 775-0564, or by email at Public Defender’s Office. She earned a peal, the duty to communicate requires www.vsb.org/site/regulation/ethics with J.D., summa cum laude, and M.S. in counsel to advise the client about the questions relating to their ethical duties Social Administration from Case Western current status of the appeal and ensure when representing indigent defen- Reserve University. that the client still intends to pursue the dants on appeal. The VIDC will hold appeal. If after consulting with counsel their annual Introduction to Indigent Renu M. Brennan is bar counsel for the the client elects to pursue a delayed ap- Defense Appeals for felony certified court Virginia State Bar. She has prosecuted nu- peal, counsel must follow the procedure appointed attorneys in Richmond on merous cases throughout the state before set forth in Virginia Code § 19.2-321.1 July 19, 2019. This full day beginner district committees, the Virginia State Bar for the Court of Appeals, or § 19.2-321.2 training addresses ethical considerations Disciplinary Board, and three-judge pan- for the Supreme Court of Virginia, in- in appellate practice as well as preserva- els. In private practice, Brennan handled cluding filing an affidavit certifying that tion of appellate issues in the trial court, professional malpractice and commercial the attorney, not the client, is responsi- appellate pleadings, and oral advocacy. litigation. She is licensed in Virginia, the ble for the error. Eligible counsel will receive an email District of Columbia, and California. The duty to communicate also with a registration link in late May. includes advising a client that he may Additionally, court appointed counsel * With assistance from Deputy Bar Counsel have a right to file a petition for writ may contact Catherine French Zagurskie Kathryn R. Montgomery; Senior Assistant of habeas corpus, the time limit to file a at (804) 662-7249 or [email protected]. Bar Counsel Edward J. Dillon and M. petition, and how and where to file the virginia.gov with questions related to Brent Saunders; and Intake Counsel petition. This should occur if counsel appeals or to request sample appellate James C. Bodie. missed the delayed appeal deadline. pleadings. q

Endnotes: 4 RULE 1.1. Competence. A lawyer shall not address “what constitutes a defendant’s 1 See Virginia Code § 19.2-159 (explaining provide competent representation to a client. breach of an appeal waiver or any respon- that after finding an accused to be indigent, Competent representation requires the legal sibility counsel may have to discuss the the court “shall appoint competent counsel knowledge, skill, thoroughness and prepara- potential consequences of such a breach.” Id. to represent the accused in the proceeding tion reasonably necessary for the representa- 12 RULE 2.1 Advisor against him, including an appeal, if any, tion. In representing a client, a lawyer shall exer- until relieved or replaced by other counsel”). 5 RULE 1.4 Communication cise independent professional judgment and See also Standards of Practice for Indigent (b) A lawyer shall explain a matter to the render candid advice. In rendering advice, a Defense Counsel (SOP) 10.2.1 (D), (E) and extent reasonably necessary to permit the lawyer may refer not only to law but to other Comment. client to make informed decisions regarding considerations such as moral, economic, 2 See Garza v. Idaho, 586 U.S. __, slip op. at 4 the representation. social and political factors, that may be n.4 (2019) (While the Supreme Court “has 6 Slip op. at 4. relevant to the client’s situation. never recognized a ‘constitutional right to an 7 See Peyton v. King, 210 Va. 194, 196-197, 169 13 See Roe v. Flores-Ortega, 528 U.S. 470, 477 appeal,’ it has ‘held that if an appeal is open S.E.2d 569, 571 (1969). Although Peyton was (2000) (citing Rodriguez v. U.S., 395 U.S. 327 to those who can pay for it, an appeal must decided before a statutory right to an appeal (1969) (“A lawyer who disregards specific in- be provided for an indigent.’”). See also Jones existed in Virginia, In re Watford, 295 Va. 114, structions from the defendant to file a notice v. Barnes, 463 U.S. 745, 751 (1983) (“[T]he 126, 809 S.E.2d 651, 658 (2018), while noting of appeal acts in a manner that is profession- accused has the ultimate authority to make that a guilty plea is only one factor to con- ally unreasonable.”)). certain fundamental decisions regarding sider in a writ of actual innocence analysis 14 RULE 3.1 Meritorious Claims and the case, as whether to . . . take an appeal.”). and is not dispositive, cites to Peyton for the Contentions The right to appeal in Virginia is by statute. recognition “that a guilty plea is a ‘self-sup- A lawyer shall not bring or defend a proceed- See Virginia Code §§ 19.2-317 (when writ plied conviction’ that acts as ‘a waiver of all ing, or assert or controvert an issue therein, of error lies in criminal case for accused), defenses other than those jurisdictional.’” See unless there is a basis for doing so that is 17.1-410 (review by the Court of Appeals of also Brown v. Commonwealth, 68 Va. App. 58, not frivolous, which includes a good faith Virginia), 17.1-411 (review by the Supreme 69-70, 802 S.E.2d 197, 202-203 (2017). argument for an extension, modification Court). 8 See Class, 138 S. Ct. at 804-805. It is worth or reversal of existing law. A lawyer for the 3 See Garza, slip op. at 1,4,14 (holding that, noting that the Supreme Court made clear defendant in a criminal proceeding, or the where an attorney’s deficient performance that Class’s claims did not “fall within any of respondent in a proceeding that could result costs a defendant an appeal that he would the categories of claims that [his] plea agree- in incarceration, may nevertheless so defend have otherwise pursued, the presumption ment forbids him to raise on direct appeal.” the proceeding as to require that every of prejudice in an ineffective assistance of Id. element of the case be established. counsel analysis applies even where the 9 Jones v. Commonwealth, Rec. No. 0279-18-3, 15 Anders v. California, 386 U.S. 738, 744 defendant has pleaded guilty and signed an slip op. at 10 n.5 (Court of Appeals, January (1967). See also Akbar v. Commonwealth, 376 “appeal waiver”). See also Miles v. Sheriff of 29, 2019) (unpublished) refers to Class in S.E.2d 545,546 (1989) and Brown v. Warden Va. Beach City Jail, 266 Va. 110, 581 S.E.2d a footnote when it explains that appellant’s of Virginia State Penitentiary, 238 Va. 551, 191 (2003) (holding that trial counsel’s appeal following a guilty plea does not assert 554-555, 385 S.E.2d 587, 588-589 (1989). failure to file an appeal after having been that “the statute of conviction violates the 16 Anders, 386 U.S. at 744. instructed to do so by a client who pled Constitution.” 17 Anders, 386 U.S. at 744 (emphasis added). guilty to charges constitutes deficient perfor- 10 LEO 1880 Virginia follows the holding of Anders. From mance). 11 Garza, slip op. at 8. Garza explicitly does the trial court to the Court of Appeals:

56 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org Akbar, 376 S.E.2d at 546 and Rule 5A:12(h). From the Court of Appeals to the Supreme Research continued from page 50 Feb. 8, 2019); World Population Review, Court: Brown, 238 Va. at 555-556, 385 S.E. US States – Ranked by Population 2019, at 589-590 and Rule 5:17(h). See also LEO Endnotes: http://www.worldpopulationreview.com/ 1880. 1 Cailin Crowe, Amazon’s New states (last visited Feb. 8, 2019). 18 See SOP 10.3.3 (“When counsel reasonably Headquarters Is Coming to Northern 5 See generally Virginia State Bar, believes that no potentially meritorious Virginia. Here’s How Local Colleges Intellectual Property Law, http://www.vsb. issues exist in a case, he shall so advise the Helped Make That Happen, Chron. of org/site/sections/intellectualproperty (last client, and shall inform the client of the costs Higher Educ., https://www.chronicle.com/ visited Feb. 20, 2019). associated with proceeding with the appeal. article/Amazon-s-New-Headquarters- 6 Richmond Journal of Law and Tech., Counsel should advise the client that it may Is/245083 (Nov. 13, 2018). About JOLT, https://jolt.richmond.edu/ be in the client’s best interests to withdraw 2 Jon Banister, Apple Leases New D.C. about-2/ (last visited Feb. 8, 2019). the appeal.” If the client desires to still ap- Office Space Across from New Carnegie 7 See generally Va. Journal of Law and peal, counsel should “proceed to litigate the Library Flagship, Bisnow, https://www. Tech., http://vjolt.org/ (last visited Feb. 20, case to the best of his or her ability under the bisnow.com/washington-dc/news/office/ 2019). circumstances” or, alternatively, pursue an apple-leases-office-space-across-from- 8 Robert Humphreys, How the Changes Anders appeal.). new-carnegie-library-flagship-93376 in Technology Are Shaping the Law 19 See Rules 5:17(h) and 5A:12(h). See also (Sept. 28, 2018). and the Legal Profession in America, LEO 1880 (finding that a court appointed 3 Virginia Tech, Virginia Tech Innovation 30 Regent U.L. Rev. 371 (2018); see also attorney must petition for an appeal when Campus in Alexandria Helps Attract Regent University Law Review, Fall 2017 requested by the client, even if the attorney Amazon to Washington D.C. Region; Symposium, https://www.regentuniversi- believes such appeal to be frivolous, and News Conference at 3:30 p.m. Today, tylawreview.com/fall-2017-symposium/ counsel must follow Rules 5:17(h) and https://vt.edu/innovationcampus/for-the- (last visited Feb. 8, 2019). 5A:12(h) when he deems an appeal to be media/release.html 9 Wilcox Savage, Tech Law Letter, https:// non-meritorious). 4 Based on the author’s comparison of www.willcoxsavage.com/news-publica- 20 Id. state-specific practice-area information tions/publications/category/tech-law-let- 21 Id. available on Martindale for the 12 most ter (last visited Feb. 8, 2019). 22 65 Va. App. 506, 779 S.E.2d 199 (2015). populous states. See Martindale, Find 10 Pender & Coward, Publications and Legal 23 Slip op. at 5. Intellectual Property Attorneys, https:// Resources, https://www.pendercoward. 24 See, e.g., Ghameshlouy v. Commonwealth, 279 www.martindale.com/areas-of-law/in- com/resources/publications-legal-re- Va. 379, 390, 689 S.E.2d 698, 703-704 (2010) tellectual-property-lawyers/ (last visited sources/ (last visited Feb. 8, 2019). (notice of appeal) and Amin v. County of Henrico, 286 Va. 231, 236, 749 S.E.2d 169, 171 (2013) (petition for appeal). 25 Smith v. Commonwealth, 56 Va. App. 351, 363, 693 S.E.2d 765, 771 (2010). Technology continued from page 52 access to the records and had knowledge 26 RULE 1.3 Diligence (a) A lawyer shall of how the records were compiled and act with reasonable diligence and prompt- Endnotes: maintained. ness in representing a client. 1 Lee v. Commonwealth, 28 Va. App. 571 2 Law Enforcement and Third-Party 27 In the Court of Appeals, see Rule 5A:3 and (1998). Fraud investigator for company Matters, https://www.facebook.com/ Virginia Code § 17.2-408. In the Supreme was “qualified” witness because he had help/473784375984502. Court, see Rule 5:5. 28 In the Court of Appeals, see Rules 5A:6(a) (notice of appeal), 5A:8(a) (transcripts), and 5A:12(a) petition for appeal. In the Supreme Court of Virginia, see Rule 5:5 (a), (d). It is also worth noting that Virginia Code § 8.01-428(C) provides an additional narrow exception to the notice of appeal deadline FASTCASE WEBINARS governed by Rule 5A:6(a) when an appellant Fastcase is free to all VSB members, a $995 annual value. Fastcase provides tools to is “not notified by any means of the entry make legal research easier and more intuitive. Lawyers across the country use Fastcase of a final order,” and the trial court finds that the lack of notice does not result from to provide them with an award-winning legal research platform. Learn how to use appellant’s “failure to exercise due diligence.” Fastcase optimally here: Reston Hospital Center, LLC v. Remley, 63 www.fastcase.com/webinars/ Va. App. 755, 763 S.E.2d 238 (2014). The exception must be applied within 60 days Introduction to Boolean Ethics and Legal Data Analytics: Fastcase of the entry of the final order and vests the Research and Docket Alarm discretion to grant the party leave to appeal Thursday, May 16, 2019 in the trial court. 1:00 PM – 2:00 PM ET Thursday, June 27, 2019 Thursday, May 9, 2019 29 There are other available grounds for a 1:00 PM – 2:00 PM ET 1:00 PM – 2:00 PM ET Thursday, June 20, 2019 delayed appeal not discussed in this article. 1:00 PM – 2:00 PM ET Thursday, June 27, 2019 Thursday, June 13, 2019 See Code §§ 19.2-321.1-2. Note that Code § 1:00 PM – 2:00 PM ET 1:00 PM – 2:00 PM ET 19.2-321.1 recognizes that the default may be Thursday, June 20, 2019 “in whole or in part” of the appeal. 1:00 PM – 2:00 PM ET Introduction to Legal Research on Fastcase Ethics and Legal Research Thursday, May 2, 2019 1:00 PM – 2:00 PM ET Thursday, April 25, 2019 1:00 PM – 2:00 PM ET Thursday, June 6, 2019 1:00 PM – 2:00 PM ET Thursday, May 23, 2019 1:00 PM – 2:00 PM ET

www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 57 CLE Calendar

Dates and registration information for Understanding Rap Sheets, Automation Virginia Criminal Sentencing Commission and SWIFT! CLEs may be found at www. vcsc.virginia (3 Hours – Approved for 3 CLE & VIDC Virginia State Bar .gov/training.html Re-certification) The understanding rap Harry L. Carrico sheets and automation seminar is designed Professionalism Course Introduction to Sentencing Guidelines . for the attorney or criminal justice pro- (6 Hours -– Approved for 6 CLE & VIDC fessional who prepares or uses Virginia’s Re-certification) The introduction seminar is Sentencing Guidelines. May 2, 2019, Norfolk designed for the attorney or criminal justice professional who is new to Virginia’s Sentenc- Virginia Lawyer publishes at no charge notices of v ing Guidelines. continuing legal education programs sponsored by July 16, 2019, Roanoke nonprofit bar associations and government agencies. Advanced Sentencing Guidelines & Ethics The next issue will cover July 5 through August 22. Send information by June 7 to [email protected]. For See the most current dates and (5 Hours – Approved 5 CLE, 1 Ethics & other CLE opportunities, see Virginia CLE calendar registration information at VIDC Re-certification) The evaluation and “Current Virginia Approved Courses” at www. www.vsb.org/site/members/new. course is designed for the experienced user of vsb.org/site/members/mcle-courses/ or the websites of Virginia’s Sentencing Guidelines. commercial providers.

Virginia CLE Calendar Virginia CLE will sponsor the following continuing legal education courses. For details, see www.vacle.org/seminars.htm.

April 23 Controlling the Deposition May 8 The Articulate Attorney®: Public Speaking Webcast/Telephone 37th Annual Real Estate Practice Seminar for Lawyers Noon–2 pm 2019 Live — Fairfax Live — Roanoke 9 am–12:15 pm May 1 9 am–4:10 pm “The Designated Hitter”—Deposing a April 24 Corporation’s Designated Witness Under May 9 The Articulate Attorney®: Public Speaking Federal Rule 30(b)(6) or Virginia Rule 4:5(b) 28th Annual Employment Law Update for Lawyers (6) Seminar 2019 Live — Richmond Live — Charlottesville/Webcast/Telephone Live — Fairfax 9 am–12:15 pm Noon–2 pm 8 am–4:45 pm

Special Education Law in Virginia: An Essentials of Child Support, Custody, and Criminal Speedy Trial Litigation in Virginia Overview Visitation —Keeping Your Case “Up to Speed” Live — Charlottesville/Webcast/Telephone Live — Charlottesville/Webcast/Telephone Live — Charlottesville/Webcast/Telephone 10 am–1:15 pm 3–5 pm Noon–2 pm

April 25 May 2 May 10 CLE and Kris Kristofferson for Charity: An Ethics Update for Virginia Lawyers 2019 Special Education Law in Virginia: An Advocate’s Secret Weapon Live — Charlottesville/Webcast/Telephone Overview Live — Alexandria Noon–2 pm Webcast/Telephone Seminar: 4–5 pm; Dinner: 5:15 pm; Con- 1–4:15 pm cert: 7:30 pm May 3 Gang Law and Trends in Virginia May 14 April 29 Webcast/Telephone 23 Mistakes Experienced Drafters 49th Annual Criminal Law Seminar 2019 Noon–2 pm USUALLY Make Video — Fredericksburg Live — Fairfax 8:15 am–4:45 pm May 3–5 8:30 am–4 pm The Conner-Zaritsky 40th Annual Ad- Vicarious Trauma and Wellness—Know the vanced Estate Planning and Administration Disaster Recovery: Ethics and Practical Warning Signs Before It Is Too Late Seminar Steps Webcast/Telephone Live — Williamsburg Webcast/Telephone Noon–2 pm Friday: 12:55–5:35 pm; Saturday: 8:30 am–1 Noon–2 pm pm; Sunday: 8:30 am–12:35 pm April 30 May 15 49th Annual Criminal Law Seminar 2019 May 7 23 Mistakes Experienced Drafters Video — Abingdon, Norfolk, Richmond, 28th Annual Employment Law Update USUALLY Make Roanoke, Tysons Seminar 2019 Live — Richmond 8:15 am–4:45 pm (Richmond video begins Live — Richmond 8:30 am–4 pm at 9 am) 8 am–4:45 pm

58 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org CLE Calendar

Consumer Law Basics: The Lemon Law May 29 CLE and Washington Nationals for Charity and Breach of Warranty “The Designated Hitter”—Deposing a Live — Washington, DC Live — Charlottesville/Webcast/Telephone Corporation’s Designated Witness Under Seminar: 6–7 pm; Game: 7:05 pm Noon–2 pm Federal Rule 30(b)(6) or Virginia Rule 4:5 (b)(6) June 19 May 16 Webcast/Telephone 28th Annual Employment Law Update Essentials of Child Support, Custody, Noon–2 pm Seminar 2019 and Visitation Video — Charlottesville, Tysons Webcast/Telephone May 30 8 am–4:45 pm 11 am–1 pm Criminal Speedy Trial Litigation in Virginia —Keeping Your Case “Up to Speed” June 20 CLE at Topgolf Loudoun for Charity: Webcast/Telephone Obtaining and Using Medical Records: The The New World of Spousal Support Noon–2 pm Key to Success in Your Personal Injury Suit Live — Ashburn Webcast/Telephone Seminar: Noon–1 pm; Lunch: 1–1:30 pm; June 5 Noon–2 pm Golf: 1:30–3 pm Essentials of Federal Criminal Sentencing Live — Charlottesville/Webcast/Telephone June 25 May 17 Noon–2 pm 37th Annual Real Estate Practice Seminar Annual Military Law Symposium 2019: 2019 Serving Those Who Serve June 6–7 Video —Tysons Live — Quantico 71st Annual VIRGINIA Conference on 9 am–4:10 pm 8:30 am–4 pm Federal Taxation 2019 Live — Charlottesville Representation of Incapacitated Persons 4th Annual Legal Writing Workshop Thursday: 8:50–5:15 pm; Friday: 8:45 as a Guardian ad Litem — 2018 Qualifying Live — Quantico am–4:30 pm Course 8:30 am–5:15 pm Video — Abingdon, Alexandria, Charlottes- June 11 ville, Norfolk, Richmond, Roanoke May 21 Obtaining and Using Medical Records: The 9 am–4:05 pm 37th Annual Real Estate Practice Key to Success in Your Personal Injury Suit Seminar 2019 Live — Charlottesville/Webcast/Telephone June 26 Live — Fairfax Noon–2 pm 37th Annual Real Estate Practice Seminar 9 am–4:10 pm 2019 June 12 Video —Ashburn, Charlottesville May 22 Representation of Children as a Guardian 9 am–4:10 pm 35th Annual Advanced Family Law ad Litem — 2018 Qualifying Course Seminar 2019 Video — Abingdon, Alexandria, Charlottes- Representation of Incapacitated Persons Video — Abingdon, Alexandria, Charlot- ville, Norfolk, Richmond, Roanoke as a Guardian ad Litem — 2018 Qualifying tesville, Dulles, Fredericksburg, Norfolk, 8:30 am–5:15 pm (Richmond video begins Course Richmond, Roanoke at 9 am) Video — Tysons 9 am–4:45 pm 9 am–4:05 pm June 13 Ethics Update for Virginia Lawyers 2019 Representation of Children as a Guardian June 27 Webcast/Telephone ad Litem — 2018 Qualifying Course 37th Annual Real Estate Practice Seminar Noon–2 pm Video — Tysons 2019 8:30 am–5:15 pm Video —Abingdon, Alexandria, Fredericks- May 23 burg, Harrisonburg, Norfolk, Richmond, 37th Annual Real Estate Practice Seminar 45th Annual Recent Developments in the Roanoke 2019 Law 2019: News from the Courts and 9 am–4:10 pm Live — Williamsburg General Assembly 9 am–4:10 pm Live — Virginia Beach Essentials of Probate 8:45 am–4:10 pm Live — Charlottesville/Webcast/Telephone 35th Annual Advanced Family Law TBD Seminar 2019 June 18 Video — Harrisonburg, Tysons, Warrenton, 28th Annual Employment Law Update Zoning and Land Use Winchester Seminar 2019 Live — Charlottesville/Webcast/Telephone 9 am–4:45 pm Video — Abingdon, Alexandria, Norfolk, TBD Richmond, Roanoke May 28 8 am–4:45 pm (Richmond video begins at July 2 Consumer Law Basics: The Lemon Law 9 am) Controlling the Deposition and Breach of Warranty Webcast/Telephone Webcast/Telephone What Every Real Estate Attorney Needs to Noon–2 pm Noon–2 pm Know About PACE Live — Charlottesville/Webcast/Telephone Noon–2 pm

www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 59 Virginia Lawyer Register

DISCIPLINARY SUMMARIES judicial officials, and misconduct. RPC 1.1; 3.1; 3.3 (a)(1); 3.4 (g), (j); 3.5 (f); 8.2; 8.4 (b), (c) The following are summaries of disciplinary actions for violations www.vsb.org/docs/Daniel-022619.pdf of the Virginia Rules of Professional Conduct (RPC) (Rules of the Virginia Supreme Court Part 6, ¶ II, eff. Jan. 1, 2000) or another of Sean Hanover the Supreme Court Rules. Fairfax, VA Copies of disciplinary orders are available at the link pro- 19-000-114282, 19-000-113945 vided with each summary or by contacting the Virginia State Bar Effective February 12, 2019, the Virginia State Bar Disciplinary Clerk’s Office at (804) 775-0539 or [email protected]. VSB docket Board revoked Sean Hanover’s license to practice law based on his numbers are provided. affidavit consenting to the revocation. By tendering his consent to revocation at a time when allegations of misconduct are pending, Hanover acknowledges that the material facts upon which the allegations of misconduct pending are true. Rules of Court, Part 6, Section IV, Paragraph 13-28 CIRCUIT COURT www.vsb.org/docs/Hanover-021319.pdf

Robert Richard Kaplan Jr. Timothy George Hayes Richmond, VA Tazewell, VA 17-033-107835 18-000-107910 Circuit Court Case No. CL2018-4882-8 Effective February 11, 2019, the Virginia State Bar Disciplinary Effective December 11, 2018, the Circuit Court of the City of Board revoked Timothy George Hayes’s license to practice law Richmond affirmed the decision of the Third Disciplinary District based on his affidavit consenting to the revocation. By tendering Committee, section III, to issue a public admonition to Robert his consent to revocation at a time when allegations of miscon- Richard Kaplan Jr. for violating professional rules that govern fees. duct are pending, Hayes acknowledges that the material facts RPC 1.5 (a) upon which the allegations of misconduct pending are true. Rules www.vsb.org/docs/Kaplan-021919.pdf of Court, Part 6, Section IV, Paragraph 13-28 www.vsb.org/docs/Hayes-021119.pdf

DISCIPLINARY BOARD Brian Austin Revercomb King George, VA Michael Leon Avery 18-060-111408 Fairfax, VA Effective January 25, 2019, the Virginia State Bar Disciplinary 19-000-113963 Board suspended Brian Austin Revercomb’s license to practice On February 15, 2019, the Virginia State Bar Disciplinary Board law in the Commonwealth of Virginia for 6 months with terms suspended Michael Leon Avery’s license to practice law in the for violating professional rules that govern competence, diligence, Commonwealth of Virginia for sixty days, with thirty days stayed communication, declining or terminating representation, and bar pursuant to conduct during one year of probation. The suspen- admission and disciplinary matters. RPC 1.1; 1.3 (a), (b); 1.4 (a), sion and probation periods began on January 25, 2019. This was (b); 1.16 (d); 8.1 (c), (d) an imposition of reciprocal discipline, based on disciplinary ac- www.vsb.org/docs/Revercomb-021519.pdf tion by the District of Columbia Court of Appeals. Rules of Court, Part 6, Section IV, Paragraph 13-24 Cherie Anne Washburn www.vsb.org/docs/Avery-022619.pdf Lynchburg, VA 19-090-113267 Sammy Edward Ayer Effective March 19, 2019, the Virginia State Bar Disciplinary Board Yorktown, VA revoked Cherie Anne Washburn’s license to practice law based 17-010-108850,17-010-108870, 17-010-109322, 18-010-110422 on her affidavit consenting to the revocation. By tendering her Effective February 15, 2019, the Virginia State Bar Disciplinary consent to revocation at a time when allegations of misconduct Board revoked Sammy Edward Ayer’s license to practice law in are pending, Washburn acknowledges that the material facts upon the Commonwealth of Virginia based on violations of the rules of which the allegations of misconduct are pending are true. Rules of professional conduct governing competence, diligence, commu- Court, Part 6, Section IV, Paragraph 13-28 nication, safekeeping property, bar admission and disciplinary www.vsb.org/docs/Washburn-031919.pdf matters, and misconduct. RPC 1.1; 1.3 (a); 1.4 (a); 1.15 (a)(1-2); 8.1 (a); 8.4 (c) www.vsb.org/docs/Ayer-022119.pdf DISTRICT COMMITTEES

Rhetta Moore Daniel Jason Alexander Atkins Richmond, VA Gloucester, VA 18-032-110445, 18-032-111046, 18-032-111733 18-060-112575 Effective February 22, 2019, the Virginia State Bar Disciplinary On March 25, 2019, a Virginia State Bar Sixth District Subcom- Board revoked Rhetta Moore Daniel’s license to practice law in mittee issued a public reprimand without terms to Jason Alexan- the Commonwealth of Virginia based on violations of the rules of der Atkins for violating professional rules that govern competence, professional conduct governing competence, meritorious claims diligence, and communication. This was an agreed disposition of and contentions, candor toward the tribunal, fairness to oppos- misconduct charges. RPC 1.1; 1.3 (a) (b); 1.4 (a) (b) ing party and counsel, impartiality and decorum of the tribunal, www.vsb.org/docs/Atkins-032619.pdf

60 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org Virginia Lawyer Register

DISTRICT COMMITTEES Anthony George Spencer Ladysmith, VA Ashton Harris Pully Jr. 16-060-103733 Virginia Beach, VA On March 12, 2019, a Virginia State Bar Sixth District Subcom- 18-022-112880 mittee issued a public reprimand without terms to Anthony Effective February 5, 2019, a Virginia State Bar Second District George Spencer for violating professional rules that govern fair- Subcommittee issued a public reprimand with terms to Ashton ness to opposing party and counsel. This was an agreed disposi- Harris Pully Jr. for violating professional rules that govern safe- tion of misconduct charges. RPC 3.4 (g) keeping property. This was an agreed disposition of misconduct www.vsb.org/docs/Spencer-031319.pdf charges. RPC 1.15 (a)(3), (c), (d)(3-4) www.vsb.org/docs/Pully-020619.pdf

DISCIPLINARY PROCEEDINGS

Suspension – Failure to Pay Disciplinary Costs Effective Date Lifted John Patrick Bond Fairfax, VA March 27, 2019 James Daniel Griffith Reston, VA March 6, 2019

Suspension – Failure to Comply with Subpoena Andrew Ira Becker Virginia Beach, VA March 6, 2019 John James Good, Jr. Stafford, VA March 13, 2019

Edward Emad Moawad McLean, VA March 22, 2019 Kathryn Suzanne Pennington Virginia Beach, VA February 26, 2019

NOTICES TO MEMBERS THE BAR’S SPECIAL COMMITTEE ON THE FUTURE OF LAW PRACTICE RELEASES FINAL REPORT The Special Committee on the Future of Law Practice released its SUPREME COURT OF VIRGINIA SEEKS COMMENT ON final 2019 report. In the report, the committee presents a range PROPOSED CHANGE TO RULE 3.8 and depth of information on external, technological energies The Supreme Court of Virginia requests public comment by May changing the practice of law. The report concludes by offering 21, , 2019 on a proposal to modify Rule 3.8 (“Additional Responsi- a series of ten recommendations to the bar, its committees and bilities of a Prosecutor”) of the Rules of Professional Conduct by boards, law schools, and all Virginia lawyers. adding a Comment 5. www.vsb.org/site/news/item/SCOVA_RPC_ www.vsb.org/site/news/item/scfpl_releases_report comment VSB DISCIPLINARY BOARD TO HEAR ANN BRIDGEFORTH SUPREME COURT OF VIRGINIA AMENDS RULES ON FILE TRIBBEY’S REINSTATEMENT PETITION ON JUNE 28, 2019 FORMATS FOR DOCUMENTS The Virginia State Bar Disciplinary Board hearing on Ann Bridge- On February 15, 2019, the Supreme Court of Virginia amended forth Tribbey’s reinstatement was continued until June 28, 2019, the Rules by adding Rule 1:26 that states all materials made part of at 9:00 a.m. at the State Corporation Commission, Courtroom A, any court record are public records unless sealed by court order, 1300 E. Main Street, Richmond, VA 23219. www.vsb.org/site/news/ or otherwise provided by law, and thus must be submitted either item/vsb_tribbey_reinstatement unencrypted or with software that makes them capable of unen- cryption. The new rule takes effect on May 1, 2019. PETER W. BUCHBAUER RECEIVES FAMILY LAW SECTION’S www.vsb.org/site/news/item/SCOVA_file_formats 2019 LIFETIME ACHIEVEMENT AWARD The Virginia State Bar Family Law Section has awarded its highest MCLE BOARD SEEKS COMMENTS ON AMENDMENTS TO honor, the Betty A. Thompson Lifetime Achievement Award, to MCLE REGULATIONS Peter W. Buchbauer of Buchbauer & McGuire, P.C. in Winchester. The Virginia State Bar Mandatory Continuing Legal Education www.vsb.org/site/news/item/peter_w_buchbauer (MCLE) Board seeks comments on proposed amendments to the MCLE regulations that will permit teaching and attendance cred- ANNUAL MEETING its for MCLE courses that pertain to professional health initiative Online registration is now open for the 81st Annual Meeting, June courses, as well as amendments to clarify the language regarding 12–15, 2019, in Virginia Beach. www.vsb.org/annualmeeting “lawyer well-being.” Written comments must include the name and address of the commenter. To be considered, comments must INDIGENT CRIMINAL DEFENSE SEMINAR be received by May 1, 2019. Register now for a seat at one of the webcast locations for the www.vsb.org/site/news/item/mcle_board_seeks_comments Leroy Rountree Hassell Sr. Indigent Criminal Defense Seminar on May 3. www.vsb.org/special-events/indigent-defense www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 61 Virginia Lawyer Register

CLIENTS’ PROTECTION FUND BOARD PAYS $51,123 TO PETITIONERS of Phillips and Brent Lavelle Barbour, totaling $3,950. In Phillips’ case, the petitioner appealed the awarded amount of $1,250, ask- At its most recent meeting on January 11, 2019, in Charlottesville, ing for the full requested amount of $2,500. The board decided, the Virginia State Bar Clients’ Protection Fund Board approved however, that some work had been performed in her divorce and payments totaling $51,123. custody case, and they affirmed their award of $1,250. The board approved new claims in the amount of $47,173 re- Barbour, whose license was revoked in February 2018, garding five Virginia lawyers. In the largest award of the meeting, requested reconsideration of two awards given to his former one petitioner, a former client of Michael Anthony Lormand of clients in September. The board affirmed an award of $1,200 as Glen Allen, was awarded $17,500 as reimbursement for funds that reimbursement for unearned fees in one criminal case. And, in an- the attorney collected for her spousal arrearages but failed to remit other, the board increased its award from $750 to the full amount to her. The bar revoked Lormand’s license to practice in June of requested by the petitioner, $1,500. In both cases, Barbour had not 2018 for misconduct related to the petitioner’s case. done any significant work for the clients. Another petitioner recovered $16,875 for fees paid to Chris- At the January meeting, the board also read a letter of grat- topher DeCoy Parrott of Manassas. Parrott’s license was initially itude from Jason Blye, a claimant awarded $4,360 in September. suspended in November of 2016, and, failing to comply with the “After the outcome of my case, I had become so discouraged and terms of the suspension, his license was revoked in October of felt that all hope was lost,” he wrote. “I had never felt so cheated in 2017. Parrott, facing discipline, signed an agreement in 2017 to my life …. It is because of you and your board that I will have the pay the petitioner back, but that never occurred. financial ability to get back into court and get the outcome that we The board approved a $2,000 payment to a petitioner’s estate deserve. This program is a true blessing and I hope that you and to reimburse for work in a divorce case in which Shelly Renee Col- your board realize that your efforts are greatly appreciated.” lette did not do significant work. The petitioner died after he filed The Clients’ Protection Fund was created by the Supreme the petition, but before the Board considered the claim. Collette’s Court of Virginia in 1976 to reimburse persons who suffer a quan- license was revoked in March of 2018. tifiable financial loss because of dishonest conduct by a Virginia A former client of Charles Gregory Phillips of Salem was lawyer whose law license has been suspended or revoked for dis- awarded $2,914 – reimbursement for a fee given to Phillips for ciplinary reasons, or who has died and did not properly maintain work on a divorce proceeding that wasn’t carried out. Phillips at- client funds. The fund is supported by Virginia lawyers who pay tempted to present investigators with an itemized bill that showed an annual fee of up to $25. The Supreme Court of Virginia has set work occurring before the petitioner retained him and after the the current annual fee at $10 per Virginia lawyer with an active petitioner terminated the representation. The bill was deemed license status. fraudulent, and the petitioner’s complaint to the bar was one of Payments from the Clients’ Protection Fund are discretionary the cases that led to Phillips’ ten-month suspension last year. and are not a matter of right. If you have any questions, you may A petitioner, the mother of a decedent in a wrongful death contact Vivian R. Byrd, administrator to Clients’ Protection Fund action, received $7,884 as reimbursement for funds that the at [email protected] or (804) 775-0572. While the VSB does not name attorney, Michael Alan Bishop, received before his death but failed petitioners in news summaries, recipients of Clients’ Protection to pay to the wrongful death beneficiaries. The attorney did not Fund disbursement are a matter of public record. Contact the CPF maintain the funds for disbursement to the beneficiaries. administrator for more information. At the meeting, the board also affirmed its prior decisions A full chart of the amounts paid as a result of January’s meet- in September 2018 to approve three claims from former clients ing follows.

New Petitions Docket Number Lawyer’s Name City of Record Amount Paid Type of Case 18-555-003162 Christopher DeCoy Parrott Manassas, VA $16,875 Unearned fees/Civil Law - State 18-555-003168 Shelly Renee Collette Winchester, VA $2,000 Unearned fees/Family Law 18-555-003174 Michael Anthony Lormand Glen Allen, VA $17,500 Unearned fees/Family Law 19-555-003181 Charles Gregory Phillips Salem, VA $2,914 Unearned fees/Family Law 19-555-003193 Michael Alan Bishop deceased Meadowview, VA $7,884 Unearned fees/Personal Injury/ Property Damage

Reconsidered Petitions 18-555-003176 Brent Lavelle Barbour Lynchburg, VA $1,500 Unearned fees/Criminal Law 19-555-003180 Brent Lavelle Barbour Lynchburg, VA $1,200 Unearned fees/Criminal Law 18-555-003167 Charles Gregory Phillips Salem, VA $1,250 Unearned fees/Family Law

62 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org 81st Annual Meeting

Join us for the 2019 Annual Meeting as Marni E. Byrum of Alexandria is sworn in as the 81st president of the Virginia State Bar. The Annual Meeting offers an opportunity to stay abreast of current legal and professional issues, spend leisure time with your family, and socialize with your colleagues, all in the relaxed and informal setting of Virginia Beach.

Complete Annual Meeting information, including online registration, forms, and hotel information and links, is available on the Virginia State Bar website. If you have not received a brochure and/or need more specific information, please contact the Virginia State Bar, Bar Services Department at (804) 775-0514 or [email protected]. All information on the following pages is tentative and subject to change. Please refer to www.vsb.org/annualmeeting for updates.

Schedule of Events WEDNESDAY, JUNE 12 10:10 A.M. – 11:40 A.M. CLES NOON Immigration: Contradictory or Executive Committee Holiday Inn North Beach Complementary to the Rule of Law? Hilton Oceanfront 4:00 P.M. Preaching What We Practice: Taking Your Lawyers Helping Lawyers Holiday Inn North Beach Experience Back to the Classroom Sheraton Oceanfront Board of Directors Meeting Proactive Wellness: How to Identify, Understand, and Mitigate Lawyers’ THURSDAY, JUNE 13 Occupational Risks Sheraton Oceanfront 8:45 A.M. – 4:30 P.M. 45th Recent Developments Seminar Sheraton Oceanfront 11:45 A.M. Dunnaville Diversity Achievement Award Hilton (separate registration with VaCLE) Oceanfront 9:00 A.M. Council Meeting Holiday Inn North Beach 11:45 A.M. Section & Conference Joint Lunch Hilton 12:00 P.M. VADA Board Meeting The Cavalier (ticketed event) Oceanfront 4:30 P.M. Diversity Conference Welcome Reception Sheraton 11:45 A.M. Virginia Legal Aid & Oliver Hill Sheraton Open to all attendees Oceanfront Pro Bono Awards Luncheon Oceanfront Sponsor: Virginia Law Foundation 5:00 P.M. Friends of Bill W. Meeting Holiday Inn North Beach 11:45 A.M. YLC Members & Fellows Sheraton Oceanfront 6:30 P.M. Opening Reception for All Attendees Sheraton Lunch & Annual Meeting (ticketed event) Sponsor: VSB Members Insurance Center Oceanfront

FRIDAY, JUNE 14 1:30 P.M. – 3:00 P.M. CLEs 7:00 A.M. Yoga by the Sea Beachfront Sheraton So the Officer was Wearing a Body Worn Camera. Now What? Hilton Oceanfront 7:30 A.M. Run in the Sun – 5K Run Boardwalk Caveat Emptor: What You Need to Know Sheraton Sponsor: YLC; Virginia Lawyers Weekly About International M&A in the Trump Era Oceanfront 7:30 A.M. Conference of Local and Sheraton Oceanfront True Collegiality: A Study of How Young Family Specialty Bar Associations Lawyers Can Reverse the Trend of Hostility Annual Meeting & Awards Breakfast and Return to the True Calling of Service Sheraton Oceanfront 8:30 A.M. VADA Board Meeting The Cavalier 3:00 P.M. – 4:00 P.M. Family Bingo Sheraton Oceanfront 8:30 A.M. – 10:00 A.M. CLEs Sponsor: Walker Jones, PC Finding Civility in Discovery Hilton Oceanfront 3:15 P.M. – 4:45 P.M. CLEs Why Go to Europe When Europe Comes to You? U.S. Data Protection in a GDPR World Sheraton Oceanfront The Grim Reaper: Death, Taxes and Real Estate Sheraton Oceanfront The Future of Law Practice: Hot Topics in Ethics Sheraton Oceanfront Confronting The Shifting Landscape Sheraton Oceanfront

4:30 P.M. Rakes Leadership in Education Award Hilton 9:00 A.M. Virginia Law Foundation Meeting Princess Anne (by invitation) Sponsor: Gentry Locke Oceanfront Country Club

JUNE 12–15 2019 • VIRGINIA BEACH, VIRGINIA www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 63 81st Annual Meeting

FRIDAY, JUNE 14 Special Events 5:00 P.M. YLC Membership Reception Hilton Oceanfront Sponsor: Virginia CLE Dance the Night Away! 5:00 P.M. Friend of Bill W. Meeting Holiday Inn North Beach Friday, June 14, 9:00 p.m. – Join the fun with the Rare Mixx 6:00 P.M. President’s Reception Hilton Oceanfront Band – one of the hotest party bands on the east coast. Bring 7:00 P.M. Banquet & Installation of President Hilton your dancing shoes! (ticketed event) Oceanfront Sponsor: The McCammon Group Bingo – A Family Favorite! Take a break from the beach and bring your family to the 9:00 P.M. Dance with Rare Mixx live band Hilton Oceanfront Sheraton Oceanfront Hotel on Friday afternoon for lots of fun and prizes! — Sponsor: Walker Jones, PC SATURDAY, JUNE 15 Boardwalk Art Show & Festival 7:00 A.M. Yoga by the Sea Beachfront Sheraton This year our meeting coincides with the 62nd Annual 8:00 A.M. Law School Alumni Breakfasts Sheraton Oceanfront Boardwalk Art Show! For more information, visit (ticketed event) www.virginiamoca.org/. 9:00 A.M. General Session & Awards Sheraton Oceanfront Athletic Events Continental Breakfast Buffet 38th Annual Run in the Sun — Friday, June 14, 7:30 a.m. on the Virginia Beach Boardwalk — Sponsors: Virginia Lawyers 9:45 A.M. – 11:45 A.M. Weekly and Young Lawyers Conference SPECIAL CLE Judicial Squares Sheraton Oceanfront 17th Annual Tennis Tournament — Saturday, June 15, 1:00 p.m. at Princess Anne Country Club — Sponsor: MichieHamlett 35th Annual David T. Stitt Memorial Volleyball Tournament 10:00 A.M. Saturday, June 15, 1:00 p.m. Sheraton Beachfront — Brunch for 50-Year Award Recipients Sheraton Oceanfront Sponsors: Young Lawyers Conference Sponsor: Senior Lawyers Conference and Harris Matthews & Crowder PC NOON Raffles & Closing Reception Sheraton Oceanfront Cash Bar Early Morning Yoga by the Sea 1:00 P.M. Tennis Tournament Princess Anne Friday and Saturday mornings Sponsor: MichieHamlett Country Club at 7:00 a.m. 1:00 P.M. David T. Stitt Memorial Beachfront Sheraton Volleyball Tournament Sponsor: Harris Matthews & Crowder PC

Showcase CLE Programs

TOTAL AVAILABLE MCLE CREDIT: 8.0 Hours, including 4.0 Ethics (pending) Your Annual Meeting registration fee includes these programs sponsored by VSB sections and conferences in collaboration with statewide bars and other legal organizations. You must be registered for the Annual Meeting to receive CLE credit for any program on Friday or Saturday.

8:30 A.M. – 10:00 A.M. 10:10 A.M. – 11:40 A.M. Finding Civility in Discovery Immigration: Contradictory or Complementary Hilton Oceanfront (1.5 CLE hours; 1.0 ethics pending) to the Rule of Law? Sponsors: Litigation Section, Construction & Public Contracts Hilton Oceanfront (1.5 CLE hours pending) Section, and Senior Lawyers Conference Sponsors: Diversity Conference, YLC, Hispanic Bar Association of Virginia, VWAA, and APABAVA Why Go to Europe When Europe Comes to You? U.S. Data Protection in a GDPR World Preaching What We Practice: Taking Your Experience Henry Ballroom (1.5 CLE hours pending) Back to the Classroom Sponsors: Corporate Counsel, Intellectual Property, and Sheraton Oceanfront (1.5 CLE hours pending) Business Law Sections Sponsors: Education of Lawyers and Health Law Sections

The Future of Law Practice: Confronting the Proactive Wellness: How to Identify, Understand, and Shifting Landscape Mitigate Lawyers’ Occupational Risks Sheraton Oceanfront (1.5 CLE hours; .5 ethics pending) Sheraton Oceanfront (1.5 CLE hours pending) Sponsors: General Practice Section, Health Law Section, Sponsor: ALPS Military Law Section, and Senior Lawyers Conference

JUNE 12–15 2019 • VIRGINIA BEACH, VIRGINIA

64 VIRGINIA LAWYER | April 2019 | Vol. 67 www.vsb.org 81st Annual Meeting

Showcase CLE Programs

1:30 P.M. – 3:00 P.M. 3:15 P.M. – 4:45 P.M. So the Officer was Wearing a Body Worn Camera. The Grim Reaper: Death, Taxes and Real Estate Now what? Sheraton Oceanfront (1.5 CLE hours pending) Hilton Oceanfront (1.5 CLE hours; .5 ethics pending) Sponsors: Real Property, Tax Law, and Trusts and Estates Section Sponsors: Criminal Law and General Practice Sections Hot Topics in Ethics Caveat Emptor: What You Need to Know About Sheraton Oceanfront (1.5 CLE hours; 1.5 ethics pending) International M&A in the Trump Era Sheraton Oceanfront (1.5 CLE hours; 1.0 ethics pending) Sponsors: Antitrust, Business Law, Corporate Counsel, Special CLE Program Intellectual Property, and International Practice Sections SATURDAY, JUNE 15, 9:45 A.M. – 11:45 A.M.

True Collegiality: A Study of How Young Family Lawyers Judicial Squares CLE Can Reverse the Trend of Hostility and Return to Sheraton Oceanfront (2.0 Hours; .5 Ethics pending) the True Calling of Service Sponsor: Young Lawyers Conference Sheraton Oceanfront (1.5 CLE hours; .5 ethics pending) Fasten your seatbelts for Judicial Squares, the ultimate CLE Sponsors: Family Law Section and Young Lawyers Conference game show! This year, get ready to “go for the win” with some your favorite Virginia judges, as we dive into civil and criminal procedure concerns. Contestants will hear from judges who will seek to challenge them by providing answers to various questions, while committee members decide whether that answer is true or false. Don’t fall into a Register now at trap of “X gets the square” when you’re an O by taking these judges at face value! The winning team will then go head-to- http://bit.ly/AM2019reg head in a twisted lightning round against the judicial panel, determining who will be the ultimate winner… the attorneys or the judges!

Annual Meeting Sponsors

APABAVA Harris Matthews & Crowder PC Sheraton Oceanfront Hotel We gratefully acknowledge these sponsors of the Access to Legal Services Hispanic Bar Association of Virginia CLE 2019 Annual Meeting for Committee Virginia Virginia Lawyers Weekly their contributions in hosting ALPS Martingayle Bischoff P.C VSB Members’ Insurance a variety of activities and The City of Virginia Beach The McCammon Group Center special events for our members and their guests. CLSBA MichieHamlett VWAA Diversity Conference Senior Lawyers Conference Walker Jones PC Gentry Locke Sensei Enterprises, Inc. Young Lawyers Conference

Raffles and Prizes Don’t Miss There will be plenty of raffles and prizes for both adults and children at this year’s meeting. The raffle collection will Any of the Fun! be donated by our prize sponsors. Look for the raffle display listing the prizes and sponsors in the registration area of the Sheraton Oceanfront Hotel. Raffle entry forms will Visit the Annual Meeting website be distributed in your Annual Meeting registration badge www.vsb.org/annualmeeting packet. Drawings for all raffles and sponsored prizes will be Download Now — Annual Meeting mobile app! announced at the Closing Reception on Saturday, June 15, at Noon, in the Grand Ocean Foyer of the Sheraton Hotel. You (visit the iTunes store or Google play and look for must be present to win! “VSB Events”)

JUNE 12–15 2019 • VIRGINIA BEACH, VIRGINIA www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 65 Thank you to the lawyers across the commonwealth who joined the Virginia Lawyer Referral Service and supported its mission of assisting the public in finding an attorney. www.vlrs.net

Paul Joseph Abraham Mark Joseph Dahlberg Joseph Francis Grove Robert Kenneth Miller Jr. Scott Raymond Sexauer Howard Barry Ackerman Jonathan Stanley David Andrew Joseph Guzzo Douglas Edward Milman William Gilbert Shields Christina Janel Aguirre Thomas B. Davidson Jr. Steven Parris Hammond Stephanie Ann Montgomery Jason Glenn Shoemaker Christopher Shawn Allen Jonathan Edward Davies Barbara Timmeney Hanna John Charles Moore James Edward Short Jamie Leigh Allgood Joan Bellefield Davis Gregory Owen Harbison John Sargent Morris III Jennifer Barbara Shupert Jacob Alzamora Christopher Michael Day Helen O’Beirne Hardiman Rudolph Glen Morgan Taylor Brent Siegel Marc Richmond Amos Ashley Charles Dean Andrea Clair Harris Adriaen Meredith Morse Jr. Nicholas Foris Simopoulos Reed Cameron Amos Oren Nissim Dearson Brett Charles Herbert Cary Powell Moseley Satnam Singh Allison Wittersheim Anders Brian Wayne Decker Veronica Beatriz Hernandez Matthew Christian Muggeridge Aubrey Lynn Carew Sizer Timothy Vitow Anderson Christopher John DeSimone Harry Hamilton Heyson III Faisal Shawn Mughal Lorena Rae Smalls Trevor Daniel Anderson James Arthur DeVita Anthony Ho Pierce Christopher Murphy Erin Ann Smith Jeremiah Asias Asercion David Darden Dickerson Jr. Andrew Paul Hoffman Dennis Eugene Nagel Horace Van Smith Paul Robert Asercion David Scott Dildy Stephanie Bryant Holland Yvette Justine Nageotte John Randolph Smith Gorkhmaz Mohsum Oglu Asgarov Stan Michael Doerrer Scott Christopher Hook Casey Shannon Nash Matthew Westcott Smith Thomas Woodward Ashton Scott Allan Dondershine Whitney Lawrimore Hughes Jonathan Allen Nelson Nigel S. Smyth Milton Edward Babirak Jr. Scott Howard Donovan Harold Thurman Hughlett Scott Jeffrey Newton Sefton Keller Smyth Tommy P. Baer James Valentine Doss III James Fulton Hurd Jr. Anthony Mark Nicewicz Louis David Snesil Jesse Andres Baez Ronald Gene Doucette Scott Samuel Ives Macayla Marie Nicolaison Elden Ray Sodowsky Chester Lavester Banks Christopher Michael Dove Claire Omoye Izah Edward Vincent O’Connor Jr. Nicholas Jon Solan Brooke Stephenson Barden Richard Lawrence Downey Justin Michael Jacks Matthew James O’Herron Eric Roland Spencer John Addison Barnhardt Judy Ann Dugger Thomas Neal Jamerson Christopher Michael Okay Joseph John Steffen Jr. Charles Butler Barrett Mark Beckner Dunevant Christopher Porter James Frederic Neal Ornitz Virginia Marie Stephens Peter Bernard Baruch William Mark Dunn Kevin Scott Jaros J. A. Terry Osborne Jessica Lasha Stokes-Johnson Daniel Robert Beiger Stephanie Laufer Duran Gregory Minor Johnson Kimberly Lee Osborne Steven David Stone Cheryl Eddy Benn Richard Franklin Dzubin Gene Raye Jones Ronald Allen Page Jr. Bryan Kimball Streeter Ellisleslie Leon Bennett Mark Lawrence Earley Keith Andrew Jones Siddhesh Vishnu Pandit Elana Ethel Strom August Bequai Mark Lawrence Earley Jr. Jonathan Mitchell Joseph William Andrew Patzig Rodrick Karl Sutherland Gary Wayne Berdeen Jacob Wetmore Early Sean Patrick Kavanagh Louis George Paulson Stephen Christopher Swift Louis Aloyious Bernard David Eddy Soo Kang Keithley Benjamin Dean Pelton Jonathan Blair Tarris Graziella Bianchi Scott Michael Ehrenworth Mary Margaret Kellam William L. Perkins III Seymour M. Teach Howard Wayne Bibee Eugene Millan Elliott Jr. Paul Simon Kellinger Alyssa Dawn Phillips Roy Tesler Gregory Boyce Blanchard Adriana Fernandez Estevez Kristi Cahoon Kelly Deborah Dech Piland Diana Margeaux Thomas Erin Casey Blanck David Anthony Eustis Mohammad Javad Khan Todd Allen Pilot Henry Allen Thompson II Irving M. Blank Walter David Falcon Jr. Nancy Myung-Jin Kim Bradley Glenn Pollack James Amery Thurman Richard Hamilton Boatwright Jennifer Leigh Ferrara Nosuk Pak Kim Gregory Allen Porter Nicole Marie Thurston Randall John Borden Richard William Ferris Sin Kyong Kim Todd Joseph Preti Richard Scott Toikka Gregory William Bowman James Douglas Fife Bryan Errol Klein Michael Wayne Price George Lysle Townsend Tara Nikole Brown Robert Leonard Flax Richard J. Knapp II Helen Margaret Primo Elizabeth Blair Trent Todd Douglas Bunn John Richard Fletcher Matthew Lane Kreitzer Jeremy Lyle Pryor Cheryl Sue Tuck Thomas Coleman Bunting Jessica Harbeson Foster Shannon Leigh Kroeger Christopher Russell Rau William Robert Turner III Geoffrey Stewart Burke William S. Francis Jr. Marcia Retchin Langsam Vanessa Crockett Reed Benjamin Scott Tyree Donald Morris Burks Lisa Christine Francisco Dominic Paul Lascara Bradley David Reeser Sean E. Underwood Richard Lee Buyrn Claudia Rosanna Greves Fredericks Edward B. Lippert Daniel Joseph Renfro Kathryn Louise Van Hooser Brandon Thomas Bybee Gary Burningham Fuller Karen Marie Lado Loftin Jane Maria Reynolds Jill Lori Velt Brittany Stansberry Carper Paul Christopher Galanides Kenneth Matthew Long Lonnie Charles Rich Harsh Kalyan Voruganti Meghan Michele Casey Jeffrey Lehner Galston Tariq Kamal Louka Barrett Rives Richardson Jr. Kathleen Grace Walsh Cynthia Lynne Chaing Stacey Dawn Torigiani Garcia Cerid Elizabeth Lugar Andrew Thomas Richmond Paul Snyder Ward Joan Walda Champagne Alfred Blake Gayle Rachel Elizabeth Madden Jeffrey Floyd Riddle Marie Everlyn Washington Jeremie Wade Childress Jonathan Seth Gelber Mark Joseph Madigan Robert Frank Rider Tucker Lawson Watson Timothy Lawrence Coffield Christin Lucille Georgelas Robert J. Madigan James Barbour Rixey Steven Kent Webb Sarah Catherine Collins Frederick Robert Gerson Besianne Tavss Maiden Randolph Clay Robertson Edward Laurence Weiner Martin Carroll Conway Frederick John Getty James Chandler Martin Melissa Walker Robinson Brad Daren Weiss Anthony Roelof Coppola Gregory Dale Gilbert Thomas Charles Mason III Jeffrey Scott Romanick Joseph Elmer Whitby Jr. Samara Michelle Corbin Brian James Gillette Michelle Nicole Mathis Raul Jose Romero III Steven Blythe Wiley Manuel Antonio Cordovez Ann Frances Gillooly Earl Neville Mayfield III Edward Scott Rosenthal Alanna Camille Williams Philip Cutchin Coulter George W. R. Glass John David Mayoras Elizabeth Michele Ross Mark Bailey Williams Frank Neil Cowan Jr. Robert Clemm Goad III Michael Allen Mays James Everett Ruland Michael Allan Williams John Colby Allen Cowherd Gary Dean Godman Katherine Cordova McCollam Spencer Alexandre Rygas James Bradley Winder Jr. Warren Eugene Cox Stephen Allen Gold Ronald Clark McCormack Charles Richard Samuels Marshall Allen Winslow Jr. Dwight Everette Crawley Irving Block Goldstein Amy Estes McCullough Todd Francis Sanders Thomas Woehrle Elizabeth Marie Crego Michael Lawrence Goodman Franklin D McFadden Jr. Paul Todd Sartwell Mark Allen Wohlschlegel II Matthew Aulin Crist Bradford Elliott Goodwin Jonathan Lee McGrady Frederick Michael Schick Clayton Andrew Worthington Guy Cameron Crowgey William Scott Greco Dennis James McLoughlin Jr. Ryan Michael Schmalzle Matthew Joseph Yao Scott Gregory Crowley Peter David Greenspun Neil Edward McNally Sam David Scholar Victoria Paige Young Peter Daniel Crumpler III Sean David Gregg Mark Bruce Michelsen Matthew Thomas Schottmiller Wilhelm Alfons Zeitler Richard McIlwaine Cuthbert James Douglas Griffin Shawn Michael Mihill James Peter Seidl Carolyn Elizabeth Dahlberg Edward Gross Abigail Ann Miller Albert Charles Selkin Professional Notices

Steven W. Lippman and a shareholder in the Richmond of- PLLC and head of the litigation team. Robert D. Michaux have fice and James “Lee” Hoyle has been Her practice focuses on all areas of fam- joined Christian & Barton, promoted to partner in Richmond. ily law, including divorce, juvenile law, L.L.P. custody, support, equitable distribution, Lippman is a member Lippman Michael C. Litman post-divorce modification, partition ac- of the business law and and Soroush “Surge” tions, transgender issues, pre- and post- health care practice groups. Moghaddassi have joined nuptial agreements, marital settlement He received his law degree Harman Claytor Corrigan agreements, and property settlement from the University of & Wellman’s Richmond Litman agreements. Richmond School of Law office as associates. Litman Kleiza was formerly a and his undergraduate Michaux focuses his practice on the partner at Zavos Juncker degree from James Madison University. defense of lawsuits involv- Law Group where she Michaux is a member of the firm’s ing local governments and represented clients in intellectual property and litigation public entities, premises and domestic relations law, Kleiza practice areas. He received his law products liability, motor Moghaddassi including marital agree- degree from the University of Richmond vehicle liability, and comments, adoption, complex equitable School of Law and his undergraduate mercial disputes. Moghaddassi primarily distribution, LGBTQ matters, custody degree from Virginia Commonwealth defends cases involving motor vehicle and visitation, relocation, child support, University. liability, premises and products liability, and spousal support. and commercial litigation. Michael A. Inman of Inman Anthony M. Russell of & Strickler PLC in Virginia The Thomas Jefferson Gentry Locke has been Beach has been appointed Foundation has announced selected as a Fellow of to the executive commit- that David C. Landin, the Litigation Counsel of tee of the Hampton Roads special counsel at Hunton America. Russell recently Inman Russell Association of Commercial Andrews Kurth LLP, has won a unanimous $625,000 Real Estate, and to the Board of Trustees joined the Monticello Landin jury verdict in a medical malpractice for the REACH Foundation which pro- Board of Trustees. Landin case involving an injured minor with vides educational opportunities. He also will contribute to the foundation’s the assistance of Gentry Locke associate serves on the Virginia Beach Planning mission of education and preservation Mary Kathryn Atkinson. Commission. of Monticello, the home of Thomas Jefferson and a National Historic Michele Satterlund, a Landmark. Caryn R. West has joined partner at McGuireWoods in Parks Zeigler PLLC David S. Houston has has received a legal writing Virginia Beach as a part- joined Bean, Kinney award through a national ner. She currently serves & Korman P.C. as a nonprofit program run in Satterlund as the president of the West shareholder, practicing in association with the Library Norfolk & Portsmouth the areas of zoning and land Houston of Congress that recognizes only 30 Bar Association, treasurer of the use and commercial leasing. articles from the nation’s 1,000 largest Norfolk & Portsmouth Bar Association Houston has counseled and represented law firms. Satterlund was recognized for Foundation, and secretary of the clients throughout Virginia, leveraging Sidewalks: The Next Mobility Frontier, Hampton Roads Estate Planning his expertise in complex developments that explains how cities are adopting Council. West has worked for well over and zoning approvals for both large and policies to accommodate technologies a decade as a trusts & estates and cor- small businesses. Prior to joining Bean such as delivery robots and shared porate services attorney. Kinney, Houston was at Blank Rome LLP. stand-up scooters that change how

sidewalks are used to move goods and KPM Law, with Paley Rothman has opened people. Satterlund’s clients include offices across a Northern Virginia office national and international companies Virginia, as well and added Eva Juncker and in the technology, pharmaceutical, as Washington, Lynette Kleiza to the Family transportation, healthcare and manufac- DC, North Montgomery Hoyle Law practice as principals. Juncker turing industries. Carolina, West Juncker was a founding Virginia, and Maryland, announced partner at Zavos Juncker Law Group, that W. Barry Montgomery has become www.vsb.org Vol. 67 | April 2019 | VIRGINIA LAWYER 67 Professional Notices

Gentry Locke is pleased Books by Virginia Lawyers: to announce that Ashley W. Winsky has joined Intellectual property Kirk Schroder of the firm’s Richmond lawyer Timothy J. Schroder Brooks Lockhart of Willcox PLC in Richmond office as a partner in Winsky the Transportation, & Savage, PC has has published The Insurance, Plaintiff Personal Injury, published his second Essential Guide to and Civil Litigation practices. Winsky novel, Pirates (Stark Entertainment Law: brings nearly a decade of experience House Press), the story Dealmaking, a leading in defending motor carriers, railroads, of the adventures of resource book on legal amusement parks, bus companies, an ex-SEAL who starts issues in the enter- product manufacturers, and business a boat charter business in Costa Rica tainment industry that includes forms, owners against a wide array of personal after serving in a desert war and finds contracts, and negotiating tactics in injury claims. She has also represented the experience less peaceful than he may law ranging from book publishing to individuals in wrongful death and cat- have imagined. motion pictures and television. astrophic injury claims. She is an active member of the Transportation Lawyers Association and the American Trucking Association. Willie Azael Mejia has joined Priale & Racine PLLC as an associate attorney. He represents Professional Notices clients (both English and Mejia Spanish-speaking) in crim- Email your news and professional portrait to [email protected] for publication inal, traffic, and immigration matters in in Virginia Lawyer. Professional notices are free to VSB members and may be northern Virginia. He graduated from George Mason University with a B.S. in edited for length and clarity. Criminology, and William & Mary Law School in May 2018. Reach 50,000 Lawyers Across Virginia and Across the USA!

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