The National Law Journal in March presented America’s 50 Outstanding General Counsel, a report spotlighting in-house attorneys who head legal departments at some of most important companies and organizations in the world and who exemplify top lawyering skills and professionalism.
Here, seven of those general counsel share that recognition by describing the pivotal contributions made by the outside counsel they recruited for their blockbuster litigation wins and deals.
Kent Baldauf Jr., director and vice president, The Webb Law Firm
It was in 2006 that Newegg Inc. chief legal officer Lee Cheng and outside trial counsel Kent Baldauf Jr., said they first faced the dreaded adversary: A “non-practicing entity” alleging Newegg had infringed on 10 patents.
NCR Corp., a consumer transaction tech firm that online electronics retailer Newegg considered a patent troll, accused Newegg of using technology for which NCR allegedly held the rights. Although certain the allegations were false, Newegg settled.
But that was the last time it would fold in the face of “patent troll” litigation. Betting that settling to avoid the cost of going to court, even when the patent challenges were spurious, would only invite more challenges, Cheng and Baldauf chose to stand up to the bullies.
“Lee told me that if we truly did not think Newegg had any liability, then he was not going to settle simply to avoid the cost of defense,” said Baldauf, an intellectual property and patent law and director and vice president at The Webb Law Firm in Pittsburgh.
And Newegg has kept that vow, even in the face of an aggressive adversary, and a jury trial loss, at the hands of Soverain Software LLC. Soverain alleged Newegg infringed on three patents for online shopping cart functions. Newegg refused to capitulate and was rewarded when, in January, the U.S. Supreme Court tossed the case. Newegg has gone on to battle other NPE suits, and won.
Cheng has high praise for the judgment and technical prowess of Baldauf and his Webb team.
“Kent is a partner whose technical legal acumen is supplemented by a sense of fiduciary duty that places client interest above his own,” Cheng said. “That is all too rare now in the world of mega law firms that focus primarily on maximizing their own profits.”
Karen Gaunt, partner, Dinsmore & Shohl
Karen Gaunt has held a position on the front lines of Procter & Gamble’s relentless pursuit of counterfeit goods and their suppliers. She counts as successes her role in the seizure of fake coupons and imitation detergent smuggled into the country—and the indictment of thieves.
An intellectual property partner at Dinsmore & Shohl, Gaunt has served as outside counsel to consumer products giant P&G for a decade, defending the brand and trademark, and digging deep to help law enforcement build cases. She was instrumental in busting online sites that trafficked in counterfeit goods and she maintained a database linking sellers back to suspected distributors and manufacturers.
Deborah Majoras, P&G’s chief legal officer, has plenty of praise for Gaunt’s abilities, insights and track record. Gaunt was selected to concentrate on anti-counterfeiting “because of her sense of urgency and attention, and also her practical, business-based advice and collaborative approach,” said Majoras, herself a fierce protector of the company’s brand. Majoras said Gaunt has proved to be “the consummate professional, both in her dealings with the P&G brand protection team, and in her dealings with the suspected infringers and opposing counsel.”
Equally important, Majoras said, is that Gaunt is a good fit with P&G. “Karen’s understanding of P&G’s culture and reputation in the business community and world at large has been in lock-step with P&G’s core values, making her a valued partner in our ongoing anti-counterfeiting efforts.”
Gaunt, for her part, is equally upbeat about the company she represents. “The highlight is having the privilege to work on a daily basis with a company that has demonstrated a strong commitment to the protection of intellectual property and counterfeiting prevention,” she said.
Charles Mulaney, partner, Skadden, Arps, Slate, Meagher & Flom
It was a deal of immense import: a $7.9 billion merger between Exelon Corp. and Constellation Energy Group, Inc. When it closed in March 2012, it left Exelon the nation’s largest competitive power generator.
And it was the first time Darryl Bradford, Exelon’s general counsel, collaborated on a major project with outside counsel Charles W. Mulaney, Jr., a mergers and acquisition power hitter at Skadden, Arps, Slate, Meagher & Flom LLP in Chicago. By all accounts, it was a winning partnership.
Mulaney “was our quarterback [who] negotiated a great deal and got it closed,” Bradford said, calling the outside counsel “a great confidant and advisor.”
High dollar deals are familiar territory for Mulaney. Among the transactions in which he has played a role are Chevron Corp.’s $4.3 billion acquisition of Atlas Energy, Inc., Guidant Corp.’s acquisition by Boston Scientific Corp. for $27 billion, and Ameritech Corp.’s $60 billion merger with SBC Communications, Inc.
For his part, Mulaney found “Doug” Bradford a pleasure to work with, a man whose “focus and energy never flagged,” and one with a sharp legal mind.
Even so, bringing the deal home was no easy trick.
In ill-timed bad news for Exelon, the country’s largest owner and operator of nuclear power plants, and Constellation, with its own three nuclear reactors, there came the meltdown of nuclear reactors at Japan’s Fukushima plant, which cast concern on the safety of nuclear power worldwide and, in reflection, on companies that own the plants.
And there was the maze of government approvals to traverse. “It had all the complications you might expect for a merger in a highly regulated industry, requiring the approval of various state and federal commissions and agencies to close,” Mulaney said. The experience was, he said, “A vivid lesson in federalism.”
For that, Mulaney said, Bradford’s experience was well-placed.
“Doug has great insights into all the legal, regulatory, energy policy and political considerations that have to be successfully addressed,” Mulaney said.
Kathy Patrick, partner, Gibbs & Bruns
From the nation’s mortgage-backed securities meltdown emerged one of the country’s toughest litigators, a lawyer whom Forbes magazine called, “the woman Wall Street fears most”: Kathy Patrick.
Bank of America may well agree.
Patrick, a partner at Houston-based firm Gibbs & Bruns, was a tenacious force in a legal battle against formidable banks, waging to recoup some of the billions lost by investors who were sold badly underwritten mortgage securities by Countrywide Financial, which Bank of America bought in 2008.
Representing Pacific Investment Management Co., with leadership and guidance from PIMCO Global General Counsel David Flattum and PIMCO attorneys, the team secured in January an $8.5 billion settlement from Countrywide and Bank of America—the largest settlement ever in U.S. private litigation.
“Kathy is a very persuasive advocate,” said Flattum.
As outside counsel for PIMCO, Patrick also has been front and center in helping negotiate $14 billion in settlements between PIMCO and J.P. Morgan, Citigroup Inc. and Residential Capital LLC. “To date, our work with David’s team at PIMCO has led to hundreds of millions in securities recoveries,” Patrick said.
Their collaboration began when PIMCO, along with other institutional investors, held the sponsor, trustee, accountants and underwriters responsible for fraud in connection with a health care receivable securitization, Flattum said.
Patrick “is great at holding a group of industry players together,” Flattum said.
The respect is mutual. “Under David’s leadership, PIMCO has been an industry leader in demanding remedies for investors who have suffered losses on securitization transactions,” said Patrick, who has represented PIMCO for more than 10 years.
Matthew Reilly, partner, Simpson Thacher & Bartlett
At the U.S. Federal Trade Commission, Matthew Reilly litigated some of the agency’s most prominent and challenging cases, serving as a vigilant overseer of the public interest in an array of major proposed mergers during his decade-plus tenure there.
Now a partner in the Washington office of Simpson Thacher & Bartlett, Reilly put the skills and insights he honed at the FTC to use in the corporate world to help guide Office Depot Inc. in its $1.2 billion deal last year to buy onetime-rival Office Max.
Elisa Garcia, chief legal officer at Office Depot and a captain of the deal that had to pass muster with antitrust regulators, said Reilly, as outside counsel, was key to winning approval from the FTC.
“He understood that the Office Depot-Office Max merger needed to get done and he ensured that we prepared the precise information the [Federal Trade] Commission would need to understand before making its decision to allow the merger to proceed,” Garcia said.
During his years at the FTC, Reilly served as assistant director of the agency’s Bureau of Competition, leading FTC investigations and overseeing litigation as head of the high-stakes Mergers IV division, which challenged mergers deemed to be anti-competitive, especially in the health care field.
Garcia said Reilly understood the increased competition retailers such as Office Depot and Office Max face from online retailers, warehouse clubs and Walmart, and used that to help make the case that the proposed merger would not stifle competition. Still, the deal has meant corporate adjustments; Office Depot announced May 6 it will close 400 stores by 2016 in places where the two brands had stores close to one another. Reilly is not involved in those matters.
“Having spent years investigating and litigating cases for the FTC, Matt has a keen understanding of the econometric and legal analyses required as well as a unique window into the regulatory mindset,” Garcia said. “Matt Reilly was a true business partner.”
And Reilly calls her “an absolute delight” to work with.
“She is smart, pragmatic and always thinking several steps ahead. On the OfficeMax deal, Elisa was as ‘hands on’ as necessary, but always had her sights on the big picture and empowered us to do our jobs,” he said.
Scott Shean, partner, Latham & Watkins
A winter storm played a role in what became Actavis PLC’s pending $25 billion acquisition of pharmaceutical heavyweight Forest Laboratories. The terrible weather served, participants said, to keep negotiators holed up in the New Jersey hotel room where they were trying to cut the deal.
But an even bigger role was played by Scott Shean, the Latham & Watkins attorney who served as lead partner for Actavis chief legal officer David Buchen.
Buchen characterized Shean as employing a balanced approach, keeping in mind the client’s protection but never losing sight of the need to get the deal done. He devoted so much time to studying Actavis’ business and the firm’s complex structure that “he is almost an extension of our in-house department,” Buchen said.
The blockbuster transaction, announced Feb. 18, ranks as one of the top such pharma deal of the past decade. But it was far from the first collaboration between Buchen and Shean. The pair has worked together on more than a dozen significant transactions, including the $5.65 billion acquisition of Actavis Group by Watson Pharmaceuticals in 2012 and Actavis’ $8.5 billion acquisition of Dublin-based Warner Chilcott PLC in 2013.
Shean said his 15 years of teamwork with Buchen have provided them with a “well-rehearsed playbook that we employ to run a smooth and efficient process” and a strategic advantage.
“This allows us to spend time thinking several chess moves ahead to ensure that we can easily navigate any legal obstacles or other difficulties in the transaction, as well as negotiate favorable terms,” Shean said.
Buchen said Shean also brings to the table the “full strength and capabilities” of the multinational Latham & Watkins, where Shean concentrates on mergers and acquisitions, and on serving as outside corporate counsel to other public and private companies on healthcare, technology, real estate and energy matters, among others.
“Scott makes my job easier by managing those resources and providing me with a single point of contact,” Buchen said.
Seth Waxman, partner, Wilmer Cutler Pickering Hale and Dorr
Former Solicitor General of the United States Seth Waxman turned to two other generals to describe how he and Monsanto Co. general counsel David Snively collaborate on major intellectual property cases.
“He’s like Eisenhower and I’m Patton,” said Waxman, a trial litigator at Wilmer Cutler Pickering Hale and Dorr. “He’s the big strategist and I’m the tip of the spear.”
That was the order of battle they employed in the bare-knuckled fight to protect Monsanto from an appeal by organic and other farmers to force the chemical, agricultural and biotech giant to pledge not to sue if growers inadvertently use the company’s patented genetically modified seeds.
In January, the U.S. Supreme Court unanimously refused to hear the case, giving the Snively-Waxman team a monumental win.
Snively said his collaborator on that win is at the pinnacle of the profession.
“He is easily within the very top echelon of Supreme Court advocates and appellate lawyers,” remarked Snively, who has said that while he could have hired virtually any outside counsel he wanted to handle the seed case, Waxman was an easy choice.
Waxman’s relationship with the corporation began shortly after he left the government for the private sector a dozen years ago, when Snively was Monsanto’s deputy general counsel. “They were the only client that I had when I came back into private practice,” Waxman told The National Law Journal last June. Since then, Waxman has tackled other intellectual property cases for Monsanto.
The two attorneys each describe the mutual respect, confidence and rapport they have developed with each other as invaluable assets that combine to create the highest quality work, as evidenced, they say, in the Bowman v. Monsanto victory.
“It was an unbelievably important win in the sense that losing that case would have been cataclysmic for, not just for Monsanto’s entire business, but essentially for the future of innovation in biotechnology,” Waxman told the journal.
Lisa Hoffman contributes to law.com.