Jeffery S. Norman, P.C. - Partner

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Jeffery S. Norman, P.C.

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Chicago
Phone: +1 312-862-2042
Fax: +1 312-862-2200
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Professional Profile

Jeffery Norman is a partner in the Intellectual Property Department of Kirkland & Ellis LLP. His practice is focused on commercial transactions and intellectual property related litigation. He works with private equity firms, independent businesses, and Fortune 500 companies. Jeffery leads negotiations and provides strategic intellectual property and strategic counseling in a variety of contexts, including international and domestic strategic alliances, joint ventures, mergers and acquisitions, asset carve-out and spin-off transactions, research and development, manufacturing, distribution, trademark licensing, patent licensing, copyright licensing, and software development and licensing. He was named one of the world's 250 leading patent and technology licensing lawyers by Intellectual Asset Management magazine in 2010 and 2011, and was included in the IAM Patent 1000 in 2012.  He is acclaimed for his "deep IP knowledge and bona fide licensing transactional and litigation skills." He represents clients in commercial disputes and litigation involving intellectual property rights and contract disputes.

Jeffery's transactional experience includes:

  • Bain Capital and Golden Gate Capital's $6.9 billion acquisition of BMC Software Inc.

  • Bain Capital's $1.75 billion buyout of the Bath & Kitchen division of American Standard

  • Bain Capital's $3 billion buyout of Texas Instrument's former Sensors and Controls division

  • Motorola's international joint venture negotiations, including the formation of the LiMo Foundation, for the development of a Linux-based software platform for mobile devices

  • Representation of an intermodal logistics and shipping aggregator in agreements with shippers

  • Representation of a high frequency trading hedge fund in agreements for the lease and maintenance of fiber optic lines between New York and Chicago

  • Representation of a top national bank in a strategic alliance with a major hedge fund and broker to create a new entity focused on providing IT and trade processing services to hedge funds

  • Representation of a leading broadcasting company in multiple acquisitions, licensing, strategic alliance and outsourcing agreements focused on the creation and launch of a major internet radio product offering

  • Representation of a cattle auction company in negotiations with ranchers to provide exclusive access to cattle supply and distribution

  • Representation of a leading supplier of military radio equipment in negotiations with a Korean manufacturer, a leading U.S. based cellular service provider, and an international manufacturer and distributor of electronic equipment, for the development, marketing and distribution of a commercial radio device

Jeffery has led numerous litigation matters, including:

  • Bella Bella, Inc. v. Neutrogena Corporation et al. (C.D. Cal.) (patent infringement)

  • Physicians Formula Cosmetics, Inc. v. Physician Formulas (C.D. Cal.) (trademark infringement; settled on terms that included injunctive relief against the opposing party)

  • TKMI, Inc. v. Physicians Formula Cosmetics, Inc. (S.D. Fla.) (trademark infringement) (settled)

  • Physicians Formula Cosmetics, Inc. v. Urban Decay Products, Inc. (C.D. Cal.) (trademark infringement) (settled after preliminary injunction hearing in which judge determined opposing party did not have a likelihood of success)

  • Lynch, Inc. v. Performance Networks, et al. (N.D. Ill and 7th Cir.) (computer software copyright infringement; settled)

  • Amoco Corporation v. Landmark Graphics Corporation (D. Okla. and arbitration) (patent infringement; settled on terms that included injunctive relief against the opposing party after a seven day arbitration trial that Jeffery second-chaired and that resulted in a decision in favor of client on the key defense in the case)

  • Damato et al. v. First Commercial et al. (N.D. Ill.) (securities litigation; dismissed with prejudice after opposing parties' multiple failures to state a claim)

  • Commodities Futures Trading Commission v. Maritote et al. (Commodities Futures Trading Commission) (government prosecution for alleged wash sale trading; after a week long bench trial second-chaired by Jeffery, the judge found no evidence to support the wash sale claim)

Jeffery is also a C language programmer with significant commercial programming experience, and he has authored several peer-reviewed articles in the area of artificial intelligence. He is active in the software community and his comments on computer technology, patent infringement issues and open-source code have appeared in the following articles:

Microsoft Gets Its Groove On With New Patent, PC World (June 7, 2007)

Lawsuit Threatens Spamhaus with Shutdown, InfoWorld.com (October 17, 2006)

Microsoft Opens Up, PCMag.com (October 11, 2006)

Court Blocks Microsoft's Chimney in Longhorn, Eweek.com (April 14, 2005)

Microsoft Patents Could Threaten Linux, Networkworld.com (August 2, 2004)

SCO Seeks More Code from IBM, InfoWorld.com (June 3, 2004)

Linux for Desktops: Some Analysts Say Usage Data Inflated, Investor's Business Daily (May 27, 2004)

IBM Seeks to Force SCO's Hand in Lawsuit, Computerworld.com (May 21, 2004)

Software Organization Rebuffs SCO Subpoena, InfoWorld.com (May 20, 2004)

Eolas Patent Rejected, But Decision Not Seen As Final, InfoWorld.com (March 5, 2004)

The Myths of Open-Source, CIO Magazine (March 1, 2004)


Memberships & Affiliations

Member of the Intellectual Property Law, Science and Technology, and Antitrust Sections of the American Bar Association

Member of the Electronic Commerce Division of the Science and Technology Section of the American Bar Association


Publications

Jeffery has authored or co-authored the following articles:

Intellectual Property Issues, PLI Acquiring or Selling the Privately Held Company 2006 (April 2005, April 2006, April 2007, April 2008, April 2009, April 2010, April 2011)

K&E IP Spotlight: SCO Redux: Tenth Circuit Court of Appeals Reverses Lower Court Ruling That Had Dismissed SCO's Claims (Sept 2009)

Gave interview for IP Law & Business article re: The American Law Institute's New Principles of the Law of Software Contracts (October 23, 2009)

Courts, UCC Tackle Shrink-Wrap Licenses, N.Y. Law Journal (October 14, 1997, at S6)

Progress on Room 5: A Testbed for Public Interactive Semi-Formal Legal Argumentation, 1997 Proceedings Of The Sixth International Conference On Artificial Intelligence And Law 207

Rationales and Argument Moves, 3 Artificial Intelligence And Law 159 (1995)

Computing Specificity, 93-03 Washington University Computer Science Technical Report (1993)

A Design for Reasoning with Policies, Precedents, and Rationales, 1993 Proceedings Of The Fourth International Conference On Artificial Intelligence And Law 202

Comment, The Seventh Circuit Allows Bankrupt Debtors a Fresh Start with their Former Spouse's Property – In re Sanderfoot, 889 F.2d 598 (7th Cir. 1990), 69 Wash. U.L.Q. 645 (1991)


Seminars

Speaker, Open Source Strategies and Issues in Litigation, Kirkland & Ellis LLP Open Source Law Seminar (January 2012)

Speaker, Monetary Damages for Open Source Violations: A Practical Framework, Open Source Business Conference (May 2011)

Speaker, Intellectual Property Issues, PLI Acquiring or Selling the Privately Held Company (June 2005, June 2006, June 2007, May 2008, May 2009, May 2010, May 2011)

Moto Seminars 2009 & 2010

Speaker, Open Source Update, Kirkland & Ellis LLP Technology & Law Seminar (June 2010)

Speaker, Managing the Enterprise's Open Source Contributions, Open Source Business Conference (March 2010)

Speaker, Acquiring and Licensing IP in Bankruptcy, IPLAF Acquiring Licenses in Bankruptcy (January 2010)

Panelist, M&A Transactions: Capitalizing on Intellectual Property Assets, Structuring Deals to Leverage IP Value and Minimize Legal Risk, Strafford Publications, Inc. (September 2009)

Panelist and Organizer, ISACA Information Security Breaches: Detection, Response and Management (June 2009)

Speaker, Intellectual Property, PLI Acquiring or Selling the Privately Held Company 2009 (May 2009)

Speaker and Organizer, Kirkland & Ellis LLP Open Source Law Seminar (April 2009)

Speaker, Shims and Shams: Firewalling Proprietary Code in a Copyleft Context, InfoWorld Open Source Business Conference (March 2009)

Speaker, Patent Licensing, PLI Handling IP Issues in Corporate Transactions (February 2009)

Speaker, Licensing Your Patents, PLI Handling IP Issues in Business Transactions (January 2009)

Speaker, Kirkland & Ellis LLP Biotechnology & Pharmaceutical Law Seminar (September 2008)

Speaker and Organizer, Kirkland & Ellis LLP Technology & Law Seminar (1999 - 2008)

Chair and Speaker, Patent Licensing, PLI Handling IP Issues in Business Transactions (April 2008)

Chair and Speaker, Joint Ventures and Strategic Alliances, PLI Handling IP Issues in Business Transactions (April 2008)

Speaker, A Practical Guide to License Conflicts, Open Source Business Conference (March 2008)

Co-Chair, Navigating the Global Business Landscape: Best Practices for International Software Licensing and Dealmaking, Advanced Software Law and Practice Forum (June 2006)

Guest Lecturer, Intellectual Property Issues in Business and Technology, University of Chicago Graduate School of Business (Winter 2001 – Winter 2005)

Moderator, Digital Rights Management and Content Distribution, Digital Frontier Conference, Kellogg School of Management (January 2003)

Speaker, Privacy Law, Minnesota CLE Computer Law Institute (October 2000)

Guest Lecturer, Copyright and Computer Law, John Marshall Law School (February 2000)

Speaker, Legal and Regulatory Concerns in E-Commerce: Liability and IP Laws, WebSec Conference (1999)

Speaker, Copyright in the Digital Environment, PLI Basics of Copyright Law Conference (1999)

Panelist, Internet and E-Commerce, PricewaterhouseCoopers' General Counsel Forum (1999)

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