Fernand Lavallee's practice focuses on litigation of, and counseling on, public procurements, and he is a recognized leader in intellectual property rights in government contracts. Fern is a trusted advisor on the public procurement of artificial intelligence (AI) and AI enhanced or augmented products and services, the CHIPS and Science Act of 2022, contract and subcontract formation, administration, compliance, cybersecurity, suspension and debarment, due diligence, internal investigations, rights in patents (Bayh-Dole Act), rights in technical data and computer software, and dispute matters to clients in the aerospace, high-technology, information technology, and life sciences sectors. He litigates government contracts cases and prime contractor/subcontractor disputes before federal and state courts and brings, or intervenes and defends against bid protests before federal agencies, the Government Accountability Office (GAO), and the Court of Federal Claims (COFC). Fern also brings claims before the Civilian and Defense Boards of Contract Appeals and COFC and size protests before the Small Business Administration (SBA).
Fern's clients engage in R&D and provide products and services to federal civilian and defense agencies, including the intelligence community, under contracts, grants, cooperative agreements, Cooperative Research and Development Agreements (CRADA), and Other Transaction Authority (OTA) agreements.
Fern has taught, written, and spoken on government contracts topics including Foreign Ownership, Control or Influence (FOCI) issues and due diligence in M&As involving government contractors. He presented a paper on socio-economic programs in U.S. federal procurements at the 1st Interdisciplinary Symposium on Public Procurement held in Italy and co-sponsored by the University of Rome Tor Vergata and the Faculty of Law of the University of Copenhagen. He is a vice chair of the ABA's Public Contract Law Section's IP Committee.
Experience
The following represents experience acquired prior to joining Jones Day.
Counseled major provider of computer-assisted business and legal research services regarding cybersecurity-related risk management, compliance requirements, and incident notification under contracts with a major civilian federal agency.
Represented commercial item manufacturer regarding incident notification, risk management and compliance as the result of a state-sponsored cyber breach of the contractor's information technology system.
Represented enterprise software manufacturer with respect to efficient and effective risk management and compliance with U.S. Department of Defense cybersecurity requirements.
Represented individual employee of a government contractor in opposition to a Show Cause for Suspension/Debarment issued by the U.S. Air Force. Succeeded in securing a "No Further Action" letter for the client.
Obtained a U.S. Customs and Border Protection (CBP) advisory ruling regarding country of origin of imported software involving substantial transformation (under the Trade Agreements Act of 1979 [TAA]) of computer software with source code written in a nondesignated country (China) is "substantially transformed" in the country where the software was compiled (or "built") and converted into object code. This was the first CBP advisory ruling addressing where downloaded software is "substantially transformed" under the TAA.
Represented several clients before the Department of Homeland Security (DHS) to obtain SAFETY Act liability protection through the Designation or Certification of the client's Qualified Anti-Terrorism Technologies (QATTs).
Obtained a temporary restraining order (TRO) preventing the U.S. Army Corps of Engineers from issuing any task orders and requiring suspension of performance of the contract until resolution of a Court of Federal Claims post-award protest. This action was after the client's protest before the Government Accountability Office (GAO) was denied. The TRO facilitated the negotiation of a favorable resolution that included contract and task order awards to the client.
Protest sustained in challenge to the Army's improper limitation of discussions during implementation of corrective action in a protest.
Successfully opposed an application for a temporary restraining order (TRO) and permanent injunction seeking to nullify the Army's override of the statutory stay of contract performance in a GAO protest against the award of the contract to the client.
Successfully intervened to defend the award by the Veterans Administration of a bridge contract to client for an electronic commerce and acquisition system.
Successfully intervened to defend the award to the client of a blanket purchase agreement (BPA) to provide government-wide delivery services.
Defended a government contractor and manufacturer of defense articles in an action brought in the U.S. Federal Court for the Eastern District of Virginia against claims of copyright infringement with respect to software that was developed and delivered by another contractor under a federal government contract.
Won costs of pursuing a protest before the GAO after the Navy took corrective action following an outcome predictive ADR but refused to pay the building services client's legal fees.
Protest sustained in challenge to the exclusion of a government contractor from the competitive range in a solicitation seeking services for the Internal Revenue Service.
Successfully defended the award of an other transaction agreement (OTA) by the Defense Advanced Research Projects Agency (DARPA) to a consortium in the first reported GAO protest decision challenging the award of an OTA.
Successfully resolved a dispute between two federal contractors arising from a teaming agreement, following the failure of the parties to negotiate a subcontract.
Testified at trial before a jury as an expert witness on intellectual property and small business issues in federal government contracts (called by the defense) in a dispute between two federal contractors that was heard in state court in Maryland. The jury found in favor of the defense on all nine counts in the trial.
Additional Publications
- January 25, 2024
Essay on Artificial Intelligence Data Models in U.S. Government Procurement Contracts: Allocation of Intellectual Property Rights; New York City Bar Intellectual Property Institute, Course Materials - Summer 2020
Other Transactions: A Small Step for Public Contracting, A Giant Challenge for Protest Jurisdiction, coauthor, The Procurement Lawyer, Vol. 55, No. 3, Summer 2020
Speaking Engagements
- February 13-14, 2024
Panelist, Intellectual Property in Government Contracts; Pub K Government Contracts Annual Review 2024. - May 24, 2023
Panelist, Look Before You Leap! Measures to Validate Compliance with Cybersecurity Requirements in Federal Contracting; Defense Industry Initiative (DII) Best Practices Webinar - February 2023
Intellectual Property in Government Contracts - Maintaining and Maximizing Competitive Advantage through IP in Federal Contracts and Other Major Legislative, Regulatory and Case Law Developments in 2022; Thomson Reuters Government Contracts Year-in-Review Conference - October 13, 2022
Moderator, Panel on Specially Negotiated Licenses (SNL), 2022 Aerospace Industries Association (AIA) and the National Defense Industrial Association (NDIA) Technical Data Rights Forum - August 5, 2022
Moderator, Follow the Money: Betting on the Next Generation of GovTech, ABA Section of Public Contract Law, ABA 2002 Annual Meeting. - May 12, 2022
Panelist, Intersection of Procurements of "AI and Other Emerging Technologies", Rights to Intellectual Property, and Security; 22nd Congress, Societe Internationale de Droit Militaire et de Droit de la Guerre - April 1, 2022
Panelist, "Thinking Inside the Black Box" - AI Due Diligence in M&A Transactions, American Bar Association Business Law Hybrid Spring Meeting 2022 - February 22, 2022
Intellectual Property in Government Contracts - “Validation” challenges, Enforcing Software and Data Licenses Against the Government, Data Accession Lists (“DALs”), and Other Major Legislative, Regulatory and Case Law Developments in 2021; Thomson Reuters Government Contracts Year-in-Review Conference - November 10, 2021
Extraordinary Contractual Actions, Pub.L. 85-804 (50 U.S.C. §§ 1431-35), FAR and DFARS Webinar Series, J. Schaus & Associates - March 22, 2021
Panelist, "No Bucks, No Buck Rogers: Negotiating IP Rights under USG Contracts for AI and Other Emerging Technologies;" New York City Bar - February 23, 2021
Intellectual Property in Government Contracts – Evolving Rights in Technical Data and Computer Software; and Other Major Legislative, Regulatory and Case Law Developments in 2020; Thomson Reuters Government Contracts Year-in-Review Conference - January 27, 2021
Panelist, Intellectual Property in Government Contracts, PubK Government Contracts Annual Review - September 24, 2020
Patents, Life Sciences and the Bayh-Dole Act: Forty Years and Marching On, Biocom Q3 IP Committee Meeting - September 18, 2020
FAR Part 39, Acquisition of Information Technology, Installment in the Get FAR Sighted in 2020 Webinar Series, J. Schaus & Associates - June 17, 2020
Moderator, Cyber Supply Chain and the Cybersecurity Maturity Model Certification (CMMC): Concerns, Considerations, and Practical Solutions - May 21, 2020
Co-Presenter; Understanding the Truth in Negotiations Act (TINA) and Commercial Contracting (Truthful Cost or Pricing Data Act); Lorman Education Services - April 24, 2020
FAR Part 17, Special Contracting Methods; Installment in the Get FAR Sighted In 2020 Webinar Series; J. Schaus & Associates. - February 18-21, 2020
Intellectual Property in Government Contracts – Negotiating Intellectual Property in Other Transaction Agreements: and Major Legislative, Regulatory and Case Law Developments in 2019; Thomson Reuters Government Contracts Year-in-Review Conference - December 12, 2019
Panelist, Cybersecurity and Intellectual Property in Government Contracts, PubK Group Annual Review, National Press Club - October 17, 2019
Presenter, Termination of Federal Government Contracts Before Fully Performed, Lorman Education Services - September 13, 2019
Panelist, ABA International Law Section, International Startup and Emerging Companies Forum: Pushing the Boundaries; Panel titled "Uncle Sam Wants Your Innovations, Not Your Intellectual Property." - July 29, 2019
OTAs and Intellectual Property: Hot Topics and New Developments; NCMA World Congress - May 9, 2019
Ten Things You Need to Know About Other Transaction Agreements (OTAs) - April 26, 2019
Co-Presenter, How to Price Your Services and Products for the Government Market - February 19-22, 2019
Intellectual Property in Government Contracts - Rights in Patents, Technical Data and Software in Federal Contracts and Other Transaction Agreements (OTAs): Major Legislative, Regulatory and Case Law Developments in 2018; West Thomson Reuters Government Contracts Year in Review Conference - December 12, 2018
Moderator, panel on Intellectual Property, Information Technology, and Cybersecurity, Fourth Annual PubKGroup Year-In-Review FY 18/19 - December 6, 2018
Speaker, The Acquisition of Federal Information Technology (Session 6): What U.S. Contractors Need to Know About European Cybersecurity and Privacy Regulations (and IT Case Law Developments); Public Contracting Institute - October 4, 2018
Speaker, The Acquisition of Federal Information Technology (Session 4): NIST SP 800-53 and NIST SP 800-171: Technical Requirements and Practical Guidance on What They Mean to Contractors; Public Contracting Institute - September 6, 2018
Speaker, The Acquisition of Federal Information Technology (Session 3): Controlled Unclassified Information (CUI), The CUI Registry, Unclassified Controlled Technical Information (UCTI), Covered Contractor Information Systems, Covered Defense Information (CDI), Cyber-Incident Reporting Requirements and Practical Pointers; Public Contracting Institute - August 2, 2018
Speaker, The Acquisition of Federal Information Technology (Session 2): A Deeper Dive; Public Contracting Institute - July 12, 2018
The Foundations for Federal Information Technology (IT) Acquisitions (Session 1): The FAR and DFARS Guidance, speaker, Public Contracting Institute - May 2018
Understanding the Truth in Negotiations Act and Commercial Items - April 17, 2018
Panelist, Oral Advocacy in Bid Protests: A Discussion of Oral Arguments at COFC and Hearings at GAO, ABA PCLS Bid Protest Committee Meeting - February 20-23, 2018
Intellectual Property in Government Contracts – Data Rights, OTAs, MOSA, SNLR, Common Sense and Other Developments, West Thomson Reuters Government Contracts Year-in-Review Conference - December 7, 2017
Panelist, Panel on Intellectual Property, Information Technology, and Cybersecurity, Third Annual PubKGroup Year-In-Review FY 17/18 - April 29, 2017
Panelist, Intellectual Property Rights under U.S. Government Contracts, American Bar Association, Section of International Law, India Committee, Conference for the Visiting Delegation of Lawyers from India, Emerging Legal Challenges in the United States and India - March 15-17, 2017
23rd Annual Federal Procurement Institute—Cross-Currents: Navigating Federal IP Waters, Panel Moderator, American Bar Association Public Contract Law Section - February 2017
Intellectual Property in Government Contracts - Segregation and Reintegration Data, Modular Open Systems Architecture (MOSA), Proposed Changes to the Bayh-Dole Act Regulations and Other Developments, West Government Contracts Year in Review Conference - December 15, 2016
Moderator, Panel on Intellectual Property, Information Technology and Cyber security in Government Contracts, 2nd Annual PubKLaw Government Contracts Year-in-Review FY 16/17 - December 7, 2016
Construction SuperConference, panelist, Building in the Safe Zone: Deconstructing Cyber Risks -- Addressing Cyber Security in the Construction Industry - November 29, 2016
Purchasing Contract Administation, Lorman Education Services - November 16, 2016
Cybersecurity in Government Contracts Institute, Basics of IT Acquisition and Contracting - Hardware, Software, Open Source Products & Services, Cloud Computing and Continuous Monitoring Platforms, Federal Publications Seminars - October 20, 2016
Moderator, Panel Discussion: Data Rights and Software Integration - Strange Bedfellows?; Aerospace Industries Association (AIA)/National Defense Industrial Association (NDIA) Technical Data Rights Forum - April 8, 2016
Panelist, Cybersecurity Due Diligence in M&A Transactions, American Bar Association Business Law Section, Spring Meeting - February 2016
Intellectual Property in Government Contracts - Rights in Computer Software, West Government Contracts Year in Review Conference - January 26, 2016
Federal Publications Seminars: Understanding Other Transaction Agreements (OTA) and CRADAs - January 21, 2016
IP Issues in Cyber-security Due Diligence for Defense Contractors and Subcontractors - January 19, 2016
IP Issues to Consider When Doing Business with the Federal Government, The Association of the Bar of the City of New York, Copyright & Literary Property Committee - November 4, 2015
2015 Cybersecurity Institute in Government Contracts - October 15, 2015
PubKLaw Annual Government Contracts Review FY15/16 - May 19, 2015
Executive Roundtable Series - Interplay Among Intellectual Property, Government Contracts, and Antitrust: Current Trends and Avoiding Pitfalls - March 27, 2015
Federal Circuit Bar Association Webcast: IP Under Attack - February 2015
Intellectual Property in Government Contracts; West Government Contracts Year in Review Conference - October 28, 2014
Winning Government Contracts: Hacking the Government - How to Get Your First Customer sponsored by Arlington, Virginia Office of Economic Development and Tandem - October 22, 2014
DCAA Audit Case Studies and Q&A: How to Deal with Different Audits Scenarios and Practical Tips to Effectively Manage the Process, 6th Annual Advanced Forum on DCAA Audits, American Conference Institute - August 8, 2014
Contracting with the U.S. Department of Defense; Panel: Building a Bigger Tent for Technology Innovation; The Government is More Creative than You Think - June 25, 2014
OTAs: The "Other" Government Contract Agreement Sponsored by the American Intellectual Property Law Association (AIPLA) - May 28-30, 2014
International Conference on Defense Procurement in the Age of Cyber: Recalibrating Government and Contractor Responsibilities; Organized by the Ministry of Defence of the Republic of Latvia and the Committee for Military Procurement Law of the International Society for Military Law and the Law of War - February 2014
Intellectual Property in Government Contracts; West Annual Government Contracts Year in Review Conference - November 12, 2013
Capturing Intellectual Property Rights in Government Contracts: Open Architecture and Better Buying Power 2.0, Defense Daily's 2013 Open Systems Architecture Summit - November 4, 2013
Development of Intellectual Property Under Federal Government Contracts, Roundtable Program at the New York City Bar - June 13, 2013
Commercial Software Licensing – A Discussion of Software Terms and Conditions Commonly Deemed Inconsistent with Federal Procurement Law, panel moderator, Aerospace Industries Association 2013 Technical Data Forum - November 2012
The Open Systems Architecture Guide: Implementing a New Paradigm in the Allocation of Rights in Data and Software?, Federal Bar Association, 40th Annual Government Contracts Symposium; - July 2012
Other Transaction Authority, WestLegalEd Center - June 6, 2011
Socio-Economic Programs in Public Procurements: Are Preferences Fair and Effective for All?, 1st Interdisciplinary Symposium on Public Procurement, co-sponsored by the University of Rome Tor Vergata and the Faculty of Law, University of Copenhagen;
- The College of William & Mary (J.D. 1988; Law Review); Georgetown University (A.B. 1985)
- District of Columbia, Virginia, U.S. Supreme, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Federal Claims, U.S. Court of International Trade, and U.S. District Courts for the Eastern and Western Districts of Virginia
- Export Policy Analyst, U.S. Department of Commerce (Part-time, 1983-1985) and Infantry Officer, United States Army and Maryland Army National Guard (Early commissioning, 1984-1992)
Listed as one of the country's leading lawyers by Chambers USA noting he — "won plaudits for his IP expertise ... known for his solid working knowledge of software data rights" and "‘he is prompt and engages quickly, and his advice is practical and based on a good understanding about what drives our business, not just a textbook answer’"
Washington DC Super Lawyers (2018-2020)