Fernand A.Lavallee (Fern)

Partner

(T) 1.202.879.3486

Fernand Lavallee's practice focuses on public procurement, and he is a recognized leader in intellectual property (IP) rights in government contracts. Fern is a trusted advisor on contract and subcontract formation, administration, compliance, cybersecurity, SAFETY Act, suspension and debarment, due diligence, internal investigations, rights in patents (Bayh-Dole Act), 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 (IC), under contracts, grants, cooperative agreements, Cooperative Research and Development Agreements (CRADA), and Other Transaction Agreements (OTA).

Fern has taught, written, and spoken extensively 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

  • BBA Aviation to sell Ontic for $1.365 billionJones Day is advising BBA Aviation plc ("BBA") in the sale of its Ontic business to an investment fund affiliated with CVC Capital Partners for $1.365 billion.
  • Global Knowledge Training prevails against incumbent contractor in GAO protestOn behalf of Global Knowledge Training, LLC, Jones Day successfully intervened and defended against a protest brought by the incumbent contractor challenging a General Services Administration's ("GSA") award to Global Knowledge of a multi-million dollar information technology training contract to support the U.S. Army Europe ("USAREUR").
  • Multinational technology company seeks advice on export controls and U.S. sanctions against IranJones Day advised a multinational technology company relating to export controls and the U.S. sanctions against Iran, including regarding general and specific license requirements for U.S. companies engaging in business with Iran relating to commercial aviation.
  • ARxIUM obtains court order overturning Government Accountability Office decisionJones Day successfully represented ARxIUM, Inc., a leading developer and manufacturer of pharmacy automation, workflow, and consulting solutions, in its bid protest before the U.S. Court of Federal Claims.
  • Leading relocation management software provider prevails in agency level protestJones Day successfully represented a leading relocation management software solutions provider in an agency-level protest of the government’s notice, published in FedBizOpps, of a sole source award to a competitor.
  • Service Disabled Veteran Owned Small Business (SDVOSB) resolves subcontract disputeJones Day successfully advised a Service Disabled Veteran Owned Small Business (SDVOSB) information technology company in a subcontract dispute with its prime contractor regarding a federal IT services project.
  • IT provider prevails in agency-level protestJones Day successfully represented a leading application networking, load balancing and DDoS protection solutions provider in an agency-level protest of a task order competition conducted by the Defense Information Systems Agency.
  • Woman-owned minority IT firm prevails in prime-sub disputeJones Day successfully represented a woman-owned federal IT services company in a dispute with a prime contractor.
  • Leading technology and digital services provider avoids termination for defaultJones Day successfully represented a leading technology and digital services provider regarding a Show Cause Notice received from, and potential contract disputes with, its government customer.
  • Randstad acquires Monster for $429 millionJones Day advised Randstad Holding nv (AMS: RAND), a leading human resources services provider, in the acquisition of Monster Worldwide, Inc. (NYSE: MWW).
  • Alpha Natural Resources plan confirmed by U.S. Bankruptcy CourtOn July 12, 2016, the United States Bankruptcy Court for the Eastern District of Virginia entered an order confirming the Second Amended Joint Plan of Reorganization of Alpha Natural Resources, Inc. and 148 of its debtor affiliates, less than one year after Alpha, one of the largest coal companies in the United States, entered chapter 11 with liabilities of approximately $7.1 billion amidst the most challenging economic environment for coal producers in decades.
  • Vera prevails in pro bono protest challenging ill-conceived contract award for provision of legal services to unaccompanied alien children in MiamiRepresenting non-profit Vera Institute of Justice, Inc. (Vera), a team of Jones Day attorneys successfully protested a troubling U.S. Department of Health and Human Services contract award to provide legal services to unaccompanied alien children (UAC).
  • Technology solutions and managed services firm evaluates government contracting and intellectual property issuesJones Day is advising a leading technology solutions and managed services provider regarding the evaluation and compliance of government contracting requirements.
  • Federal Builders and James R. Belk Trust Protest of Lease Award sustained by Government Accountability OfficeJones Day represented Federal Builders, LLC and The James R. Belk Trust (Federal Builders) in its protest before the Government Accountability Office (GAO) of the award of a lease under a request for lease proposals (RLP) issued by the U.S. General Services Administration (GSA) on behalf of the Department of Interior, Bureau of Land Management (BLM), for leased office and warehouse space.
  • 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.

    Speaking Engagements

    • 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)
    • 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;
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