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Advanced Issues in Bankruptcy Asset Sales: Potential Opportunities and Pitfalls for Buyers

Navigating the Complexities of IP Assets, Successor Liability, Joint and Consortium Bidding, and More Today’s faculty features:

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Presenting a live 90-minute webinar with interactive Q&A

George W. Shuster, Partner, Wilmer Hale, Boston Benjamin W. Loveland, Attorney, Wilmer Hale, Boston

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Advanced Issues in Bankruptcy Asset Sales: Potential Opportunities and Pitfalls for Buyers

March 27, 2013

George W. Shuster, Jr. Benjamin W. Loveland WilmerHale WilmerHale george.shuster@wilmerhale.com benjamin.loveland@wilmerhale.com 617-526-6572 (t) 617-526-6641 (t) 212-937-7232 (t)

George Shuster is a partner in WilmerHale’s bankruptcy and financial restructuring practice group and debt finance group. Benjamin Loveland is a senior associate in WilmerHale’s bankruptcy and financial restructuring practice group.

6

Overview: Six Advanced Issues in Section 363 Sales

In this presentation, we are going to tackle some of the more complex issues we have seen in recent Section 363 bankruptcy sales:

• 1. What does “free and clear” mean in the intellectual property context?
• 2. When is a sale “cross-border,” and what does that mean?
• 3. How much reliance can “good faith” buyers place on Section 363(m)?
• 4. Is some level of successor liability inevitable? Can it be mitigated?
• 5. What power can “negative notice” truly provide?
• 6. Section 363(n): collusion, consortia, confusion.

7

Section 363 Sales and IP Assets: “Free and Clear?”

• Section 363(f) permits bankruptcy estate property to be sold “free and

clear of any interest in such property.” But “interest in property” is not clearly defined.

• Can a Section 363 sale of a debtor’s intellectual property, such as

patents, be “free and clear” of:

1) licenses by the debtor to third parties? 2) commitments by the debtor to standard setting organizations

(SSOs)?

• Can a Section 363 sale of a debtor’s business be “free and clear” of:

1) damages for pre-sale infringement by the debtor on a third-party’s

patents?

2) claims for post-sale infringement by the buyer?

8

Section 363 Sales and IP Assets: License Rights

• Outside of bankruptcy, a purchaser of patents generally takes subject

to a licensee’s rights in those patents. In bankruptcy, a debtor generally has a right to reject (at least non-exclusive) licenses, subject to certain rights of the licensee under Section 365(n).

• Whether a sale “free and clear” can extinguish a licensee’s rights in

the IP assets sold, whether under the license or under Section 365(n), remains uncertain.

• In re Dynamic Tooling Systems, Inc., 349 B.R. 847 (Bankr. D. Kan. 2006):

The court, employing Section 363(e), refused to permit a “free and clear” sale

• f patents to extinguish licensees’ rights.
• Precision Indus., Inc. v. Qualitech Steel SBQ, LLC, 327 F.3d 537 (7th Cir.

2003): The Seventh Circuit held that real property could be sold “free and clear” of the rights of commercial lessees under Section 365(h) to continue to

• ccupy the leased property after rejection. This same rationale could apply to

permit a sale “free and clear” of a licensee’s Section 365(n) rights. Note that the timing of rejection and election of Section 365(n) rights, relative to the timing of the sale, may be crucial.

9

Section 363 Sales and IP Assets: License Rights

• In practice, disputes over whether a purchaser will acquire IP assets

“subject to” the rights of third parties sometimes focus on the nature of those rights (i.e., whether they constitute a license) rather than on a debtor’s ability to extinguish license rights under Section 363(f).

• In re Digital Domain Media Group, Inc. (Bankr. D. Del.)
• Debtor sought to sell patents “free and clear.”
• Disney objected to the sale “free and clear” of an asserted license right in the patents

based on an option to receive a license from the prior owner of the patents.

• Judge Shannon held that the sale was not subject to Disney’s rights in the patents,

because the option had not ripened into a license at the time of the transfer of the patents to the debtor.

• The sale closed, subject to Disney’s potential rights following any successful appeal.

The decision is pending appeal at the district court.

• See also In re Spansion, Inc., 2011 WL 3268084 (Bankr. D. Del. July 28, 2011):

“No special language is required to create a patent license.”

10

Section 363 Sales and IP Assets: SSO Commitments

• Patent owners sometimes make commitments to standard-setting
• rganizations or “SSOs”—industry groups that set standards providing

for a common product design—to license any patents that are essential to the standard on (fair,) reasonable, and nondiscriminatory (F/RAND) terms.

• No case expressly addresses whether a debtor can sell patents “free and

clear” of SSO commitments, because no debtor has made a vigorous attempt to do so.

• In re Nortel Networks Inc. (Bankr. D. Del.)
• Nortel sought to sell patent assets “free and clear” with some potentially vague

language regarding SSO commitments.

• Other members of various SSOs to which Nortel had made F/RAND commitments
• bjected to a sale “free and clear” of those commitments, arguing:

–

The right to license the patents on a non-F/RAND basis was not part of Nortel’s estate.

–

Non-bankruptcy law, including the Federal Trade Commission Act and the Sherman Act, prohibits attempts to avoid SSO commitments. See In the Matter of Negotiated Data Solutions LLC, No. 0510094 (F.T.C. Sept. 22, 2008).

–

Nortel was unable to satisfy Section 363(f)’s requirements for a sale “free and clear.”

• Buyer and SSO members ultimately agreed, without litigation, that the buyer

would take the patents “subject to” Nortel’s pre-existing SSO commitments.

11

Section 363 Sales and IP Assets: Infringement Claims

• Most courts permit debtors to sell assets “free and clear” of existing

tort claims, including claims for pre-sale infringement.

• A buyer is not, however, immune from claims for continuing

infringement after the sale. Pre-sale infringement damages remain claims against the debtor’s estate, and post-sale infringement damages may be asserted against the buyer.

• The nature of certain patent litigation claims may give rise to

complexities in the patent sale context.

• Coupled Prods., LLC v. Nobel Automotive Mexico LLC, 2011 WL 4499344

(W.D. La. Sept. 27, 2011): The court refused to dismiss claims for patent invalidity against a buyer, even though those claims were based on prior conduct by the debtor. The court also held that claims for misuse and inequitable conduct were really affirmative defenses.

• Folger Adam Sec., Inc. v. DeMatteis/MacGregor, JV, 209 F.3d 252 (3d Cir.

2000): Although the phrase “interest” in Section 363(f) is interpreted broadly and can include claims, it does not include defenses. Thus, whether a particular patent cause of action is characterized as a “claim” or an “affirmative defense” may affect a buyer’s ability to acquire patents “free and clear” of that cause of action.

12

Sales of Assets by Cross-Border Debtors: Issues

• When is an asset sale by a debtor “cross-border”? Only when insolvency

proceedings of a debtor are pending in multiple countries? Or any time a foreign debtor sells US assets, or a US debtor sells foreign assets?

• What approvals are required when assets are being purchased from a seller

with insolvency proceedings pending in multiple jurisdictions?

• Consider the relative timing of (a) foreign and domestic bankruptcy filings and (b)

requests for approval of the sale in dual proceedings.

• Mix & Match Problem: “domestic” assets and “foreign” insolvency

proceedings.

• Focus on the characterization of assets to be sold as US or non-US assets for the

purposes of determining whether the sale will be subject to US court approval under Section 363(b). Where are “intangible” assets of an international debtor located? What law provides the answer?

13

Sales of Assets by Cross-Border Debtors: Examples

• In re Elpida Memory Inc., 2012 WL 6090194 (Bankr. D. Del. Nov. 20,

2012)

• Elpida commenced insolvency proceedings in Japan (plenary case) and the US

(chapter 15 case).

• Japanese court approved sale of certain assets, including US assets.
• Bondholders objected to sale of assets located in US without US court approval.
• US Bankruptcy Court held that, notwithstanding Japanese approval and ancillary

nature of chapter 15 case, US court approval was required for sale of assets located in the US.

• Applying Section 363(b) standards of sound business judgment, fair price, adequate

notice, and good faith, the US Bankruptcy Court approved the sale over the bondholders objection.

• In re Fairfield Sentry Limited, 2013 WL 139185 (Bankr. S.D.N.Y. Jan 10,

2013)

• SDNY Bankruptcy Court declined to review sale approved by the BVI court in the

chapter 15 case, because there were “no interests . . . unique to any of the United States parties at issue, and United States creditors have limited interest in the [assets sold].”

• Court declined to “offend principles of international comity by second guessing BVI

court’s approval of the sale when the United States’ interests are so minimal.”

14

Buyer Reliance on Section 363(m) Good Faith Protections

• Section 363(m) provides that the appeal of a sale order does not affect the

validity of the sale unless the sale order was stayed pending appeal.

• The “good faith” standard is generally met if there is no fraud or collusion

between the buyer, on the one hand, and other bidders or the debtor, on the

• ther hand.
• Section 363(m) may also protect transactions related to a sale of assets.
• Cinicola v. Scharffenberger, 248 F.3d 110 (3d Cir. 2001): The Third Circuit held

that an assumption and assignment of contracts was entitled to Section 363(m) protection, because the contracts were “inextricably intertwined” with the sale. See also In re Alabama Aircraft Indus., Inc., 464 B.R. 120 (D. Del. 2012) (expanding Section 363(m) protection beyond assumption and assignment to establishment of a litigation trust in connection with a sale of assets).

15

Buyer Reliance on Section 363(m) Good Faith Protections

• Section 363(m)’s protections may be limited in a number of respects:
• May not protect against challenge to “good faith” status.

– In re River West Plaza-Chicago, LLC, 664 F.3d 668 (7th Cir. 2011); Licensing

by Paolo v. Sinatra (In re Gucci), 105 F.3d 837 (2d Cir. 1997).

• May not protect against a challenge to the pre-sale ownership of the

assets or interests in the assets. –

Isbell v. DM Records, Inc., 2012 WL 369246 (E.D. Tex. Feb. 3, 2012).

• May not be effective to bar a challenge by parties who did not receive

notice of the sale. – In re PBBPC, Inc., 467 B.R. 1 (Bankr. D. Mass. 2012).

• May not protect against challenges to “free and clear” status of sale.

– Clear Channel Outdoor v. Knupfer (In re PW, LLC), 391 B.R. 25 (B.A.P. 9th

• Cir. 2008)

– Mid-City Bank v. Skyline Woods Homeowners Ass’n (In re Skyline Woods

Country Club), 636 F.3d 467 (8th Cir. 2011)

16

Buyer Reliance on Section 363(m) Good Faith Protections

• Clear Channel Outdoor v. Knupfer (In re PW, LLC), 391 B.R. 25 (B.A.P.

9th Cir. 2008):

• The Ninth Circuit Bankruptcy Appellate Panel held that a junior lienholder could

challenge the effect of the “free and clear” provisions of a sale order, notwithstanding Section 363(m).

• The BAP held that a challenge to the “free and clear” provisions was not an attack on

the sale order itself.

• Mid-City Bank v. Skyline Woods Homeowners Ass’n (In re Skyline Woods

Country Club), 636 F.3d 467 (8th Cir. 2011):

• The Eighth Circuit concluded that Section 363(m) did not prevent a state court from

interpreting the scope of what “interests” were subject to the “free and clear” sale.

• The Eighth Circuit suggested that Section 363(m) only applies to direct appeals of

bankruptcy court orders to higher federal courts and not to collateral challenges of bankruptcy court orders in state courts.

17

Buyer Reliance on Section 363(m) Good Faith Protections

• Regardless of Section 363(m) uncertainties, Buyers should nevertheless
• btain a waiver of Rule 6004(h)’s stay of the effectiveness of the sale order.
• How long should a buyer wait before closing, in the face of an actual or

possible appeal of the sale order?

• No need to wait at all?
• Until the expiration of the 14-day appeal period under Fed. R. Bankr. P. 8002?
• Until the expiration of the 1-year period under Fed. R. Civ. P. 60?
• Buyers should understand that a “good faith” finding alone will not

necessarily insulate a buyer from certain challenges to the sale or the terms

• f the sale order.

18

Mitigating Successor Liability Risk

• The doctrine of successor liability can operate as an “exception” to the general

rule that a buyer does not take on liability for claims against a debtor.

• Successor liability claims have been characterized as in personam claims

against the defendant/buyer, rather than in rem interests in the purchased assets. But some courts, particularly those in the Second and Third Circuits, have concluded that Section 363(f) is nevertheless effective to release the buyer from such claims when they are connected to or arise from the assets sold.

• Recent decisions, however, have sparked renewed caution about the potential

for successor liability following a Section 363 asset sale.

• In re Grumman Olson, 445 B.R 243 (Bankr. S.D.N.Y. 2011): The court held that the

(1) plaintiffs did not hold a “claim” against the seller at the time of the sale because they had no existing relationship with the seller, and (2) the plaintiffs, as unidentifiable potential future creditors at the time of the sale, could not have received adequate notice of the sale and the release of their claims and thus the sale order could not bar their

• claims. The court also diverged from prior holdings by noting that the claims did not

arise from or relate to the transferred assets, but instead were based on the post-sale conduct of the buyer in continuing the seller’s product line. The district court affirmed the bankruptcy court’s judgment. In re Grumman Olson, 467 B.R. 694 (S.D.N.Y. 2012).

19

Mitigating Successor Liability Risk

• Diligence pending and potential claims against the debtor thoroughly – buyers

should not not rely exclusively on Section 363(f)’s “free and clear” provisions and the terms of the sale order for protection.

• Buyers should continue to negotiate broad releases in the sale order.
• Indemnification escrows should be considered where commercially feasible.
• Who should be given notice of the sale?
• What manner of notice should be given?
• When and how often should notice be given?

20

Negative Notice Provisions

• Sellers often try to limit objections to the assignment of contracts and to the

amount of cure costs due under those contracts by providing “negative notice” to all interested parties.

• These negative notice provisions are generally effective if parties in interest

do in fact receive meaningful and timely notice.

• In re Sportsman’s Warehouse, Inc., 2013 WL 492554 (Bankr. D. Del. Feb. 7,

2013): The court held that an order approving assumption of a lease and establishing a $0 cure amount barred a landlord’s later claim for damages based on a pre-sale breach of the lease. “[T]he nonbankrupt party to an executory contract bears the burden to assert any defaults prior to the assumption. Where the nonbankrupt party has knowledge of facts sufficient to place the party on notice that a potential pre- confirmation breach has occurred, res judicata bars that party from later asserting a claim based upon a pre-petition breach.”

21

Negative Notice Provisions

• How broad a notice program is possible? Practical?
• How specific and targeted should a notice be?
• How does a buyer mitigate the risk of post-sale claims based on pre-sale

events that have not ripened into monetary defaults as of the time of the sale?

• In some cases, business concerns may take precedence over strict

application of negative notice provisions.

22

Section 363(n)’s “Anti-Collusion” Limitations

• Section 363(n) prohibits collusion among potential bidders in a Section 363 sale.
• On the language of Section 363(n), a violation of Section 363(n) requires: (1) an

agreement, (2) between potential bidders, (3) that controlled the price at bidding. But this is an area where technical statutory compliance may not be the most complete touchstone for legal safety.

• The inquiry into whether an agreement to collude was established will likely involve

an evaluation of the motivations of the bidders involved:

• Inability of either party individually to afford the assets?
• Strategic reasons for controlling the sale price?
• Agreement to drop out of bidding or agreement not to bid, for reasons extrinsic to sale?
• It is possible that courts may apply a broad definition of “potential bidders,”

including parties that submit a bid, parties that express interest but do not submit a bid, and even the debtor itself.

• With respect to control, “The influence on the sale price must be an intended
• bjective of the agreement, and not merely an unintended consequence.” See In re

N.Y. Trap Rock Corp., 42 F.3d 747 (2d Cir. 1994).

23

Section 363(n)’s “Anti-Collusion” Limitations

• Understand the limitations period for a Section 363(n) claim.
• Fed. R. Civ. P. 60 vs. longer state-law fraud claim statute of limitations?
• When does Section 363(n) start to apply? Possibly before a bankruptcy filing?

Before any sale process is announced? Before any sale motion is filed?

• Be aware of the possibility of punitive damages under Section 363(n), or possibly

even criminal liability under title 18 of the U.S. Code, for willful disregard of anti- collusion limitations.

• It is generally in a bidder’s best interests to disclose any joint bid agreement to the

court, even if disclosure is not a panacea:

• In re Colony Hill Assocs., 111 F.3d 269 (2d Cir. 1997): “Although full disclosure to the

bankruptcy court may not always neutralize conduct that would otherwise constitute bad faith, disclosure should certainly weigh heavily in the bankruptcy court’s decision on that issue.”

• In larger, more complex asset sales, letter agreements between the debtors and the

potential bidders are sometimes used to establish agreed-upon standards for “non- collusive” bidding practices. Are these perfect protections for bidders?

24

George W. Shuster, Jr. Benjamin W. Loveland WilmerHale WilmerHale george.shuster@wilmerhale.com benjamin.loveland@wilmerhale.com 617-526-6572 (t) 617-526-6641 (t) 212-937-7232 (t)

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