Firm News
Recognized by Chambers USA for 2025, we don’t just litigate—we control the risk, shift leverage, and position our clients for the win.
Intuitive Surgical, Inc. v. Steward Health Systems LLC
We represented Intuitive Surgical, Inc., the pioneer of the Da Vinci surgical robot, in one of the country’s largest bankruptcy cases involving Steward Health Care Systems, a for-profit hospital system that operated 33 hospitals across the United States and additional facilities internationally.
Our focus was on safeguarding Intuitive’s interests in robotic surgery systems leased to various hospitals acquired by Steward, which the bankruptcy trustee was attempting to sell to new owners. This complex matter encompassed a range of legal issues related to the underlying equipment leases, software updates, and essential parts and tools necessary for operating the robots. Key legal considerations included antitrust, patent law, trade secrets, copyright, UCC lease regulations, and federal bankruptcy law.
To date, we have engaged with potential buyers to either re-lease the systems or recover Intuitive’s physical and intellectual property, ensuring the protection of our client’s interests throughout this challenging process.
Savage Services Corp. v. Cajun Industries, Inc.
We represented Savage Services in a construction contract dispute in the Southern District of Texas involving a rail terminal project. Savage had been hired by Exxon to oversee the project and subcontracted Cajun under a Master Work Agreement (MWA). Under this agreement, Cajun was entitled to a Cost Savings Amount calculated based on a specific formula. Following the project’s Final Completion, Cajun submitted a proposed change order for materials that had already been paid by Savage. Cajun argued that the materials altered the Base Not-to-Exceed (NTE) Amount, while Savage maintained that the MWA barred any additional change orders or reimbursements beyond the agreed terms.
We moved for summary judgment, asserting that the MWA clearly precluded Cajun’s claims. The court ruled in Savage’s favor, granting summary judgment and upholding Savage’s interpretation of the contract.
Yellowjacket Oilfield Services, LLC v. G&H Diversified Manufacturing, LP
We represented Yellowjacket Oilfield Services in a complex trademark dispute in federal court against G&H Diversified, a company also operating in the oil and gas industry. G&H held a federally registered trademark for the term “Yellow Jacket” related to perforating guns and claimed that Yellowjacket Oilfield Services’ name was causing market confusion. G&H demanded that Yellowjacket cease using its name and mark. When negotiations reached an impasse, Yellowjacket took the proactive step of filing a lawsuit seeking a declaration of non-infringement and challenging the validity of G&H’s trademark.
The client had previously been told by other law firms that this case would be difficult and the outcome uncertain. Having worked with us before, key individuals at Yellowjacket approached our team to develop a strategic approach. Given that Yellowjacket Oilfield Services had been operating under that name since its founding in 2012, an injunction could have had devastating financial and reputational consequences. We conducted a detailed review of the legal and business issues, crafted a clear strategy, and worked closely with the client to implement it.
As the case progressed to mediation, we navigated intense negotiations to secure an amicable resolution that allowed Yellowjacket to continue using its name and brand. Through a thoughtful and strategic approach, we were able to address the primary concerns of both parties, resulting in a favorable settlement for our client.
Mitby Paceholder Johnson Names Among Chambers USA’s Elite Small Firms
Mitby Pacholder Johnson is proud to announce that Chambers USA has selected our team of lawyers for its elite 2024 Chambers Regional Spotlight.
Long considered the gold standard of legal guides, recognition by Chambers is an enormous accomplishment for a small firm like ours – especially since we received this recognition in our first full year of operations.
The selection follows a rigorous review to identify law Texas firms with fewer than 50 attorneys that are “taking a sizable share of the legal work in this vibrant market, whether supporting Big Tech clients in patent and copyright work, Energy companies in M&A or disputes for large corporations.”
The research process includes interviews with peers, clients, and competitors, as well as a detailed evaluation of our work and case results. This firmwide recognition acknowledges our deep bench of talent that can handle the largest and most sophisticated litigation matters in Texas and around the country.
The end result is what the UK-based organization describes as an exclusive list of “the leading small to medium-sized law firms offering a credible alternative to Big Law.”
Chambers recognition really sets us apart and shows that – with a team of six elite lawyers that is growing – we have the talent and ability to take on much larger firms and win!
Trial Team Secures 104 Million Patient Infringement Verdict Against Ford Motor Co.
A Michigan jury returned a $104.65 million patent infringement verdict against Ford Motor Co., finding that Ford misused Versata Software Inc.’s proprietary computer software system and breached a 15-year contract to avoid paying millions of dollars in licensing fees.
The verdict — believed to be the largest trade secret verdict in Michigan history — vindicates Versata for its development of one of the most innovative software products used in the automotive industry. The Automotive Configuration Manager software refines complex design and logistical processes in the manufacture of vehicles. According to the lawsuit, Ford stole Versata’s intellectual property to create a replacement software.
“Our team met challenges of the case inside and outside the courtroom. In trial, we presented crucial technical witnesses for Versata and cross-examined Ford’s key witnesses, including Ford’s corporate representative and main technical expert,” said trial attorney Steve Mitby of Houston-based Mitby Pacholder Johnson. “Our cross of Ford’s expert witness was so effective that Ford’s counsel did not mention his testimony in closing arguments. We also prevailed in Ford’s world-headquarters home venue – just blocks from the Ford Field NFL stadium.”
Mitby added, “Our client, Versata, deserves tremendous credit for working so hard for more than seven years to achieve this victory. We are grateful for the confidence of Lance Jones, Versata’s general counsel, as our team pursued this case in recent years, and for his support during a decade of collaboration.”
In addition Mitby, Versata is represented by Mitby Pacholder Johnson attorneys Timothy Johnson and Drew Kim, along with Dan K. Webb, Matthew R. Carter and Brian Nisbet of Winston & Strawn LLP; Jaye Quadrozzi of Young Garcia & Quadrozzi PC; and Sharoon Saleem and Jennifer Trillsch of Jones & Spross PLLC.
“This win provides our new firm with strong momentum,” said firm co-founder Tim Johnson. “We are proud of our lawyers and paralegals who strive to provide extraordinary service to our clients — and big wins.”
The case is Versata Software Inc. v. Ford Motor Co., Case No. 2:15-cv-10628, in the U.S. District Court for the Eastern District of Michigan.
About Mitby Pacholder Johnson
Founded by veteran trial lawyers Steven J. Mitby, Debbie Pacholder and Timothy Johnson, Mitby Pacholder Johnson combines the depth of seasoned commercial trial lawyers, licensed patent attorneys and an award-winning general counsel to attack complicated legal issues and business disputes head-on. With a record of significant jury verdicts and settlements, the team has developed a reputation for aggressive and sophisticated strategies to maximize business, intellectual property, commercial arbitration, regulatory, and employment disputes. The firm’s expertise spans industries, including energy, oil and gas, healthcare and construction. More information is available at mitbylaw.com.
Tim Johnson’s In-House Litigation Leadership Highlighted in Houston Chronicle Profile
Mitby Pacholder Johnson founding partner Tim Johnson is featured in a Houston Chronicle profile highlighting his leadership of bet-the-company disputes while serving as general counsel Houston-based Peak Completions.
The article details Johnson’s work with Mitby Pacholder Johnson co-founder Debbie Pacholder on an internal investigation following the death of Peak Completions CEO Ray Hofman in a 2014 plane crash. The probe resulted in a headline-grabbing $20 million lawsuit claiming fraud, breach of fiduciary duty and gross negligence. The case reached a favorable settlement after the investigation by Johnson and Pacholder uncovered a complex scheme by Hofman to divert funds to pay for an extravagant lifestyle.
In “One Plane Crash Changed Everything for Oilfield Tech Company’s General Counsel,” Texas Lawbook editor Mark Curriden writes:
In the two years since that gut-wrenching litigation, Johnson and Peak, which is a technology-based oil well completion business, have won several major “bet-the-company” lawsuits. He rewrote and implemented new ethics and corporate compliance guidelines. He’s handled the issuance of nearly 30 patents for Peak. And he’s negotiated and signed dozens of manufacturing agreements, distribution agreements, master service agreements and employment agreements.
“Tim is a unicorn due to the combination of his strong instincts, detailed involvement and knowledge of company matters, ability to make informed, logical decisions and his ability to manage various personalities,” Debbie Pacholder wrote in nominating Johnson for the honor.
Johnson joined Peak in 2012 and has handled several significant patent infringement cases for the company. In January 2018, Peak received a notice of patent infringement from a competitor demanding that Peak stop selling one of its new products. Such a suit could have devastated the company.
“Tim conducted a thorough review of the asserted patent and its prosecution before the patent office and identified significant issues with the asserted patent, and also identified theories of non-infringement,” AZA’s Pacholder wrote in her nomination letter.
As the Hofman litigation was ongoing, a major raw material supplier sued Peak alleging that Peak had sent them three purchase orders for approximately $12 million in material to be taken over a period of time.
“The issue related to whether the spreadsheets we sent them were future forecasts or purchase orders,” Johnson said. “They showed us documents that they said were purchase orders, and we told them that we never sent those documents as they differed substantially from the spreadsheets that we had.”
Johnson spent days sifting through the metadata and documents. He discovered that the other company deleted the email account for their salesman who was the key to the whole case.
“We were able to piece together evidence showing that this salesman had altered the documents that he received from us,” he said. “A forecast that we sent him for $700,000 was changed into a $2 million purchase order that he sent internally to get material on order.”
Johnson presented the evidence to opposing counsel, which settled the litigation soon thereafter.
Click here to read the article.