Recognized as one of The Best Lawyers in America© in the fields of commercial litigation and intellectual property, Susan Metcalfe is a veteran trial attorney who knows what it takes to get the job done for her clients both inside and outside the courtroom. With over eighteen years’ experience as a trial attorney, Susan has significant, substantive experience with an extremely broad array of litigation, including:
- Intellectual property (trade secrets, trademark, noncompetition agreements)
- Franchise disputes
- Economic espionage and computer fraud & abuse
- Product liability
- Directors and officers liability
- Employment disputes
- Insurance coverage disputes
- Partnership and shareholder disputes
- Sales and manufacturing disputes
- Construction litigation
This diverse experience helps Ms. Metcalfe analyze cases holistically, strategically, and creatively to achieve optimal solutions given the unique circumstances presented in each case.
Although many cases call for resolution outside litigation, one of the principal qualities that make Ms. Metcalfe an effective litigator is that she truly enjoys trial work and does not shy away from the court room. Ms. Metcalfe also strongly believes that thorough preparation and strategic analysis beginning at the earliest stage of a dispute are key to achieving the best results. She relishes working shoulder-to-shoulder with her clients through every phase as a trusted business partner.
Apollo Enterprise Imaging Corp. v. Conyers (E.D.Va. 2019) –Lead counsel in trade secret case filed on behalf of healthcare IT company against former chief product officer who claimed whistleblower status and retaliation. Obtained early resolution that included consent judgment for permanent injunction.
Tiberend Strategic Advisors, Inc. v. Drumm (S.D.N.Y. 2019) – Lead counsel in case against former vice president of biosciences investor relations firm, alleging breach of non-solicitation and non-servicing agreement. Obtained prompt non-confidential settlement that included the defendant’s payment of all attorneys’ fees.
- 7-Eleven, Inc. v. Karamjeet Sodhi (D.N.J., May 31, 2016), 2016 WL 3085897 – As lead trial counsel, obtained summary judgment in high-profile franchise termination case and on all counterclaims, including franchisee’s challenge to independent contractor status.
Camacho v. Savannah College of Art and Design (S.D.N.Y. 2018) – Defended university against ADA claims alleging inaccessibility of website.
- 7-Eleven, Inc. v. Upadhyaya, 926 F.Supp.2d 614 (E.D.Pa. 2013) – As lead trial counsel, obtained preliminary injunction granting 7-Eleven possession of franchised store in termination case alleging widespread, long-term fraud by franchisee.
- 7-Eleven, Inc. v. Tariq Khan, 977 F.Supp.2d 214 (E.D.N.Y. 2013) – Served as lead trial counsel in franchise termination case alleging massive fraud by long-term, high-profile franchisee. Guided investigators in building circumstantial case that franchisee directed numerous employees to engage in fraudulent conduct against 7-Eleven, for franchisee’s benefit. Obtained preliminary injunction granting 7-Eleven possession of franchised store.
- Nilson v. Hershey Entertainment & Resorts Co., 649 F.Supp.2d 378 (M.D. Pa. 2009) – Obtained summary judgment for defendant in product liability case alleging defective roller coaster caused hearing loss in minor plaintiff.
- Choice Foods of America, LLC v. Halo, Purely for Pets, Inc. (M.D. Tenn.) – Defended holistic pet food company in action for breach of manufacturing agreement under the Uniform Commercial Code.
- The Stop & Shop Supermarket Company LLC v. Whole Foods Market, Inc. (D. Mass.) – Prosecuted trademark infringement action against world’s largest retailer of organic and natural foods over its use of the REAL DEAL trademark.
- Chao v. Pennsylvania Builders Association et al. (M.D. Pa.) – Represented the trustees of one of the country’s largest purchasing groups of insurance in a Department of Labor investigation alleging violations of fiduciary duties under ERISA.
- Computer Aid, Inc. v. Newcomer et al. (C.P. Cumberland) – Represented worldwide information technology services firm against former employees, alleging they breached non-competition agreements by contracting directly with the United States Department of the Navy.
- Cooper v. Schoffstall, 905 A.2d 482 (Pa. 2006) – Made new law by successfully petitioning for allocatur and winning favorable Pennsylvania Supreme Court ruling limiting discovery of expert witnesses’ personal financial information.
- Elo TouchSystems, Inc. v. Phares (C.P. Dauphin) – Represented worldwide manufacturer of touch-screen display products in action against former employee alleging breach of non-competition agreement.
- Dentsply International v. Perry C. Holden and Heraeus Kulzer, Inc.(S.D.N.Y.) – Represented global manufacturer of dental products in action alleging theft of trade secrets and unfair competition against former employee and direct competitor.
Honors & Awards
- The Best Lawyers in America© 2021. Selected for both commercial litigation and intellectual property litigation.
- Winner, 4th, 5th and 6th Annual Magna Legal Services CHOPPED for CHOP Mock Trial Competition, 2016, 2017, 2018
- Listed in Pennsylvania Super Lawyers Rising Stars, 2008, 2010
- Listed in Lawyers on the Fast Track, 2009
- Listed in Central Penn Business Journal Forty Under 40, 2008
Publications and Speeches
- “Location, Location, Location: Effect of the Franchisee’s Bankruptcy on the Franchisor’s Control of Real Estate,” Franchise Law Journal, • Vol. 37, No. 2, Fall 2017
- “Skin in the Game: Personal Guarantees in the Franchise Context,” The Franchise Lawyer(official publication of the ABA Forum on Franchising), Summer 2016.
- “Breaking Up: Preliminary Injunctions in Contested Termination Lawsuits,” New Jersey Lawyer Magazine, February 2016
- “Blue Skies and Stormy Weather: Balancing Risks and Rewards of IP in the Cloud,” The Legal Intelligencer, October 11, 2011
- “What’s Mine is Yours: The Pitfalls of Sharing Trial Technology in an Adversarial System,” The Legal Intelligencer, Litigation Supplement, February 2, 2009; reprinted as “How to Handle Technology Bereft Opposition” in Law.com In-House Tech, June 1, 2009
- “Injunctions to Protect Business Interests: Observations from Recent Cases,” The Legal Intelligencer, Litigation Supplement No. 2, December 2007
- “Who’s Afraid of Nonprofit Board Service?” The Legal Intelligencer, Vol. 229, No. 116, Dec. 15, 2003
- “Function Follows Form – Enforcement of Restrictive Covenants After Company Acquisition May Hinge on Structure of the Deal,” MWN Intellectual Property News, Spring 2010
- “Protecting Trade Secrets: Is the Remedy Worse than the Wrong?” Dickinson Law Review, Vol. 1 04, No. 3, Spring 2000
- Panelist, “Location-Based Services—Possibilities, Privacy and More,” International Wireless Communications Expo Virtual Experience, August 24, 2020.
- Speaker, “Franchising 101,” LawPracticeCLE webinar, May 12, 2020.
- Speaker, “Out-of-State Subpoenas & Interstate Discovery,” LawPracticeCLE webinar, May 12, 2020.
- Panelist, “Multi-media from the Field to the PSAP,” International Wireless Communications Expo, Las Vegas, NV, March 8, 2019.
- Panelist, “Turning Public Private Partnerships Into Reality,” International Wireless Communications Expo, Las Vegas, NV, March 6, 2019.
- Panelist, “Perspectives on Non-Traditional Franchise Ownership Structures,” American Bar Association Forum on Franchise, Nashville, TN, October 11-12, 2018.
- Panelist, “Managing the Data Tsunami in an IoLST World,” The Internet of Things World Conference, Santa Clara Convention Center, CA, May 14, 2018.
- Presenter, “Get Smart: Legal and Ethical Boundaries of Investigations in the Digital Age,” NACLE, March 2018.
- Provide pro bono representation to various not-for-profit entities, including the Pennsylvania Innocence Project
- As pro bono counsel with the Pennsylvania Innocence Project, Susan helped lead an effort to overturn the 2007 arson/murder conviction of Daniel Carnevale. The team’s work resulted in Mr. Carnevale’s exoneration and release from prison on March 18, 2020, just two days after the Governor ordered the shutdown of the Commonwealth due to COVID-19.
- Board member of the SmartHub Foundation, a 501(c)(3) that produces Lancaster MusicFest, an annual flagship event providing select local community-based charities with financial resources, a marketing and communications platform, and an engaged local audience. 2019-present.
- LG Health Innovation Solutions, Inc. – Trustee, 2012-2015
- Lancaster Bar Foundation – Trustee and Member of Fundraising Committee, charitable arm of the Lancaster Bar Association, 2011-2013
- Lancaster Central Market Trust, Trustee, 2009-2014, Member, Financial Task Force, 2008-2009
- Elizabethtown College Pre-Law Club Advisory Board – Advisor, 2000-present
- American Diabetes Association, Central Pennsylvania Chapter – Member, Board of Trustees, 2008-2010
Memberships and Affiliations
- American Bar Association
- Forum on Franchising
- Pennsylvania Bar Association
- Intellectual Property
- Forum of Executive Women
News, Events & Insights
The Pennsylvania State University, Dickinson School of Law, J.D.
- cum laude
- Dickinson Law Review, Associate Editor
University of Virginia, M.A., English
Elizabethtown College, B.A., English
- summa cum laude
- Duane Morris LLP, Partner
Areas of Practice
- New Jersey
- New York
- U.S. Supreme Court
- U.S. Court of Appeals for the 3rd Circuit
- U.S. District Court for the Eastern District of Michigan
- U.S. District Court for the District of New Jersey
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
- U.S. District Court for the Western District of New York
- U.S. District Court for the Eastern District of Pennsylvania
- U.S. District Court for the Southern District of Pennsylvania
- U.S. District Court for the Western District of Pennsylvania