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28 October 2016Copyright

AIPLA 2016: Google and Microsoft lawyers on hiring outside counsel

There are two major reasons Microsoft would have for using new rather than existing outside counsel, according to Danielle Johnston Holmes, associate general counsel at the technology company, who was addressing an industry conference.

These are when the existing stable of outside counsel is getting too busy and when other counsel have expertise in new technology areas, she said, speaking in a personal capacity.

Johnston Holmes was speaking yesterday, October 27, at the 2016 Annual Meeting  of the American Intellectual Property Law Association (AIPLA) in Washington, DC.

Although it is traditionally a software company, over the last several years Microsoft has moved more into the hardware business, so the company has brought in outside counsel with the relevant expertise.

Jim Sherwood, in-house litigation counsel at Google, also offering his personal views, explained that the company has taken on more outside counsel as a result of an increasing case load. When Sherwood started with Google, it was handling 25 to 50 cases a year, but now it’s somewhere between 100 and 200.

“Looking for new firms is a challenge. I sometimes feel like everybody is either representing us or suing us on a case,” he said.

Two of the biggest drivers of looking for new teams to work with are technical experience and experience in a particular forum, according to Sherwood.

Most of Google’s cases are filed in Delaware and the Eastern District of Texas, although when cases are brought in different districts, Google tends to choose counsel who have experience in the relevant area.

Sean Reilly, associate general counsel of The Clearing House Payments Company, which operates payment systems at the centre of the banking industry, added that bringing in outside counsel can be a “very rigorous” process.

According to Reilly, who was also speaking in a personal capacity, it can take a year to bring a firm online with access to sensitive data.

“There are a lot of law firms we wanted to do business with, but unfortunately it’s impossible to do business with them as the investment hasn't been made in the info-sector,” he said.

Johnston Holmes added: “It’s not that hard to find counsel; we are generally approached on a day-to-day basis. Generally, the hardest [issue] to overcome is conflicts.

“Conflicts are just complicated and can be a difficult or uncomfortable situation for firms.”

This is one of the first conversations Johnston Holmes has when looking for outside counsel.

She added that “if you can’t get past that … it doesn’t matter” and that she appreciates transparency.

“One of the challenges we’re dealing with is how dynamic the tech industry is,” she explained. “One year, you may have a small firm that you don’t see as a conflict and then Jim buys them.”

She added that it was better for outside counsel to bring up conflicts with Microsoft, rather than the other way around.

Sherwood said that Google hires outside counsel for each litigation matter. However, he maintains a very hands-on approach, remaining deeply involved in the technical aspects and attending every court hearing.

The AIPLA 2016 Annual Meeting finishes on October 29.

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