AIPPI World Congress 2019: the in-house perspective on selecting outside counsel
Courtroom experience, the ability to work well in a team, and transparency are the key attributes lawyers should have if they want to represent multinational companies like Qualcomm and Boehringer Ingelheim, according to their in-house counsel.
Speaking on a panel at AIPPI’s World Congress 2019, Mark Snyder, who is senior vice president and patent counsel at Qualcomm, said the company would not consider outside counsel that doesn’t have some experience in the relevant technologies, or in the courtroom.
“Given the nature of our disputes, for example against Apple, we have as many as 150 litigations going on worldwide at one time, so counsel need to be able to handle that,” he said yesterday, September 16.
Aside from experience, they also need to have capacity.
“We really invest in the counsel we choose; we train them on the tech and industry and we teach them about FRAND (fair, reasonable, and non-discriminatory) licensing-related issues,” all of which take up a lot of time, he adds.
Elke Simon, head of patents at Boehringer Ingelheim, said aside from “those who win!”, outside counsel “absolutely need to have the technical expertise to understand the business”.
But additionally, as a multinational pharmaceutical company with litigation happening across the world, outside counsel must be able to cooperate with counsel internationally, in India and China for example.
“We don’t need someone ultra-famous, we just need a team player,” she added.
At French automotive supplier Valeo, a key trait that the vice president of its IP group, Beatrice Levy-Moulin, looks for is knowledge of Valeo’s business.
“This means it can often end up being someone the company has worked with in the past as they know the business well. On the flip side, our counsel is also selected based on the opponent and what qualities and expertise will be required to effectively take on that opponent,” she said.
Another key consideration, Snyder said, is conflicts, which for a corporation as large as Qualcomm, can be one of the biggest challenges.
“You often don’t have many firms that meet all the criteria you’re looking for to begin with, and then when you consider conflicts, you have even less,” he said.
Once potential firms and outside counsel are shortlisted, Levy-Moulin said the deciding factor on who she chooses is simply the connection that her team has with the outside counsel.
“The other criteria such as expertise and experience are key of course, but after all of that is met, what we need are people who we can have fluid and easy communication with,” she said.
This is similar at Boehringer, which Simon said makes the final decision based on “transparency, openness and honesty”.
The panel also discussed the problem of counsel having adequate courtroom experience.
Patrick Coyne, a trial attorney at Finnegan, Henderson, Farabow, Garrett & Dunner, who moderated the panel, said nowadays it is difficult to find counsel with enough experience when litigation in the US has fallen from some 6000 patent cases 10 years ago to a little over 3,000 a year.
“Less than 25% of those cases are being tried,” he said. “Additionally, so many general practice lawyers are coming into the IP space, which worsens the problem, because there is now more competition but a smaller number of cases.”
This makes it particularly hard to get courtroom experience for young lawyers. Snyder said that to overcome this, Qualcomm tries to identify “rising stars” at firms, and support their careers going forward.
Simon said one way Boehringer counters the risk associated with trusting younger lawyers with aspects of litigation is by placing them on smaller cases first with coaching along the way.
“Coaching is really important. Plus, a more experienced attorney and ‘baby’ attorney working on a case together can be really beneficial to both parties,” she said.
Snyder agreed. “The best firms we work with have programmes in place whereby senior counsel are constantly looking for opportunities for the development of younger attorneys.
“They take calculated risks, but it’s something that pays off over the long term,” he said.
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