11th Annual Patent Law Institute

Transcription

1 INTELLECTUAL PROPERTY Course Handbook Series Number G th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at (800) Ask our Customer Service Department for PLI Order Number , Dept. BAV5. Practising Law Institute 1177 Avenue of the Americas New York, New York 10036

2 21 Managing IP Litigation Diana Luo Walmart Global ecommerce If you find this article helpful, you can learn more about the subject by going to to view the on demand program or segment for which it was written. 697

3 698 Practising Law Institute

4 TOPICS OF DISCUSSION In-House Counsel Wears Many Different Hats Selecting Outside Counsel Is A Tough Job Effective Collaboration between In-House and Outside Counsel Utilizing In-House Resources Balancing Document Retention Obligations and Spoliation Concerns Watching the Bottom Line Seeking Indemnification From Third-Parties Best Practices in Dealing with Internal Clients IN-HOUSE COUNSEL WEARS MANY DIFFERENT HATS SELECTING OUTSIDE COUNSEL IS A TOUGH JOB Critical task for in-house counsel, but underrated Evaluation and selection based on a variety of factors: 1. Outside counsel s expertise 2. Likelihood of case going to trial 3. Prior experience with outside counsel 4. Referrals 3 699

5 5. Rates/fee arrangements 6. Potential exposure/impact level to the company 7. In-house counsel s instincts EFFECTIVE COLLABORATION BETWEEN IN-HOUSE AND OUTSIDE COUNSEL DO S AND DON TS FOR IN-HOUSE COUNSEL Do s Get involved in the case Comment on substantive work product Brainstorm Explain the business context Determine the relevant business stakeholders/witnesses Help them understand why they need to get involved Evaluate potential impact on the company s other legal issues Provide access to witnesses and relevant documents 4 700

6 Set clear expectations for outside counsel Speak up if a problem arises in working with outside counsel Keep outside counsel in the loop of changes in internal strategy and internal deadlines Don ts Don t be nit-picky Don t sit on discovery-related obligations until close to the deadline Don t be inconsiderate of outside counsel s other commitments UTILIZING IN-HOUSE RESOURCES Many tasks can be done in-house Varies with experience, attorney availability, and budget The spectrum is wide: In-House counsel has a choice in terms of involvement Do as much as time and/or interest allows This can vary week by week, and case dependent BALANCING DOCUMENT RETENTION OBLIGATIONS AND SPOLIATION CONCERNS Litigation hold notices Don t delay sending them out Determine potentially relevant custodians and potentially relevant document categories as early as possible Err on being overly inclusive, but not unreasonably so Amend the list of custodians and relevant documents as the case develops 5 701

7 When possible, provide advance notice to custodians Briefly explain what a hold notice is What the custodians obligations are Why the custodians are chosen WATCHING THE BOTTOM LINE Get involved early with setting the budget The litigation manager has the best foresight of what may be in the pipeline in the next 1-3 years Staying within the budget Set up alternative fee arrangement when appropriate Fee-splitting; capped/flat fees; success fees Monitor spending starting from the first month of the fiscal year Make adjustments on forecast throughout the year Leave wiggle room in case of unexpected spending Know when paid invoices are counted against the budget Significant under-spending is not ideal either Work closely with finance department regarding spending, settlement, and accruing for contingency Be proactive and avoid surprises! SEEKING INDEMNIFICATION FROM THIRD-PARTIES Successful indemnification claims can help your budget! Seek indemnification early Most indemnification provisions have notice requirement But conduct early case assessment so the request for indemnification is reasonable Engage with the indemnitor directly Notify relevant business stakeholders first 6 702

8 Understand the company s business relationship with the indemnitor Determine how/when to apply pressure when met with resistance from indemnitor BEST PRACTICES IN DEALING WITH INTERNAL CLIENTS Communications should be succinct Include a very brief summary at the beginning Use bullet points Use emphasis: underlining, bold face, color Nothing beats a face-to-face meeting Next best thing: get on the phone The tone still often gets lost in and IM Demonstrate accountability Anticipate the client s needs and questions QUESTIONS AND COMMENTS Contact information Diana Luo Walmart Global ecommerce dluo@walmart.com 7 703

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