Sued: What In-House Counsel Without Litigation Experience Need To Know - Finding Your Outside Team

WG
Wolf, Greenfield & Sacks, P.C.

Contributor

For nearly a century, Wolf Greenfield has helped clients protect their most valuable intellectual property. The firm offers a full range of IP services, including patent prosecution and litigation; post-grant proceedings, including IPRs; opinions and strategic counseling; licensing; intellectual property audits and due diligence; trademark and copyright prosecution and litigation; and other issues related to the commercialization of intellectual property.
This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit.
United States Intellectual Property
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2: Finding Your Outside Team

This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first article included key questions whose answers may help to frame the plaintiff and the case in a way that suggests an effective course of action.

This article assumes that your organization doesn't have an in-house litigation manager. It sets out some considerations that can help guide you to an outside lead counsel best suited for your case.

You may get recommendations for firms from investors, board members, or those within your organization. In addition, you may work with prosecution counsel whose firm also handles patent litigation or who recommend litigators, and you may have contacts within your own legal network. Finally, firms may locate and contact you based on the filed complaint, even without a previous connection.

Even if firms have been recommended or have contacted you, you may choose to issue a request for proposal (RFP) to find other firms to consider additionally or alternately. Regardless of the approach you use, bear in mind the default 21-day deadline for a response (or request for extension) after proper service of the complaint.

The process of selecting a firm often involves obtaining a number of proposals and then meeting with several finalists. As an initial matter, you have to select the firms you want to meet with. This preliminary selection may be based on reputation/name recognition, strength of the recommendation the firm was given, or your intuition based on the introductory contact. The information in this article may help add some factors to make your first cut, in addition to providing considerations for your final selection.

The total package

Flexibility

Any firm you consider will likely (and should) discuss the answers to many of the key questions in the first article and what they may suggest. Those discussions may give you a sense of how well the team thinks through relevant issues, explains those issues to you, and listens when you express your concerns and desired goals.

While a good lead counsel should inspire confidence, there is reason to be leery of a team that is too agreeable and/or one-sided in their views. For example, a team that exclusively handles defense-side work may be unrealistically optimistic about their ability to invalidate a patent and "tone deaf" to the ways in which patent owners can make arguments that resonate with judges and/or jurors. Asking potential firms about their experience representing both patent-owners and accused infringers may help you find lead counsel with a more balanced perspective and ability to not only identify potential defenses, but also to provide realistic advice concerning their likelihood of success.

Ideally, you would want to work with lead counsel who are measured and flexible; a team that will make every effort to find the fastest and cheapest resolution to the litigation (assuming that is your goal) but can pivot to litigating aggressively on the merits if initial efforts (e.g., identifying problems with the plaintiff's patent and leveraging them into a low cost settlement) do not bear fruit. Inquiring about their experience in negotiating settlements, as well as with each phase through trial (whether you favor one outcome or the other) may help you find a suitably flexible and versatile team.

Versatility

While your initial concern may rightly be on the suit that was filed and the local court in which it was filed, it's important to recognize that, if a patent suit does not settle early, it often leads to one or more other proceedings in different forums.

Which other proceedings are available can depend on the type of party who sued you:

  • counterclaim(s) and/or separate offensive suits may be possible if the plaintiff is a competitor or other practicing entity. Counterclaims and separate offensive suits involve allegations that the plaintiff in the original suit is infringing your own patent(s) or otherwise violating your rights (g., based on other types of intellectual property such as trademarks, copyrights, or trade secrets). Counterclaims are brought alongside your defense of the original action; they must be filed in the same forum. By contrast, a separate offensive claim can be brought in a different venue than the initial suit.
  • a post-grant proceeding (e., inter partes review (IPR), post-grant review (PGR), or ex parte reexamination) can be initiated regardless of the nature of the party who sued you (i.e., practicing versus non-practicing plaintiffs). It is filed with the United States Patent and Trademark Office (USPTO) and involves asking the USPTO to reconsider whether the plaintiff's patent claims actually comply with the statutory requirements such as novelty and non-obviousness.

It is important to ensure consistent positions in all proceedings. For example, the judge in the original suit may agree to stay the litigation until the USPTO issues final decisions in any related IPRs. But, if the patent owner prevails on certain claims (i.e., if the USPTO determines they are not unpatentable) and the original suit resumes, claim constructions and other positions taken in the USPTO as part of the IPR may prove problematic in the litigation.

Given this need for consistency, it is critical to coordinate all proceedings that may arise from the suit. One way to achieve the coordination is by using a firm that can handle all aspects of your case internally. When the same firm handles your litigation and IPR, for example, you can be confident that team members are working seamlessly to cross-check positions and assertions.

Another approach is to work with a litigation team that can partner with one or more other firms. If you choose this approach, you will want to ask about the firm's plans for and experience with coordination. While such coordination is certainly possible among multiple firms, it may require more time and attention on your part to ensure that it is taking place.

Venue no bar

The court in which the complaint was filed ("the local court") is certainly relevant to your selection of a litigation team, but it need not limit your selection. The basics:

  • pro hac vice admission allows attorneys who are not members of the local bar (g., Commonwealth of Virginia) to file pleadings and make appearances in the local court (e.g., Eastern District of Virginia)
  • Depending on the particular venue, an attorney who is a member of the bar of the local and admitted to the local court ("local counsel") may need to sign all pleadings submitted to the local court and be present for all hearings until or regardless of pro hac vice admission of non-local attorneys.

With the analytics tools currently available, any firm anywhere can obtain statistics and other information about the court in which your suit was filed and the judge assigned to your case. Still, local counsel can enhance the decision-making process of the litigation team through personal experience and knowledge of the judge's past rulings and reputation. For example, local counsel may provide insight on the judge's attitude toward particular types of motions — beyond what is available in the statistical record. Local counsel can also provide practical advice such as how individual judges handle oral arguments.

That said, your selection of lead counsel need not (and probably should not) hinge on admission to the local court for several reasons:

  • patent litigation in the United States is conducted according to the same substantive law (g., standards for assessing alleged infringement and invalidity defenses) nationwide, and the vast majority of cases settle well before trial
  • if your case is filed in one of the venues that tends to be favored by patent litigants (g., Eastern District of Texas, District of Delaware, Northern District of California), certain firms will have significant experience with the court despite not having a physical presence within the district
  • as noted, the litigation may branch into at least one other proceeding in a different forum, which may ultimately be more important to a successful resolution
  • a good lead counsel will identify a local counsel who augments the overall effectiveness of the litigation team

Asking potential firms about their experience representing patent-owners as well as accused infringers, negotiating experience, experience with patent litigations within and outside the venue of your suit, and their approach to other proceedings can get you data points for comparison. Ultimately, trusting your judgment about which firm seems most likely to honor your organization's priorities and preferred style may help identify the best lead counsel for you.

In addition to the 21-day deadline triggered by service of the complaint, the duty to preserve evidence may also drive the exigence for establishing your litigation team.

So, next up in the series . . .

3: Preparing Your Inside Team: preservation, privilege, and potential pitfalls for your organization

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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