Looking for passion, creating so-called “Franken-firms” and fostering collaboration were some of the tips given on managing life sciences litigation by speakers at Managing IP’s Life Sciences Forum 2018 in New York on September 12.
Creating the best team
Larry Coury, assistant general counsel at Regeneron Pharmaceuticals, shared the top three attributes he looks for when assembling a litigation team:
- Skills in science, preferably with PhDs. “People who can ask tough questions to an expert with a Nobel prize, for example,” Coury explained.
- A good case manager who can make sure nothing falls through the cracks
- A good writer, because judges need to understand their motions
Elizabeth Weiswasser, co-head of life sciences and patent litigation at Weil Gotshal, said that a deal-making attribute for her is passion for the work. “I look for attorneys who have passion for the privilege for advocating for innovators – the passion to serve and represent branded companies around blockbuster drugs,” she said. Also, responsiveness and cooperation are necessary qualities. Weiswasser explained: “Litigation, particularly big commercial cases, is truly a team sport.”
Stephanie Donahue, senior director of patent litigation at Sanofi, added that the best teams are composed of the best people, which has led her to create so-called “Franken-firms,” composed of the best people from various firms. “It can be a challenge to manage multiple law firms,” she says, “but it is possible, and it often results in the best work product.”
It may be impossible to find one person with all the qualities described above, but as long as they are all represented on the team and there is collaboration, it works. To this point, Weiswasser quipped: “If you want a dog to snuggle with, don’t get a pitbull. And if you want a guard dog, don’t get a golden retriever. You have to understand who your attorneys are, and find ways to bring out their best qualities to serve the client.”
In-house and outside counsel collaboration
When making big decisions about how to approach a case, collaboration helps ensure a unified approach. Regeneron’s Coury said: “Sometimes you make a tough decision and then two years later you realise that was not the right thing. If the in-house people and the outside counsel made that decision together, you're all in it together.”
Managing legal uncertainty for the business is another challenge in working with outside counsel, who are often hesitant to give probabilities. Even if outside counsel has relative certainty the case can be won, this can still be a problem. Coury explained: “The best business decision is not always the best legal decision.
“Sometimes we get to a point where we think we're going to win, but the business says, ‘We need certainty. If they're willing to settle for X dollars, let's just do it and get this behind us.’” In contrast, outside counsel often want to hold on to a case they are sure they can win.
Explaining legal strategy to the company leadership is another challenge for Coury. “The legal system does not always lead to the best scientific result,” he said. “They may think it doesn't make scientific sense, but we have to pursue a certain legal strategy because that's where the case law points us.”
Handling litigation costs
Managing costs comes back to collaboration for Coury. “Cost is always an issue,” he said. “When working with outside counsel, you need to make sure that everything that needs to get done is getting done, but not too many things are getting done that don’t need to get done. The best way to handle that is for in-house people to be really involved in the case.”
Weil Gotshal’s Weiswasser said that organisation and communication is vital: “Companies often look to their lead outside law firms to manage their full budget for everything. That includes local counsel, experts, discovery vendors, specialty regulatory counsel, other firms with more limited roles – everything.” As managers of the overall cost of litigation, “there has to be proactive communication to make sure there aren’t any surprises.”
On the generic side, Andrew Allen, director of IP at Dr Reddy’s Laboratories, explained he has to be on top of budgeting issues. “When I review bills, it can appear that there’s bloat because there’s some redundant work going on, or perhaps an associate too many,” he said. To avoid this, Allen recommends “keeping small teams small for as long as possible, at least through the discovery phase. It can help keep redundant creep at bay.”
Role of junior associates
Handling junior associates’ need for experience with clients’ need for experienced attorneys is always a delicate balance. Ideally, the two needs can align in a district like Delaware, where chief judge Stark actively encourages junior associates’ participation in Markman hearings and discovery disputes.
“It’s almost like you get bonus points for having your junior attorneys take these speaking roles in court,” Weiswasser said. “In circumstances like that, it’s in our clients’ best interests to find the superstars, and make the recommendation for the right person.”
Additionally, Regeneron’s Coury said junior associates are often “best suited” to do depositions because they know the documents most intimately, while more senior people are generally “not so deep in the details”.
Role of local counsel
Sanofi’s Donahue recommended that companies use their local counsel as fully possible. “In several ongoing cases where we’re using our local counsel, they will have a substantive role at trial; it’s been very effective,” she reported.
Katelyn O’Reilly, associate at Walsh Pizzi O’Reilly Falanga, often acts as local counsel in New Jersey, and reported that in general, “local counsel is very underutilised”. She said: “Local counsel has experience with judges in the area, so they should be guiding you in terms of the intricacies of local patent rules – which ones are strictly enforced and which ones the court takes a more flexible approach with.”
Additionally, O’Reilly said local counsel can help find the right tone in submissions, or recommend which types of disputes judges are going to find reasonable: “While we may not be technical experts, we are often very well-versed in the substantive work product that is being put out there.”
Specifically, O’Reilly offered: “We can revise claim construction briefs to make sure that the technical aspects are being presented in a way that is palatable to the judges. “Ultimately, the two things O’Reilly recommended are needed to foster that relationship are: “One, communication, and, two, give local counsel a meaningful opportunity to review and weigh in.”
