Fordham 27 (Report 5): In-house Counsel Panel

The In-House Counsel Panel at the 27th Fordham IP Conference 

After a standing-room only AI session at the Fordham IP Conference, IPKat friend Andrew Trask (Williams & Connolly) chaired a star-studded panel - the In-House Counsel Panel, with Melissa Moriarty (VaynerMedia), Lynda Nguyen (Regeneron Pharmaceuticals), Cheryl Wang (David Yurman) and John Colgan (Google).  The key themes from the panel were as follows:

1.  Communicating Risk

What are the effective strategies for communicating risk to the business?  What works and what doesn't?  Lynda commented that the legal department in Regeneron has a lot of exposure to senior business who have the mantra that "science drives the business, not lawyers", but senior management is also on top of the legal issues and latest case law and developments.  Our job is to advise of the risks to business, said Lynda.  Lynda therefore learns as much about the risk and legal ramifications, internally, consults external counsel to supplement the assessment and then communicates the best information on risk to the business.  Melissa said her experience is slightly different in that there is a deference to the legal team at her company which practically means that the business seeks sign off from the legal department and in her business this means in a very short turnaround period.  Cheryl said its also about knowing your audience - short bullet points and no jargon, all directed towards a business solution is important.  John said that in Google, the senior management is relatively hands off letting the litigators litigate. However, if there is a threat to a business  - an injunction or a judgment that impacts the P&L - that is the type of risk where John has to go in and explain the risk to business.  John said that you have be incredibly well versed in the business (i.e. resources and direction) and with the engineering team (i.e. design around or product change), so you are prepared to answer the questions.  You have to fully vet the issues.  All of the panel agreed regarding the need to avoid long, legal memos. 

2.  Using Outside Counsel

What qualities are you looking for?   How do you like to interact?  Lynda says its incredibly important that their outside counsel understands their business and technology - that is first and foremost.  As a litigator, Lynda continued, we are mostly vetting litigation firms.  For our business, Lynda said, it is important that our litigators can convey challenging technical concepts in a clear manner for a lay jury.  We do not want patent attorneys dressing up as litigators; we really value trial experience.  She also needs outside counsel who can converse with senior management and listen to them.  For big cases, Lynda explained, Regeneron's senior management will also vet outside counsel.  Cheryl says that at David Yurman they tend to handle most cases internally, unless there is a language and geographical issue (i.e. in China).  John says that from a hiring perspective, you need your outside counsel to be an extension of your company in court - "they need to represent the Google brand appropriately".  John says that from a retention perspective, you look for how your counsel operates under pressure, for example.  That identifies how your external counsel reflects your brand's identity.  You also need a strong day-to-day manager of the team, said John, as that is the person he is dealing with and he does not have time to manage everything.  John said that you also have to look at diversity - why is this person in your firm not handling this case, when they are equipped to do so?  

3.  Diversity and NextGen

There is a growing move to strive for more diverse teams.  How do you factor diversity into instructions? John said that in litigation you will have a diverse panel of jurors.  So you have to build a team to reflect that.  When a pitch comes in you have to evaluate the team and if there is a proposal to substitute in associates, you also have to flag diversity when associates are being suggested.  John said that at Google they also work with outside counsel to try and push diversity in their team.  Lynda says that everyone wins with diversity.  Not only are there different points of view, Lynda said, but she does not like to have a counsel table represented by only one gender and race before a woman judge, for example.  It is an important issue and diversity informs who is instructed at Regeneron - all things being equal, diversity wins.  

Andrew explained that there are some judges in the US who order that junior lawyers address the court on certain motions (see for example, ChIPs NextGen initiatives).  John says you need to get comfortable and encourage junior lawyers arguing motions.  Lynda agreed and their experience has been really positive in this respect.  John said it was also good practice to ask associates what their views and perspectives are on a case; they are often the ones closer to the material.  It also encourages junior lawyers to work harder.  

4. International legal perspective

How do you address the business when matters arise with an international perspective?  Cheryl said that besides differences in legal issues, you have to also be aware of cultural issues which impact business and legal decisions.  Lynda said that international work is a fair amount of Regeneron's business and so she does a lot of reading to understand the issues.  What is enjoyable about it is that working with outside counsel around the world generates a big legal team.  John said that with multi-jurisdictional cases he asks a lot of "dumb questions", so that he can get the basic principles in his head.  John also agreed with Cheryl - cultural issues are important and you have to calibrate your legal and risk analysis against that.