FEATURED CONTENT
well as IP-related appeals. This increased sophistication was certainly evident from an inhouse perspective. As companies were exposed to more and more litigation, inhouse counsel became increasingly adept at interacting with outside counsel (working both for and against their company’s interests) mediators, and the courts. In-house counsel became more involved in resolving pre-trial discovery issues, developing trial strategies, and putting together post-trial appeals. Importantly, in-house legal representatives became better able to communicate with business areas outside of legal regarding legal issues and forecasting potential litigation results. Again, unsurprisingly as time went on and their experience grew, in-house counsel became an increasingly important piece of the litigation “team”, effectively partnering with outside counsel. In-house counsel became better able to communicate their insights regarding their company’s business as well as the goals the company sought through litigation. In the end, I believe that outside firms have really enjoyed working with knowledgeable and comm itted in-house attorneys. In my experience this working relationship has resulted in many positive litigation outcomes regarding the company. As with other biotech companies, as Genentech grew, obtained patents, received approval for new medicines, and helped develop markets for those products, it faced an increasing variety of legal issues. Contractual disputes, patent lawsuits, disagreements concerning inventors, as well as arguments surrounding trade secrets all had legal issues that teams of in-house and outside counsel had to take head on. It is not uncommon to see a decided Genentech case cited in nonGenentech legal decisions. Finally, as markets for biotech products have extended globally, in-house counsel has had to come to grips with managing litigation on a global scale. Now, in-house counsel often must coordinate litigations in the US as well as any number of countries outside the US. This, of course, has increased the responsibilities of in-house counsel to become familiar with foreign IP law, foreign courts , and foreign IP firms! As far as biotech goes, I think at least from the innovator side that the companies focused on developing new technologies and medicines resulting from applying those technologies, will continue to do so. Innovator companies will always direct their efforts toward discovering new drugs for diseases that were previously untreatable. In
6
addition, I believe that there will be increased efforts directed toward personalized treatments. So far as the legal issues affecting the biotech industry are concerned, I believe that as IP law continues to evolve, in-house counsel’s knowledge application of the law evolves as well. In this manner, inhouse lawyers will continuously find new ways to protect their company’s IP.
straints communicated early on to limit any future budgetary “surprises.”
What do companies look for in their patent litigation representation? Is it more important to be a strong litigator, or to have a background similar to that of a client in the biotech space?
Over the years, we have relied on outside law firms to represent Genentech’s interests in its various litigations. We have had a great deal of success using first-chair litigators with technical backgrounds, supported by associates with PhDs. We have however, also hired folks having very little or no technical expertise at the first-chair and senior partner levels. Yet we similarly experienced really great success in significant litigations. As time has gone on and the biotech and pharma industries have grown, most large law firms interested in IP litigation have sought lawyers with technical backgrounds. Often these lawyers have PhDs and postdoctoral experience in biotech related sciences. That said, I believe that at the end of the day, armed with a technical background or not, we were more often than not represented by great litigators. In my experience what made them so good was that, in addition to their intelligence and ability to master the legal and technical issues rapidly, they had the ability to take control of the courtroom and had an absolute confidence in what they were trying to prove to the court and particularly to the jury. Regarding law firms, as in-house counsel I always appreciated outside counsel that embraced a team approach to litigation. This included a commitment to clear and continuous communication amongst counsel. I always felt most confident in the progress of the case when there were productive conference calls (weekly or bimonthly) as well as periodic “summit” meetings where in-house scientists as well as my management could attend and be updated in a more formal manner. Finally, I found it important to work with outside counsel to develop a litigation budget clearly based on ground rules and con-
Genentech has been very successful in launching new products into the life sciences marketplace. What were some of the highlights or experiences in your time with the company that played a significant role in your career, and within the industry?
One of the highlights for me was the first case I ever worked on concerning our Activase® product, a medicine that breaks up blood clots. At the time the litigation was very important within Genentech because this product was thought to be a potential market “blockbuster.” The opposing parties included Burroughs Wellcome, the Wellcome Foundation, and Genetics Institute. I got involved in this case shortly after coming to the legal department in 1988 and it was such an eye opener. I was involved in the case from the earliest stages of discovery through the jury decision at trial. Although I have made it a point to continuously learn throughout my tenure at Genentech, this litigation and trial was particularly fruitful. For the first time at Genentech I felt that I had found a career path that could really make a contribution and perhaps a real difference at the company. Although I had the opportunity to work on a number of other exciting cases throughout my career at Genentech, this first one certainly left its mark on me.
Do you have any advice for startup companies in today’s marketplace that are looking for legal representation?
Clearly, fledgling companies rely on legal counsel to address numerous issues surrounding the complexities of getting off the ground. Oftentimes these services are performed by outside law firms. I believe that that there are real advantages to bringing an attorney inhouse early on in the company’s growth. There are real efficiencies in having in-house counsel embedded in the company and able to communicate freely and often with employees, whether they are scientists with questions regarding patent protection for a potential invention, or business development folks interested in legal input regarding particular transactions. Importantly, the development of a corporate “vision” or “identity” can benefit from early legal input again more easily provided in an in-house setting.
LMG LIFE SCIENCES 2013