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Producing a blockbuster IP litigation hit with small-budget funding: Assembling the cast

Producing a blockbuster IP litigation hit with small-budget funding: Assembling the cast

Strategies for managing costs, without sacrificing quality, at each stage of an IP case, starting with selecting reasonably-priced, high-value players

When managing intellectual property litigation, in-house counsel can feel like the producer of a major motion picture. An IP case, like a Hollywood movie, progresses through several stages, from the introduction of the characters and conflicts to the climax of trial and ultimate resolution. The challenge for in-house counsel is producing a blockbuster hit like Titanic, with a budget on the level of The Blair Witch Project. This series of articles will explore strategies for managing costs, without sacrificing quality, at each stage of an IP case.

Strategies for selecting reasonably-priced, high-value players

One of the first steps for in-house counsel when facing an IP litigation matter is to assemble the cast of supporting players. Your choice of individuals, firms, and vendors that will assist on the matter will greatly impact the amount of financial and other resources necessary for the engagement. If you conclude that any of your key players are underperforming or excessively expensive during the midst of litigation, swapping your cast members and getting replacements up to speed can be very expensive and cause delay. Getting these initial decisions right at the outset presents a unique opportunity to set the scope and value of available services, so they should be made with strategic thought. The following strategies should assist in-house counsel to select a supporting cast that is both high in value and reasonable in price.

Select value-minded and goal-oriented outside counsel

Before selecting outside counsel, you will want to do some preliminary planning and case assessment. Knowing your company’s business goals, desired result, and optimal cost for the engagement will influence the selection process and help manage the scope of legal representation. With these considerations in mind, you should seek out the type of law firm and the individual lawyers within the firm that are best suited to meet your goals and obtain the desired result at the optimal cost.

When evaluating different firms, ask each candidate to provide a plan for the engagement that identifies the lawyers who will work on the matter and includes an estimate of the expected fees and expenses. Look for cost-effective staffing — legal teams should have a mix of seniority and experience, as some tasks will call for more senior resources and others more junior, but you should ensure that the senior lawyers will play an active role and provide real value and efficiency. Look also for creative suggestions — a firm’s plan should reflect your goals, show that the firm shares your interest in achieving those goals, and suggest ways to get the desired result without breaking your budget.

Identify the best fact witnesses

It’s never too early to identify the fact witnesses that will best present your case to, and persuade, the judge or jury. You will want to work with those witnesses as the case progresses to hone your theories, themes, and strategies. Your ideal witnesses are not necessarily the individuals closest to the events in question. Although you may need to gather information from all involved, your testifying witnesses should be the necessary few that can communicate the facts in an effective and credible manner. Keeping the number of witnesses to a minimum reduces the time and expense required to educate the witnesses and prepare them for trial, as well as the risk of inconsistent testimony. Thus, using a witness who is knowledgeable about a variety of relevant facts over a long period of time is preferred to using several witnesses each with specific knowledge about a subset of facts.

Necessary witnesses will likely include one key inventor in a patent case or one key author in a copyright case to tell the story of the invention or work, one businessperson to be the face of the company and discuss the company’s goals for the litigation, and one marketing or salesperson to describe the success of the invention or work and the damage resulting from the infringement. When deciding between equally knowledgeable candidates, consider each witness’s available time and willingness to assist, age, experience, and demeanor, and whether the witness has previously testified or been deposed.

Hire expert witnesses early

Engaging expert witnesses at the beginning of the litigation maximizes their potential value and can help to manage costs as the case progresses. For example, experts can provide valuable assistance during discovery by helping the attorneys to tailor discovery requests for key technical or financial information or by identifying fruitful topics to cover during depositions. Experts can also assist the legal team in narrowly tailored searches for key documents, saving time on document review and highlighting key issues and “smoking gun” documents early in the process. Experts can also provide input about the technical merits of potential claims and defenses, the value of the case and potential settlement, or other matters relevant to the overall legal strategy and scope of the litigation.

To keep costs in check, you or your outside counsel should set parameters on how much each expert should bill for each project or stage of the case. Most experts can give good cost estimates if they understand the expectations and deliverables.

Choose a proven e-discovery vendor

Discovery of electronically stored information (ESI) is an important part of any IP case. Because most law firms lack the internal resources to convert collected data into reviewable files, host document review platforms, and finalize documents for production, they must rely on a vendor to meet their e-discovery obligations. When choosing a vendor, be sure to meet with each candidate. You should tell them the kinds, locations, and quantity of ESI you expect to be at issue in your case, ask for recommendations about data collection and maintenance, ask for a demonstration of their review platform (user-friendly and high-functioning platforms save review time), and ask for referrals. Praise — or cautionary tales — from a colleague that has previously worked with a particular vendor will ensure that only proven vendors are at the top of your list.

When reviewing pricing models or quotes from different vendors, make sure you are comparing apples to apples. There are a variety of available services, including document conversion, de-duplication, tagging, hosting, stamping, and printing, and the pricing for these services may be based on different criteria, such as per page, document, or gigabyte of data. You might also consider testing each vendor’s solution with a set of assorted ESI.

As demonstrated above, a number of considerations are important for in-house counsel when choosing the supporting cast for an IP litigation matter. Investing the time in the early stages to weigh these considerations and make informed decisions improves the likelihood of maintaining costs and receiving value once the litigation is underway.

Contributing Author

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Coby Nixon

Coby Nixon is an attorney with Taylor English Duma LLP and member of the firm’s Intellectual Property Litigation practice group. His practice includes all areas...

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Contributing Author

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Amanda Hyland

Amanda Hyland is an attorney with Taylor English Duma LLP and a member of the firm’s Litigation and Intellectual Property practice groups. She handles complex...

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