In-house counsel share patent practice tips

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Cookies Settings

In-house counsel share patent practice tips

mckool.jpg

In-house counsel speakers at Managing IP’s Women in IP network Forum in New York last week shared tops on litigating technology, dealing with NPEs and preparing for European patent reform

Tech wars

A five-woman panel of in-house counsel, private practitioners and ITC judges shared their experiences of litigating technology in the first session of the day.

mckool.jpg

Joan McGillycuddy, chief IP counsel, Avon Products (centreof panel, right), explained that it is vital that litigators do not get lost in the technology. “Litigation is really about talking to people. Talk to people early. Your engineers and scientists are the ones in your business who know what the relevant documents are, even if they don’t know the names of them.”

But she emphasised that documents on their own do little to win a case. “It is the people who explain them. If you don’t appreciate that, then you won’t be litigating, you’ll be managing paper.”

McGillycuddy added that it is important for in-house counsel to train their business’s staff to understand the importance of maintaining documents, and of letting them go.

“Teach the new guys. It’s hard to let go of things but it’s important. Implement routine checks on people’s computers. Tell people: ‘Look, you have to take a Friday to deal with this’.”

Irene Kosturakis, chief IP counsel, BMC Software, outlined her experiences of managing document production at BMC. “Software developers are the biggest pack rats in the world,” she said.

The panellists also underlined the importance of maintaining professional relationships with opposing counsel during disputes.

“To protect you, private practice can sometimes get too aggressive and I have to stop them,” said Avon’s McGillycuddy. “We operate in a small community and we need to continue a relationship with these people.”

Monisha Deka, an investigative attorney at the US International Trade Commission (a venue that moderator Holly Engelmann of McKool Smith described as “litigation on crack”), provided a third party view on the importance on maintaining cordial relations.

“Part of my job is magistrating discovery calls. It never works if people start being unpleasant,” she said.

Bita Goldman, general counsel & VP of operations at Quantum Networks, said that lawyers should try to be kind to one another during litigation. “Don’t be hostile for the sake of it and never try to embarrass another attorney in court. Remember this is just one case in what I hope will be long careers.”

But she added: “Saying that, some attorneys are just unbearable. My theory is over-prepare and then go with the flow. Document everything you talk about but stay pleasant.”

NPE latest

Lawyers in two sessions dealt with the issue of non-practising entities.

fleming.jpg

“When my company comes out with a new product I brace myself. It won’t just be attractive to consumers but also to NPEs,” said Michelle Fleming, general counsel at Digium (pictured on left), during a session moderated by lawyers from Baker & McKenzie. Fleming outlined some of the latest legislative proposals in the US to tackle what many regard as patent trolls’ potentially chilling effect on business arguing that more comprehensive proposals had stalled due to lobbying from the bar.

“Trial lawyers don’t like anything that smells like tort reform,” she said.

Fleming advised law makers to reject most of the piecemeal attempts to reform the law governing the behaviour of NPEs and back the Innovation Act. “It is comprehensive and strong. The risk is that if legislators don’t do that then NPEs will pick one of the other bills to support and say: ‘Look, we support patent reform’.”

In a session on the Unitary Patent and the Unified Patent Court, Catherine Lacavera, director of litigation at Google, suggested that one reason why NPE activity is higher in the United States than in Europe is because plaintiffs in Europe often need to pay a filing fee based on the size of their claim.

“Here, everyone asks for $1 billion,” she said.

But she voiced concern that European policy makers are considering setting lower court fees for SME users of the new UPC system. “We have seen in Texas than when carve-outs are on offer entities restructure as SMEs.”

Katie Blakley, global patent counsel at Bayer HeathCare Diabetes Care, concluded the session, moderated by lawyers from Powell Gilbert, by reminding the predominantly American audience that they need to prepare a strategy for the Unitary Patent and UPC.

“You need to revisit your licence agreements in the light of the opt-out provisions and consider the kind of arrangements you will put into co-development deals in the future.”

“There’s a lot to do,” she said.

More information about the International Women's Leadership Forum can be found on the dedicated page.

more from across site and SHARED ros bottom lb

More from across our site

Lawyers at Bowmans Kenya discuss the digital blind spots posed by the transition from physical ledgers to cloud databases and digital co-development models
The Powell Gilbert co-founder discusses the confidence required to launch a firm, building an enduring patent litigation practice and why developing the next generation has changed her measure of success
Cabinet M Oproiu’s Raluca Vasilescu explains why AI is changing what clients expect from patent attorneys, where the technology is overhyped and what the next generation will need to do differently
As clients demand more flexible fees and AI-driven efficiencies, IP firms are rethinking pricing without abandoning the value of their work
HG Law was formed largely by ex Fish & Neave lawyers who left after the latter's merger with Ropes & Gray; now those experiences are shaping its latest combination
David Rodrigues and Evan Lazerowitz – attorneys at Robinson & Cole – offer practical guidance on the steps a business might consider to preserve and maximise IP value before entering financial distress or insolvency
Daniel Law CEO Alicia Daniel-Shores may have stepped into a family business, but she has spent two decades building her own vision around technology and litigation
Law firms don't particularly like saying no to clients. Perhaps they should get better at it
The office, which has a relatively new patent litigation team as well as a wider ‘soft’ IP offering, would remain independent if the rejection is rubberstamped
The IP boutique is betting that growing investment in quantum and semiconductors will fuel demand as technology shifts toward physical systems
Gift this article