Google reveal. their secret to a successful IP Litigation strategy. Catherine Lacavera, Director of IP and Litgation, Google

Transcription

1 Google reveal their secret to a successful IP Litigation strategy Catherine Lacavera, Director of IP and Litgation, Google

2 Catherine Lacavera is the Director of IP and Litigation at Google. Named one of Fortune Magazine s 40 Under 40, a U.S. Rising Star by Legal500, and one of the most innovative in-house counsel by the Daily Journal, Google s secret weapon in litigation wars is Catherine Lacavera. Catherine joined the company in 2005 and has built Google s intellectual-property litigation department through its aggressive defence strategy. She manages a team of over 25 intellectual property attorneys and technical advisors. She oversees a global litigation docket that has included more than 500 patent infringement and other intellectual property matters, including Viacom and other copyright litigation against YouTube, and Apple, Microsoft and Oracle copyright and patent litigation directed at Android. Catherine oversaw Google s 2012 victory over Oracle s IP attack on Android (Oracle has appealed); twice her team has triumphed against Viacom in long-running copyright litigation; and she also advised on Google s $12.5 billion Motorola Mobility acquisition in So what is Catherine s top tip for succeeding in the global patent litigation battleground? In this exclusive interview, Maya Fowell interviews Google s Director of IP and Litigation, Catherine Lacavera, to find out the strategic ingredients that make up Google s winning recipe for success.

3 MF Due to the implementation of the America Invents Act, the landscape of US litigation has changed. What does this change mean for Google? CL There have been two significant impacts of the America Invents Act from my perspective, the first one being on the venue. We saw quite a shift from most cases being filed in Texas to many litigations being filed in Delaware, and the number of litigants in a case has also decreased. Plaintiffs previously included 20 or more co-defendants in a single case in order to solidify the venue in Texas, but the American Invents Act does not permit that. Under AIA, you can only join parties if there is true commonality of issues. That has meant that there are fewer co-defendants in cases, which makes it easier to manage the cases but also harder for plaintiffs to obtain venue in jurisdictions where it is inappropriate. That is one major shift, although we are seeing a retrenching on venue. Even though there are not as many co-defendants in a single case, we are seeing consolidation of cases in venues for discovery purposes. As a result, the venue change has not been, over time, as impactful as it was at first. The second major shift would be in the re-exam or patent office proceedings. Inter partes review has replaced inter partes re-exam. Inter partes review is significantly different in that it is much more like a litigation at the patent office with depositions and discovery. Interestingly, there has been a move towards a more bifurcated system, like Germany. Although the U.S. district courts evaluate invalidity, unlike in Germany, the patent office proceedings on invalidity are much more like litigation. MF How is Google adapting and reacting to the change. Can you give me an example? CL We are taking advantage of these procedures. We have to adjust to accommodate them but there has been a shift in the way that we are litigating cases. Initially we were trying out these procedures and figuring out what the differences were and how the law would be applied. We are tracking all the decisions that are coming out of the patent office very closely, including issues around the real party in interest, as well as the grant rate for reviewed patents. Also, we are considering whether or not to file a covered business method versus an inter partes review proceeding, or both. We are testing the limits of what it means to have the financial hook to qualify for CBM. We are monitoring all those decisions and adjusting on a real time basis. The set of technical advisors we have on our team is somewhat unique, or at least it was when we formed that team MF What new litigation strategies does Google have in place as a result of the change in US litigation landscape? CL We are using the patent office proceedings that were not available before. What are the three best tips that you have learned about litigation during your time at Google? 1. Optimise for strategies across cases Our strategies allow us to have consistency among the cases and to also optimise for costs. We have done a number of things like bringing our discovery in-house in order to manage discovery costs, negotiating agreements internally and across cases for consistency, and managing with a set of repository forms that allow us to be efficient. We are able to litigate the cases cost efficiently because of these things. 2. Choose the right counsel Choice of counsel is really important and finding the right team to represent the company the way it wants to litigate the case is imperative. It is critical to tailor the counsel to the case. Training outside counsel on how to work with you and meet your expectations is also very important. 3. Create the best in-house team I am proud of the patent litigation team that we have at Google. I have the good fortune to work with a really excellent set of colleagues and to be given the resources to invest in their expertise. We also invest in our in-house team of technical associates, and that is the one area that is really helpful for patent litigation. We have found it very helpful to have engineers on our team helping us dive into the technical details of the patent litigation. It has also reduced the burden on our product managers and engineers.

4 The result of that has been a lot more stays of district court litigation. That has consequences in terms of the reality of estoppel on invalidity issues. You have to be much more exhaustive in your search for prior art when you file these invalidity proceedings. You also have to time your filings to avoid statutory bars and be sure to name the correct real party in interest. There is also a counsel shift. Previously, we would primarily hire litigation counsel for the litigation, and then patent counsel for the patent office proceedings. Now, the patent office proceedings are much more like general litigation with depositions and other discovery, so there is a much closer tie between the counsel that is handling the litigation and the patent office proceedings. Between us, Apple, Microsoft, Samsung and others in the technology industry, we have a lot of patent litigation and a lot of nonpractising entity patent litigation MF When you are litigating at a scale that Google does, a huge conglomerate that everyone identifies with, how does your day-today differ in comparison to other companies? Does it differ? CL When you have scale, you have the benefit of optimising the way that you are handling cases by identifying areas that are duplicative and optimising those with models. This frees time up for the stickier, newer issues. An advantage of having so many cases is that you are able to gather the best practises of various different firms across various different cases, and use the best wisdom on strategy questions and on submissions. That has been hugely advantageous to us. It is also a lot more fun for my team to get to see some of everything going on at any given time. If they are interested in seeing a summary judgment hearing, or a Markman hearing, or a deposition, or an expert deposition, they can participate in anything at any given time. The learning curve is steep but is also rapid because at Google you are exposed to many different pieces of the litigation simultaneously. MF When I think of innovation, I think of Google and I think of Apple. In your opinion, what sets IP litigation or just litigation in general, at Google apart from its competitors? CL Between us, Apple, Microsoft, Samsung and others in the technology industry, we have a lot of patent litigation and a lot of nonpractising entity patent litigation. Many of us are coordinating on reform efforts and are coordinating on how we are dealing with non-practising entities. Some of us are being hit with the same cases; we are in joint defence groups, so we certainly work very closely on cases where we are codefendants and we try to coordinate strategies as best we can. In terms of differences, the set of technical advisors we have on our team is somewhat unique, or at least it was when we formed that team. That has been a real asset to us in litigating these cases for the reasons I mentioned. It has been a major area of innovation. I am not aware of other in-house organisations having the scale or the need of also doing that level of optimisation internally. We are tracking all the decisions that are coming out of the patent office very closely, including issues around the real party in interest, as well as the grant rate for reviewed patents MF Does Google explore any alternatives to litigation (e.g. mediation)? CL In the US, there is a lot of mandatory mediation as part of litigation. We have a licensing group that handles licensing and if people approach us outside the context of litigation that is certainly preferred. We have the full gamut of legal staff making sure that we operate in a lawful way and handling engagements on a case-by-case basis.

5 Catherine Lacavera will be speaking at Global Patent Congress For more information about this year s event or to download our latest agenda, click here. Ever wondered what Google employees google? Catherine answers 3 questions in 30 seconds in Legal IQs quick-fire question round What is the most random thing you have ever Googled? I google constantly so it is hard to choose just one. I am always googling someone in history or some famous person or some monument. What do you hope people will leave your session at Global Patent Congress and Google? I hope to discuss the landscape and where patent litigation is headed. There has been a lot of talk about the reduction in patent litigation and whether or not that is a good thing; whether the United States has the balance right and where the future may lie, whether litigation is shifting to Europe and what will happen under the Unitary Patent System. I would like to share my thoughts on the landscape and getting the balance right in terms of what is a functioning patent litigation system, and how we can move closer to that, both in the United States and under the Unitary Patent Program in Europe. That is my main objective and that is what Google is looking for, too. We are both a rights holder and a frequent defendant, and we are looking for a balanced system that allows innovating rather than litigating. If there was one thing you could change about the way litigation is handled today, what would it be? It varies by venue but I have to say discovery, because most of my cases are in the United States, although I have a third of my docket in Germany. Comparing the United States and Germany, there is a lot of wasteful discovery costs in the United States. Discovery is more than a third of the costs of U.S. litigation and it does not get us any closer to the merits. Discovery costs could be avoided, and are in fact avoided in Germany. It is one of the major areas that I would like to see United States reform.