Inside Counsel Perspectives PANELISTS: JENNIFER WUAMETT, VP & CHIEF IP COUNSEL, FREESCALE SEMICONDUCTOR, INC. NESTOR HO, VP & GENERAL COUNSEL, SILICON LABORATORIES INC. MODERATOR: CHRIS BENSON, PARTNER, FULBRIGHT & JAWORSKI
Discussion Topics Introductions IP Environments Challenges and Issues Value Driven Relationships Do s and Don ts
Panelists Jennifer Wuamett- Freescale VP & Chief IP Counsel Motorola IP Law Director Global Strategic IP Counseling Team Quarles & Brady Nestor Ho- Silicon Labs VP & General Counsel 3M IP Division Counsel Arnold, White & Durkee
Disclaimer These slides and this presentation are the personal impressions and opinions of the panelists and moderator. The slides and presentation should not be attributed to Freescale, Silicon Labs or Fulbright & Jaworski.
Discussion Topics Introductions IP Environments Challenges and Issues Value Driven Relationships Do s and Don ts
Legal Management Models Outsource Lean Internal Structure Functional Lead Portfolio, Litigation, Licensing Centralized Service Internal Law Firm
Company Perspectives Influence IP Legal Needs Start-Up/ Pre-IPO Often without Inside counsel Small and Medium Size Enterprise Typically Lean Multinational Conglomerate One or Multiple Departments? Centralized Service Provider Law Firm type organization
Overview: Freescale Semiconductor 8 A GLOBAL LEADER OF EMBEDDED PROCESSING SOLUTIONS $4.6 Billion in Revenue in 2011 >50 Year Operating History >17,000 Employees (>5,500 Engineers) >6,000 Patent Families >$800M R&D/yr Microcontrollers Sensors Analog Communications Processors Applications Processors RF Power Automotive Industrial Networking Consumer 12 patent attorneys 15 commercial/litigation attorneys 30 Non-Lawyer Professionals (@50% dedicated to trade compliance)
Silicon Labs A Singular Story Mid- Cap, Public Company NASDAQ: SLAB Headquartered in Austin, TX >$550M Annual Revenue 1,000+ employees in 12 States and 16 countries Recognized leader in mixed-signal >3 billion mixed-signal ICs shipped 1,300 patents issued or pending Diversified Markets 6 Business Units Lean Internal Legal Team 3 Attorneys 2 Paralegals
Discussion Topics Introductions IP Environments Challenges and Issues Value Driven Relationships Do s and Don ts
Inside Counsel Time Management
Common Misperceptions Inside Counsel Have Adequate (even lots of) Time Inside Counsel Can Easily Get Information From Other Divisions in Company Legal Departments Must Win all Litigation at All Costs Budgets are only Rough Estimates Scorched-earth Approach is NOT the Exclusive Standard
Managing Business Relationships Key issues for both in and outside counsel: Truly Understanding the Business of the Corporate Client Educating Business Functions on Relevant Legal Issues Communicating Effectively
Communicate Effectively Keep it Simple Focus on Solutions not Problems Inside Counsel Rarely need a First year Memo Better approach: Executive summary, key issues, key points, risks vs. potential upside, and recommended path forward Stay Connected Circumstances often change rapidly
Discussion Topics Introductions IP Environments Challenges and Issues Value Driven Relationships Do s and Don ts
IP Budget/Spend Challenges Primary Procurement Enforcement/ Defense Secondary Protection/ Maintenance
Patent Procurement Fee Arrangement Models Selection of Counsel Inside/Outside Mix Alternative Service Providers/India IP search/prep Use of Auctions and Bidding Consolidating work with preferred providers Flat fees and Volume Discounts Budget Planning/Management/Tools Scrutinizing International Protection Strategies Maintenance/Renewal Decisions
IP Litigation Fee Arrangements Hourly/Shelf Rate Percentage Discount Fixed Fee or Cap Blended Rates Contingency Hold Back/Bonus
Discussion Topics Introductions IP Environments Challenges and Issues Value Driven Relationships Do s and Don ts
How To Keep Your Client Keep Inside Counsel Informed Engage Inside Counsel in the Process and Strategy Understand Budget Pressures Bill Reasonably Focus on Client Goals - Not just Legal Goals Be Strategic and Solve the Problem Think Ahead - Anticipate potential needs
How to lose your client Not Communicating By-passing Legal and Going directly to Business Leaving Inside Counsel out of Strategy Surprising Inside Counsel- Blowing Budgets unexpectedly Undercutting Inside Counsel at Meetings Focusing on Legal goals, Ignoring Business goals Not Being Prepared
Questions?