Making the most of all IP assets

Sometimes winning a lawsuit may not be the best business outcome in an IP matter, said panellists at AIPLA’s 120th Annual Meeting in Washington, DC on Thursday.

Phil Petti, chief IP counsel at construction company USG Corporation, discussed the importance of having the right measure for success when it comes to litigating over IP assets.

While “outside counsel’s view is that a litigation win means a court win”, the truth is that “winning a lawsuit may not be the optimal business outcome”, he said.

For many companies, the business attitude to an IP problem, whether infringement of a product the company owns or receiving a cease and desist letter related to another company’s IP, is “how do we make this problem go away?”

Given the typically high costs and risk of litigation, it may well be that other solutions are preferable, even in a situation where the company would win the case.

Randi Karpina, director of IP law at security communications company Motorola Solutions, said that her role involved helping people in the organisation understand that “litigation does come with a large cost”.

That said, and while the company has not historically been litigious, “when we find out there is intentional infringement or intentional trade secret theft, we will litigate”, she said.

Once that decision has been made, it’s vital to keep control of costs. Motorola Solutions will ask its outside counsel “not only for an assessment of the case, but for a cost assessment” before proceeding with litigation.

The panel also discussed issues around trademark protection, with LaNelle Owens, associate general counsel for IP at Walmart Technology, highlighting the differences between dealing with mature brands and younger ones.

“When you have a major mature brand … you’re constantly adjusting your risk analysis,” she said. “As the business climate changes, so should your strategy.”

With start-up brands the calculations are likely to be different. With “start-ups you have to go ten times faster”, Owens said.

“Sometimes you have to reel them back because their risks are so high,” she added. “If you can slow [them] down just a little bit to help them develop some kind of process for trademarks”, that is likely to help them avoid big mistakes.

Karpina highlighted the difficulties of dealing with acquisitions and divestitures of brand assets in her role. In 2011, Motorola Inc was split into Motorola Mobility and Motorola Solutions, to reflect the fact it was effectively two different businesses.

“The decision was made that the Motorola brand would stay with Motorola Mobility,” and that Motorola Solutions as the parent would use it through exclusive licences.

But then a year later, Google bought Motorola Mobility, and two years after that Google sold Motorola Mobility to Chinese company Lenovo.

Karpina said that in the context, “managing our use as a licensee of that brand is huge”, since the licences are with Lenovo. “We have to be very careful we’re only using the Motorola Inc brand within the terms of our licence,” she said.