Safeguarding new designs, trade secrets, and copyrighted material has become as complex as it is essential to tech companies. But changes in the industry have also led to dramatic shifts in patent law over the past several years. As Aaron Bernstein, vice president of IP litigation and transactions with Zebra Technologies describes it, “There’s been a swinging of the pendulum.”
Having worked as an IP attorney for tech clients and companies since the early 1990s, Bernstein has had a front-row seat to the evolution of the tech industry and of IP law. He has since become an authority on the intricacies of IP law, as well as its increasing value and necessity to business leaders. “What my team is good at is understanding the role of IP for the business and how it can be leveraged to advance business objectives,” Bernstein explains. “The company needs specialists who understand that because a lot of IP is not necessarily intuitive.”
After studying and working in engineering in the 1980s, Bernstein came to patent law after he first learned about the field through friends who were in law school at the time. He was interested in it both as an endeavor that calls on many skills and as something he was uniquely suited to. Patent law is the only legal field in the United States that requires additional credentials outside of law school and the state bar, specifically a science degree, which Bernstein already had. As a limited field, it was also highly in demand.
“IP law is the framework that provides economic incentive for people and companies to create and bring things into the world that never existed.”
Having worked with technology, Bernstein had a solid understanding of the industries he worked with. Initially his clients were law firms, and then he moved on to become an in-house attorney for companies such as Intel, Symbol Technologies, and Motorola. In 2014, Bernstein joined Zebra, following its major acquisition of Motorola Solutions’ Enterprise business that focused on providing equipment and solutions that help businesses operate more efficiently.
Working alongside a second vice president of IP at Zebra, Terri Smith, Bernstein’s work is multifold: securing rights for technology and putting in processes to preserve them, including safeguarding trade secrets and confidential information within the company; finding and patenting inventions; and licensing each kind of IP, including copyrights associated with software. He also leverages rights by finding where patents are valuable and where they might enable Zebra to secure licensing fees from other companies.
Bernstein emphasizes that building Zebra’s IP portfolio is valuable in part for deterring IP assertions from competitors. “A primary reason that a big company maintains a large patent portfolio is to discourage other big companies from starting a patent war,” Bernstein explains. To protect the company, he defends against outside attempts to exploit IP rights in claims that are filed against Zebra, and he also secures rights in collaborative relationships with other companies where IP from both are used.
“We provide value to the company because we can explain the role of IP in a business enterprise and look after it competently and leverage it to advance business objectives,” Bernstein explains. He adds that since acquiring Motorola Solutions’ Enterprise business, Zebra has generated more than $3.5 billion per year in revenue, of which 9–10 percent is spent on research and development and innovating new products, services, and solutions. Since competitors are likely to use those innovations without paying licensing fees if those innovations aren’t legally protected with IP rights, Bernstein notes that it’s vital to make sure that these cases are secure.
For that reason, serving as an on-site authority on current IP laws and how they are changing is integral to Bernstein’s role. This has been a frequent issue over the past several years, as those laws have dramatically shifted, largely in response to the rise of patent trolls, also known as patent assertion entities, beginning in the late 1990s. These are typically patent lawyers or other motivated businesspersons who track down existing patents that might be easily purchased and then use those to make a case of infringement against companies who are using related technology—often when their connection to that technology is tangential at best.
Previously, Bernstein explains, the law favored patents and awarding high damages, which made companies want to avoid going to court over an assertion. And even when cases were extremely unlikely to win, it could be more economical to write a check rather than face the extremely high cost of a patent lawsuit. Win or lose, legal fees average many millions. All that led to a pervasive, flourishing industry around acquiring and making a case for what are essentially junk patents. While Bernstein was at Intel, the term “trolls” was coined as a kinder term in response to defamation charges against an Intel executive referring to them as “patent extortionists.”
By the late 2000s, big companies began lobbying for proposed legal changes, and in recent years—including a 2014 Supreme Court decision that called into question the viability of all patents that involve software and computers—the law has developed in a direction that curbs the power of patent trolls. But this, too, has led to complications in the IP field. “The artifact of this is that now everyone’s patents are a little less powerful,” Bernstein says. This requires looking harder at whether an innovation can actually be patented. Because those laws have been in flux and could potentially change again in the future, he also has to look at whether something unlikely to receive a patent now might be worth the attempt if laws might later make it eligible.
In the tech industry, Bernstein says, these issues are compounded by the fact that new technologies mature extremely fast. Receiving a patent takes 3–5 years to process, and many innovations will be outmoded by the end of that term and will no longer be worth the cost of having or maintaining a patent.
This hasn’t made pursuing patents any less of a focus, in part for that competitive value of having a large portfolio. But it is a strong example of why IP specialists are such a vital asset to the tech industry, along with Bernstein’s other work, including defending against claims, negotiating contracts that involve IP, licensing the IP, and enforcing against competitors. And at Zebra Technologies, which tripled its revenue as well as its staff with the acquisition of Motorola Solutions’ Enterprise business, it requires rigorous management and training on policies and confidentiality practices across multiple departments. This, along with improving the ways that the legal model is integrated into Zebra’s system, has been a focus of Bernstein’s since joining the company.
Bernstein is passionate about what he does in part because of the role IP plays for innovation. “IP law is the framework that provides economic incentive for people and companies to create and bring things into the world that never existed. In a capitalist economy, we couldn’t invest in innovation if there weren’t laws allowing us to keep it to ourselves for a while,” he says. “This sounds a bit trite, but innovation and creativity are what carry mankind forward. It’s what can make tomorrow better than yesterday.”