Intellectual Property — Ensuring Google Free to Operate -An Interview with Mr. John LaBarre, Senior Counsel, Intellectual Property, Google
By Emily Tan, China IP
Updated: 2016-03-01

The creation of Alphabet, Google's new parent company, is a big event for a variety of industries. On August 10, Google announced the restructuring. Alphabet will consist of the core Google business — including Internet search, mapping and YouTube — along with newer businesses that will be managed separately, such as Google Fiber, Nest, the investment arm Google Ventures, X lab, the company's experimental research venture, and health related ventures like Life Science and Calico, focused on biology and longevity. However, Google is still Google, and it will continue to play an important role in the industry. To some extent, Google's every move may lead the development of the industry, especially in the protection of innovation. Google remains in the forefront of IP protection.

In May 2015, Google set up an experiment, coined the Patent Purchase Promotion, to purchase patents from secondary markets. Google set an online patent trading platform where patent holders were able to list and set prices of their patents on the platform from 8 to 22 May, then Google evaluated and told the patent holders the results within one month. Some experts say that Google's purchase was intended to fight against patent trolls and make innovation easier, which may further change the rules of the IP industry. So, what is the origin of the patent purchasing promotion? How did it go? Do they have any other moves on IP? What are the IP strategies that Google will apply in the near future? How will the creation of Alphabet Inc. influence the company's IP? All these questions we are curious about will be answered in the conversation between Mr. John LaBarre and China IP.

Intellectual Property — Ensuring Google Free to Operate -An Interview with Mr. John LaBarre, Senior Counsel, Intellectual Property, Google

Mr. John LaBarre from Google Inc's patent transaction team.[Photo provided to China Daily]

Mr. John LaBarre is quite experienced in patent litigation. He was a patent litigator at a famous law firm in the US before joining Google. He started work at Google on its patent litigation team where he helped defend the company from a large number of patent cases including various cases that went to trial. In November 2014, Mr. John LaBarre joined the patent transaction team, heading up the group's efforts in most of Asia (and especially China) and working on such technologies as search, robotics, and technology coming out of Nest Labs.

Q China IP:

It could be saying that the establishment of Alphabet is shocking news for the industries of the world. People have different speculations on the reasons. How do you think about it? How does it influence the IP work? Are there any changes on the structure of IP Department? What is the overall division of the work in the IP Department?

A John LaBarre:

The creation of Alphabet Inc. is due to various business concerns. Google specializes in Internet-related services and products but is branching out into things that are further apart from its original business, like its Life Science business. The primary reason for setting up the corporate structure is to give each of these other businesses the freedom to do the best for their businesses.

As for IP, I think different companies use IP differently. Google traditionally uses it for freedom to operate. A company like Calico, which is involved in the life science business, may use IP differently from Google's search business. So, beyond the business reasons for Alphabet, splitting these entities apart, letting Google continue to use its IP the way it wants to, and have the other Alphabet companies develop their own IP to use in the way that make sense for their particular business structure is a great secondary benefit. The IP department of Google is going to remain and operate very much the way it did before the Alphabet restructuring.

Q China IP: What is the overall division of the work in the IP Department?

A John LaBarre:

As a sub-department of the Legal Department, the IP Department is rather big and has over a hundred working staff. We have a number of sub-groups on our team. The biggest component of the patent group is our patent strategy team that works closely with each product team and focuses on managing day-to-day issues of our portfolio management, including coordinating the filing of new patent applications. We also have a patent litigation group, since Google continues to be a company that's sued for patent infringement on a regular basis, mostly by patent trolls. The patent litigation team is comprised of in-house attorneys and tech advisers who work to help Google's various patent litigation matters. In addition, there is a small team working on patent policy issues, such as patent reform and generally trying to ensure the overall health of the patent system. And we also have a patent operations team that works to help Google manage all the different tools and databases that the patent group uses and to provide analytical support to our patent teams. Finally, we have patent transaction team that I am working in now, that is responsible for inbound and outbound licensing as well as strategic acquisitions.

All our patent teams work together, with the patent operations team supporting all of us. The patent policy team, led by Suzanne Michel, takes inputs from all the various groups to ensure that we don't take inconsistent positions or attempt to support positions that would adversely impact the overall goals of our team. The patent litigation team works probably the most independently. They need to work closely with the product areas to make sure that the full litigation team is updated on what's going on in the business so that our litigation strategy doesn't run afoul of what is going on with the relevant business. The patent transaction team works very closely with the patent strategy team because both teams are especially focused on achieving patent freedom for Google.

Q China IP:

How does the IP Department, especially the patent division keep a good and close relationship with the research team?

A John LaBarre:

Like I said earlier, the patent strategy team is subdivided to align with various product teams. Within Google, there's an IP team dedicated to each product team such as Android, Search, YouTube, Apps, Maps, and Ads. Since, for example, the IP work for search engineers is quite different from YouTube, we find that this structure, as opposed to a more uniform "one-size fits all" approach, helps us align properly with the various product groups effectively.

Google generally manages the communication process between the patent division and the engineering teams pretty well. The engineering teams understand the importance of patents in the protection of the company and its role in providing us with freedom to operate. They are generally willing to give us a reasonable amount of their time to help and in trying to develop the IP portfolio. Moreover, when they encounter patent issues, they know a particular person who could help them.

Q China IP:

It seems that Google is becoming quite ambitious on patents. Besides applying a great number of patents, Google started to buy patents from others. How is the Patent Purchase Promotion team going?

A John LaBarre:

Google actually had a very small patent portfolio in its early years. It is a common pattern for technology companies. They don't really focus on patents early on and then later patents become more important. For example, Microsoft, I don't think they had their first patent until late 80s. Google had some patents, but we weren't building out a sizable portfolio up until relatively recently when patents became more of an initiative to ensure that we have the necessary freedom to operate. So we were catching up for a while. We were very active in the secondary markets, buying patents from 2010 to early 2012, and we also purchased Motorola during that same time period, in no small part because of its patent portfolio. During that same time, we were also ramping up our own organic portfolio, making sure that we have an appropriately sized patent portfolio. For the foreseeable future, we are still focusing a lot on growing our internal inventions and won't necessarily be as active in the secondary markets.

You rightly point out that we recently concluded the "Patent Purchase Promotion", which was an experiment that we may or may not repeat in the future. But the basic idea was that we noticed that the secondary market wasn't working well for certain smaller players. They couldn't get the attention of the companies to whom they would like to try to sell to or the broker market. So we posited that at least some of them, probably out of frustration at the process, ended up working with patent trolls. We thought it would be useful if we could improve the process, remove unnecessary friction, and let inventors and small companies deal with us directly and efficiently.

We saw an overwhelming response, far more than we thought. We learned a number of things. A lot of companies are very interested in what we were doing and came to us and indicated a willingness to work with us on future initiatives. We are also thinking that patent licensing, as opposed to outright purchasing, might be a way to broaden the appeal of this program as we don't necessarily need to own the patents. We just looking for freedom to operate. So maybe you'll see us do something like what we did for the "PPP" with a licensing focus in the future. To be clear, the PPP wasn't a concerted effort on our part to grow our portfolio. Given that we already had a large, healthy portfolio, it's a marginal increase for us. It was more of an effort to see if we could find ways to prevent patents from ending up in the hands of patent trolls.

Q China IP: Could you please share with us Google's practice on the IP commercialization?

A John LaBarre:

Google generally looks to use its patent portfolio for freedom to operate. Some of our future Alphabet companies may end up with different business models that use IP differently. But things with respect to Google's IP portfolio will generally continue as they did before the Alphabet restructuring. From Google’s perspective, we are often willing to go out and do broad cross licenses with other companies under the right circumstances to try to make sure that we have patent freedom. We've done that with Cisco and others recently, and I am optimistic that we will be able to work with other partners on patent deals in the future, including here in Asia.

Q China IP: What is Google's IP strategy in the coming few years?

A John LaBarre:

In the foreseeable future, Google will be less active participating in the acquisition market and will be much more strategic about purchases, targeting our acquisitions on things that fill holes in our patent portfolio. Another thing you'll see Google do in the future is taking a holistic look inside our portfolio to better determine what’s in our portfolios that is effective or relevant to our businesses going forward and what isn't. Instead of being a large purchaser of patents in the open market, I think in the very near future we'll start selling more patents. I think we will soon reach the point where we will be selling more patents than we are purchasing. We'll focus on continuing to grow our patent portfolio organically, but things we may have thought we were interested five years ago might no longer make sense for us and are reasonable for us to divest.

Q China IP:

The Business of IP Asia Forum, which is held in Hong Kong in every December, has already become one of the leading IP events in Asia. You are invited to be one of the keynote speakers in this year's forum, how do you think the significance of Hong Kong being Asia's IP hub?

A John LaBarre:

IP is becoming super important in the region. To have conferences where business leaders and thought leaders on IP issues can meet together and discuss, I think it's critically important. I think BIP Asia is a great opportunity to do exactly that.

The "One Country, Two Systems" approach is very interesting. It gives us a very unique eastern and western confluence. People in Hong Kong understand the east and the west at the same time, which is unique in that perspective. Hong Kong can play a very good role in helping western lawyers to understand what's going on out there and vice versa. I would expect Hong Kong to set up, and take a leading place in Asia.


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