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O’Shaughnessy faced an uphill battle convincing execs that patents are like cash in the bank. Ames O’Shaughnessy, chief IP counsel of Milwaukee’s Rockwell Auto-mation, Inc., understands that there is both a hard and a soft side to managing intellectual property. The hard side-filing patent applications and suits-can often be the easy part. The soft side is making sure that an entire organization understands how important leveraging a company’s IP can be. Rockwell-formerly known as defense industry giant Rockwell International, Inc.-is a $4 billion, 23,000-employee mix of high technology and manufacturing that has spent the last several years spinning off businesses and reinventing itself. The company’s top brass, knowing Rockwell was entering a vastly different climate as a technology company, brought O’Shaughnessy in six years ago to manage its IP portfolio, as well as to educate its executives in how to exploit the knowledge commercially. To keep IP from getting lost in the corporate whirlwind, O’Shaughnessy brings it up front, putting IP lawyers and business executives together on company committees and teams to think of ways they can reap benefits from their shared knowledge. He also relies on outside consultants to help him understand how other companies might use Rockwell’s jewels. O’Shaughnessy’s relationship with Rockwell started before he joined up. He was a partner at Milwaukee’s Foley & Lardner for ten years and was the company’s outside counsel before coming in-house in 1996. Why did he make that move? “You need to be inside to continue making the corrections that are necessary to have a robust strategy [of exploiting IP],” he says. It’s hard to say how much this touchy-feely stuff about building an IP consensus translates to hard numbers. The company does not break out its licensing revenue, and O’Shaughnessy is reluctant to talk in great detail about individual deals. But if he’s shy about numbers, O’Shaughnessy was not tentative about how he made IP a priority. After going in-house, he quickly set about building a “knowledge infrastructure” within the corporation. One of his first tasks was to set up Rockwell Automation Technologies as a separate unit, specially designed to maximize IP. Then, in 1999, Rockwell spun off a unit that makes semiconductor devices of optical networks into a separate company, on the theory that it could capitalize on that market more effectively as a stand-alone business. Rockwell contributed patents to the spin-off, Broadband Transport Technologies, and took an equity stake. In another instance, a start-up wanted to license a piece of Rockwell technology, but O’Shaughnessy wouldn’t enter into a traditional licensing deal. Instead, Rockwell took a potentially profitable founder’s equity in the company in exchange for the technology. When Rockwell is named as a defendant in patent litigation, O’Shaughnessy doesn’t just follow the court action. He starts scouring Rockwell’s IP portfolio to see whether there might be bits and pieces he could offer as the basis of a cross-licensing settlement. One of the keys to success in leveraging IP, O’Shaughnessy says, is recognizing that the value of intellectual property is subjective. A piece of technology that might not fit Rockwell’s strategy may be of great value to another company. Likewise, Rockwell might not license a core piece of technology to a direct competitor but might be more willing to turn it over to a company that isn’t a rival. When it comes to going to court, O’Shaughnessy often returns to Foley & Lardner, especially Richard Florsheim in the Milwaukee office and Larry Shatzer in the Washington, D.C., office. “I view them as an extension of our team,” he says. “They understand our business.” Both the hard and soft sides.

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