You may not know Varex Imaging by name, but if you’ve been to the airport or the doctor’s office recently, you’ve almost certainly encountered its products. Varex develops and manufactures high-tech devices—a lot of them. Each year, the company produces twenty-five thousand x-ray tubes, twenty-three thousand x-ray panels, and six hundred miles of connector cables. Medical clients use Varex components to assess heart function and find breast cancer. Security and industrial clients leverage Varex solutions to detect weapons and illegal drugs and spot defects in computer circuits and jet engine turbines.
Varex is dedicated to providing high-quality products and services to maintain its status as a global leader in x-ray imaging. However, rapidly changing demands associated with advancements in medical and digital technology make the industry volatile and competition fierce. Varex engineers are under pressure to improve existing products and develop new innovations. Each year, the company makes a substantial investment in research and development. If Varex is to succeed in outpacing the competition, new inventions and innovations must be protected.
As Varex’s senior intellectual property counsel, David Wilding manages a large IP portfolio for Varex Imaging as well as its subsidiaries and joint ventures. He works to draft and enforce patents and trademarks, protect trade secrets, perform freedom-to-operate risk assessments, and negotiate related contracts. While IP is critical for any company that produces sophisticated products, Wilding says recent developments in the law have placed an even greater emphasis on his team’s work.
“The technology to reproduce and copy successful products is no longer hard to find. One of the last safety mechanisms that’s left out there is in patent protection and trade secret protection,” he explains. “We simply must protect the research and development dollars of our company along with the creativity of our engineers and inventors.”
“The technology to reproduce and copy successful products is no longer hard to find. One of the last safety mechanisms that’s left out there is in patent protection and trade secret protection.”
For Wilding, IP management is all about supporting the growth and profitability of the business, which he does by offering solid risk assessment, providing fast responses, and operating within an established budget. Credibility is key. “A good in-house IP lawyer has to collaborate with management, inventors, and engineers. Our team wants to enable their work and promote innovation,” he says.
Although he has proven industry experience and a JD focused on IP and patents, there is another part of Wilding’s history that helps him establish a rapport with Varex’s engineers—he’s one of them. Wilding earned an undergraduate degree in electrical and computer engineering from Brigham Young University and worked on computer design and semiconductor processing projects before returning to school to pursue an MBA.
During the business program, he enjoyed a negotiations class taught by a professor from the law school. Wilding then enrolled in the University of Utah’s Quinney College of Law, took a job as a patent agent, and started his legal career preparing and acquiring patents in high-tech fields.
Hybrid training in engineering and patent law is invaluable for Wilding in his current role. “I have to write and review patent applications for very complicated inventions, and I can’t write or review a valuable patent application if I don’t understand the product,” he says. “A background in electrical engineering helps me speak the same language as our inventors and extract important details from their inventions.” The knowledge is also helpful when Wilding “translates” between Varex engineers and a team of drafting attorneys who write patent applications for x-ray tubes, industrial particle accelerators, and other devices.
In 2017, Wilding introduced a program designed to streamline the patent protection process. Previously, the onus of recognizing a new feature or product as novel and worthy of protection fell to each individual engineer. Now, a standard step in the development process prompts employees to consider whether they have created any new technology or material that Varex’s IP department should evaluate, which catches more innovation in Varex’s products.
“We don’t simply want a filed patent. We want a strong patent that we can assert or defend in litigation.”
While the process automation has been helpful at Varex, Wilding says he’s withstood the temptation to turn to AI for help drafting patents, which he considers an immature technology for drafting quality patents. “We don’t simply want a filed patent. We want a strong patent that we can assert or defend in litigation,” he says.
Furthermore, high-quality patent applications reduce prosecution costs. When Wilding joined Varex, the company had three to four office actions for each patent application. Now, actions are down to about two per application. This reduces the number of amendments to the application (which keeps the claims broader), reduces the cost for each response, and also decreases the time Wilding spends reviewing each response. Some Varex patent applications have gone straight through to allowance without a rejection.
Trade secret protection is another crucial aspect of Wilding’s job. Varex’s products come to life through numerous processes, most of which are difficult to discover through reverse engineering and other methods. Many of the products’ “subtle distinctions” and performance improvements were realized through years of experimentation. If the trade secrets behind these efforts fall into the wrong hands, Varex suffers.
Though the Defend Trade Secrets Act of 2016 has given companies greater ability to protect their trade secrets, two big threats remain: employees and hackers. While Varex’s IT department mitigates unauthorized access to company computer systems, Wilding works to make sure employees—both current and former—are keeping information confidential.
Wilding’s team trains employees about how to limit the disclosure of internal information. This is done at many checkpoints, including at orientation, through employment contracts, at periodic trainings, and at exit interviews. When highly specialized employees leave Varex, they are sometimes reemployed by a competing company. Similarly, some of Varex’s new hires come from customers, suppliers, or competitors. Thus, Wilding must work not only to protect Varex’s trade secrets but also to ensure new engineers know not to disclose the confidential information of their former employer.
“A background in electrical engineering helps me speak the same language as our inventors and extract important details from their inventions.”
These nuanced legal issues are challenging for most companies, but Varex’s global footprint adds extra considerations. The company, based in Utah, has more than two thousand employees working in dozens of offices around the globe. Varex split from Varian Medical Systems in January 2017 and now has five different divisions and one joint venture. Medical sources operate primarily out of Salt Lake City. The detectors division is in Salt Lake City; San Jose, CA; Sweden; and Finland. Industrial imaging is based primarily in Las Vegas, connect and control operates primarily in the Netherlands, and software is primarily in Germany. Varex also has manufacturing facilities in China and the Philippines.
Since some of Varex’s growth occurred through acquisition, not all of its divisions have had the same emphasis placed on the importance of IP. Thus, some have a greater focus on IP protection than others. However, all must adapt to Varex’s philosophy regarding patents and trademarks. Wilding says culture shifts are driven by upper management; his role is to make them aware both of what’s happening and what’s possible.
There are also great benefits to be mined from Varex’s worldwide structure. In-house attorneys enjoy the opportunity to work on global matters, and filing patents in numerous countries has strengthened the patent application process as a whole.
Today, Wilding has his group humming along. The legal team at Varex remains focused on improving information flow and dissemination on competitive technologies, as well as improving responsiveness to competitive threats. They’re also pursuing litigation and challenging a “less developed” part of patent law that Wilding says could become precedential.
When pressed for more details about the current case and future plans, Wilding says—with a twinkle in his eye—“I could tell you, but then I wouldn’t be protecting Varex’s trade secrets.”
King and Wood Mallesons:
“As outside counsel, we have worked with David on many patent matters in China. He has an excellent grasp of complex issues and was able to communicate solutions effectively—we always look forward to working with David.”
—Alex Zhang, Partner
FirstLaw P. C.:
“David is the model IP counsel. His deep understanding of US and foreign IP practice allows him to bring about the optimum protection for Varex’s global IP portfolio. Working with David has given us validation that striving for uncompromising excellence should always be the standard, and we are proud to contribute our accumulated experience to David’s global IP strategy.”
–C. Leon Kim, President