Bodman PLC | Enterprise Procurement Practice Group | www.bodmanlaw.com October 2020

USAA SUES PNC FOR IP INFRINGEMENT OVER MOBILE DEPOSIT TECHNOLOGY: IS YOUR ORGANIZATION PROTECTED IN ITS USE OF THIRD PARTY TECHNOLOGY?

By: Alex E. Haney, Senior Associate, Enterprise Procurement Practice Group Your company gets an intimidating letter these types of claims, most importantly, robust from a courier. It has to be signed for. It is indemnification and defense provisions. It stamped with terms like “legal,” “confidential,” is also important to ensure that there are no “urgent,” and “time sensitive.” It is a legal inappropriate conditions or limitations with notice informing your company that it has respect to these indemnification and defense infringed another party’s intellectual property obligations. by using a product you have licensed from a vendor and that you must cease using it Once a legal notice is received, you should immediately. BUT WAIT! You don’t even own immediately contact your legal representative this product, this product was licensed to you to evaluate the claim and ensure compliance by a third party! with any procedures set forth in your agreement in order to benefit from the protections you End users of technology are often vulnerable have negotiated. when disputes arise regarding intellectual property ownership. Even though the end However, contracts are not the only way to user is not claiming any ownership right, a protect yourself – it is always a good practice party claiming that their intellectual property when purchasing a product to do some due has been infringed will often bring the dispute diligence upfront and see if there are any claims directly to the end user. This was evident already out there. For example, customers of when a dispute between USAA and Mitek over Mitek have essentially been put on notice that ownership of certain mobile deposit technology they may be next as USAA continues to enforce resulted in a judgement against for its patents. infringement of USAA’s patent requiring Wells Fargo to pay $302.8 million in restitution. Now, Please contact EPG if you currently license on the wings of that judgement, USAA has mobile deposit technology from Mitek and turned its attention to PNC would like assistance in evaluating your current Group and filed a similar suit. So, how can you contractual protections, or with any questions protect yourself? regarding drafting meaningful provisions in your contracts. We cannot ensure there will not To begin with, it is vital to ensure that you are be a claim in the future, but we can help you be putting contracts in place with your providers prepared! that include adequate protections against CopyrightCopyright 2019 Bodman2020 Bodman PLC. PLC. Bodman Bodman has has prepared prepared this this Workplace for informational Law Lowdown purposes newsletter only. for This informational message or purposes the information only. This contained message is hereinnot intended is not intendedto create, andto create, receipt and of it receiptdoes not of constitute, it does not an evidence, attorney-client an attorney-client relationship. Readersrelationship. should Readers not act uponshould this not information act upon thiswithout information seeking professional without seeking counsel. professional counsel. Individual circumstances or other factors might affect the applicability of conclusions expressed herein. Jonathan P. Burleigh | Chair Courtland W. Anderson Katherine Razdolsky Rothstein 248.743.6012 248.743.6063 248.743.6010 [email protected] [email protected] [email protected]

Jonathan S. Berg Alex E. Haney ENTERPRISE 248.743.6061 248.457.3164 PROCUREMENT [email protected] [email protected] PRACTICE GROUP

Copyright 2019 Bodman 2020 Bodman PLC. PLC. Bodman Bodman has has prepared prepared this thisWorkplace for informational Law Lowdown purposes newsletter only. for This informational message or purposes the information only. This containedmessage is hereinnot intended is not tointended create, and to create, receipt andof it receipt of it does not evidence, an attorney-client relationship. Readers should not act upon this information without seeking professional counsel. Individual circumstances ordoes other not factorsconstitute, might an attorney-client affect the applicability relationship. of Readersconclusions should expressed not act upon herein. this information without seeking professional counsel.