Daniel Fisher notes that they had little to say about the inveterate patent asserter who claimed in court to have invented the revolutionary device [Forbes]:
But [Ropes & Gray attorney Jesse] Jenner has one suggestion: Require inventors to prove their technology works before giving them a patent. Most countries require inventors to provide a working model, he said, while the U.S. merely requires a description.
“One way to get rid of a lot of half-baked ideas would be to require that somebody make it first,” he said. If Lemelson had been required to do that, his record as an inventor might have been a lot shorter.
It’s not often that patent litigation furnishes the subject of a new Hollywood film; inventor-side attorneys must be hoping the David-and-Goliath theme of the Universal Pictures release Flash of Genius redounds to their benefit. (Brian Baxter, AmLaw Daily, Oct. 3). The original New Yorker article on which the film is based is by no means devoid of balance, and includes a discussion of the late Jerome Lemelson, a longtime Overlawyered favorite (John Seabrook, The New Yorker, Jan. 11, 1993). Unrelatedly, a patent attorney turns up as the lead character of a fiction thriller in Paul Goldstein’s “A Patent Lie” (Stephen Albainy-Jenei, Patent Baristas, Sept. 29).
“Troll was a derivative of, er, me,” says Chicago patent litigator Raymond Niro, a pioneer of contingency-fee IP practice:
Niro’s former partner Gerald Hosier found fame and fortune turning Jerome Lemelson’s patents on bar code technology into a billion-dollar licensing business. But Niro taught the patent world a more enduring lesson: Lemelson isn’t unique. Like an irritating mosquito that GCs can’t squash, Hosier’s licensing approach could be applied over and over again, on different patents across different industries for huge profits. Niro has extracted royalties on everything from patents covering hemodialysis catheters to wireless technology used to locate items of interest in online maps. In the process, he’s made some serious royalties of his own: a Falcon 10 jet, six Ferraris, acres of land in Chicago, Boca Raton and Aspen, and a $250,000 gift to DePaul University endowing the Raymond P. Niro professorship in intellectual property law…. Love him or hate him, Niro’s methods have become ingrained in the patent world.
(Lisa Lerer, IP Law & Business/Law.com, Jul. 20).
All sorts of interesting reporting on the news side of the subscriber-only WSJ:
In one of Douglas Fougnies’s early business ventures, he provided phony new-vehicle titles for stolen cars. His partner, Larry Day, is a onetime blackjack dealer in Las Vegas.
Together, the two men have found a more lucrative line of work: suing cellphone companies for patent infringement. Earlier this year their company — which consists of four employees and six patents — won $128 million in damages from Boston Communications Group Inc. and four other companies over alleged misuse of a 1998 patent.
Suing can be as lucrative as manufacturing as a way to profit from a patent, sometimes a lot more so:
Lured by the potential returns, hedge funds and other institutional investors now are bankrolling businesses that buy up patent portfolios. More law firms, including some branching out from product-liability and malpractice work, are taking patent cases on a contingency basis. That means the law firms are paid a percentage of any damages awarded but little or nothing if the patent-holder loses.
(William M. Bulkeley, “Aggressive Patent Litigants Pose Growing Threat to Big Business”, WSJ, Sept. 14)(sub). For more, see Sept. 1, May 2 and many other entries on our technology/intellectual property page.
In a major development, however, the federal judiciary seems to be ringing down the curtain on the most successful and controversial patent-prosecution shop of all time (Aug. 23, etc.): “After hundreds of companies paid inventor Jerome Lemelson more than $1.5 billion in licensing fees, the U.S. Court of Appeals for the Federal Circuit has concluded that his patents aren’t enforceable after all. The Federal Circuit ruled Friday that Lemelson’s 18- to 39-year delay in prosecuting patent claims relating to machine vision and bar-code technologies was unreasonable.” (Brenda Sandburg, “Lemelson Patents Ruled Unenforceable”, The Recorder, Sept. 13; Dennis Crouch, Sept. 9; IP Litigation Blog, Sept. 11; David Jacobs, MassLawBlog, Sept. 15; TechDirt, Sept. 12; LemelsonInfo.com; AP two-part series reprinted in Miami Herald, Aug. 20 (part I) and Aug. 21 (part II)).
The Scotsman takes a hard look at the legacy of the late patent king (Craig Howie, “New doubts on serial inventor”, Aug. 23)(more).
Big news from federal court in Nevada: U.S. District Judge Philip Pro ruled that the estate of deceased inventor Jerome Lemelson “can’t enforce 14 patents relating to machine vision and bar-code technologies because the prolific inventor and his estate waited too long to pursue the alleged infringers. The so-called ‘submarine patents’ are invalid, Pro ruled, and are not infringed by products made by Symbol Technologies Inc. and Cognex Corp.” (Brenda Sandburg, “Judge Torpedoes Dead Inventor’s Patent Claims”, The Recorder, Jan. 27; Cognex press release, Jan. 26). Jesse Jenner, a Fish & Neave attorney who represents Symbol and Cognex, told The Reporter that defendant companies have paid Lemelson interests an estimated $1.5 billion in the face of threatened or actual litigation. “This is probably the most substantial licensing program of any individual patentee in history,” Jenner said. “It’s now essentially terminated.” For more on the fabulous Lemelson patent litigation machine, see May 10, 2001 and links from there; Feb. 11-12, 2002.
Archived entries before July 2003 can also be found here.
“Next: Mercedes sues Merced, Calif.” (Volvo v. Volo Car Museum), Jun. 24; “‘Illegal art’“, Feb. 13; “We own e-commerce“, Feb. 4-5. 2002: “Using his own name a legal risk” (Bill Wyman), Dec. 13-15; “Macaulay on copyright law“, Oct. 14; “Skittish at Kinko’s” (won’t make copies of customer’s own published writing), Jul. 26-28; “Stolen silence?” (John Cage composition), Jul. 19-21; “Law blogs“, Jul. 3-9; “‘Top ten new copyright crimes’” (satire), Jun. 3-4; “‘A fence too far’” (Hollings bill), May 20-21; “ReplayTV copyright fight“, May 6; “A DMCA run-in” (linking to copyright violation), Apr. 16-17; “Intel Corp. versus yoga foundation“, Apr. 1-2; “Web speech roundup“, Mar. 25-26; “I’ve got a legally protected bunch of coconuts“, Mar. 13-14; “British Telecom claims to own hyperlinks“, Feb. 13-14 (& Oct. 1-2); “Overlawyered film sets“, Feb. 8-10; “‘”Let’s Roll” Trademark Battle Is On’“, Feb. 4-5 (& Feb. 11-12); “‘Aborigines claim kangaroo copyright’“, Feb. 1-3. 2001: “Bioterror unpreparedness” (antibiotic Cipro), Nov. 28; “Byways of IP law” (cat-walker patent), Nov. 7-8; “‘Mother of all copyright battles’” (Sesame Street v. Osama bin Laden?), Oct. 15; “Radio daze” (service mark), Aug. 31-Sept. 2; “‘Trolling for dollars’” (patent enforcement), Aug. 29-30; “‘Jailed under a bad law’” (DMCA, Sklyarov case), Aug. 27-28; “‘Girl from Ipanema is sued over the song she inspired’“, Aug. 15; “‘Melbourne man patents the wheel’“, Jul. 24; “Stories that got away” (DMCA), July 23; “Domain- name disputes are busting out all over“, June 29-July 1; “Barney’s bluster“, Jun. 25 (& “Welcome Slashdot readers“, July 5); “Mich. lawyer’s demand: get my case off your website” (“Love Your Neighbor”), Jun. 20 (& letter to the editor, July 6); “Intellectual- property dispute Hall of Fame” (dueling bra balls), June 6; Maori tribes v. Lego“, June 4; “‘Gone with the Wind’ parody case“, May 25-27; “Fortune on Lemelson patents“, May 10 (& see Feb. 11-12, 2002; Jan. 19-21, 2001 (checkout scanners); Aug. 28-29, 1999); “Value of being able to endure parody without calling in lawyers: priceless” (MasterCard), April 25; “Patenting the Web?“, April 3-4; “Trademark litigation hall of fame” (“Love Your Neighbor” vs. “Love Thy Neighbor”), April 3-4; “Scientologists vs. Slashdot“, March 19-20; “Can you own common words?“, Mar. 7-8; “‘Top jury awards soar in 2000′” (IP leads trend), Feb. 23-25; “By reader acclaim: patented PB&J“, Jan. 30 (& letter to the editor, Feb. 12, discussion in columns, May 1); “Someone might get confused” (Pillsbury claims infringement from tech engineers’ use of “bake-off”), Jan. 22-23; “In the gall department” (Napster sues alleged trademark infringer), Jan. 11. 2000: “Judge shopping, cont’d” (Rambus vs. Hyundai), Nov. 16; “CueCat’s legal claws“, Oct. 20-22; “Web-copyright update: ‘Dialectizer’ back up, ‘MS-Monopoly’ down“, Aug. 16-17; “eBay yanks e-meter auctions” (copyright claim), May 3; “Furor just one click away” (Amazon patent), March 21. 1999: “More assertions of link liability” (DVD hack), Dec. 31; “For this we gave up three months of our lives?” (jury hears abstruse patent dispute), Oct. 20; “Copyright and conscience” (goodbye to “Dysfunctional Family Circus”), Oct. 7.