Jerome H. Lemelson
Bruce Hayden, Counsel of Record for Motorola

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> Indicates question or statement by a party other than Hayden.

A search of the old database of  http://www.dejanews.com/home_ps.shtml from 3/19/95 to 8/21/97 returned: Matches 1-100 of 143 for search: lemelson & hayden.  The search showed that Hayden first mentions Jerry Lemelson on 1996/02/01 in Message-Id: henriDM3qy1.FDF@netcom.com of all things in the alt.religion.scient newsgroup. 

Subject: Re: Black Day for Lerma **Biased Journalism** V2no2

From: bhayden@copatlaw.com (Bruce Hayden)

Date: 1996/02/01Message-Id: <4eqh90$s6g@news2.realtime.net>

Newsgroups: alt.religion.scientology, alt.clearing.technology, comp.org.eff.talk, misc.legal.computing

Hayden said:

"Of course it seems strong. You always put your best foot forward.A couple of days ago on a patent list, I saw a similar motion infavor of Jerome Lemelson for I believe reconsideration. It was very persuasive, until you read the underlying case, and you realize that these are advocacy documents, which often ignoreinconvenient law and facts to the contrary. (Well, I will admitthat legally the drafter (if licensed) is ethically constrained by the actual facts and law involved - but you sometimes wonder)."

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Subject: Re: Save patent system

From: bhayden@copatlaw.com (Bruce Hayden)

Date: 1996/04/03

Message-Id: <4juvtn$e8i@news3.realtime.net>

And then in a reply to my white paper about pending patent legislation, which did not mention Lemelson even once, Mr. Hayden mentioned Lemelson no less than a dozen times in derogatory ways.

Hayden said:

"How many people here really believe that Lemelson was a victim of the system, and how many here believe he was exploiting it? Again, I thinkthat the Ford v. Lemelson opinion was illustrative of this situation.The judge indicated that the problem was not delays in the patent office,but rather Lemelson's habit of filing continuation after continuation,keeping applications in play in the PTO for decades. In other words, the problem was caused by Lemelson, and not the PTO."

"Which of course leaves zero percent to bring the invention to market.I will admit that it is much cheaper to have a large company do this for you. I think a good example of this was shown in the Lemelson v.Mattel case where the toy maker spent $50 million developing the productand Lemelson waited and waited and waited, finally suing on a priority date one month before Mattel's."

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Subject: Re: Save patent system

From: bhayden@copatlaw.com (Bruce Hayden)

Date: 1996/04/03

Message-Id: <4juvtn$e8i@news3.realtime.net>

Newsgroups: misc.int-property

Hayden said:

"I don't think divisionals should restart the patent term. I come from an environment where divisionals are pretty much prosecuted in parallel.  Mr. Lemelson apparently doesn't, as can be seen from the prosecution history of his 40 year patent - he tended to follow one "invention"through a couple of continuations and issued patents before he was content.He would then sttart on the next "invention". The result is that you couldagain be back to a situation that would allow patents to issue 40 yearsafter their priority date.I am not happy with CIPs, since IMHO, I do not believe that they areexamined as to what is new when that closely. The result all too oftenis a de facto (but obviously not de jure) way of sneaking in new matter."

"Which is why IMHO the "independent inventors" are so desperately tryingto get the 20 year term rescinded.In any case, in Ford, I was of course happy with the result, and did findsome merit with the latches argument.But I would think that 112 P 1, esp. enablement and written description requirements would be much more appropriate. Does any one (except of courseRon) really believe that a person reasonably skilled in the relevant artcould have implemented the bar code reader used by Ford from Lemelson'soriginal patent applications? This is especially problematic, given thatmuch of the work required to make it work was 20-30 years from beingdeveloped at time of the original Lemelson patent application(s).The written description requirement may also be suspect, given the almost 40 years between the priority applications and some of the claims. How could the priority applications have possibly been written to describeinventions not made for 30-40 years?At one time a best mode argument may also have been possible. But myimpression is that recent cases have required only that the mode bethe best mode known at the time of the original application."

">If Lemelson *DID* disclose this stuff in the 50's, why shouldn't he be entitled to a patent under current law? If he didn't, why all the hoopla', and how did the PTO let the patent through? For those of you who HAVE examined these wrappers, is it worth getting into the details? Shall we examine the patents?  I also wonder how they got through. I also have not really read any of the file wrappers.

Hayden Said:

"My suspicion has always been that he wore down the examiners.And you run into inhearant problem with ex parte prosecution. There was really no one who could consistently stand up to arguments that practicallyanything was findable in the original applications given how poorly theywere written.Add to this the problems that the PTO has tended to have in examiningCIPs. Exactly what is new art, and what is old art is not that easy to determine. The result may possibly be examiners giving inventors the benefit of any doubts when faced with this problem."

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Subject: Re: Dr. Hill's views

From: Bruce Hayden <bhayden@copatlaw.com>

Date: 1996/04/25

Message-Id: <317F9DAA.55D4@copatlaw.com>

Newsgroups: misc.int-property

And in reply to a paper by Dr. Hill which I posted Hayden said:

"Of course you are ignoring any advantages that have been gained from the20 year from issue patent term, such as putting a crimp in Mr. Lemelson's activities. Does he happen to contribute to your Patent Enforcement Fund?"

"I will agree that such might tend to decrease the value of paper patents where all the "inventor" did was file an application, and the company claiming prior use rights independently invented shortly thereafter (or even worse,before, but dawdled in filing a patent). One thing that it would for sure dois reduce, if not eliminate, the value of most of Mr. Lemelson's portfolio.But of course, not everyone thinks that is all bad..."

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Subject: Re: Facts about Lehman's list of submarine patents

From: Bruce Hayden bhayden@copatlaw.com

Date: 1996/04/26

Message-Id: 3180E738.1FF@copatlaw.com

Newsgroups: misc.int-property

schlafly@cruzio.com wrote:

> > Do you agree that these submarine patents should be eliminated one way or another? IMO, the PTO should not be issuing patents more than 20 years after filing.

Riley said:

> I do agree that excessive delays should be eliminated and Don Banner has made> a number of suggestions about how that can be accomplished to USTR staff in a meeting we had several months ago. We do not need the 20 year term to solve that problem. The 20 year term is kind of like cutting your arm off to get rid of a sliver in a finger.  Much of the problem has been caused by the PTO using many more restrictions to increase their revenue. A good start would be to stop that practice.

Hayden said:

From my experience, I do believe that this is done. I will also add to thisthe practice of marking second office actions as final regardless of the progress being made. There is nothing more frustrating to me to burn thefirst office action primarily on questions of form, usually in my mind caused by nit picking by the examiner, then get the substantive art rejectionson the second, final office action. The examiner knows that at least larger clients will tend to file continuations here for a chance to overcome art rejections. This tends to be a lot cheaper than filing an appeal.

Riley said:

> I do not believe there is any way of eliminating secrecy caused delays and the majority of the patents Lehman cited were delayed by such orders. It is strange that he was not forthright about that fact, but then his whole tenure has been marked by such misrepresentations.

Hayden said:

Now Ron, you can't vilify Lehman one minute, then suggest that the PTO shouldn't be privitized since the executive branch would have less control.Lehman is the control. If you don't like him, vote Republican this fall.Let me also note that the vilification, regardless of merits, is becoming somewhat tiring. I guess though it is better than when I am vilified...  (Note that Mr. Hayden feels quite justified in bad mouthing Mr. Lemelson) In any case, the interest is not in applications covered by secrecy orders.Indeed, this is a red herring if I have ever seen one. Rather, I suspect FSthat the focus is much more on the patents issued by your friend Lemelson.

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And Hayden again comments on 1996/05/26  in Message-Id: 31A89B5B.25E6@copatlaw.com :

"Of course, if you can pay for the suit yourself, you may be able to justifya suit at 1/4 the infringing sales. So, the Lemelson's in this world only need to find maybe $50,000,000 in infringing sales for a breakeven.The point is that the biggest companies often will have the necessary level of allegedly infringing sales to justify getting sued. Ford for example has significantly more than $50,000,000 in sales a year, so it is no suprise that companies like that are sued on a somewhat routine basis on questionable patents (yes, I am talking about JL again)."

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Subject: Re: Sellout of American Interests

From: jlandess@enteract.com (Josh Landess)

Date: 1996/05/26

Message-Id: 31a8c4df.9587002@news.enteract.com

Newsgroups: alt.computer.consultants, alt.computer.consultants.ads, alt.internet.services, alt.inventors, biz.americast, biz.general, misc.int-property, alt.wired,alt.culture.www, comp.infosystems.www.misc, alt.info-science, alt.info-theory

Landess said:

Thank you for the thoughtful response (read in alt.inventors, BTW). Unfortunately, my server doesn't go back far enough in the thread, or I'd be able to get a sense of what Andy and others were saying.

I am in sympathy with what I understand from Bob's post, and am somewhat troubled by the casual way you discuss coloring around or altering a patent to avoid infringement issues.

Hayden said:

>Andy will have to be the final arbitrer of this, but I don't think that is what he was saying. It is a fact that once a patent issues that it is often possible to design around the patent. Done every day. Probably a function that when filing a patent, you have one (or a limited number) of eyes or imaginations to use, while when you are trying to design around one, you have a lot more.

> At one level, it seems like a game. The inventor (and his atty) try to get claims as broad as possible. He then finds out years later what he didn't take into consideration. But everyone faces the same thing. Well, that doesn't necessarily make it right, but if that's the way it currently works, then that's the way it currently works. And as a note, I don't think that this is any reason to justify or support the Lemelson-like practice of writing claims on existing products. Sure, you don't have the design around problem, but I don't think it the least bit fair to the company upon whose products the claims are being written on. I'm not familiar with Lemelson. If what you're saying is true about his practices, then I'd be against them.

> What was remarkable to me, in the thread I participated in, was the incredible visciousness exhibited by _some_ people when one even  suggests the possibility that the patent rights of the little guy may not be, in reality, adequately protected. In other words, no matter where one stands in a discussion of patent issues, there was a remarkable instantaneous personal visciousness immediately elicited >> from some people in response to the issue.  I don't think that you find that here - in misc.int-property. Rather you have a flame war based on just the opposite - someone willing to flame everyone who takes a position even remotely at odds with that of "independent inventors", then fails to offer any facts to back his position. Obviously, if that's what it's about, and facts aren't offered, just silly flaming, then one can't empathize with that particular poster, though one may have one's own position, to be further investigated and honed. Andy and I are both somewhat sympathetic with your position. But unfortunatley, there seems to be little sympathy, or even allowance that maybe there are two sides to the issue. Maybe some "independent inventors" and the like abuse the system too. I think that we both have seen both sides in our practices.

Landess said:

Well, even as I stress my own ignorance, to some extent, I also say to myself that there's a deliberate reason for it. Every time I've looked even slightly into patenting something, I have been chagrined at the mess of legal principles necessary for me to master in order not to get eaten by the sharks. So, although I'm not the slightest bit interested in engaging in a flame war, nor in siding with someone who can't stay away from lower-level argumentation, I guess I still have my own agenda, which, at present amounts (for better or worse) to the fact that I won't bother to try inventing something (or produce what I might invent) until I'm sure my rights will be protected without months or years of legal Micky-Mouse. I hear what you're saying about the gray areas of the issue, from your personal professional experience, but I have my own opinion and it is that if any inventor (big or small, company or individual) has to go through a lot of nonsense to _maybe_ have his or her rights protected, then something really needs to be changed. Well, I'll go back to lurking for now, and try to see how you resolve your various discussions on this matter. Sincerely, Josh P.S., just out of curiousity, I'm curious as to how Bell or Edison would have proceeded in the society of today, and if they would have succeeded.

Hayden said:

>I think you also have to understand that some of us are patent attorneys. Besides responding to unwarranted swipes against the profession (such as the reason that most patent attys oppose certain legislation is that they either represent big companies, or would like to), it must be remembered that law school is different than most other forms of post-graduate education. From the first day of class, you are taught how to argue the other side of every issue. If you have an engineering (or for many of us a CS) background, you come into law school with a black and white view of the world. You come out seeing a lot of shades of gray. The world is not black and white. Big companies are not all bad, and "independent inventors" are not totally good. Sometimes "independent inventors" abuse the system too, at the expense of the big companies.

>And of course the other thing that you hopefully learn in law school is how to put together a coherant argument (READ HOW TO TWIST THE FACTS). So, when faced with gainsay and ad hominum attacks, without any logical support, except that all of someone's (self selected) friends feel the same way, there is a natural tendency to attack the (lack of) logic. (I think many of Andy's posts fall into this catagory).

>So, there is a tendency to find oneself on the other side of black and white arguments, pointing out the gray. And there is a tendency >to find oneself on the other side of poorly reasoned arguments. >-- >--------------------------------------------------------------------- >

The preceding was not a legal opinion, and is not my employer's. >Original portions Copyright 1996 Bruce E. Hayden, All Rights Reserved >My work may be copied in whole or part, with proper attribution, >as long as the copying is not for commercial gain. >--------------------------------------------------------------------- >Bruce E. Hayden bhayden@acm.org >Austin, Texas bhayden@copatlaw.com


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On 1996/05/28 in Message-Id: 31ABE9F7.6A07@copatlaw.com   Hayden said:

"Lemelson and the large corporations can probably afford interference practice, but I do not see how the current situation helps the smallinventor. Indeed, the "first to invent" is IMHO a cruel hoax played upon the all inventors here, with the small inventor suffering the most."

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On 1996/07/30Message-Id: 31FE305A.2F83@copatlaw.com Hayden said:

"> The state-sponsored lottery that we refer to in everyday speech is a

> money-making device, just like a casino or a horse track. The amount of

> revenue paid out is less than the amount put in. The law of large numbers

> says that if you "play the lottery" enough, you will _always lose_ your

> investment.

My point here was that a certain subset of patent applicants can be seen as falling in this catagory. And I would define that subset to include most (but obviously not all, given the sucess of Jerome Lemelson) of the inventors who think that an issued patent, or even a patent application is going to be their ticket to a better life. I specifically am distinguishing this subset from the group who intend to bring their product to market."

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The following exchange is from

"> I evaluate the positions of such persons or companies based on their

> past actions and based on my experiences. One can present a plausible

> enough case for their position to get it bound over. That doesn't

> mean it really has merit. I have had to deal with too many sleazy

> corporate attorneys, and they have taught me that they can give a

> plausible if wrong account about any situation.

Hayden said:

There are usually at least two sides to each story. For example, youthink that Jerome Lemelson is a great man. I don't. I think he haspersonally scammed the system to a level never before seen.

> Haven't you figured out yet that Independent inventors are the most

> independent and stubborn persons on the face of the earth. You can

> not get such a group to act as a front for anyone or anything. Look

> at how long you corporate types have been picking off independent

> inventors. It was only when large entities threatened our very

> existence that we banded together. Your problem is much worse than

> having a group that is a front for someone else, you are dealing with

> a group of highly motivated angry zealots that intend on exposing

> large entity abuses of inventors. Guess who and what made us that

> way.

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Date: 1996/11/10Message-Id: <32861C7A.6D44@copatlaw.com>

> >you are apparently referring to above, I ran into some interesting

> >cases when doing an obvious key word search for s talk I recently gave

> >on delayed claiming. The first is Lemelson v. Apple Computer, Inc.,

> >28 U.S.P.Q. 2d 1412 (D.Nev 1993) which looks at the type of money

> >that can be made in submarining.

> > I have addressed the submarine patent myth in detail before. It is

> clear that it is a nice rallying point for those companies who would

> steal from inventors but no more than that.

Interestingly, it is a fairly well held myth then. Thurs. when I was introduced at the U. Texas Advanced Patent Institute, I was wonderinghow to get the subject of Mr. Lemelson introduced without seeming topick on him. I was to talk on "delayed claiming and due dilligence". Imagine my surprise, when the introducer announced that I was goingto speak on the "Lemelson" doctrine. (The problem that I faced was that most of the interesting recent case law concerning delayed claimingand submarine patents involves Mr. Lemelson. I suspect that it has something to do with the fact that he has the money to litigate with).Then at lunch yesterday, the #2 at the PTO gave a slick computer generated slide show. In discussing the 20 year GATT term, hefirst showed a cartoon of a submarine swimming around. Then showed the 20 year term as a bomb, sinking the submarine. Didn't have tosay a thing. Every patent attorney in the room caught the message.

> >The second case is Lemelson v. Wang Laboratories, Inc., 32 U.S.P.Q. 2d

> >1216 (D. Mass 1994) where the court refused to strike a RICO counter-

> >claim that "plaintiff and others had associated for the purpose of

> >coercise patent enforcement through a pattern of frivolous lawsuits".

> >This was was plead as a predicate act, and was plead in sufficient

> >detail to survive dismissal at that stage.

> > RICO charges are the latest tool of disreputable corporate interests

> against the independent inventor. Maybe we need to look at a

> legislative solution for this. Is it really surprising that the most

> prolific inventors of our time would have a pattern of enforcing their

> patents?

Hayden Said:

From their point of view, I think you could view their actions (which I doubt are as often as you suggest) as an attempt to add a downsidefor what are considered patent strike suits. Note a couple of things about the suit. The allegation was that the plaintiff and his attorneys were in the business of filing frivilous lawsuits - frivilous because the plaintiff and theattorneys KNEW that the patents were (de facto) invalid, and would most likely be ruled (de jure) invalid if litigated. RICO requires a pattern of racketeering. Technically, this meanstwo or more predicate acts. However, my impression is that quite a few more than two instances were cited to the court.

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Subject: Re: What is a Submarine Patent? Who is Jerry Lemelson?

From: Bruce Hayden <bhayden@copatlaw.com>

Date: 1996/11/19Message-Id: <3291EA1B.2F0A@copatlaw.com>

Newsgroups: misc.int-property

Putnam said:

> >It's true that many people who have never been accused of submarining obtain patents without physical reductions to practice every day. On the other hand, essentially all profit-making patentees in the U.S. _do_ physically reduce some of their inventions to practice, and make and sell them. Lemelson has _never_done this--unlike those to whom he is sometimes compared, like Edison and Land.

Riley said:

Do you have proof of this. I have read in a number of articles that Lemelson has built prototypes. Remember that just because his opponents say it doesn't make it true.

Hayden Said:

Mr. Lemelson may have made a prototype or two. That does not appear to be Jon's point. Rather, he has never manufactured and sold anything that we know of.

Well, if that were true, then there wouldn't be the complaints thatwe see with his behavior. The major complaint I think is that he really doesn't perform his side of the patent bargain. Someone suggested recently that you could hardly learn to make a sophisticatedbar code reading system from Lemelson's 1954 and 1956 patentdisclosures.(I doubt you could make much useful from those disclosures today).But that is precisely what is being asked here - that companies payhundreds of millions of dollars for this teaching. Of course there are cases where Mr. Lemelson has tried to collectwhere he clearly did not contribute to the product that he was trying to collect upon. One classic example here is the Mattel Hot Wheels product, where Mattel filed a patent application disclosing the track within a month or so of Lemelson, and by the time his patent issued (only 3 years later), had alreadyspent tends of millions of dollars building a market.

Riley said:

> It sounds to me like you have bought Hayden's argument that an inventor is not as deserving as an entrepreneur that manufactures product. I would argue that it does both the inventor and society as a whole a disservice. It is in both inventors and societies best interests to let each person do what they do well. It is a horrible waste of resources and stupid to waste the inventors talents running a  manufacturing operation.

Hayden said:

This is of course a platitude. But I think that the problem is the relative value of the contribution. Unfortunately, for Mr. Lemelson,his contributions have probably been minor at best (and nonexistantin many cases), compared to the efforts of the companies developing products.

Riley said:

> I fully reduce some of my patents to practice (I.e. design a marketable product) while other patents do not need that effort either because the market has well established players where I can not complete or the concepts are straight forward and there is no question that they can be implemented.

Hayden said:

So, what are you trying to do in these markets with well established players? Could this be the source of some of your bitterness?

Putnam said:

> >Thus, I as an economist view with skepticism the claim that Lemelson is contributing to "the progress of the useful arts," insofar as this can be measured by things that economists care about, like productivity growth.

Riley said:

> It probably can be measured by examining Lemelsons patent portfolio and looking at the GNP of the industries he fathered. There is a well established royalty rate that usually varies between 1% and 10%. I suggest that you take the appropriate rate on the GNP `of the enabled industries to determine the value of Lemelson's or and other inventors work.We are still waiting for examples of a single industry that he fathered.

Hayden said:

One way to do this may be to look at his "fundamental" patents and see if they are the ones being cited as fundamental by either patent examiners or patent applicants. This sort of stuff is fairly straightforward on Dialog. So, please let us know which of his patents turnout to be considered fundamental by someone besides you.

Putnam said:

> >As for enablement, while it could conceivably be true that Lemelson disclosed great inventions that were then improved upon by others and commercialized, and for which both law and policy say he should be compensated, this appears to be _extremely_ unlikely.

Riley said:

>How so? His work predates the industry.

Hayden said:

Ah, you admit that his work would not enable a person reasonably skilled in the relevant art to practice the inventions he claims?

Putnam said:

> >In any event, it appears that essentially all of Lemelson's "research" had to be duplicated by others before the inventions could actually be sold.

Riley said:

> Do you have hard numbers to support this or are you simply repeating what persons who have a vested interest have said? These people are always telling me they want facts, now it is their turn to produce some.

Hayden said:

Well, still waiting Ron.

Putnam said:

> >Thus, another important component of "progress"--namely, the prevention of duplicative research--is missing from the justification for Lemelson's actions.

Riley said:

> I am disappointed that you have bought the propaganda that is being spewed by those who would profit by painting this picture. Do you have any actual evidence to support your conclusions.  It is especially important to recognize that Lemelson's opposition has been conducting a massive propaganda campaign for near a decade. That is what turned me into a supporter of Lemelson, that and the fact that I have experienced the disreputable conduct of such corporations personally.

Hayden said:

Well, I think the propoganda war is being waged on his side. And your statements about him being one of the top 4 inventorsof all time, etc. are examples of just this.The difference is that these corporate devils have not had to sayanythingfalse to make their point. Rather, they have said that he has made an awful lot of money (from them) by exploiting the system, without having conformed to the spirit of the patent bargain. (As usual, I haveno knowledge that he has done anything illegal - that is not beingalleged).

Putnam said:

> >I consider it much more likely that Lemelson did not reduce these inventions to practice, in any economically meaningful sense, and therefore whether the patent laws say he should have received patents or not, I do not view his efforts as contributing to economic growth.

Riley said:

> It seems to me that your conclusions are based on a great number of false assumptions. I would hope that you would invest more time in looking for tangible evidence and if you fail to find it you should apply one of the basic principals of American justice that we are innocent until proven otherwise.

Hayden said:

What exactly are the false assumptions? Exactly which inventions did he reduce to practice in a meaningful way?

Riley said:

> >> In other words, patents issue after long delay typically because of delay or obstinate or actions by patent office, not inventor fault. For example, divisionals can be filed only if the PTO enters a restriction requirement, dividing an app into pieces.

Hayden said:

This latter of course is true. However, most patent applicants faced with a restriction requirement pursue their divisionals in parallel, instead ofserially, as was done by Mr. Lemelson.In any case, you are suggesting a massive conspiracy going back to the mid 1950's. More likely in my mind was that maybe he actually did submitmultiple inventions in a single application. IMHO, the PTO doessometimesabuse the restriction/divisional practice. But this is really not that common. As noted above, much more likely, Mr. Lemelson as a pro se inventor (at the time) claimed multiple inventions.As for tying things up in the PTO, you are conveniently ignoring acoupleof things. First, one alternative is that the PTO rightfully rejected the applications, and Mr. Lemelson only got his patents through by wearing down the examiners. After all, almost no one else has these problems.At least early on, why should they single him out for special treatment?(More recently of course, they are rightfully sceptical of upwards of40 year old priority date patent applications).And of course, you misrepresent the record. At least in the 40 year patent applications, during at least the last half of that time,he was spinning off issued patents every 2-3 years. He just keptprosecuting with different claims claiming other people's products.

Putnam said:

> >The natural rejoinder to the claim that the patent office was being "obstinate" is that the inventor filed an unprosecutable application.

Riley said: 

> Not necessarily, pro se applicants cause the examiner much more work.  Also, an inventor dealing with the examiner is likely to fight much harder for his or her "baby". Some examiners are very helpful while others deeply resent the extra trouble that comes with dealing directly with the inventor. As a side issue corporate patent attorneys are not as likely to get the best claims possible for a number of reasons such as:

1) Lack of inventor employee cooperation.

2) The attorney is judged more on the number of patents produced than their quality.

Hayden said:

My idea then is to reverse the way that the PTO charges inventors -charging small entity inventors twice what large entities are charged.After all, it would be much harder to fake being a large entity thanit does being a small entity. (Does Lemelson still get away with the reduced prices?) The remainder of Ron's statement of course has no basis in fact. I would argue that your large company attorneys get better coverage.One difference is that they tend to know the technology much betterthan comparable outside attorneys. I have not seen the lack of inventor exmployee cooperation. Rather, it is much more often the employees breaking down the doors trying to get their ideas patented(and get whatever benefits that go with that).

Putnam said:

> >Knowing that the patent office must enter restriction requirements to order to file divisionals, one can claim more than one invention in a single application and force the result. I make no claim that Lemelson (or Louis) did this. I only observe that, as a matter of strategy, it is the natural course to take should one wish to force the PTO to delay, and that there is nothing in the rules to prevent this behavior.

Riley said:

> That is assuming the inventor has the experience to know this, which is not likely for the great majority of pro se applicants. Also, restriction requirements were not as common as they are now which many inventors believe is motivated by the PTO's desire to generate more revenue.

Hayden said:

You seem to be changing your toon here. This sounds like an agreement withmy point that probably Mr. Lemelson's problem was that he had filed prose and probably included claims for more than one invention in the original applications. That was not the fault of the PTO, but rather something that he could have avoided if he had hired competent patent counsel from the start.

Riley said:

> Last, I think a more likely explanation is the inventors limited resources and the desire to put as much in a patent as possible to keep the fees down. That is most certainly true of my patent  activities.

Hayden said:

Well, this is no different from any patentee. The difference of courseis thateveryone else knows that you can't get away with it. You moan and groanwhencaught.

Putnam said:

> >Of course, differences of opinion are what make a horse race. I have no doubt that there are obstinate, incompetent or simply mistaken examiners littered throughout the history of the PTO. My question is: what is the probability that such a high percentage of Lemelson's applications managed to find these individuals on their bad days, when compared with the incidence found by, say, IBM (or Edison or Land)? Are we simply to believe that there is something different about Lemelson's applications that made the PTO unable to attest to their brilliance except in retrospect?

Riley said:

> It is likely, he may have antagonized examiners and they do communicate among themselves about the things that are a pain. And, applications with many claims that are written pro se would definitely qualify as a big pain.

Hayden said:

At least later on, there is also the probability that they were under pressure to reject based on the fairly well accepted thought that no 40 year old application could be enabling for or offer support for claiming products not invented or manufactured for 30+ years after the priority application. What must be remembered is that every patent issued by the PTO basedon one of Lemelson's ancient priority applications invariably puts the PTO under intense scrutiny. How could they allow something to issue that is so obviously lacking enablement and support?So, they are tought with him.

Putnam said:

> >And how are we to interpret the repeated failure to learn from his prosecution errors and file an application on only a single invention? Again, the relative incidence of divided applications is extremely high.

Riley said:

> I repeat, this was probably driven by a desire to minimize fees.

Hayden said:

Once you can attribute to ignorence. Twice, and you have a pattern.  In otherwords, you are asserting that he intentionally filed illegal patent applications (remember, by statute, patents can only cover single inventions) that covered multiple inventions.

Putnam said:

> >> Bob also refers to the practice of writing claims that "read on" a competitor's product, which he says he has done. He offers that as proof that submarines exist, because he has done it. There is a critical distinction between (1) writing claims in a pending app to read on a product and (2) intentionally delaying prosecution of an app so that you might be able to write such claims later. The proposed "practice" of submarining is the latter, and that is what inventors like Ron Riley and former Commissioner Banner say is essentially non-existent. 

It seems to me that the "critical difference" referred to here is largely one of degree, with respect to the timing of the observation made on the competing product. The basic point in writing claims that read on a product marketed by another is that one hopes to take advantage of information not in one's possession at the time of original filing that renders the claims more valuable. While there are good policy reasons for allowing inventors to modify their claims after filing, this is not one of them. This practice is like saying that one gambler should allowed to bet his hand after seeing the other players's cards.  What Louis appears to forget, from a policy perspective, is that _by definition_ the claim could not be supported by the original disclosure--it required subsequent commercialization by others.

Riley said:

> The claim could not be made unless it was supported by the original disclosure. All inventors improve their inventions as they have more time to consider all the implications of the invention. Those improvements may be added to an existing application. If the original specification doesn't support the claims or if it is too late to add the claims then the inventor files a new patent. It is common practice to have a cluster of patents that builds a fence around the basic invention (s).

Hayden said:

Again, platitudes.

Putnam said:

> > I'm not saying that's illegal. I'm saying that we should not reward hindsight. And Lemelson made his money with hindsight, not foresight.

Riley said:

> Once again, I think you are dead wrong. No one produces the number of creations Lemelson has without a great deal of foresight.Creations? Or patents?

Putnam said:

> >> In short, Bob's suggestion that L is a clever (but admittedly legal and not immoral) manipulator of the system is not accurate. L just played the hand that the PTO dealt him. The laws of probability don't support this, since the PTO appears to have dealt Lemelson the same hand time after time. Perhaps you'd like to convince me that someone else with OJ's DNA did the murders.

Riley said:

> Actually, the laws of probability do support it, coupled with the fact that most inventors give up when they run into an obstinate examiner and the fact that there are several other inventors who were not as prolific as Lemelson that also had long delays.

Hayden said:

I suspect that you will find that it wasn't just a single obstinate examiner, but an obstinate examiner corps here, esp. with Lemelson.

Riley said:

> You are right but are only describing half of the situation. The incentive to settle is great for cases in the middle values but low at either end, like a bell curve. A large entity that knows it is infringing but that the dollars involved are enough to merit actually suing them has no real incentive to settle.   At the other extreme large entities have no real incentive to settle  if they will be paying significantly more per year than the cost of tying the case up in litigation. Even when the inventor has a very good case the inventor must often settle for a fraction of the real value or face at least a 50% likelihood of the infringer prevailing in their attempt to invalidate the patent. How deep ones pockets are is more important than the merits of the patent as demonstrated by the fact that infringers often prevail in court even when the patents were valid. An inventor that understands the economics makes sure that the settlement they are asking for is less than the likely cost of the oppositions litigation. Three examples of that situation come to mind; Gould (laser, Gould was attacked by the whole industry, very similar to the case with Theis Research, Inc. (TRI) and numerous telecommunication companies.), Kearns (delay windshield wiper), Damadian (MRI). And of course Lemelson's machine vision and bar code patents.

Hayden said:

Do you have any facts to back these contentions up. In particular, you are really the first person I have ever heard who did not workfor Mr. Lemelson to seriously contend that his machine vision patentswere valid and infringed by anything. Do you have any caselaw wherethese patents were deemed valid and infringed? I would think thatgiven the above paragraph, and his money, that you could point atsome cases. Rather, he seems to be in the habit of settleing, despite often being stronger financially than some of his targets (see Lemelson v. DG that Andy mentioned earlier).

Riley said:

> There is no real case against Lemelson, just a carefully fabricated story. And, it is not an accident that the patent changes will harm small inventors, large entities are simply reacting to the fact that we are prevailing far too often to suit them. Large entities would always prefer to continue to profit from existing capital investment.  I believe the reasons are fairly obvious. Also, fat and happy entities hate a change in the status quo and will always err on the side of caution.

Hayden said:

Keep saying it Ron. Maybe someone will someday believe you. If ofc ourse they don't start wondering why you defend him so much.-- ---------------------------------------------------------------------

The preceding was not a legal opinion, and is not my employer's.Original portions Copyright 1996 Bruce E. Hayden, All Rights ReservedMy work may be copied in whole or part, with proper attribution,as long as the copying is not for commercial gain. ---------------------------------------------------------------------

Bruce

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