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					                                                                                                up." After seeing how so many intellec-
                          LITIGATORS CORNER:                                                    tual property lawsuits go, I often think
                                                                                                that an inventor ought to be given
 The Long Walk From the Gobi                                                                    Miranda warnings before he or she files
                                                                                                for a patent, and again before the lawsuit

    Desert to the River Styx                                                                    begins.
                                                                                                    One of the Miranda warnings is,
                                                                                                "Anything you say can and will be used
                                                                                                against you." Well, that is certainly good
                                                     I occasionally think of Rawicz's trek
HOW THE POOR INVENTOR                            when I see what some inventors go
                                                                                                advice for an inventor embarking on a
                                                                                                patent application. Abstracts can now be
VIEWS THE SYSTEM                                 through, especially those who end up in
                                                                                                used to interpret the invention according
                                                 litigation. The average inventor faces a lot
                                                                                                to the Federal Circuit, even though 37
                         BY JOSEPH N. HOSTENY,   of obstacles, and isn't even aware of most
                                                                                                CFR 1.72 says that abstracts are not to be
                         OF NIRO, SCAVONE,       of them. One of our clients, a doctor, said
                                                                                                so used. Even after the patent issues, the
                         HALLER & NIRO           he never would have invented or perse-
                                                                                                fights over its meaning are just begin-
                                                 vered in his invention had he known how
                         Regular IP Today                                                       ning. Markman encourages pettifoggery,
                                                 difficult it was going to be to make a go of   with arguments over the meaning of
                         columnist Joseph        it. He saw a problem, conceived his inven-
                         N. Hosteny is an                                                       words that any sane bystander would
                                                 tion, researched and found suitable mate-      regard as absurd. Claims and the specifi-
                         intellectual property   rials, scraped together a few dollars, paid
                         litigation attorney                                                    cation are parsed, interpreted, and rein-
                                                 machinists to make tools, cobbled together     terpreted, with people arguing over the
                         with the Chicago
                                                 prototypes of his invention, tested the pro-   meaning of every word, even including
law firm of Niro, Scavone, Haller & Niro. A
                                                 totypes, hired patent attorneys, filed a       what "a" means. According to the deci-
Registered Professional Engineer and for-
mer Assistant US Attorney, his articles have     patent application, wrote to and called any    sion in Festo just a few days ago, anything
also appeared in Corporate Counsel               number of medical companies, visited           said concerning patentability can pre-
Magazine, The Docket (American Corporate         many of them, negotiated license agree-        clude the doctrine of equivalents from
Counsel Association), American Medical           ments, got sued, was deposed for weeks,        applying. The inventor and his patent
News, Inventors’ Digest, Litigation              hired new attorneys, fought through the        prosecuting attorney have to understand
Magazine and Assembly Engineering                lawsuits, designed improvements of his         that anything said in the prosecution is
Magazine. Listed in Who’s Who, Mr.               inventions, filed more patent applications,    not only going to be used in litigation; it
Hosteny was recently named to the Board of       and on and on and on. More than ten years      may well be warped and twisted, to boot.
Editors of Patent Strategy & Management (a       of crushing work preceded any success.             Another Miranda warning is, "You
monthly publication of American Lawyer           No wonder that this man never would have       have the right to remain silent." A wise
Media), for which he will also be writing        invented or persevered in his invention        idea, and not just for crooks. One very
periodic guest columns. In addition, an          had he known beforehand how difficult it       experienced patent prosecution attorney
article quoting him appeared in the              would be!
November, 1999 issue of Entrepreneur                                                            told me that all he writes these days for
                                                     But unlike Rawicz, the inventor's trek     the abstract in the patent application is a
Magazine. Mr. Hosteny can be reached at          isn't over when he achieves his initial
(312) 236-0733, or by e-mail at                                                                 reiteration of the claims. Saying anything
                                                 success by getting claims allowed and a        else can be hazardous to your inventor's
jhosteny@hosteny.com, or by visiting his
web site at http://www.hosteny.com.
                                                 patent issued. Instead, the inventor faces     health later on in litigation, if a hastily-
                                                 even more obstacles, such as having to         written abstract is used to support an
                                                 persuade skeptical companies to license        interpretation of the claims that isn’t
     here's a book, The Long Walk by             his invention or, even worse, seeing

T
                                                                                                favorable to the inventor. I jokingly sug-
     Ronald Downing, about trying to find        someone infringe his patent. Instead of        gested the other day to a patent prosecu-
     the yeti, the legendary Abominable          ending his journey in an oasis, he finds       tor friend of mine that he skip from the
Snowman of Tibet. But on the way, while          himself on the banks of the River Styx,        title directly to the claims and not write
researching his book, Downing heard sto-         waiting for the boatman to take him into       anything in between. Information disclo-
ries of something far more remarkable: a         the Hades of litigation. Being a success-      sure statements can be used to interpret
man who had walked from eastern Siberia,         ful inventor takes real grit.                  the claims, too.
through Mongolia and the Gobi Desert,                The first thing an inventor has to learn       An inventor who speaks up during
through China, Tibet and the Himalayas,          about being in a lawsuit is that he has a      prosecution and describes the prior art he
to India. The protagonist of The Long            good chance of being treated as badly or       has found may be punished at a later trial
Walk, Slavomir Rawicz, a Polish army offi-       worse than a bank robber or embezzler.         for being forthright.
cer captured by the Russians and accused         Criminals have rights: against self-               The third Miranda warning is that "you
of being a Nazi, was tortured and impris-        incrimination and to representation by a       have the right to an attorney." On this one
oned by the Communists. He trekked               lawyer, to name two. Miranda warnings          at least, the inventor and the felon are on
5,000 miles after escaping from a Russian        are used to insure that a person sus-          an equal footing. Both can have a lawyer.
prisoner of war camp. He survived the            pected of or charged with committing a             The inventor’s problem comes about
ordeal, which took about a year. His story       crime knows what his rights are.               in how to pay for his lawyer. Again, the
is remarkable.                                   Inventors, however, get no such "heads         crook has the edge. The fourth Miranda
warning is, "If you cannot afford an attor-    icism of this kind of behavior on the part
ney, one will be appointed for you." A         of intellectual property defendants, and
bank robber can have an attorney at no         the poisonous atmosphere it generates,
expense, but an inventor is out of luck,       these lawyers keep acting this way, with-
unless he or she works for a corporation       out insuring that they have the evidence
that can afford the expense of attorneys       to prove all the elements of inequitable
working on an hourly billable basis.           conduct, and without adhering to the high
Individual inventors can rarely afford the     burden of proof that is required, to the
costs of litigation, which the AIPLA esti-     detriment of all concerned.
mates can reach $1,000,000, or more.               If the inventor did anything to raise
Contingent fee representation is there-
                                               funds to develop his crude invention into
fore a solo inventor’s only recourse. Our
                                               a refined and marketable product with a
firm’s attorneys have found that this form
of litigation works well, but requires a       chance for commercial success, during
much different approach; the old-fash-         litigation he is told that he put it “on
ioned turning over of every rock doesn't       sale,” and that it is therefore in the pub-
work. A contingent fee lawsuit is to a         lic domain. If he told a potential investor
conventional lawsuit like a Ferrari            about the invention in order to raise cap-
Formula One racer is to a Mercedes-            ital, he has “publicly used” it, and it is
Benz sedan. Both are great cars. But the       therefore in the public domain. No matter
racer, like the contingent fee lawsuit, is     what art he may have cited to the Patent
designed only for getting there: no seats      Office, he never got it right. Every obsta-
for passengers, no luggage space, and          cle, without regard to its merit, is thrown
designed for speed and handling -- to the      in the inventor's path. We even have a
exclusion of all else.                         suit where the defendant has argued both
   So, at the outset of his involvement        that too little art was cited, and that too
with the legal system, the inventor can        much was cited. Everything is litigated,
rest assured that his rights aren't as solid   regardless of merit.
as those we grant to persons charged with          So the inventor in litigation feels like
criminal acts. One could say that the          he has lived through an experience remi-
inventor isn't charged with a crime;           niscent of the title of the movie about
instead, only his property is at stake. But    Audie Murphy, To Hell and Back. So why
this is important property, so important
                                               do inventors persist, and why does our
that it appears in our Constitution. If we
                                               firm like to represent them? Because,
have learned or re-learned anything in
the past decade, it is that technology is      despite the obstacles, we enjoy our con-
crucial to a successful economy.               tingent fee cases. There is another angle
Innovation is at the heart of that technol-    to contingent fee cases, besides the finan-
ogy. If we do not have innovators, we will     cial rewards they offer, and it makes up
lose our edge. And committees don't            for all the hassles along the way. We get
innovate. People do. Thomas Edison,            the chance to represent the individual
Chester Carlson, Robert Goddard and so         inventor, that solitary and often lonely
many others were not corporate employ-         individual with an idea, who had the
ees. They were individuals with ideas          courage to take a risk in order to achieve
who brought their ideas to life. Robert        a goal. You can accuse these inventors of
Goddard described the process of inven-        just being interested in money, but my
tion pretty well when he said: "It is diffi-   take on it is that they are interested in
cult to say what is impossible, for the        achievement, at least as much as the
dream of yesterday is the hope of today        money, if not more. I admire them.
and the reality of tomorrow." Established          We contingent fee attorneys take a
corporations tend not to invest in dreams.     risk, too, albeit a much smaller one than
   But one of the first things too many        most of our clients have taken, and this
inventors see in the litigation process is a   increases the camaraderie, and makes
mean-spirited assault on their character       these cases more fun. We are rewarded
by lawyers, many of whom never held a
                                               only if we succeed, and only if our client
real job between college and law school
                                               succeeds. When you win one of these
and have no appreciation for the inven-
tive struggle. The inventor sees the aver-     cases for an inventor you like, you are on
age defendant allege that he has cheated       the side of the angels. We like the feeling,
the Patent Office and then cheated the         because you have to admire a person who
public. Despite the Federal Circuit’s crit-    succeeds against the odds. IPT

				
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