[Congressional Record Volume 143, Number 45 (Wednesday, April 16, 1997)]
[House]
[Pages H1585-H1587]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




       H.R. 400, THE 21ST CENTURY PATENT IMPROVEMENT ACT OF 1997

  The SPEAKER pro tempore. Under a previous order of the House, the 
gentleman from Virginia [Mr. Goodlatte] is recognized for 5 minutes.
  Mr. GOODLATTE. Mr. Speaker, in light of the deluge of misinformation 
that has been circulating recently on H.R. 400, the 21st Century Patent 
Improvement Act, I would like to speak briefly on how this legislation 
benefits small inventors as well as the entire Nation.
  H.R. 400 benefits small inventors in four key areas. First, it allows 
small inventors to acquire venture capital more quickly and easily than 
they can under either the current system or H.R. 811, the submarine 
substitute offered by Mr. Rohrabacher. Presently, small inventors often 
have trouble attracting venture capital to transform their ideas into 
marketable products. By allowing publication after 18 months from 
filing, however, H.R. 400 brings venture capitalists together with 
small inventors to market ideas that will benefit all of society.
  Second, H.R. 400 gives inventors greater protection against would-be 
thieves who want to steal their ideas than they currently receive. In 
the present system, inventors have no protection against people who 
steal their ideas and commercialize them before their patents are 
granted. For example, third parties can currently commercialize 
unpublished patents by manufacturing a product and offering it for 
sale. The inventor is then powerless to stop the sales or to share in 
the profits until the patent is actually granted.
  Under the Rohrabacher submarine substitute, small inventors would be 
left to fend for themselves in these situations. H.R. 400, however, 
allows small inventors to receive fair compensation from any third 
party who steals their ideas between the time a patent is published and 
the time a patent is granted. This patent pending protection will give 
small inventors the protection they need to stop commercial thieves 
from stealing their ideas.
  Third, H.R. 400 gives small inventors longer patent terms than they 
receive under current law. In the old system, which the Rohrabacher 
submarine substitute seeks to resurrect, inventors received patent 
protection for only 17 years from the date the patent was granted. H.R. 
400, on the other hand, gives good-faith patent applicants a minimum of 
17 years of protection--and in most cases, more than that. Also, H.R. 
400 provides extended protection for up to 10 years, and diligent 
applicants who do not receive timely ruling from the patent office will 
receive additional protection. Only H.R. 400 give small inventors the 
protection they need to survive in the marketplace.
  Finally, H.R. 400 gives small inventors a special option to avoid 
publication. While most diligent inventors will want to take advantage 
of the venture capital and additional protection that comes with 
publication, some may have second thoughts about publishing their 
protected ideas--especially in cases where the Patent Office indicates 
that it might not issue a patent.
  In these cases, H.R. 400 gives small inventors the option of 
withdrawing their applications prior to publication. They may then 
continue to refine their applications or seek protection under State 
trade secrecy law. This option is only available to small inventors--
large corporations will be required to publish their patents after 18 
months.
  As an example of how H.R. 400 benefits small inventors, I would like 
to insert in the Record a letter I recently received from a small 
Virginia inventor supporting H.R. 400. Although a vocal minority has 
been engaged in a campaign of deliberate misinformation against H.R. 
400 in recent weeks, I believe that this letter represents the silent 
majority of small inventors who fully support H.R. 400.
  I would also like to insert into the Record a recent Wall Street 
Journal article exposing the scam of submarine patents. While some may 
argue that submarine patents do not occur very often, this article 
clearly shows that submarine patents cost American consumers and 
taxpayers hundreds of millions of dollars. A single submarine patent 
can wipe out an entire small business--and with some submarine patents, 
an entire corporation. The Rohrabacher submarine substitute, which the 
House will consider tomorrow, would continue to encourage this 
devastating practice.
  Mr. Speaker, in closing, I would like to urge each of my colleagues 
to oppose the Rohrabacher submarine substitute and to support the 
unanimous product of the Judiciary Committee, H.R. 400. A vote for the 
Rohrabacher submarine substitute is a vote against small inventors. 
Only H.R. 400 will give them the protection they need to compete in the 
marketplace.

                                     Unique Specialty Products

                                    Arlington, VA, April 11, 1997.
     Hon. Bob Goodlatte,
     123 Cannon HOB,
     Washington, DC.
       Dear Congressman Goodlatte: The 21st Century Patent System 
     Improvement Act, H.R. 400, has been favorably reported from 
     the House Judiciary Committee and is scheduled to be 
     considered on the House floor next week. This letter is to 
     urge your support for the committee bill and to resist 
     crippling amendments.
       The bill is the work product of a bipartisan effort over 
     several years to modernize the Patent and Trademark Office 
     and to streamline the U.S. patent system. Extensive hearings 
     have been held on the measure and concerted efforts have been 
     made to accommodate those with keen interests in the 
     legislation.
       The bill, if enacted, would be extremely beneficial for my 
     company. USP is a small business engaged in the development 
     of medical imaging software. Currently, we are engaged in an 
     effort jointly with an European pharmaceutical company to 
     enhance the reliability of X-ray mammography. A patent 
     application is pending now and several others may be filed in 
     the next several months. We will then license the European 
     company to utilize our imaging technology in clinical trials.
       Several provisions of H.R. 400 will significantly help us 
     in this regard. First, the bill authorizes and encourages the 
     electronic filing and processing of patent applications. This 
     is especially important in software development, where time 
     is of the essence. The hardware and software imaging 
     technology is evolving so rapidly, that quick response from 
     the Patent Office is absolutely essential to survival of a 
     company such as USP. Further, and more important, these 
     advances in technology much reach the marketplace as soon as 
     possible. Many lives are at stake.
       Second, the bill's provisions on early publication are 
     quite significant. The U.S. is the only major advanced 
     society that does not have early publication as a key part of 
     its patent law. As a result, our inventors and technology 
     companies are at the mercy of

[[Page H1586]]

     ``submariners'' who file generic, all-purpose inventions, 
     deliberately delay consideration of the application by the 
     PTO through delaying and dilatory tactics for years. 
     Meanwhile, the state of the art of the technology advances. 
     Then, belatedly a patent is approved which is overly broad 
     and then forces others--after the fact--to pay royalties.
       This uncertainty can be devastating to a company such as 
     mine. In licensing our software, we must warrant that there 
     will be no future claims on it. We could be at the mercy of 
     someone who had an application pending while ours was offered 
     in the marketplace. Early publication of the claims of a 
     pending patent go along way in preventing manipulators from 
     playing havoc with legitimate technology developers. Only the 
     U.S. allows this to happen. Our European clients are simply 
     incredulous that we still follow the old practice.
       Further, the ``corporatizations'' of the PTO is important 
     for us ``users'' of its services. The PTO should be insulated 
     from bureaucratic meddling and political influence. It is a 
     totally ``user fee'' self-supporting organization. Our filing 
     fees should be utilized for improvement and modernization of 
     the PTO, not siphoned off to support the Legal Services Corp 
     or some other politically correct governmental activity that 
     is facing budget cuts. The workload at the PTO is already 
     overwhelming. Automation is expensive, both in terms of 
     acquisition costs and training.
       In summary, I urge you to support H.R. 400.
       With best regards.
           Sincerely yours,
                                                 Richard W. Velde,
     Manager.
                                                                    ____


              [From the Wall Street Journal, Apr. 9, 1997]

    How Patent Lawsuits make a Quiet Engineer Rich and Controversial

                       (By Bernard Wysocki, Jr.)

       Scottsdale, Ariz.--Few people paid much attention to Jerome 
     H. Lemelson until he figured out a way to make $500 million.
       For decades, Mr. Lemelson has been a soft-spoken, somewhat-
     nerdy engineer who doesn't manufacture products and rarely 
     even makes prototypes but who turns out a steady stream of 
     blueprints and drawings and has filed huge applications at 
     the U.S. Patent and Trademark Office. He files and amends and 
     divides his applications. Eventually, sometimes 20 years 
     later, he usually gets a patent.
       Over the years, the 73-year-old Mr. Lemelson has 
     accumulated nearly 500 U.S. patents, more than anybody alive 
     today. They cut through a wide swath of industry, from 
     automated warehousing to camcorder parts to robotic-vision 
     systems.
       But he hasn't just hung the patents on a wall, like vanity 
     plates. Seeking royalties, he has turned the strongest ones 
     into patent-infringement claims--and a fortune. In 1992 
     alone, he collected a total of $100 million from 12 Japanese 
     automotive companies, which decided to settle with him rather 
     than fight him in court over a portfolio of some of his 
     innovations: ``machine vision'' and image-processing patents. 
     The claims cover various factory uses ranging from welding 
     robots to vehicle-inspection equipment.
       ``This is what made him rich,'' says Frederick Michaud, an 
     Alexandria, Va., attorney who represented the Japan 
     Automobile manufacturers Association. ``But he's still 
     current, let me tell you.''
       These days, Mr. Lemelson is casting a longer shadow than 
     ever. True, he makes huge donations, including funding the 
     annual $500,000 Lemelson-MIT Prize for innovation that will 
     be presented tomorrow night at a gala in Washington.


                            much controversy

       But behind the pomp lies controversy. Critics say Mr. 
     Lemelson not only exploits the patent system but manipulates 
     it.
       He is currently embroiled in a brutal legal battle with 
     Ford Motor Co. Unlike more than 20 other automotive 
     companies, Ford has refused to get a license from him on the 
     machine-vision and image-processing patents. In a filing in 
     federal court in Reno, Nev., it charged that Mr. Lemelson, in 
     an abuse of the system, ``manipulated'' the U.S. Patent 
     Office. Ford contended in its suit that Mr. Lemelson 
     ``unreasonably and inexcusably delayed'' the processing of 
     his applications to make the patents more valuable and more 
     up-to-date. A Ford lawyer, in testimony before a 
     congressional committee, once compared his patents to 
     ``submarines,'' sometimes surfacing decades after they were 
     filed, with claims covering new technology.
       In 1995, U.S. Magistrate Judge Phyllis Atkins in Nevada 
     sided with Ford, stating that ``Lemelson's use of continuing 
     applications has been abusive and he should be barred from 
     enforcing his asserted patent rights.'' In her report, she 
     also stated that Mr. Lemelson ``designs his claims on top of 
     existing inventions for the purpose of creating 
     infringements.'' Mr. Lemelson has appealed, blaming the 
     Patent Office for his delays in filing claims. A federal 
     district judge is expected to rule soon.


                            edison recalled

       To Mr. Lemelson and his friends, the litigation is the 
     price paid by genius. ``When Edison was alive, he was 
     involved in a lot of litigation,'' says Mr. Lemelson's lead 
     attorney, Gerald Hosier. ``He was also a guy that all of the 
     big companies said every nasty thing they could think of 
     about him. It's only when he died that [Edison] became 
     revered as a great inventor.''
       Mr. Lemelson's extensive patent filings have the hallmarks 
     of a technical whiz. He holds three engineering degrees from 
     New York University, and his drawings show a draftsman's 
     touch. He is a man with a voracious appetite for technical 
     journals, trade magazines and conference proceedings. A 1993 
     letter to a potential licensee cited articles in 17 
     electronics journals.
       An inveterate note-taker, Mr. Lemelson says he still churns 
     out ideas nearly every day. His recent notes, grist for 
     future patent filings, fill a folder on file at his lawyer's 
     office here.
       Another battle on the horizon will pit Mr. Lemelson against 
     Ford and more than a dozen secret allies. In dispute are some 
     of his pending patent applications that cover ``flexible 
     manufacturing'' techniques. Ford is trying to prevent them 
     from being issued; if the patents are issued, Mr. Lemelson 
     plans to enforce them. Discussing the litigation--Mr. 
     Lemelson estimates the two sides have spent well over $10 
     million, with no end in sight--he says, ``It's almost, in my 
     opinion, madness.''
       Meanwhile, Mr. Lemelson is inspiring a horde of imitators. 
     Firms are springing up whose main business is obtaining 
     patents and, like him, enforcing them by first offering a 
     license and then, if refused, suing. Working with them are 
     individual inventors who have decided that patented ideas, 
     legally enforced, can be more lucrative than manufacturing 
     and marketing.
       ``I'm not interested in building a company and getting into 
     manufacturing. I focus on new inventions, on new things,'' 
     say Charles Freeny Jr., a 65-year-old inventor in Irving, 
     Texas, with a patent covering transmission of digital 
     information over a network. Today, enforcement of Mr. 
     Freeny's rights is in the hands of E-data Corp., a tiny 
     Secaucus, N.J., company with three employees. Its main 
     business is to try to extract royalty payments from alleged 
     infringers.
       A new breed of intellectual-property lawyer has emerged, 
     too. Many seem to be inspired by Mr. Hosier, who pioneered 
     the use of contingency fees in patent cases and whose work 
     for Mr. Lemelson alone has brought him more than $150 million 
     in fees. The lawyer's success--he lives in a 15,000-square-
     foot house near Aspen, Colo.--has made the field ``a very hot 
     area. It's going crazy,'' says Joseph Potenza, a patent 
     attorney in Washington. Between 1991 and 1996, the American 
     Bar Association says, the number of intellectual-property 
     lawyers soared to 14,000 from 9,400.
       One Houston company, Litigation Risk Management Inc., is 
     even helping finance inventors' intellectual-property efforts 
     by bringing in Lloyd's of London to finance 80% of the cost 
     of the litigation. Joby Hughes, Litigation Risk's president, 
     says that if the licensing or litigation effort succeeds, the 
     London insurance exchange will get a 25% profit on the money 
     it puts up. Mr. Hughes's company gets a fee for arranging the 
     deal.


                            A Booming Field

       Companies long active in intellectual-property enforcement 
     say business is strong. One is Refac Technology Development 
     Corp. The New York company buys the rights to patents and 
     licenses them to manufacturers, which pay royalties to both 
     Refac and the inventors. Last year, Refac's net income more 
     than doubled to $4.7 million on revenue of $9.2 million.
       The purpose of the U.S. patent system comes into question, 
     however. A patent doesn't require the inventor to go into 
     manufacturing; technically, a patent is a right to exclude 
     somebody else from using your ideas in commercial products, 
     for 20 years from the date of filing. (Before June 1995, 
     patents were valid for 17 years from date of issue. These and 
     other patent revisions remain a hot topic in Congress.)
       U.S. Commissioner of Patents and Trademarks Bruce Lehman 
     says he is outraged by ``these people who file patent 
     applications and never, ever, ever go to market with an 
     invention, based on their application. I thought what the 
     patent system was all about was coming here and getting a 
     patent and going to some banker or venture capitalist or 
     something and get money, and then you go out and start a 
     company and put products out on the marketplace. And you go 
     sue the people that infringe on you.''
       But to the new intellectual-property players, it is the 
     patent itself that has the economic value. And that has long 
     been Mr. Lemelson's notion.
       A native New Yorker, Mr. Lemelson worked for big companies 
     and tried his hand at toy manufacturing. By his own 
     testimony, that venture didn't succeed. Over time, he turned 
     to crafting patents and then to seeking licenses. He often 
     got involved in legal battles. His biggest one in toyland was 
     a 15-year fight with Mattel Inc. over the flexible track in 
     its Hot Wheels toys. In 1989, he won a $71 million patent-
     infringement judgment, but it was overturned on appeal.


                           big deal with ibm

       In electronics, Mr. Lemelson's big break came in 1980, when 
     International Business Machines Corp. agreed to take a 
     license on a portfolio of his computer patents. ``After the 
     IBM deal, I became a multimillionaire,'' he says. ``It didn't 
     put me on easy street because I had so many balls in the air 
     at one time. But it certainly helped a lot.''
       An even bigger break came in the mid-1980s, when Mr. 
     Lemelson met Mr. Hosier. In 1989, the already successful 
     patent lawyer put together the ``machine vision'' licensing 
     campaign. Mr. Hosier focused his negotiations on 12 Japanese 
     automotive companies,

[[Page H1587]]

     and the talks dragged on through mid-1992. That July, Mr. 
     Lemelson sued four of the companies, Toyota Motor Corp., 
     Nissan Motor Co., Mazda Motor Corp. and Honda Motor Co. 
     Within a month, the Japanese agreed to settle; the 12 
     companies paid him the $100 million.
       At a post-settlement celebration of sorts, in the Brown 
     Palace Hotel in Denver, the Japanese insisted on taking 
     photographs, which show eight grim-looking Japanese 
     surrounding a beaming Mr. Lemelson. He contends that it was a 
     heroic victory, a patriotic act. ``My federal government has 
     made [in taxes] probably over a quarter of a billion dollars 
     on my patents over the years,'' he says. ``A good part of it 
     has been foreign money.''
       Similar infringement suits followed, against Mitsubishi 
     Electric Corp., against Motorola Inc., against the Big Three 
     Detroit auto makers. Initially, both Mitsubishi and Motorola 
     decided to fight; later, they settled. The suits against 
     General Motors Corp. and Chrysler Corp. were ``dismissed 
     without prejudice.'' In effect, any further action against GM 
     or Chrysler is in abeyance until the Ford outcome is known.


                            why they settled

       By all accounts, the strategy was well-planned and well-
     executed. Mr. Hosier says the Japanese were more inclined to 
     settle than the Americans. Commissioner Lehman says the 
     Japanese are ``particularly freaked by litigation. And so you 
     start out with them. . . . And, of course, they all pay up, 
     and that establishes a precedent.'' After the Japanese 
     settlement, several European auto makers also agreed to take 
     licenses on Mr. Lemelson's patents.
       Some who settled say they concluded that Mr. Lemelson had a 
     good case. Others call it an uphill battle to try to persuade 
     a judge or jury that the government had repeatedly made 
     mistakes in issuing him all those patents. With a legal 
     presumption that patents are valid, his opponents say they 
     had the burden of proving the Patent Office had goofed 11 
     times in a row.
       In any event, by 1994, Mr. Lemelson had amassed about $500 
     million in royalties from his patents. But Ford has held out.
       Even as the lawyers haggled over the law, many of the facts 
     in the case were undisputed. In 1954 and 1956, both sides 
     agree, Mr. Lemelson made massive patent filings, which 
     included, for example, many drawings and descriptions of an 
     electronic scanning device. As an object moved down a 
     conveyor belt, a camera would snap a picture of it. Then that 
     image could be compared with a previously stored one. If they 
     matched, a computer controlling the assembly line would let 
     the object pass. If the two images didn't match up, it might 
     be tossed on a reject pile.
       But because Mr. Lemelson's filings were so extensive and 
     complex, the Patent Office divided up his claims into 
     multiple inventions and initially dealt with only some of 
     them. Thus, for whatever reason, his applications kept 
     dividing and subdividing, amended from time to time with new 
     claims and with new patents.
       It was as if the 1954 and 1956 filings were the roots of a 
     vast tree. One branch ``surfaced'' in 1963, another in 1969, 
     and more in the late 1970s, the mid-1980s and the early 
     1990s. All direct descendants of the mid-1950s filings, they 
     have up-to-date claims covering more recent technology, such 
     as that for bar-coding scanning.
       The lineage was presented to the court in a color-coded 
     chart produced by Ford. It shows how the mid-1950s 
     applications spawned further applications all through the 
     1970s and 1980s. One result: a group of four bar-code patents 
     issued in 1990 and 1992, with a total of 182 patent claims, 
     all new and forming the basis of 14 infringement claims 
     against Ford. But because of their 1950s roots, these patents 
     claim the ancient heritage of Mr. Lemelson's old applications 
     and establish precedence over any inventor with a later date.
       The entire battle has become numbingly complex, a battle 
     over whether the long stretch between the mid-1950s and the 
     new claims in the 1990s constituted undue delay. Ford says 
     yes. Mr. Lemelson says no. The magistrate judge found for 
     Ford.
       Another question is whether Mr. Lemelson's original 
     filings--his scanner and camera and picture of images on a 
     conveyer belt--should be considered the concepts of bar-code 
     scanning, and thus Ford's use of bar coding in its factories 
     make it an infringer of his patents. Mr. Lemelson says yes. 
     Ford says no, arguing Mr. Lemelson depicted a fixed scanner 
     (bar-code scanners can be hand-held).
       ``As we said in our lawsuit, if you walk into the Grand 
     Union and show up for work with a `Lemelson' bar-code 
     scanner, it won't work,'' quips Jesse Jenner, a lawyer for 
     Ford.
       It's impossible to say which side will ultimately prevail. 
     Or whether there will be a settlement. But the clear winners 
     so far are the lawyers. Mr. Lemelson alone employs a small 
     army of them. And Mr. Hosier pretty much thanks himself for 
     that, noting an old joke: ``One lawyer in town, you're broke. 
     Two lawyers in town, you're rich.''

                          ____________________