Clear and Convincing Evidence: My Career in Intellectual Property Law

By George Gerstman

Intellectual-property cases involve high monetary stakes. A companys existence may depend on its innovations and the lawsuits. Clear and Convincing Evidence provides insight into every phase of intellectual property law and the battles that occur at the Patent Office and in the courtroom.
Anyone thinking that intellectual-property is unexciting will change their view after reading about George Gerstmans career in this book. Some attorneys would be glad to have one memorable case during their professional life. Gerstman has one memorable case after another which he chronicles in this biography.
The diversity of cases is amazing. The book includes examples such as Gerstman's first case which went from the boxing ring to the courtroom to a case involving the arresting of a technician to get crucial evidence for the case, to being held hostage in Harlem trying to enforce a federal court order, to testifying as a patent expert witness on behalf of some of the largest corporations in the world in patent cases. Find out how the protection of computer software got its start and how videogames became protected by the courts. The book provides an intriguing look into intellectual property law as it has never been seen before.

• Language: English
• Publisher: AuthorHouse
• Release date: Apr 2, 2013
• ISBN: 9781481730303

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© 2013 by George Gerstman. All rights reserved.

No part of this book may be reproduced, stored in a retrieval system, or transmitted by any means without the written permission of the author.

Published by AuthorHouse 03/27/2013

ISBN: 978-1-4817-3029-7 (sc)

ISBN: 978-1-4817-3028-0 (hc)

ISBN: 978-1-4817-3030-3 (e)

Library of Congress Control Number: 2013904590

Because of the dynamic nature of the Internet, any web addresses or links contained in this book may have changed since publication and may no longer be valid. The views expressed in this work are solely those of the author and do not necessarily reflect the views of the publisher, and the publisher hereby disclaims any responsibility for them.

Contents

Acknowledgments

Introduction

Chapter I: The College Years

Chapter II: Patent Office Memories

Chapter III: My First Law Firm Experience—The Dressler Firm

Keeping the Meat Red

World Heavyweight Championship

Federal Court Practice

My Thermometer Business

Some Dressler Firm Experiences

The Folding Tablet Armchair Case

Chapter IV: My Second Law Firm—Lettvin & Gerstman

Miss Nude America

Trade Secret Case

JS&A and Joe Sugarman

Shopping Cart Case

Greed Does Not Pay

Civil Rights

A Prolific Inventor

Temporary Restraining Orders

Patent Interference Action

Baxter Laboratories

Battling Smoking On The Railroad

My First Computer Lawsuit

Computerized Billing

Chapter V: My Third Law Firm—Pigott&Gerstman

Railroad Gate Arm Case

Inequitable Conduct—Don’t Cite Morris

Enjoining the Fabric Copiers

The First Electronic Slot Machine

How To Protect A Printed Circuit Board

Can Computer Programs Be Copyrighted?

A Competitor’s Phony Story

The Ion Generator and Income Taxes

Video Games and Copyrights

Duplicating Atari Cartridges—Atari v. JS&A

The First Video Game Patent

Electronic Organ Copyright Case

Problem With The FCC

The Electronic Gas Pump Patent Trial

Learning About Cardiac Pacemakers

Implantable Defibrillator Cases

Infringement Charges Turn Dangerous

Attempt To Vacate An Affirmed Judgment

Seizing Counterfeit Jordache Jewelry

The Famous Wrench Case—Peter Roberts v. Sears, Roebuck

Chapter VI: My Law Firm Re-energized—Gerstman, Ellis &McMillin

I Never Liked Arbitration

Soft Tip Catheter Case

Balloon Catheter Case

Preventing Sabotage

The Turkey Pan Trial

The Mickey Mouse Case

Knockoff Sunglass Boxes

Entering the Internet

Domain Name Battles

Crate & Barrel’s International Battle

Chapter VII: Expert Witnessing

Welding Screen Case

Mud Flap Case

Electronic Dart Board Case

The Jack-O-Lantern Garbage Bags

Judge Blocks Most Of My Testimony

Testifying About Damages

Assisting General Electric

Really Complex Legal Issues

Inkjet Printer Case

The Sony PlayStation Case

Making Computer Chips

Testifying For Microsoft

Digital Halftoning—RCT v. Microsoft

Favorable Ruling By Texas Jury—CAC v. Microsoft

Unfavorable Ruling By Texas Jury—i4i v. Microsoft

Design Patent Case

Electric Fireplace Case—CFM v. Dimplex

A Classic Case Of Inequitable Conduct

Apotex v. Cephalon

Chapter VIII: Joining A National Law Firm

Acknowledgments

This book is about my professional life, not my personal life. However, I owe much gratitude for my professional life, which I consider to be a successful one, to my late wife Rozanne. I met Rozanne in college, while I was an engineering student. She supported and encouraged me to become a patent attorney, which required much sacrifice on her part while I worked full time at the Patent Office and attended evening law school. She supported me in every way throughout my career and her support and encouragement greatly enhanced my life.

After Rozanne passed away I remarried and I would tell my wife Dorann repeatedly about many of the cases that I handled that I thought were interesting. Dorann encouraged me to write a book as a legacy to my children and grandchildren. She also thought it would be meaningful for me to have something tangible that was a reflection of my professional career. I thank Dorann for her suggestion, her support and her encouragement. I have truly enjoyed the process of writing this book.

Introduction

I have been in the field of intellectual property for over fifty years. Sometimes it is referred to as the practice of intellectual property law. I often wondered why it was called a practice. Maybe it sounds better than calling it a business. In any event, the field of intellectual property has been good to me. It has been a challenging and rewarding experience, with an opportunity to continually learn new technology.

I feel that I really got into the field at the right time. When I started at the US Patent Office in 1960, very few people knew anything about the field of intellectual property. In fact, the term intellectual property was not used at that time. It was known as patent law and it was considered an arcane field. Apparently because of computers and other technological advancements, the field has grown tremendously. I remember that many years ago my broker would send me an article from the Chicago Tribune or the New York Times or the Wall Street Journal whenever there was a reference to patents, trademarks or copyrights. There would be an article only about once a month! As the years progressed, the articles would become much more frequent. By the 1980s, there would be an article almost every week and in the 1990s there would be at least one article a week. Now you cannot pick up a reputable newspaper without finding several articles each day, usually concerning activities in the patent field. Now companies are paying millions (and even billions) of dollars for patent portfolios and judgments in patent infringement cases are often running in the hundreds of millions of dollars.

In the early 1960s the US Patent Office fee for filing a patent application was only $30, no matter how voluminous the patent application was. I was at a patent conference in mid-1965, speaking with a retiring patent attorney. He was very upset because the filing fee was about to be increased to $65. He said My clients will not want to pay that fee—I’m glad I’m retiring from the practice! Now there are Patent Office filing fees, issue fees and patent maintenance fees that when combined total in the many thousands of dollars yet there is no shortage of patent applications being filed.

In 1975 the name of the Patent Office was changed to the Patent and Trademark Office, apparently because the trademark staff felt shortchanged. However, for simplicity I will use the name Patent Office in this book.

When I started out in what was called patent law the law firms that handled patent, trademark and copyright matters were small boutiques. I do not remember any of the larger national firms, except for Kirkland & Ellis, having a patent department. If there was a patent matter or a trademark matter or a copyright matter, the large firms would send the matter to the boutiques. This gave us patent lawyers a great competitive advantage and I seemed to always be busy. Things changed greatly over the years. Now all of the large law firms have a group of intellectual property lawyers. The field of intellectual property has become so important that some of the large law firms have hundreds of intellectual property lawyers. I think that the change came about primarily because partners in the large law firms recognized that many of the judgments in the intellectual property lawsuits were huge and that intellectual property lawyers were making a lot of money.

I remember sitting on a commuter train in 1993 with John Lynch, at that time a top partner at the Latham & Watkins office in Chicago. He showed me an article in American Lawyer about Gerald Hosier, an intellectual property lawyer with whom I was acquainted. It showed a picture of Hosier sitting on his balcony at his home in Aspen, and the article stated that Hosier earned $150 million in one year handling contingent fee patent litigation. John recognized that it was time for Latham & Watkins to start an intellectual property group.

When I started out in the 1960s, advertising by lawyers was banned. This also stifled competition and as a result of the antitrust implications, there was a major change early in my career. In the 1970s, lawyers began advertising and the world learned a little more about the field of intellectual property. Now people in business know a lot more about patents, trademarks and copyrights than they did years ago. But what does an intellectual property lawyer do? When he or she leaves for the office or takes a business trip, what type of work is being handled? What is he or she accomplishing? One of the reasons for my writing of this book is to answer these questions. I have had an exciting and intellectually stimulating career and I want others to understand what an intellectual property career can be all about.

Who would want to read this book? Hopefully my children and grandchildren would be interested! But in addition, I think that people who are already in the intellectual property field would be interested in seeing what I, an intellectual property attorney, have accomplished over my more than fifty years in the field. I would think that law students, engineers, and anyone who is contemplating entering into the intellectual property field would be interested in this book about an intellectual property attorney’s career. I would hope that others, who have any interest in the law or who have read articles concerning patents, trademarks or copyrights, would also be interested in what this book has to offer. I also believe that clients with whom I have worked would be interested in reading this book, especially the area of the book pertaining to the particular client.

To my many clients and former clients who are not mentioned in this book, I want to apologize. Because the book covers a time period of over fifty years, I have been very selective in the matters that are presented in this book. Many very interesting and significant matters are not referred to in the book for certain reasons. First, files on these matters may be unavailable and my memory of the matters is insufficient to discuss the matter properly. Second, the matter may contain so many confidential elements that any discussion of the matter would be inappropriate. Third, there are attorney-client privilege issues that prevent me from discussing many matters which I would otherwise want to present in this book.

To my clients and former clients who are mentioned in this book, I hope that you find my discussion of your matter or matters accurate and maybe even entertaining. Because of the passage of time, although I have tried to be as accurate as possible, I may have overlooked certain details that you feel are important. For that I apologize in advance.

Some of the book is set forth in chronological order. It starts with my college years, then my stint at the US Patent Office and then my career at three law firms. But this is not a diary and I have tried to use an order of subjects in a way that is more interesting to read, rather than staying in chronological order.

One more thing before Chapter 1 begins. Why is the book titled Clear and Convincing Evidence? It is because that term is very significant in patent litigation. As will be brought out many times in this book, clear and convincing evidence is the burden required to prove a patent invalid, or to prove inequitable conduct on the Patent Office or to prove willfulness in the event of patent infringement. Thus while the term beyond a reasonable doubt is famous in criminal trials, the term clear and convincing evidence is famous in patent trials.

Chapter I

The College Years

I never considered being an attorney until my junior year in college. I was in the electrical engineering program at the University of Illinois and Don Margolis, an acquaintance who was in the mechanical engineering program, told me he was going to go to law school after graduation and become a patent attorney. He explained that with his engineering background he would be able to understand technology and obtain patents for inventors and technology companies. It sounded interesting but the idea of going to law school after engineering school did not thrill me. I had planned to become an engineer, although I really knew little about what an engineer does in industry.

But why was I in engineering school? Because throughout grade school and high school I loved to tinker, and take things apart and try to put them together again. My hobby in high school was photography and I tinkered with the lighting and electronic flash units, which at that time were large and complex. When any electrical device in my parent’s apartment didn’t work, I tried to fix it. This included lamps, radios and a TV. Since I was sometimes successful, I decided that I should pursue an electrical engineering degree. I was accepted at the University of Illinois, where I went with some others who had graduated with me in 1956 from Forest Hills High School in Queens, New York.

Electrical engineering at the University of Illinois was not easy for me. The University of Illinois was particularly proud of its electrical engineering school at which one its professors, Dr. Bardeen, was awarded the Nobel Prize in Physics for inventing the transistor (with Drs. Shockley and Brittain while they were all at Bell Laboratories). To graduate in electrical engineering you needed 144 credit hours as compared with about 120 hours in other programs. I wanted to graduate in four years which required averaging 18 credits per semester and the days were filled with classes and labs. The only non-technical required course was English, which everyone took during the first year. Besides that we had to focus on physics, chemistry, engineering and math courses. This was before pocket calculators, and the engineering students were easily recognized on campus because we carried slide rules in cases attached to our belts, like holsters. I remember one student who carried his slide rule in a case across his chest, like a revolutionary in Viva Zapata!

During college I felt that the courses, in general, were too theoretical and it was hard to see how what we were learning applied to the real world. The engineering courses were replete with mathematics, mostly calculus. The math courses were challenging, even for math majors. I remember one course that I took that was called diff-E-Q which stood for differential equations and orthogonal functions. But the courses I found most difficult were the electrical circuitry courses. This was at the time of vacuum tubes and analog circuits, and in order to understand the operation of the circuit you had to follow the electrical current flow, based on how the tubes were biased. Some people were great at this. I wasn’t.

To help me learn circuit design and to earn extra money at the same time, I had part-time jobs at college in the radio telescope laboratory and the radiation laboratory. At both of these jobs I would build vacuum tube circuits based on circuit drawings that were provided to me by various grad students and professors. Those circuits included a basic board to which I attached and soldered sockets, wiring, resistors, capacitors, inductors, transformers and tubes. The trick was to keep the complex wiring orderly and to make sure it was attached and soldered properly to the tube sockets and other electronics. I remember that the value of the resistors, the amount of ohms, was color-coded in the colors of the rainbow. Although I was proficient at building the circuits, I still marveled at the people who were able to design on paper what I was building. They actually knew in advance how the tubes and other electronics would cooperate to produce a desired result!

Maybe my lack of analog circuit design talent made patent law sound interesting. Also, I enjoyed meeting people and speaking, which were attributes that lawyers had more than engineers, so far as I was aware.

Then in the summer of 1959, between my junior year and senior year, I was lucky to have a job as a technician at the Sylvania Semiconductor Laboratory in Elmhurst, Illinois. At that time Sylvania was a subsidiary of General Telephone which was a subsidiary of Automatic Electric. General Telephone was basically a company which designed and manufactured telephones, in competition with Bell Telephone.

I did not realize it at the time but the technology that I learned at Sylvania would become useful to my later career in patent law. It aided me in understanding semiconductor fabrication and is relevant to the present technology.

My group at the Sylvania Semiconductor Laboratory was directed by Dr. Tom Longo, and the group’s assignment was to develop miniature versions of zener diodes. At this time during the vacuum tube era, semiconductor technology was very young. Transistors, which were formed of semiconductor materials, were just beginning to be used in commerce. I had the privilege of learning how to fabricate semiconductor diodes at a time that the art was new. We would take raw silicon in the form of a long cylinder, zone refine it using radiofrequency heating, slice it into thin discs a small fraction of an inch thick, lap it so that the surface was smooth and the disc was about 10/1000th of an inch thick, then dope it by heating and adding arsenic which dissolved into the surface of the silicon down about 3/1000 of an inch. We would then apply a mask and etch that doped silicon to form dozens of mesas or hills on the surface of the silicon slice. This doping created what is called a PN junction, enabling each mesa to be a separate diode. We would solder gold wire electrodes to the top of each mesa and then test the mesa diode to determine its electrical characteristics.

The idea was to obtain a breakdown voltage, by which no current would flow until about 40 volts was reached, but then current would flow freely. The depth of the arsenic doping would determine the breakdown voltage. These diodes were intended to be used for telephone switching functions. This was intended to replace certain mechanical relays and vacuum tube diodes and to miniaturize the telephone switching system.

But while I was learning about semiconductor fabrication I also learned that the life of the engineer was not for me. To me it appeared that most of the time the engineers were sitting around just drinking coffee and were bored. Also, I noted that their status at General Telephone was low. At this telephone company your status was determined by the color of your telephone! The president had a gold plated phone. The vice presidents had silver plated phones. The next level had green phones while the next level had regular black phones and the maintenance staff had old black phones. There were a couple of patent attorneys at General Telephone, who were held in high regard by the engineers. Each patent attorney had a green phone, while the engineers had black phones. I hate to admit it but I think I was influenced by this when I considered being a patent attorney.

I decided that if I was going to pursue law I should take the LSAT and drop the idea if I did poorly. However, I did extremely well on the LSAT and this made my decision easy.

When I returned to the University of Illinois in the fall of 1959, I thought it would be a good idea to take courses that were in the liberal arts school, such as psychology and sociology. I told my electrical engineering dean about this and he was horrified. When I told him I was thinking about patent law, he told me that a good friend of his, George Frost, was a prominent patent attorney and he said that George Frost would never take a psychology or a sociology course. I took them anyway. Many years later I got to know George Frost and we joked about this.

One of the best courses that I took at the University of Illinois was programming computers. This was in 1959 to 1960, before computers as we presently know them. At that time computers were expensive and giant and had vacuum tubes and flashing lights. The University of Illinois was blessed to have two computers, the Iliac and the IBM 650. The Iliac was the oldest, and I understand that it was built at the University of Illinois. In fact, the University of Illinois was famous at that time for having this computer. It weighed five tons and took up a very large space at the computer laboratory. They kept it on 24 hours a day, with the lights flashing and people using it constantly. The input to the computer was a teletype machine with teletype tape. The computer did not really have a regular operating system so we had to instruct it to do everything that was needed. I remember that it took over 200 instructions for it to calculate a square root!

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The Illiac computer at the University of Illinois. Photo courtesy of the Board of Trustees of the University of Illinois

All of the instructions were entered digitally via the teletype tape. For example, the tape had five punched holes extending across it. The first hole was a one, the second hole was a two, the third hole was a four, the fourth hole was an eight and the fifth hole was a sixteen. Thus to enter an instruction with the number three, the first hole and the second hole would be punched by the machine to form the three. In effect, the computer really added up numbers to form its calculations. This was long before transistor storage, and the storage and memory consisted of thousands of ferrite rings which were ring magnets that were threaded together. The magnets were either in a magnetized or non-magnetized state, depending on whether they were storing a one or a zero. I understand that this magnetic storage was fabricated by Japanese workers and it was similar to weaving a rug.

After I learned some basic tasks in programming the Iliac digital computer, I then learned how to program the IBM 650 digital computer. This was the first mass produced computer. It was also an extremely large computer with flashing lights and vacuum tubes, but it fit into one very large room. It used punch cards for its input. For a long time, IBM was noted for its use of these punch cards.

The IBM 650 had an operating program called SOAP, which allowed us to use fewer instructions in order to complete a task. We learned how to program using certain basic instructions, and the results were exciting. One of the things that fascinated me was the fact that there were a very limited number of people in the world who could program digital computers at that time and we had the opportunity to actually use one of these computers, knowing that each of these computers was highly valued.

Without question, my foray into computer programming in the 1950’s enhanced my career in intellectual property law, particularly when the value of protecting software was recognized.

Then I wanted to find out how to pursue a career in patent law. I called my mother’s cousin by marriage, Charles Kaufman, who was a prominent lawyer in Chicago. He told me that he had three friends who were patent attorneys. One was Walther Wyss, one was Bill Stedman, and the other was Max Dressler. I went to Chicago and visited each one of them. Walt Wyss told me that the best thing to do would be to work during the day in the patent department of a big company, such as General Electric, and to go to law school in the evening in Washington, DC. This is what he had done and he was very successful. Bill Stedman told me that it was best to go to law school full time during the day, and after graduation get a job with a law firm. This is what he did and he was very successful. I remember when I first met Max Dressler, he immediately told me that if I did not expect to work hard, I should forget going into patent law. He then told me that the best course of action would be to be a patent examiner at the US Patent Office during the day, and to go to law school in the evening in Washington, DC. That is what he did and he was very successful.

I knew I could not afford going to law school full time so my choice was working for a company or working for the Patent Office. I liked the idea of getting Patent Office experience, so I applied to the Patent Office and was lucky to receive an offer. I was to begin as a patent examiner in Washington, DC on July 21, 1960. I also applied to George Washington Law School, where I knew many of the patent examiners were attending evening classes, and I was accepted. I would begin evening classes in early September 1960.

It is hard to imagine how inexpensive law school was in 1960 as compared to the present time. Law school was only $25 per credit hour. Taking a full load of 10 credit hours per semester, the entire tuition ran only $250!

I graduated with an electrical engineering degree from the University of Illinois in late May 1960, and I had more than a month to kill before working in Washington, DC at the Patent Office. I applied for a job as a mailman, took the test, passed it, and I began delivering mail by mid-June 1960. At that time we were called mailmen because women could sort the mail but they were not allowed to deliver it. I had no trouble delivering the mail except that dogs were everywhere trying to get a piece of me.

Chapter II

Patent Office Memories

I arrived in Washington, DC on July 19 and found a room in a building in DuPont Circle. I recall that the rooms were rented out by the week and that the price included meals in a dining room. The first evening I was there I met Bruce Hamburg, who had also rented a room in the building. Coincidentally, he had started a week earlier as a patent examiner and he was enrolled at George Washington Law School in the evening! We became instant friends and he told me a little about his job at the Patent Office. He had not yet started examining patents because he was in a two-week training program.

During my first day at the Patent Office I was shown around the offices, which were in the Commerce Building. The Commerce Building is a huge building between 14th Street, 15th Street, Pennsylvania Avenue and Constitution Avenue. It was only a couple of blocks from the Treasury Building and a few blocks from the White House. I had a two-week training program, in which I learned basic patent examining techniques and I was expected to read the Manual of Patent Examining Procedure, usually referred to as the MPEP, which was the bible for patent examiners. At the end of the two-week program, I was assigned to Division 26 and the art that I would handle related to inductor devices, such as transformers or anything else having a magnetic core and a winding.

Before I became a patent examiner I had never even seen a patent. I thought that every patent covered a wonderful, exciting invention. However, I found out that almost all patents really covered improvements on previous inventions and some of these improvements seemed inconsequential. After my two week training, I was assigned to an office in which there was a primary examiner whose assignment was to train me. His name was Alec Norris and I could tell that he believed that most inventors did not deserve a patent on their invention. Our office was very small, with no air conditioning. During the summertime in Washington, DC, it was very hot and humid and the fans that we had were of little help.

I was given a stack of patent applications concerning inductor devices, and I was told to examine these in chronological order. Each of the patent applications included a specification describing the invention, drawings having reference numerals which were referred to in the specification, claims which were words defining the invention, and an oath signed by the inventor. My basic job was to read the papers, determine whether they were in proper form, and then determine whether the claims covered patentable subject matter. I would read the specification and view the drawings, in order to understand the invention. Then I would read the claims to determine the scope of the invention. I would then determine where a patent search should be made. The Patent Office used a class and subclass system. For example, inductor devices were primarily in class 336. If the claims included certain features, such as a plastic housing, that might be found in a subclass such as subclass 55. I would then go to the shoes containing the patents and some publications that were classified in class 336, subclass 55. Each of these shoes was a small drawer containing hard copies of perhaps 30 patents. One subclass might be in a large number of shoes. I would run through the drawings of all of the patents in the shoes looking for prior art that disclosed the claimed subject matter or at least some part of the claimed subject matter.

If I believed that the claimed subject matter was fully disclosed in a single patent or publication, I would reject those claims as anticipated by the prior art. On the other hand, if there were certain differences but I felt those differences would have been obvious at the time of the invention to one having ordinary skill in the art, I would reject the claims as unpatentable over the patent or publication or combination of patents and publications, and I would explain why I believed the subject matter claimed was unpatentable. Because of Mr. Norris’s negative attitude concerning inventions, he would show me how to reject all the claims. At the time that I was learning examination procedure from Mr. Norris, I rejected everything that came before me. About a month later, Mr. Norris took a leave of absence and I was assigned to Harold Halpert, who had a much more positive attitude toward inventions. He explained how claims should be allowed when they are not taught by the prior art. I learned that I was now in line with most examiners who were glad to allow claims when appropriate.

I enjoyed working with Mr. Halpert because he was much more easy-going than Mr. Norris, and he was in an office with a window air conditioner. As the days progressed, I became much more efficient in searching and issuing office actions. For the first year, all of my office actions had to be reviewed by a primary examiner such as Mr. Halpert or the head of the division, Oris Rader.

In early September I started attending evening law school. I recall that classes began about 6:30 PM and I was finished for the day at the Patent Office at 5 PM. During 1960 I had an apartment in Foggy Bottom, only two blocks away from the law school. At 5