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Here are good and bad things about being a solo inventor like John Coleman. He walks to workthe garage in his house in Locust Valley, on New York’s Long Island. He gets to invent cool stuff. But if he doesn’t go through the complicated and time-consuming process of licensing his patents, he doesn’t reap the rewards of his inventions. But reap he does. Coleman’s two companies, Plasma Physics Corp. and Solar Physics Corp., recently won a series of huge licensing settlements from the consumer electronics and semiconductor industries. How did hea solo inventor without a team of in-house IP lawyersdo it? It helps when the little guy has a big fish (as in Fish & Neave) as outside counsel. Coleman, now 76, tinkered as a kid. He built radios as a hobby in high school. After a brief career at RCA, he went out on his own and started researching plasma science. He has more than 100 patents to his name, and many successful licensing deals. In 1989 he licensed a patent, which dealt with photocopying, to Canon Inc., which is now an investor in Solar Physics. A few years later, he licensed solar-powered technology to Sanyo Electric Co., Ltd., and Casio, Inc., the makers of pocket calculators. In the mid-1990s Coleman realized that three of his plasma science patents might be valuable. They cover widespread processes used to make semiconductor chips and flat-panel computer and television screens. Coleman had negotiated licenses without legal help before, but this time, he says, there were simply too many companies involved. “I couldn’t have handled this on my own,” he says. Enter Fish & Neave. Coleman had first used the firm 43 years earlier, when partner Steve Philbin advised him in the prosecution of a patent involving plasma technology. (Plasma is the fourth state of matter, along with solids, liquids, and gas.) Over the years he used Fish & Neave for small matters. He trusts the firm, he says, which is not a small act of faith for scientists, who often view legal work as verbal gamesmanship. “They’re good,” he says. “I’ve never heard Fish & Neave make a statement they couldn’t verify.” Partner Herbert Schwartz, one of Fish & Neave’s most prominent litigators, started working on Coleman’s plasma screen case in 1996. He brought in partner Patricia Martone as chief negotiator in 1997. “Figuring out how to deal with such widespread infringement was a major challenge,” says Martone. “Coleman’s [patents] pretty well covered the semiconductor process and flat-panel markets,” she says. “So we began making efforts to license [his technology].” Sanyo agreed to license Coleman’s technology early on, Martone says. But the majority of other companies balked. So in December 1999 Coleman’s attorneys filed a complaint in the Eastern District of New York against 14 major Asian electronics companies, including Fujitsu Limited, Hitachi Ltd., Hyundai Electronics Industries Co., LG Electronics Inc., Matsushita Electric Industrial Co., Mitsubishi Electric Corp., Sony Electronics Inc., and Toshiba Corp. It is a common belief among IP lawyers that Asian companies are more likely to settle than fight, so patent owners often target them first. Once they have the weight of those settlements in their favor, lawyers often find it easier to pursue American corporations. Judge Leonard Wexler decided early on that he would put Coleman’s case on a fast track to trial. He would not hold an early Markman, or pretrial, hearing to determine the scope of the patent claims. That ruling reduced the defendants’ flexibility; if they had received a favorable Markman ruling, they might have been more willing to go to trial. Coleman was present at more than half of the negotiations. When the defendants met the inventor and listened to him explain the technology, they began to understand his side, according to Martone. But they didn’t just roll over. Martone had to travel to Japan and Korea for negotiations. Beginning in the spring of 2000, some of the defendants agreed to settle. Others slowly followed. (Intel Corporation, which was not a defendant, also took a license.) All terms are confidential. Finally, in January 2002, the last of the defendants agreed to license Coleman’s technology. Coleman’s two companies now have licensees from three of the four largest semiconductor chip manufacturers in the worldIntel, Samsung, and Toshiba. They also have licensees from most of the big players in the flat-panel display market. But the fight isn’t over. In June, Plasma Physics filedbut didn’t serve complaints against more technology companies, including International Business Machines Corporation and Advanced Micro Devices, Inc. The move might be a prelude to a licensing deal. For his part, Coleman says he is reluctant to get back into the litigation ring. “Any day taken away from research is a day lost,,” Coleman says. “It’s onerous, but it’s a matter of necessity because I own research companies, and the money from licenses funds further research.”

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