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In the wake of the dismissal of a case brought against the Lemelson Medical Education and Research Foundation, the foundation’s chief lawyer said that he may go after companies that were not even formal parties to the original action. Last year, the now-defunct U.S. Metals Corp. sued the foundation in state court in Nevada, claiming that many of the manufacturing technologies covered by patents issued to the late Jerome Lemelson were in fact invented when he was a company employee in the 1950s. The case was dismissed on July 5, on the ground that the company had waited too long to bring its claims, but U.S. Metals is appealing. U.S. Metal Refining Co. v. Lemelson, No. CV99-02216. Lemelson died in 1997, but his foundation has continued his policy of suing corporations that refuse to take a license on his patents. Lemelson counsel Gerald Hosier, of Reno, Nev., said that by raising questions about ownership of the patents, the U.S. Metals suit put a major crimp in the licensing program. Many companies delayed signing on, and Hosier charges that as much as $100 million in potential income was lost. Consequently, he is taking a hard look at companies that are defendants in Lemelson infringement cases, or that refuse to be licensed for Lemelson-patented bar-code and machine-vision technologies. “Something is odd,” he said. “We knew there was lots of communication” about the U.S. Metals allegations among people refusing to take licenses long before this suit was brought.” He suggested that Intel Corp., of Santa Clara, Calif., may have been an instigator, noting that Intel had acquired a Cayman Islands shell company called Maelen Ltd., which then intervened in bankruptcy proceedings involving an Intel patent litigation opponent. And he said that possible nonparty sub rosa involvement in the U.S. Metals case “could be the subject of future litigation. We will not have people do this to us with impunity.” Jesse J. Jenner, a partner at New York’s Fish & Neave, who represents plaintiffs in two Nevada cases seeking to have some of the Lemelson patents declared invalid, said that for “a period of time, the Lemelson camp was accusing us — me and Fish & Neave — of being in league with U.S. Metals to thwart their licensing program. There is nothing to that at all.” Intel spokesman Chuck Malloy would say only that “we don’t comment on litigation in general, and in particular, we don’t comment on litigation in which we are not a party.” PRESSURE OFF David P. Burton, of Chicago’s Competition Law Group, is representing defendants in several cases the Lemelson foundation is pursuing in Phoenix. He said that the Nevada ruling “makes it easier for everybody because there is a reduced threat to the ownership of the patents.” Phelps Dodge Corp., also of Phoenix, picked up U.S. Metals in an acquisition of Cyprus Amax Minerals Co. this past autumn. Shortly thereafter, high-profile trial lawyer Joseph D. Jamail, of Houston’s Jamail & Kolius, joined the U.S. Metals team. Jamail said that although he did not have an employment agreement that was signed by Lemelson, he could prove that employees from that era were required to sign rights to their inventions over to their employer. Despite repeated telephone calls to his office, Jamail was not available for comment. Lemelson’s reach apparently extends beyond the grave. Hosier said that there are Lemelson applications which have yet to issue from the U.S. Patent and Trademark Office, including some that were filed after the inventor died. And not even the U.S. government is safe from Lemelson licensing demands. “We’ve already put the federal government on administrative notice, which fixes the date when damages start to run,” he said.

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