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There are good and bad things about being a solo inventor like John Coleman. He walks to work — in his garage in his house in Locust Valley, a town on New York’s Long Island. But if he doesn’t license his patents, he doesn’t reap the rewards of his inventions. 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. The secret of Coleman’s success: It helps when the little guy has a big fish (as in Fish & Neave) as outside counsel. Coleman, 76, 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. Along the way, he started a company called Radiation Research and sold it. 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 has 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 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 has used Fish & Neave for small matters. He trusts them, 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 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. “Mr. Coleman’s [patents] pretty well covered the semiconductor process and flat-panel markets,” she says. “So we began making efforts to license.” Sanyo agreed to license 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 that Asian companies are more likely to settle than fight. So patent owners often target them first. Once they have the weight of these settlements in their favor, lawyers 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 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 Coleman 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 both Japan and Korea for negotiations. Beginning in the spring of 2000, some of the defendants agreed to settle. Others slowly followed. (Intel Corp., 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 world — Intel, Samsung and Toshiba — commanding a 45 percent market share. 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 filed — but didn’t serve — complaints against more technology companies, including IBM Corp. and Advanced Micro Devices Inc. Martone says the decision not to serve the papers is often used as a stick by a plaintiff who wants to license rather than litigate. Coleman is reluctantly ready to get back into the litigation ring. “Any day taken away from research is a day lost, in my viewpoint,” 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.” Lisa Shuchman is a free-lance writer living in Brooklyn.

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