Ole K. Nilssen Patents Held Uneforceable
Nilssen and his technical expert Dale Fiene share an offce in Barrngton, Ilinois. In 1989, Nilssen entered an agreement with Fiene and Fienes's Intellectual Property Development company. The agreement with IPD provides that Nilssen would pay IPD $20,000 per quarter for various technical assistance. The agreement between Nilssen and Fiene is a contingency contract in which Nilssen agreed to pay Fiene a percentage of all the licensing revenue and litigation settlements related to Nilssen' s patents up to a maximum of$500,000 (adjusted for inflation from 1989). From 1989 through 2001, Nilssen paid Fiene over $1.5 millon. Nilssen contiues to pay IPD $20,000 per quarer (adjusted for inflation from 1989). In addition, pursuant to a 2001 contract, Fiene receives 20 percent of all royalties Nilssen receives from the Geo Foundation.
On June 28, 2006, Judge John Darrah of the U.S. District Court for the Norther District of Illinois held that eleven of Nilssen's patents were invalid for inequitable conduct because Nilssen:
- submitted misleading affidavits to the Patent and Trademark Office ("PTO");
- improperly claimed and paid fees as a small entity;
- improperly claimed priority dates in several patent applications;
- failed to disclose litigation against Motorola, Inc. during the prosecution of patents in suit that involved the same subject matter as the patents at issue in the Motorola litigation;
- failed to disclose material prior ar references to the PTO during the prosecution of several patent applications; and
Based upon this inequitable conduct, Judge Darrah also held that the infringement action was not barred by the doctrne of unclean hands. Nonetheless, the Judgement noted that
On numerous occasions, Nilssen inappropriately criticized patent examiners and
the Board of Appeals. For example, in his petition to the Commissioner, Appeal No. 071107,765, Nilssen stated that he "finds subject Examiner to be not only incompetent with respect to the particular subject matter of the varous claimed inventions, but also seriously lacking in the basic mental facilties needed to properly perform his assigned role." In another petition to the Commissioner, Nilssen stated:a) Mr. Dixon canot be characterized as being skilled in the arts towhich subject applications pertain. . .
b) Mr. Dixon is severely deficient in his understanding and use of reason and logic. . .
c) Mr. Dixon has an inadequate command of the English language. . .
d) Mr. Dixon has repeatedly shown himself to be overtly noncooperative and non-caring.
On several occasions, the PTO returneed submitted papers to Nilssen, without consideration, for Nilssen's failure to conduct business with the PTO with "Decoru and Couresy" in violation of 37 C.F.R. 1.3.