“After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent?”
The Zip-It drain cleaning tool was an invention that I developed around the year 2000 because I was getting tired of my bathroom drains getting clogged. My daughter Kim didn’t like haircuts and when she would take showers, her long hair would clog the drain and cause the water to back up. I tried to solve the problem by using liquid drain chemicals, plungers and bent coat hangers, all to no avail. There were no products available on the market that provided a quick remedy for clogged drains.
One morning, after dealing with yet another slow-running drain, I went into my garage and found a worn-out plastic sled hanging on the wall. I took it down and my idea was to cut a 24-inch-long strip from it which was narrow enough to fit down the drain, and then I fashioned a handle on one end and cut barbs along each side of the long strip. I took it into the house, stuck it down the shower drain, pulled it out and the amount of hair it pulled from the drain looked like a dead rat had come out of there. The “Zip-It” was born!
The Zip-It is a simple one-piece injection-molded product which is composed as a flexible strip having barbs and then a handle on one end which has an aperture both for finger gripping and for hanging. I searched for products similar this and didn’t find any. My next step was to file for a design patent and a utility patent to cover this device. The product has no assembly: when the Zip-It drops out of the injection-molding machine, it is ready to use.
I took my prototype to a large, big box home supply company and showed it to their plumbing buyer. He was amazed and said that his store would purchase thousands of units if they were available in such large numbers. I licensed my product to Cobra Products, a division of BrassCraft Manufacturing which is owned by MASCO Corporation. Ten years and 12 million Zip-Its later, Cobra’s plumbing sales representative, Doug Cohen, was let go from the company and went to work as the president of G.T. Water. It was at that time that G.T. Water began selling a product that infringed upon my patent for the Zip-It.
Cobra Products filed a lawsuit for patent infringement. G.T. Water then filed for a re-examination of my patent at the U.S. Patent and Trademark Office to invalidate my patent claims. My licensing agreement with Cobra and BrassCraft was to share equally in the cost of defending my patent. However, Cobra Products elected not to help me in the defense of my patent at the USPTO. I was forced to bear the total cost of that alone. After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent? Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.
Defending the patent is only part of this particular battle. I was born with muscular dystrophy and two of my children suffer from this same disability. My family suffers from a form of muscular dystrophy called Facioscapulohumeral Muscular Dystrophy, which is a terrible, progressive disease that requires adaptive equipment to keep us independent, mobile and able to stay in our homes as the disease worsens each year. The royalties I had been earning from licensing my patent have been helping everyone in my family stay independent despite our disabilities. This income had prevented me from becoming reliant on the government for assistance. Because of the invalidation of my patent claims, however, the chances of me being able to continue making an income from this invention are gone. With the loss of this important income, it has threatened the future independence for me and my family.
This is why we need your support to help us restore our patent rights. Please help us in our fight to pass H.R. 6557, the Inventor Protection Act, which has been introduced into the House of Representatives. After a decade of destruction of our patent rights, this bill restores patent rights to inventors like me who own their patents, helping us to continue supporting our families with the money earned from our inventions.
Join the Discussion
35 comments so far.
DamienSeptember 12, 2018 04:13 pm
“As the U.S. Chamber of Commerce reports, the U.S. Patent System has fallen to 12th Place in the Chamber Global IP Index for 2018.”
Sigh… (https://www.uschamber.com/press-release/us-chamber-releases-sixth-annual-international-ip-index) where the report CLEARLY shows the US as the number 1 ranked overall.
With respect to “Patent rights etc..” US is ranked 12th… but note that 10 of the other 11 are tied… so they really are 3rd, not 12th. And first and second are .25 and .50 away (7.25 vs 7.5(x10) vs 7.75) a spread of only 6%. Nothing says honesty better than taking statistics misleadingly out of context for your own ends.
DamienSeptember 12, 2018 03:54 pm
lol Probably should have filed a case on theft of IP/trade secrets rather than patent infringement. By filing patent infringement you are effectively guaranteed that they respond with invalidation proceedings. Its just how it works.
“What was the material reason the claims were invalidated? No one is talking about that.” A search of PTAB returned no results for inventors: “gene luoma” hmmm….
“Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.” Right…. because they arent infringing because you no longer have a patented invention.
Tesia ThomasSeptember 6, 2018 12:20 pm
AgentGG, the Page Rank patent would fail under the invalidation methods of today. It’s a mathematical formula.
Sure it ranks pages differently than other algos.
But, it would be killed under Alice.
Most people who file now have one standard for examination and the ptab has a broader standard.
The only thing that separates Page Rank from IBMs algo IP or Samsungs or whoevers is that Page Rank expired before it came under the scrutiny of AIA. It was never held to the standard that AIA is holding other patents now.
It was never tested with litigation as you say.
AnonSeptember 6, 2018 12:18 pm
Quite the opposite really – what you state is an argument for better patent application examination.
Let’s not retread trying to have the Office do something that it does not control.
AgentGGSeptember 5, 2018 06:35 pm
What was the material reason the claims were invalidated? No one is talking about that. As it happens, patent examination can often be weak or inconsistent or both and the same examiner can change their views over time. Most examiners do not even read the description in detail (who ever does?). So it is entirely possible and plausible that claims in a weak patent application were initially granted and were not upheld under the additional scrutiny of litigation, which was done under the presumption of validity. Seems like an argument for better patent applications to me in the end. All patent applications are not created equally.
Ken GeeSeptember 4, 2018 11:56 am
The PTAB is unconstitutional in the way they ban patent rights. A class action lawsuit should be filed against the USPTO. Its like communist Russia in the way they stack the judges to vote in favor of the patent infringer. The rule of law and the Constitution are not worth the paper they are written on. Bye bye USA…Hello mother Russia.
Pro SaySeptember 4, 2018 11:52 am
I just made a $250 donation to US Inventor.
All my fellow inventors; if you haven’t already done so (or even if you have); please join me in supporting all the hard work this superb organization is doing on our behalf.
We are at a critical point for the protection of our existing — and future — patents.
Given the blood, sweat, tears, and money we’ve already invested in our inventions, isn’t a one-time (or on-going) investment worth protecting it/them?
BSeptember 4, 2018 09:34 am
“Now, for the substance of your comment. Obviously, the PTAB is not doing their job. They do not follow the requirements of the Administrative Procedures Act and do not provide even a modicum of procedural fairness.”
The CAFC has stopped pestering the PTAB on the APA. Following the law? Lack of evidence? Procedural fairness? None matter if your case gets before certain judges. The CAFC will even “distort” facts on an opinion.
AnonSeptember 4, 2018 08:35 am
A perhaps not small part of that was the complicity of Academia and the level of “capture.”
Note the parallels to the patent system where (for different philosophical drivers), BOTH of what I have in the past labeled as Left and Right assail Patents.
The Left from the dogmatic view that all personal property is “bad.”
The Right (not the same as the political Right, and more a reflection of Corportacrazy) from the dogmatic view that any property that challenges their power is “bad.”
concernedSeptember 4, 2018 12:52 am
Subprime mortgages were making even more money than Apple and Google. AIG had $1.5 trillion in third party counter risk with no collateral. The fraud was open for all in society to see. Phony appraisals and income verifications were running rampant. Everyone in the business knew the deal.
No one stopped the party until the United States was on the brink of financial collapse. Such collapse would bring everyone down including all the conspirators who were driving the fraud. In other words, it was going to bring down the Apples and Googles of the financial world. Then the music stopped. Settlements are still being paid 10 years later.
I hope it does not have to financial collapse for this patent mess to reverse (i.e. USA 12th in patents, then 30th, then 50th etc).
Night WriterSeptember 3, 2018 07:38 pm
One point that is often missed is that a good indication there is a problem with the patent system is huge profits that companies like Google and Apple have. What this tells us is that they have market power. It is complicated to understand but the fact that they aren’t investing more in innovation means that they are confident that they can take any innovation that comes along.
Not sure why no one talks about this. And no one graphs utility application granted for inventions made in the USA.
concernedSeptember 3, 2018 06:44 pm
Inevitably remarks such as yours are from a business owner using other people’s inventions and you want to continue the same. You want to rationalize what you are doing to yourself as being legitimate.
The PTAB cannot be a legitimate process if words are added to the law by a court, the evidence is tossed, official memos are not followed, etc. The process cannot be legitimate, there is no rule of law.
The SCOTUS was just asked last week to address the question “Do facts matter?”
Please explain the necessity of such a question that was submitted to the highest court in the land if the patent process was fair.
Disenfranchised Patent OwnerSeptember 3, 2018 04:34 pm
This is another poignant example of patent theft enabled by the US Congress, USPTO and Federal Court system. All 3 branches of government are culpable.
HR 6557 would be a step in the right direction. The STRONGER Patent Act also would bring needed relief/reform. It’s time for all US Inventors to step up and fight for our rights. Supporting US Inventor, Inc. is the best way to do so.
DanSeptember 3, 2018 02:32 pm
And one of the worst infringers of stealing patents and technology and burying it in the courts is Apple. Think of that when you use your iphone!!! Steve Jobs took pride in saying they were shameless in stealing technology. So now, many companies and inventors get nothing while Apple steals their technology and its worth a trillion and has $250 billion offshore, avoiding taxes. They recently lost big patent cases that went on for years to Virtnex and Wilan and dragged out the appeals even further!!! It is the Googles and Apples of the world who have destroyed the patent system and the inventors just rewards in the USA. The system is in dire need of repair and its time to take control back from these shameless big companies. Time to stop filling their coffers and pay the inventors!!!
Jason LeeSeptember 3, 2018 02:18 pm
@ Gene Quinn,thanks for sharing your story. Most people do not know that it was Obama and Google employee that became Head of the USPTO Michelle Lee that helped Silicon Valley get away with Patent theft. They created boogeyman “patent Trolls” so they could introduce the AIA Act and the PTAB so they could take an inventors patents away with out having to pay a license fee. Its a Silly-CON game they are playing and are getting away with stealing patents off of inventors and patent holders. There is no coincidence Google Apple Amazon Facebook have seen enormous growth since 2011 thats when they brought in the AIA Act. Lots of the judges at the PTAB are key players over at Silicon valley. The game is rigged, Patent Pirates must be exposed for the con artists they are. Andrei Iancu has not done enough IMO to protect patent holders and needs to step it up and stop anti patent judges from being stacked to kill patent holders over at the PTAB. Patent values must go up in value!! Congress is a whole other mess owned and paid for by Apple Google, its a very dead democracy when the oligarchy owns the laws. Congress needs to wake up! When a company is making $20Billion a quarter and has $270Billion sitting off shore, something is not working right. Its way over due they balance out the playing field.
Ron HiltonSeptember 3, 2018 12:31 pm
Everything is “obvious” in hindsight. The pendulum has swung too far in that direction. Yes, there are bad patents and some kind of reasonable post-grant proceeding is needed – at most once, with a high burden of proof on the challenger. The “multiple jeopardy” gauntlet that patent owners now have to endure is a disgrace. If something is novel, then the threshold for obviousness should be very high, especially when the invention has achieved commercial success, like the Zip-It. If it was so obvious, then why didn’t someone else capitalize on the idea sooner?
Gene QuinnSeptember 3, 2018 11:50 am
J.C. Cooper @18-
I do think over the next several months you are going to continue to see Administrative reforms from the Office that will bring greater balance to PTAB proceedings. Will that be enough? How far will it go? We need more courageous inventors like Gene Luoma to tell their stories. This is exactly what we inside the beltway here that the folks on Capitol Hill want to hear. The more of these types of stories that we can tell the greater the likelihood that real, meaningful change can happen beyond what might be done by Director Iancu inside the Office.
The issue is this… Those advocating to weaken the patent system use the absence of inventor stories as proof that there has been no downside to the AIA or Supreme Court decisions. The absence of inventor stories is largely because attorneys representing inventors don’t want them to talk and tell their stories. There are many more stories like Gene Luoma’s. We need to tell them so the void is filled with truth.
J. C. CooperSeptember 3, 2018 11:34 am
Gene @14, “The entire PTAB house of cards is about to collapse and a much more fair process will be put in place.” I sincerely hope that you are making the statement based on some factual insight, but even if it is only wishful thinking it needs to happen. Far too many legitimate and deserving inventors like Mr. Luoma have been cheated out of their Constitutionally recognized and guaranteed rights by this corrupt bureaucracy.
Tesia ThomasSeptember 3, 2018 11:12 am
“Lemon laws are American state laws that provide a remedy for purchasers of cars and other consumer goods in order to compensate for products that repeatedly fail to meet standards of quality and performance.”
Consumer good = patent
Standard = survival of PTAB and re-exam
Repair attempts = prosecution, office action amendments
Warranty = PTO Director signing the issued patent as valid
Defect = whatever allows the patent to be killed in PTAB
Tesia ThomasSeptember 3, 2018 11:02 am
One way of looking at the entire effects of AIA is that APJs have become the trusted examiners.
So, in reality, we should just get rid of examiners before issuance and let people PTAB to vet IP.
Right now, there’s an untrusted examiner upstream and a trusted examiner downstream.
The untrusted examiner’s opinions don’t even matter in view of the trusted examiner’s opinions.
The untrusted examiner just consumes resources.
Tesia ThomasSeptember 3, 2018 10:53 am
It’s why wars are so expensive. And, actually invalidating a patent should be more expensive than it is with PTAB.
When actual courts (CAFC?) invalidated IP in the past, it cost millions. Why? Patents were a private property. The opposing party had to pay to challenge.
PTAB makes it less costly but take out some of the adversarial nature because it slants everything in the plaintiffs view.
Before, things were more equal except…since the defendant paid the government tons of money & the govt trusted its workers to vet the patents, patents were presumed valid.
Now, they’re more presumed invalid…which throws away the whole entire examination and prosecution process as worthless.
Gene QuinnSeptember 3, 2018 10:46 am
I do not censor legitimate comments, despite your erroneous accusations. Obviously, you are new here, so allow me to explain.
We literally receive tens of thousands of spam comments each day, sometimes more. So we have to take steps to make sure that only real comments are allowed. One of the most basic steps we take is no one is allowed to comment until they have had a comment approved for the first time. So your comment was held in moderation.
You also commented over a holiday weekend, which means I am not at my desk 24/7 waiting to approve new comments.
Now, for the substance of your comment. Obviously, the PTAB is not doing their job. They do not follow the requirements of the Administrative Procedures Act and do not provide even a modicum of procedural fairness. The entire PTAB house of cards is about to collapse and a much more fair process will be put in place. Once that happens then you may be able to say they are doing their job. But persecuting patent owners is not their job. Open your eyes!
Tesia ThomasSeptember 3, 2018 10:42 am
Because the process is not simple or ‘cut and dry.’
For once, I agree with Anon.
But, this is why we need patent lemon laws.
PTAB should be before issuance or we need the government to say, “We screwed up in issuing this IP so here’s your money back plus damages from our negligence.”
Examiners have the burden. Why are APJs picking up their slack?
AnonSeptember 3, 2018 10:37 am
Karen – on what basis is your “possibly”…? What basis is your “too many” made in reference to?
Are you thinking or just reacting emotionally?
Do you see the danger in such careless accusations?
ConcernedSeptember 3, 2018 10:08 am
Do you know anything about the Stonger patents act legislation? It so happens to be sponsored by Rep. Stivers (my representative) and there is a 99% chance I will be in front of him in near future. Alot of his friends have been trying to help me already and he coincidentally sponsored a patent legislation.
KarenSeptember 3, 2018 09:27 am
Possibly greedy money grabbers and far too many rotten apples.
AnonSeptember 3, 2018 09:25 am
On a professional note, despite my heart going out to the author here, the bill being referenced remains a “No-Go” for me for reasons listed in the provided link.
For those very reasons, this inventor would only face short term gains at far too great a price for the ALL inventors (the loss of the foundational aspect of FULLY alienable property is simply too great a price to pay for the subset of inventors that are practicing their innovation).
Reform is needed to correct the mischief unleashed on the patent system. HR 6557 is NOT that reform.
AnonSeptember 3, 2018 09:18 am
Benny: “blame the attorneys”
That’s an easy ‘scape goat, now isn’t it?
Is it just the cost level that makes you want to reach out with blame? Do you have any insight as to whether or not any actual improper action has been taken by any attorney before you venture out with your accusation? Do you really think it so easy to dismiss the ethical restraints that attorneys MUST abide by?
This is not to say that all attorneys are blameless, or that costs should not be scrutinized — there are “bad apples” in every profession (and the reason why state boards police against ethical violations).
But the venturing of “it appears” based on pure speculation and feeling is akin to yelling “fire” in a crowded theater.
AlleySeptember 3, 2018 07:38 am
Gene, Thank you for courageously sharing your situation.
Very sad that this has happened to you, and many other inventors. There are far too many thieves. When will this stop? Correct. This has gone on for far too long. This is clearly a case of daylight robbery and should not be allowed to happen. The Patent Trial and Appeal Board should not be breaking down the system. This is crazy. Sincerely hope that the Trump administration and the USPTO Director Andrei lancu and his legal team really will immediately start taking positive action to stop unfair trade practices, targeting perceived imbalances, including alleged widespread intellectual property theft. This is daylight robbery and goes against the Constitution of the United States of America. Larceny also starts from within the USPTO system, especially when an inventor/applicant has a USPTO Examiner of Middle Eastern or Far Eastern origin.
Legislators and all attorneys should all be making an effort by supporting inventors and join the fight to pass H.R. 6557, the Inventor Protection Act.
If a US patent has been issued and the claims have been accepted, then without a doubt this should not be challenged. Hope that swift changes happen and all the bills will be passed
A patent should always remain an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms; the owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent. An issued patent or a patent that has expired should definitely not become a victim of intellectual property theft.
Hope we all win the fight to pass H.R. 6557, the Inventor Protection Act.
United we stand.
BennySeptember 3, 2018 05:17 am
Beyond what has been written above, another question I would ask of litigation attorneys – how does the cost of defending patent rights in court reach 250 grand? It may be (I don’t know – haven’t read the IPR ) that the opposer has a valid case, but why do attorneys have to suck up 250000 green rectangles before the defendant finds this out ? It appears to me that the the litigation attorneys have a financial incentive to drag out the proceedings to the greatest extent.
BobSeptember 2, 2018 07:57 pm
Why are you censoring legitimate comments Gene? The PTAB serves a vital and legitimate function.
Pro SaySeptember 2, 2018 06:24 pm
Gene — thank you for publicly sharing your painful, heart-felt story.
May the Good Lord watch over and stand by you and your brave family through all your challenges. You are a great example of a Godly man.
I would never compare my challenges to yours. To date, I’ve “only” had to forgo the $500,000+ in earnings I would have otherwise brought in for my family had I not spent so much of the last 18+ years fighting for and monetizing my high-value, widely infringed inventions.
I thank the Lord regularly for bringing my wonderful, Godly wife to me. Without her earnings, health insurance, understanding, and patient support all these years, I’d be living with family … or worse.
Either we inventors all stand together, or we will surely all fall apart.
Please; mail those letters, make those calls, and send those e-mails. Do anything and everything you can to get this critically important bill passed.
We can – and indeed must – do this.
Here’s the priority letter I’ve sent, faxed, and e-mailed to my congress woman if you’d like some ideas for your own letter:
VIA FAX, E-MAIL, AND PRIORITY MAIL
The Honorable Ms. xxxxxx
6:47pm Wednesday evening
Dear Ms. xxxxxxxx,
I’m asking if you would be willing to help my fellow untold 1,000’s of current and future independent inventors throughout the country by joining your colleagues in co-sponsoring and supporting H.R. 6557, The Inventor Protection Act (attached).
Since the startling eBay vs MerkExchange Supreme Court 2006 decision, our nation’s independent inventors have been subjected to repeated beat-downs by the courts and the patent office; to the point that it has become virtually impossible to earn a living from our inventions.
It’s not right. It’s not fair. It’s not American.
We’re not, “patent trolls” (whatever that derogatory, discriminatory, undefined term means). We don’t buy up the patents of others for the purpose of suing operating companies.
We are the inventors.
Throughout our country’s 200+ year history, our inventors have played a critically important role in our intellectual and world economic leadership (even our great Abraham Lincoln was an inventor). We used to be the world’s patent leader.
But no longer.
As the U.S. Chamber of Commerce reports, the U.S. Patent System has fallen to 12th Place in the Chamber Global IP Index for 2018.
That’s how bad things have gotten.
As Mr. Rohrabacher’s official statement concerning H.R. 6557 makes clear:
“Innovation is the engine for America’s future prosperity. The continued efforts of inventors enable our country to maintain leadership in the global economy. The United States Constitution specifically secures for inventors the exclusive right to their discoveries, but, unfortunately, legal protections for those rights are on the decline. Too often we see multinational corporations stealing the property of those who do not have the resources to defend themselves, then tying up inventors in endless reviews and litigation. Worse, the system is now structured to make it economically worthwhile for those corporations to pursue this strategy. The founders of this nation rightly understood that property rights, including to one’s writings and discoveries, are essential to liberty and economic prosperity. That is why they were written into the Constitution.”
As the rest of the world moves forward with patent protections, our country continues to move backwards. Year after year after year. China is eating our lunch.
H.R. 6557 would restore confidence in patent rights and draw capital investment back to small disruptive businesses built on the ingenuity of independent American inventors.
Which would generate many 1,000’s of new, high-paying American jobs / year. Including here in our own state of xxxxx.
Please give me a call if you would like to discuss this further; or if you’d like to set up an appointment for us to meet. I live here in xxxxxxxx.
Protecting our current – and future – 1,000’s of independent inventors is of the greatest importance.
What would Abraham Lincoln do?
Thank you for considering supporting this critically important bill.
We sure need you and your colleagues’ help.
BobSeptember 2, 2018 06:23 pm
The PTAB is doing its function: getting rid of bad patents that should not have been allowed in the first place. Examiners do make mistakes in allowing claims that should not have been allowed. Stuff that is obvious under the patent laws in view of the pertinent prior art should not be allowed.
ConcernedSeptember 2, 2018 01:55 pm
I understand what you are experiencing. My patent application is going down the drain in the bowels of bureaucracy that has no rule of law.
My invention helps people with disabilities and the States/Federal governments as their caregivers.
One difference with my situation: Even possible infringers have to take pause before they steal my idea. If an infringer runs with the idea, then the music stops and the madness reverses, my only too happy contingency posse of attorneys will come riding.
The risk/reward multiples of litigation plus the deep pockets of the States will all but ensure contingency agreements. One attorney is already asking questions about litigation coverage and no infringement has occurred yet.
Accordingly. no one is benefiting from my invention yet. The powers to be cannot measure the harm to mankind or dollars their rulings have caused.
Night WriterSeptember 2, 2018 01:38 pm
The reality is that pretty much any patent claim can be invalidated under KSR and more likely than not (plus multiple shots at the claim).