Lights Out for Prolific Pro Se CFL Inventor

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Compact fluorescent light bulbs (CFLs) use between 60% and 80% less energy than traditional incandescent bulbs and last much longer than incandescents.  Significantly, they can be plugged into ordinary light sockets, so they are an easy way for consumers to reduce energy consumption.  CFLs generally include two main components – a gas-filled tube and an electronic or magnetic ballast.  Electronic ballasts convert low frequency AC power to higher frequencies.  The current then flows through the gas, causing it to emit ultraviolet light.

Ole K. Nilssen is the named inventor on over 200 patents relating to electronic lighting products.  Nilssen sued several defendants, including Wal-Mart, Costco, Home Depot, Ikea and Ace Hardware in U.S. District Court in Chicago for allegedly infringing seven patents relating to CFL electronic ballast technology.  Unfortunately for Mr. Nilssen, who obtained his patents pro se (without the assistance of a professional patent practitioner), he was less than forthright in disclosing relevant information to the U.S. Patent & Trademark Office (PTO) during the prosecution process. 

In particular, Nilssen claimed the right to pay reduced fees reserved for small entities when, in fact, he had entered an agreement to license the technology to Philips Electronics (an undisputed large entity) and had actually licensed some of the applications to Philips.  When a large entity is a licensee, the patent applicant does not qualify for the reduced fees.  Nilssen also failed to disclose to the PTO then-pending litigation with Motorola on related subject matter.  Patent rule 1.56 imposes a duty of candor on the applicant, and patent case law deems such deception and incomplete disclosure of material information during the patent application process “inequitable conduct” that renders any resulting patents unenforceable. 

In a prior lawsuit brought by Nilssen against Osram Sylvania involving the same patents, the district court held a six-day bench trial on inequitable conduct and ruled five of the patents unenforceable.  The U.S. Court of Appeals for the Federal Circuit (the court having jurisdiction over all appeals of patent decisions by the trial courts and the PTO) affirmed.  Last month, in the Wal-Mart suit, the district court granted summary judgment of unenforceability based on the prior inequitable conduct ruling on the ground of collateral estoppel, or issue preclusion, which prevents re-litigation of an issue that has been fully litigated before.  The court confirmed that the remaining two patents (U.S. Patent Nos. 5,341,067 and 6,172,464) were unenforceable because Nilssen’s failure to disclose the litigation and to pay the proper fees had been fully litigated in the Osram case. 

Nilssen shed his patent attorneys because he felt that, knowing his technology better than anyone, he could best draft and prosecute his applications.  However, while he drafted his applications himself, on filing and disclosure issues he should have at least consulted a patent attorney, who would have known to disclose the litigation and pay the full fees.

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.