On 10 June 2008, a three-judge panel for the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a lower court decision that denied Corliss Orville â''Cobâ'' Burandtâ''s request to reinstate his patent on variable valve timing technology, which had expired due to unpaid maintenance fees. Barring either an appeal for a hearing in front of all 12 CAFC judges or an appeal to the United States Supreme Court, this decision effectively ends Burandtâ''s quest to regain control of his patents. Had he won, he might have been able to compel automakers like Toyota and Honda, which use variable valve timing technology in their hybrid car engines, to pay him royalty fees on his invention. Now heâ''s left wondering what might have been had he been able to fight for control of his patents from his former partner and patent assignee IRI Holdings before the company let them devolve into the public domain.
Working pro bono, Burandtâ''s legal team, led by Scott F. Yarnell, along with Donna M. Praiss, Elizabeth M. Wieckowski and Eugene C. Rzudcidlo all of Hunton & Williams LLP as well as patent attorney and IEEE member George Macdonald, argued that the United States Patent and Trademark Office and its director, Jon W. Dudas, acted capriciously in denying Burandt's petition to reinstate his patent.
The argument rested in part on Burandtâ''s extraordinary circumstances (detailed in my Spectrum article Down and Out in Ham Lake and in a radio segment for NPR's Living on Earth), which his lawyers said prevented him as the equitable title-holder from paying the maintenance fees. The three-judge CAFC panel sided with the USPTO and held that that Burandt could not be granted an opportunity to pay the maintenance fees past due on patents that the legal owner of the patent, IRI Holdings of Minneapolis, had intentionally allowed to expire. The court held, â''Here, IRI, as the legal title holder of the patent, was the party responsible for paying the maintenance fee. The record demonstrated that IRI failed to exercise reasonable care in ensuring that the maintenance fee would be paid in a timely manner. Indeed, the record was devoid of any evidence suggesting that IRI took any steps to make timely payment of the maintenance fee. Rather, the record indicated that IRI allowed the â''406 patent to expire, as it had deliberately allowed three others of Burandtâ''s patents to expire. As such, under the guidance set forth in Ray (Ray v. Lehman, 55 F.3d 606 (Fed. Cir. 1995)], we find no clear error of judgment or any abuse of discretion with regard to the Directorâ''s conclusion that unavoidable delay was not shown.â''
I talked with Macdonald last week by phone. He was going to huddle with the Hunton & Williams team and Burandt to determine whether or not to proceed down the final open legal avenues. Macdonald read about Burandtâ''s plight in Spectrum and took on his case, paid overdue fees himself, and hooked Burandt up with Hunton & Williams, a firm famous for representing NTP against RIM in a case where NTP prevailed to the tune of $612.5 million.
While Burandt wants to fight on until the bitter end, neither CAFC or the Supremes seem likely to take on the case. Then again, stranger things have happenedâ''like a company that owned the basic technology behind todayâ''s booming hybrid car market just letting the patents expire, losing itself and potentially its inventor, Burandt, tens of millions of dollars.