HiTek JD: Memoir of a Silicon Valley Patent Lawyer offers rare behind-the-scenes glimpses into the legal battles, breakthrough innovations, and colorful personalities that shaped the digital age. Also included in this book are guidelines for lawyers as well as independent and employed inventors.
“Ken has captured the history of technology development in Silicon Valley from a unique point of view. Without this, I think most of the stories would largely be forgotten.” ~Darin Gibby, Partner, Kilpatrick Townsend & Stockton LLP
Patent prosecution is the underlying fabric and enabler of the world’s greatest creation of wealth and technological change. The how and why of that, macro, with individual examples, from Ken’s and other Townsend clients, would weave a story that will elevate the understanding of the well-informed techno elite, and the appreciation of motivated lay readers. This book may not be a best seller but would illuminate the shadow efforts that have made what is before us possible, but not known, or if known, poorly understood. In my own experience, I think we neglected the role of patent prosecution and defense in developing the program of The Tech Museum — our mission became to inspire the innovator in everyone. What would that mean if there were not a process to define, protect, and share intellectual property?
~ Peter B. Giles, Founding President of The Tech Museum of Innovation, San Jose
PART I
Chapter 1
BLOOD MONEY
Chapter 2
MOTIVATION
Chapter 3
WHAT IS AN INVENTION ANYWAY?
Chapter 4
CURING CRAZY NOTIONS
Chapter 5
THE PATENT REVOLUTION
Chapter 6
YOU GET WHAT YOU PAY FOR
Chapter 7
BRIEF HISTORY OF SILICON VALLEY, THE TOWNSEND FIRM AND THE LOCAL PATENT BAR
Chapter 8
THE PENINSULA PATENT LAW ASSOCIATION
Chapter 9
MY PUBLICATIONS TO EDUCATE ABOUT PATENT LAW
Chapter 10
PRACTICES AND PERSONALITIES OF PATENT LAWYERS I KNEW
PART II
Chapter 11
CLIENTS, INVENTORS AND INVENTIONS I ENCOUNTERED
Chapter 12
MORE CLIENTS, INVENTORS AND INVENTIONS
Chapter 13
REAL AND ARTIFICIAL INTELLIGENCE
Chapter 14
JUST PALO ALTO NEIGHBORS
Chapter 15
THE LEGACY OF PAUL BARAN
Chapter 16
3COM, METRICOM AND OTHER LEGACIES OF PAUL BARAN’S INVENTION
Chapter 17
PHOTON DYNAMICS AND FRANCOIS HENLEY
Chapter 18
INVENTIONS FOR SATELLITES
Chapter 19
FOREIGN-BORN INVENTORS
Chapter 20
LICENSING NEGOTIATIONS
Chapter 21
SOMETIMES COURTS DO ENFORCE PATENTS
Chapter 22
WHO PUT THE SILLY IN SILICON VALLEY?
CHAPTER 23
TECHNOLOGY IMPACT ON LAW PRACTICE
Chapter 24
MY PATH TO AND THROUGH PALO ALTO
Chapter 25
EPILOGUE
APPENDIX A
“Invention pacts: between the lines”
APPENDIX B
HOW (NOT)1 TO DISCLOSE AN INVENTION
APPENDIX C
When a Network is a Notwork
APPENDIX D
SO NOW YOU WANT TO WORK AT A DOT-COM
ABOUT THE AUTHOR
For over four decades in Silicon Valley, veteran patent lawyer Ken Allen (BSEE BYU '71, SM MIT '72, JD NUSL '75, Harvard Law special studies-Patents) served technology clients during an extraordinary period in modern history. From offices in Palo Alto and San Francisco, he represented and encountered companies, inventors, scientists and engineers from around the world.
“The spectrum of people and firms Ken Allen has helped is both impressive and exciting. His mentioning of some of the people I know made his stories even more interesting.” ~Dr. Donald L. Nielson, VP SRI International
“I had heard that Ken was the best patent lawyer in Silicon Valley. After working with him I have no doubt it is true. He can break complex issues into easy to understand options and recommend the best course of action.” ~Michael Buckner, Consulting Electrical Engineer
“Ken has a reputation for working with start-up companies in Silicon Valley and the Bay Area developing sophisticated electronics and applied physics technologies. The years I worked with Ken were very exciting. The technologies we worked on were always cutting edge, and the people that came through his office were always brilliant. Ken always made sure his clients received the best quality work, and that their patent rights would effectively protect their future.” ~Steven Koda, Patent Lawyer
“I came to Ken with a patent question. Ken turned out to be a person with a quick wit and a genuine sense of humor, combined with an excellent dose of business common sense. I left Ken's office that day armed with some of the clearest advice I had ever gotten while visiting a lawyer.” ~Stuart Liroff, Serial Entrepreneur
BLOOD MONEY
Houston, Texas. November 9, 1988. High Noon.
“You wrote this patent, right? What do you think of it?”
So began my grilling by a bevy of skeptical potential investors, oil-funded venture capitalists, in a skyscraper high above the gray shroud of oil refineries dotting Houston’s horizon, hovering over me holding a copy of a patent I wrote. Outside the cool comfort of the conference room where we played Q and A, it was roasting–barbecue weather. Inside I was being turned like raw meat on a Texas spit.
“Have you ever seen anything like this invention before? How is it different? How does it work? What do these terms mean? Do you think the patent is valid and enforceable? Why would anyone invest in it?” The knives and forks were out, jabbing, and I was feeling the heat.
Mark L. Yelderman, M.D., M.S.E.E. (Stanford) was an entrepreneur on the verge of a big deal. He had flown me that morning from Palo Alto, the heart of Silicon Valley, where the air—both kinds—is blessedly cooler. Mark needed funding for his new company, Interflo Medical, and he had gone hunting for it in Texas.
Mark wanted to exploit an invention he said he had made on his own time while working at Stanford Hospital. U.S. Patent No. 4,507,974,[1] filed five and a half years earlier, had finally been issued on April 2, 1985, following a round of negotiations with the United States Patent and Trademark Office. Entitled “Method and Apparatus for Measuring Flow.” The patent described a novel way to measure blood flow in patients, with the accuracy of a Swiss watch. It used some of the same signal processing technologies as radar.
Stanford had acquired ownership rights from Mark on the grounds that he was an “employee” when he made his invention, then licensed it back to him to allow him to take his invention to the next step: commercialization. Three and a half years after the U.S. patent was issued and after a number of equivalent foreign patents had been secured, Mark was ready to invite investors to supply the start-up money for his new venture.
In Houston that day I was on the hot seat. As the venture capitalists quizzed me about the law and technology behind Mark’s patent—as well as my personal experience as a patent lawyer—I explained exactly how I had worked with Mark in formulating his claims, namely the legal description of his invention, using my knowledge of radar and signal processing as an electrical engineer, to prepare the patent application. My enthusiasm was obvious, even to me. Mark and I had achieved a human version of the engineering phenomenon known as impedance matching, meaning we were able to communicate at the same level of mutual understanding. In other words, we clicked. As a result, the process of working through the patent application and negotiating with the Patent Office—what lawyers call “patent prosecution”—was efficient and successful. The result was a pretty good patent.
After several hours, the potential investors seemed satisfied, and I was summarily released—freed from the prairie heat to return to pleasant Palo Alto. I had spent less than a day in Houston, a momentary blip with an unknown outcome. I didn’t learn the full significance of my grilling until years later. . .
